diff --git a/opinion_split/2009005622_DECISION.json b/opinion_split/2009005622_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..e8f18e34bda2b5e47d0f675a5ca0bf7689de1c7e --- /dev/null +++ b/opinion_split/2009005622_DECISION.json @@ -0,0 +1,50 @@ +{ + "appellant_arguments": [ + "ANALYSIS Claims 1-4 The Appellants argue that the rejection of claim 1 is improper because Pickering fails to disclose the cited claim limitations [1] and [2] as I See Ethicon, Inc. V. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). referenced above (Br. 10).", + "The Appellants also argue that Whisker fails to disclose \"retrieving a time of day\" since it discloses sampling a time such as \"the initialization time of the system\".", + "The Appellants further argue that the combined teachings of Pickering, Whisker, and Nakajima fail to teach or suggest the Appellants claimed combination of claim 1 (Br. 11-12).", + "Claims 6-10 The Appellants argue that the rejection of claim 6 is improper because Pickering fails to disclose the limitation for *storing at least said incremented digit count in said source if another mailpiece is not present\" and that this limitation was not well-known to those of ordinary skill in the art as asserted by the Examiner (Br. 12-13, Reply Br. 2-5).", + "Here, the Appellants have argued that Pickering fails to disclose the claim limitation for \"storing at least said incremented digit count in said source if another mailpiece is not present\" (Br. 12)." + ], + "examiner_findings": [ + "In contrast the Examiner has determined that Pickering, Whisker, and Nakajima disclose the cited claim limitations [1] and [2] and that the combination of those references to meet those cited limitations would have been obvious (Ans. 5, 11-12).", + "In contrast the Examiner has determined that the cited limitation was well known in the art and that the Appellants failed to properly traverse this assertion during prosecution of this application (Ans. 12-13)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. & 134 (2002) of the final rejection of claims 1-4 and 6-10 which are all the claims pending in the application.", + "We have jurisdiction under 35 U.S.C. \u25cf 6(b) (2002).", + "SUMMARY OF THE DECISION We AFFIRM.", + "THE INVENTION The Appellants\" claimed invention is directed to a method for providing a unique identifier to a mailpiece that is used for tracking (Spec. [0002]).", + "Claim 1, reproduced below with some numbering in brackets added, is representative of the subject matter of appeal.", + "1. A method for generating a PLANET service code for a batch of mailpieces with the PLANET service code having assignable digits, said method comprising the steps of: [1] retrieving a time of day from a clock source; [2] prescribing the assignable digits, wherein the assignable digits comprise the retrieved time of day; [3] associating the PLANET service code having the assignable digits with a mailpiece from the batch of mailpieces; determining if another mailpiece is present in said batch of mailpieces; incrementing the assignable digits by a one count if another mailpiece is determined present in said batch of mailpieces; and associating the PLANET service code having the assignable digits incremented by a one count with the another present mailpiece, wherein associating the PLANET service code comprises storing the PLANET service code having the assignable digits in a database in correspondence with a mailpiece.", + "THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Whisker US 4,780,828 Oct. 25, 1988 Pickering, Jr. US 6,557,755 B1 May 6, 2003 Nakajima US 6,796,491 B2 Sep. 28, 2004", + "The following rejections are before us for review: 1. Claims 1-4 are rejected under 35 U.S.C. & 103(a) as unpatentable over Pickering, Whisker, and Nakajima. 2. Claims 6-10 are rejected under 35 U.S.C. & 103(a) as unpatentable over Pickering.", + "THE ISSUES At issue is whether the Appellants have shown that the Examiner erred in making the aforementioned rejections.", + "With regards to claims 1-4 this issue turns on whether it would have been obvious to combine the references used in the rejection to meet the argued claim limitations.", + "With regards to claims 6-10 this issue turns on whether the prior art discloses *storing at least said incremented digit count in said source if another mailpiece is not present\" or if such a modification would have been obvious.", + "FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence: 1 FFI.", + "Pickering discloses a system for tracking a mailpiece using a postal service mailpiece code (Title).", + "Pickering at Col. 11:54-12:10 discloses that the last four digits of the PLANET code specify a customer ID.", + "The last four digits could also be used to specify a sequence number, starting with \"0000, and increasing by one for each mailpiece.", + "FF2. Whisker has disclosed a mailing system with a random sampling of postage (Title).", + "Whisker at Col. 5:18-62 discloses that a sample may be encrypted.", + "A secure seed number may be generated which is random such as using an arbitrary time like the initialization time of the system.", + "FF3. Nakajima has disclosed as electronic payment system (Title).", + "Nakajima at Col. 18:33-48 discloses that the seed for the random number is given the initial value.", + "Claim limitations [1] and [2] require: [1] retrieving a time of day from a clock source and [2] prescribing the assignable digits, wherein the assignable digits comprise the retrieved time of day.", + "We agree with the Examiner.", + "Pickering discloses a system for tracking a mailpiece in which the last four digits of the PLANET code could also be used to specify a sequence number, starting with \"0000\" and increasing by one for each mailpiece (FF1) which serves to \"prescribe assignable digits\" as claimed.", + "Whisker has disclosed that a secure seed number may be generated which is random and provides as an example using an arbitrary time such as the initialization time of the system (FF2) which discloses \"retrieving the time from a clock source\".", + "While Whisker discloses using the time of the system and not the time of day, frequently the time of the system is the time of day when running on a computer.", + "Regardless, the use of the time of day would be obvious to use as the system time as it is readily ascertained.", + "Nakajima has disclosed that the seed for the random number is given the initial value (FF3) in the system.", + "Thus, Pickering, Whisker, and Nakajima have disclosed the argued claim limitations [1] and [2].", + "The modification of the cited elements of Pickering, Whisker, and Nakajima is considered a predictable combination of familiar elements in order to have a sequence code which could be generated with a readily ascertainable time code in order to start the sequence and to be able to determine at what time the sequence was started.", + "For these above reasons the rejection of claim 1 and its dependent claims which have not been separately argued is sustained.", + "However Pickering has disclosed that the last four digits can also be used to specify a sequence number, starting with \"0000\" and increasing by one for each mailpiece (FFI).", + "Thus in Pickering inherently the last sequence number must be stored in order to increment the count if necessary, regardless if another mailpiece is found present or not.", + "Thus, Pickering has disclosed the cited argued claim limitation.", + "Regardless, one of ordinary skill in the art could have readily \"determined that it beneficial to store the last sequence number to backup data files as is conventionally done in many computer processing systems.", + "For this reason, the rejection of claim 6 and its dependent claims which have not been separately argued is sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2009007353_DECISION.json b/opinion_split/2009007353_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9bef5436787c78eb49024611422dad1fede50272 --- /dev/null +++ b/opinion_split/2009007353_DECISION.json @@ -0,0 +1,63 @@ +{ + "appellant_arguments": [ + "ISSUES Claims 1-3, 5-6, 8-10, 13-14, 17-18, and 21-24 Appellants argue on pages 5-10 of the Appeal Brief and page 3 of the Reply Brief that the Examiner's s rejection of claims 1-3, 5-6, 8-10, 13-14, 17-18, and 21-24 is in error.", + "Appellants argue that neither Owen nor Michener discloses *forwarding the data over the communication link to another one of the nodes on the communication link if the data type does not match a type processed by circuitry associated with the receiving node.", + "Claim 7 Appellants argue on pages 7-8 of the Appeal Brief and pages 2-3 of the Reply Brief that the Examiner's s rejection of claim 7 is in error.", + "Appellants argue that neither Owen nor Michener discloses a nonvolatile storage which provides the data type identification.", + "Claim 15 Appellants argue on page 9 of the Appeal Brief and page 2 of the Reply Brief that the Examiner's s rejection of claim 15 is in error.", + "Appellants argue that neither Owen nor Michener discloses that \"the data type identifier identifies a manufacturer.\"", + "Appellants argue that Michener teaches routing and processing data within the node rather than forwarding the data to another node.", + "Additionally, Appellants argue that Owen does not make up for any of Michener's deficiencies.", + "Appellants argue that \"the data [in Michener] is not being sent over the claimed communication link.\"", + "Appellants argue that neither Owen nor Michener discloses that the data and data type come from nonvolatile storage.", + "Appellants argue that neither of the references discloses this limitation." + ], + "examiner_findings": [ + "REJECTION AT ISSUE Claims 1-3, 5-10, 13-15, 17, 18, and 21-24 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over Owen in view of Michener.", + "The Examiner finds Owen discloses that when a packet is received at a node, if the packet does not contain the appropriate destination address, the packet is then forwarded on to the next node connected in the daisy chain.", + "However, the Examiner has provided a secondary reference, Michener, to further support the Examiner's rejection.", + "The Examiner finds that Michener indicates what type of data is contained in the packet." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We affirm-in-part the Examiner' s rejections of these claims.", + "Thus, with respect to claims 1-3, 5-6, 8-10, 13-14, 17-18, and 21-24, Appellants' contention presents us with the issue: Did the Examiner err in finding that Owen in view of Michener disclose forwarding data over the communication link to another one of the nodes on the communication link if the data type does not match a type processed by circuitry associated with the receiving node?", + "Thus, with respect to claim 7, Appellants' contention presents us with the issue: Did the Examiner err in finding that Owen in view of Michener discloses receiving data from an external source where that source is nonvolatile storage associated with a computer system?", + "Thus, with respect to claim 15, Appellants' contention presents us with the issue: Did the Examiner err in finding that Owen in view of Michener discloses that the data type identifier identifies a manufacturer?", + "ANALYSIS Claims 1, 3, 5-6, 8-10, 17-18, and 24 Appellants' arguments have not persuaded us of error in the Examiner\" s rejection of claims 1, 3, 5-6, 8-10, 17-18, and 24.", + "We select claim 1 as representative of the group comprising claims 1, 3, 5-6, 8-10, 17- 18, and 24 since Appellants do not separately argue these claims with particularity.", + "We disagree.", + "Appellants do not provide a specific definition for the term \"data type.\"", + "As a result, *data type\" could broadly be interpreted to be the destination address disclosed in Owen.", + "Thus, the Examiner finds and we agree that it is the combination of Owen's daisy chain system with Michener' s packet type identification that discloses forwarding the data from one node to another if the data type does not match that which the original receiving node can handle.", + "Consequently, we sustain the Examiner's s rejection of claim 1 and claims 3, 5-6, 8-10, 17-18, and 24 that have been grouped with claim 1.", + "Claim 2 Appellants' additional argument that neither Owen nor Michener discloses claim 2 is also not persuasive for the reasons stated above with regard to claim 1 and for the additional reason discussed below.", + "However, as noted above, Michener is used to disclose that packet \"data type\" is known in the art.", + "Owen is used to disclose that an incorrectly received packet is transmitted from one node to another node in the daisy chain through the communication link.", + "Thus, we sustain the Examiner' s rejection of claim 2.", + "Claim 7 Appellants' additional argument that neither Owen nor Michener discloses claim 7 is also not persuasive for the reasons stated above with regard to claim 1 and for the additional reason discussed below.", + "However, as noted above, while a destination address can be interpreted as a \"data type, the Examiner further provides Michener to disclose that identifying a packet as containing audio, video, or null data, i.e., a data type, is known in the art.", + "Thus, it is the combination of Owen with Michener that discloses that data and data type come from nonvolatile storage.", + "As a result, we sustain the Examiner' s rejection of claim 7.", + "Claims 13-14 and 22-23 Appellants' arguments have not persuaded us of error in the Examiner's s rejection of claims 13-14 and 22-23.", + "Appellants' arguments regarding these claims are not persuasive for the reasons discussed supra with respect to claim 1.", + "Therefore, we sustain the Examiner' is rejection of claims 13-14 and 22-23.", + "Claim 15 Appellants' arguments have persuaded us of error in the Examiner's rejection of claim 15.", + "The Examiner has not sufficiently disclosed nor do we find where this limitation is disclosed in the references.", + "As such, we will not sustain the Examiner's rejection of claim 15.", + "For the following reasons, I concur with the result reached by the Majority.", + "A. Claims 1, 3, 5, 6, 8, 9, 10, 17, 18, and 24 I disagree with the Majority's s position that the recited \"data type\" reads on the destination address in Owen's packets.", + "Instead, I would read the recited \"data type\" on the direction (i.e., upstream or downstream) of Owen's packets, a position that finds support in Appellants' claim 24 (\"The method as recited in claim 1 further comprising forwarding or processing the data according to whether the data is going upstream or downstream over the communication link. \").", + "Claim 1 thus reads on blocks 84-92 in Owen's Figure 10 flowchart as follows.", + "The recited step of \"forwarding the data over the communication link to another one of the nodes on the communication link if the data type does not match a type processed by circuitry associated with the receiving node\" reads on blocks 84 and 92, wherein the node forwards received packets that are not downstream packets to the next node.", + "The recited step of \"processing the data if the data type matches the type processed by circuitry associated with the receiving node\" reads on the processing steps represented by one or more of blocks 86, 88, 90, and 92.", + "For these reasons, I would sustain the & 103(a) rejection of claim 1 and the other claims Appellants have grouped therewith (viz., claims 3, 5, 6, 8, 9, 10, 17, 18, and 24).", + "Michener is therefore cumulative.", + "B. Claim 2 I would also sustain the rejection of claim 2 (\"The method as recited in claim 1 further comprising transmitting forwarding the processed data processed by the receiving node over the communication link. \"), which reads on Owen's Figure 10.", + "C. Claim 7 I would likewise sustain the rejection of claim 7, which depends on claim 1 through claim 5 and recites that \"the data received from the external source includes the identification of the data type.\"", + "This claim reads on the bridge bit in a received packet: The node logic 44 may determine the direction (upstream or downstream) in which the response packet is flowing by examining the state of the bridge bit in bit time 1.", + "D. Claims 22, 23, 13, and 14 I would sustain the rejection of independent claim 22 and its dependent claims 13, 14, and 23, which Appellants have grouped therewith, for the same reasons that I would sustain the rejection of claim 1.", + "E. Claim 15 For the reasons given by the Majority, I would not sustain the rejection of claim 15, which depends on independent claim 22 and recites that \"the data type identifier identifies a manufacturer.", + "F. Claim 21 I would sustain the rejection of independent claim 21 for the same reasons that I would sustain the rejection of claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2009007896_DECISION.json b/opinion_split/2009007896_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..52c1a44ec45ecc8c64bb7bc1abe93b323a6c5cf5 --- /dev/null +++ b/opinion_split/2009007896_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "Appellant argues that the claims 1, 7, 13, and 22 specify that access to a wireless network channel by multiple network nodes is controlled by a particular node, which may then delegate that control to another node. Appeal Brief 7.", + "\"It is not merely the ability to access the wireless channel that is being delegated, [sic] it is the ability to control such access by other nodes that is being delegated. \" Appeal Brief 5-6.", + "As Appellant points out, Fogle's Figures 5-7 only pertain to a device gaining access to the channel for its own use and only during a contention- based access period. Appeal Brief 9." + ], + "examiner_findings": [ + "Claims 1, 5-7, and 11-26 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Odman (U.S. Patent Publication Application 2003/0152059 A1) and Fogle (U.S. Patent Number 6,813,260 B1).", + "Claims 2-4 and 8-10 stand rejected under 35 U.S.C. 5 103(a) over Odman, Fogle and Benveniste (U.S. Patent Publication Application 2004/0095911A1).", + "The Examiner relies upon Odman wherein Odman discloses a method of controlling, from a particular node within pluralities of nodes, and assigning the channel from a particular node to a first node in the pluralities of nodes in a wireless network. Answer 4.", + "The Examiner asserts that the non-coordinator device 320 recognizes a beacon 510 prior to joining the network 300 and uses the beacon 510 to identify the existing network 300 and to coordinate communication with the network 300. Answer 10-11; Odman, Figures 3, 5, and [0010-0013].", + "The Examiner finds Odman teaches individual non-coordinator devices 320 could include the functional elements of a coordinator 310, but not use them, in a sense, functioning as non-coordinator devices. Answer 11.", + "The Examiner concludes this shows that Odman clearly indicates each device in the network acts as a coordinator and takes control of access to the channel by others. Id.", + "The Examiner concedes that Odman does not disclose delegating control from one node to another but that such delegation of control is obvious if not inherent to Odman's system. Answer 12.", + "The Examiner relies upon Fogle to disclose delegating control from one node to another node. Answer 5 and 12.", + "The Examiner finds that Fogle discloses systems and methods for providing prioritized access to a shared communication medium that utilizes a contention based access arbitration mechanism and a contention-free arbitration mechanism, including temporarily delegating the controlling from the particular node to a first node in the plurality of nodes. See Answer 5; see also Fogle's Figures 5-7 and column 7, lines 29-61." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b) (2002).", + "We reverse.", + "However, the Examiner does not address Appellant's argument about Fogle's delegation to accessing the channel for its own use and only during a contention-based period.", + "Further, as Appellant pointed out, column 7, lines 29-61 of Fogle pertains to Figure 4 and not Figures 5-7, and the indicated column describes the scenario where various devices try to compete for access to the channel, but there is no indication in column 7 of Fogle delegating control from one node to another. See Appeal Brief 9.", + "Neither Odman nor Fogle, individually or in combination, discloses or teaches delegating the access control of a node as claimed.", + "Benveniste does not address the deficiencies of either Odman or Fogle.", + "Therefore we will not sustain the Examiner's rejections of independent claims 1, 7, 13, and 22, or of dependent claims 2-6, 8-12, 14-21, and 23-26 for the same reasons stated above." + ] +} \ No newline at end of file diff --git a/opinion_split/2009008316_DECISION.json b/opinion_split/2009008316_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ff19579573cf18c602bf0348685d8f908e22cdc7 --- /dev/null +++ b/opinion_split/2009008316_DECISION.json @@ -0,0 +1,26 @@ +{ + "appellant_arguments": [ + "Appellants assert that modifying Janonis to monitor the: \"DC bus instead of the AC power source would render it [Janonis's device] incapable of detecting any power irregularities other than a change in voltage, thereby destroying a key element of its functionality. Brief 5.", + "Appellants' arguments focus on Janonis's teaching of monitoring AC frequency which Appellants assert would be lost in such a combination. Brief 5, Reply Brief 2." + ], + "examiner_findings": [ + "REJECTIONS AT ISSUE The Examiner has rejected claims 1 through 5, 8 through 14, 17 through 23, and 25 under 35 U.S.C. 5 103(a) as being unpatentable over Janonis in view of Tassitino and Weinstein. Answer 3 through 10.2", + "The Examiner has rejected claims 6, 7, 15, 16, and 24 under 35 U.S.C. \u25cf 103(a) as being unpatentable over Janonis in view of Tassitino, Weinstein and Faria. Answer 10 through 13.", + "The Examiner identifies that Janonis teaches that the monitored voltage can be used to activate the backup power supply without a detected change in the AC frequency.", + "In other words, the Examiner finds that the voltage and frequency are parameters, each of which may activate the backup power. Answer 5, 14.", + "Thus, the Examiner finds that using DC voltage instead of AC voltage is merely another method of measuring the voltage that allows for the detection of a fault in the AC/DC converter. Answer 5." + ], + "ptab_opinion": [ + "We affirm.", + "ISSUE Appellants' contentions on pages 4 and 5 of the Appeal Brief' present us with the issue: did the Examiner err in finding that the skilled artisan would modify Janonis to monitor DC bus voltage instead of AC voltage?", + "ANALYSIS We have reviewed the Examiners' rejections in light of Appellants' arguments that the Examiner has erred.", + "We disagree with Appellants' conclusion.", + "We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief.", + "We concur with the conclusion reached by the Examiner.", + "We additionally note that the Examiner' s rejection does not propose modifying Janonis's device to remove the frequency monitoring component. Answer 5.", + "Further, claim 1 does not recite a limitation that precludes the monitoring of the AC frequency.", + "Such a combination of the references does not preclude also monitoring AC frequency.", + "Thus, Appellants' arguments are not commensurate with the rejection, and we do not agree with Appellants' conclusion that the combination would destroy the functionality of Janonis's device.", + "As this issue is the sole issue argued with respect to the rejections based upon 35 U.S.C. & 103(a), we sustain the rejections of claims 1 through 25." + ] +} \ No newline at end of file diff --git a/opinion_split/2009008970_DECISION.json b/opinion_split/2009008970_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4e51b5d62c29d80c23bba00662e4da38a179bc7e --- /dev/null +++ b/opinion_split/2009008970_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Appellants contend that Eick fails to disclose each and every aspect as recited in the claims (App. Br. 5).", + "Specifically, with respect to claim 1, Appellants argue that Eick fails to disclose a device for displaying search results comprising, inter alia, a \"processor being configured to accept search results; a user interface being adapted to apply control signals responsive to user input indicating a first feature of each of said search results; said processor being configured to generate display data including multiple symbols corresponding to respective ones of said search results such that ones of said search results having a same value of said first feature are aggregated such that said ones are displayed as a single symbol\" (App. Br. 7).", + "Appellants assert that Eick merely discloses displaying subgroups of a group when the group is selected by a user (App. Br. 7).", + "In particular, Appellants argue that, given the example in Eick, the user's s selection of the letter \"N\" is a filter used when performing a search, and is clearly not an aggregation of search results (App. Br. 8).", + "For the same reason, Appellants argue further that Eick fails to disclose a device for displaying search results comprising, inter alia, a *user input indicating a first feature of each of said search results and ones of said search results having a same value of said first feature are aggregated such that said ones are displayed as a single symbol,\" as recited in claim 1 (App. Br. 8).", + "Turning to claim 2, regarding the claim limitations of displaying search results of first and second features on respective first and second axes, Appellants contend that Figure 22 of Eick illustrates filters arranged along a vertical axis, but there are no instances (or subgroups) of the filters displayed along a second axis as required by this claim (App. Br. 10).", + "Although the Appellants agree that Figure 23 of Eick includes first and second axes respectively displaying the time and day, Appellants assert further that \"it is clear that symbols and instances of the symbol having a second feature and the same value of the first feature are not displayed along first and second axes, respectively\" (App. Br. 10).", + "Finally, with respect to claim 7, Appellants contend that Eick does not disclose aggregating search results about two chosen features (App. Br. 11)." + ], + "examiner_findings": [ + "Claims 1-19 stand rejected under 35 U.S.C. 5 102(b) as being anticipated by Eick.", + "Claims 15-18 stand rejected under 35 U.S.C. 5 101 as being directed to non-statutory subject matter." + ], + "ptab_opinion": [ + "We affirm.", + "Appellants' contentions present us with the following three issues:", + "1. Does Eick disclose inter alia \"a processor being configured to accept search results; a user interface being adapted to apply control signals responsive to user input indicating a first feature of each of said search results; said processor being configured to generate display data including multiple symbols corresponding to respective ones of said search results such that ones of said search results having a same value of said first feature are aggregated such that said ones are displayed as a single symbol.\" as recited in claim 12", + "2. Does Eick disclose inter alia \"said display data including symbols corresponding to multiple instances of a subset of said search results having a second feature and the same value of said first feature, each of said subset of said search results being selectively displayable by said user interface developed along a second axis of said display area,\" as recited in claim 2?", + "3. Does Eick disclose inter alia \"said ones may be selectively aggregated about chosen second features,\" as recited in claim 72", + "The following Findings of Fact (FF) are shown by a preponderance of the evidence.", + "We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).", + "We select claim 1 as representative of this group, pursuant to our authority under 37 C.F.R. 5 41.37(c)(1)(vii).", + "We agree with the Examiner's s finding that Eick clearly meets the claim limitations, as search results corresponding to a same value of a first feature (beginning with the same first letter) are aggregated such that symbols representing the results are displayed and expandable upon selection by the user (wherein multiple first letters are displayed, and the aggregation of programs beginning with a particular letter are displayed upon user selection) (Ans. 10).", + "Specifically, Eick discloses that when the search button 512 shown in Figure 5 is actuated by a user, screen 1600 shown in Fig. 16 is displayed which shows an aggregation of search results, where all titles are sorted by character into groups of five or less (FF 1).", + "As shown in Figure 16 below, the double right pointing arrows symbol \">>\" indicates that multiple instances of the displayed string or group exists (FF 2).", + "We agree with the Examiner that when the user actuates the search button 512, a broad search of all programs based upon alpha-numeric title search is initiated (Ans. 10; FF 1).", + "We find that even though the search result would be to all programs, it remains a search result.", + "The central processing unit 34 of the set top box (STB) 12 of the reference generates a broad search of all programs and displays the results on television 10 (FF 3).", + "The user selection of a particular symbol, for example, \">>\" associated with a group or string will expand the aggregated search result (FF 4).", + "In particular, if the user desired to expand the search results to see the programs titled \"Nova,' the user would select the group that includes \"N\" and then \"No\" until the results for the program \"Nova\" were displayed (FF 5).", + "Therefore, we find that Eick discloses all of the limitations of claim 1.", + "As a result, we will sustain the Examiner' is \u25cf 102 rejection of representative claim 1, that of independent claims 10 and 15, and dependent claims 5, 6, 8, 9, 14, and 16-19, which are not argued separately.", + "We select claim 2 as representative of this group, pursuant to our authority under 37 C.F.R. 5 41.37(c)(1)(vii).", + "As noted supra, we have affirmed the rejection of parent claims 1 and 10.", + "As reproduced below, Eick discloses display data including symbols corresponding to multiple instances of a subset of the program \"Nova\" having a first feature of time along a first (horizontal) axis and a second feature of day along second (vertical) axis.", + "If there are multiple occurrences of the program on a particular time and day, the display data is denoted with an asterisk (*) (FF 6).", + "The user may select this logical stack of multiple programs by actuating button 64 of the remote (FF 6).", + "Therefore, we find that Eick discloses all of the limitations of claim 2.", + "As a result, we will sustain the Examiner's \u25cf 102 rejection of representative claim 2 and that of claims 3, 4, and 11-13, which are not argued separately.", + "As noted supra, we have affirmed the rejection of parent claims 1 and 5.", + "As discussed supra with reference to claim 2, Figure 23 of Eick clearly discloses the items of the search results are selectively aggregated about a second chosen feature of day or time.", + "Therefore, we find that Eick discloses inter alia \"said ones may be selectively aggregated about chosen second features.", + "As a result, we will sustain the Examiner's \u25cf 102 rejection of claim 7.", + "We therefore sustain pro forma the rejection of claims 15-18 as being directed to non- statutory subject matter." + ] +} \ No newline at end of file diff --git a/opinion_split/2009009928_DECISION.json b/opinion_split/2009009928_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f0648ce17fd0cca9f0efc6979e0cd018ca897c99 --- /dev/null +++ b/opinion_split/2009009928_DECISION.json @@ -0,0 +1,26 @@ +{ + "appellant_arguments": [ + "With respect to independent claims 1, 7, and 12, the Appellants contend that Vickery fails to disclose the feature of transforming an entry to a hidden value (App. Br. 7 and 9).", + "According to the Appellants, the logic operator \"and\" is a mathematical function, not a value (Id. 7), and the \"Examiner has mapped \"hidden value' not to a *value that is hidden', but to an *operator that is hidden' ~ (Reply Br. 4)." + ], + "examiner_findings": [ + "Claims 7, 10, and 12 stand rejected under 35 U.S.C. S 103(a) as being unpatentable over the combination of Google, Toolbar, and Vickery.", + "Claims 1-3, and 5 stand rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over the combination of Google, Toolbar, yCode, and Vickery.", + "The Examiner states that Vickery teaches the argued limitation in Fig. 3 (Ans. 4, 6 and 9).", + "The Examiner also states that the \"and\" operator could be read as a hidden value because \"the Examiner holds the position that value as in computer science, is a sequence of bits that is interpreted according to same data type . . . [f]or instance, the value could be an integer or floating point value, or a string.\"", + "Id., at 8-9." + ], + "ptab_opinion": [ + "Therefore, we look to the Appellants' Brief to show error in the proffered reasoned conclusion.", + "The recited limitations, even though different in wording, have the same scope.", + "We disagree with the Examiner's s statements.", + "We find that the paragraph of the Vickery reference relied upon by the Examiner only discusses recording an entry by a user to a history list displayed later to the user (FF 1).", + "We do not find and the Examiner does not indicate where there is any teaching in Vickery for transforming an entry, let alone transforming an entry into a \"hidden value.\"", + "\" One ordinary skill in the computer arts would not recognize that a logical operator is a value as the Examiner argued.", + "Even if assuming the logical operator \"and\" is a kind of value, the logical operator is clearly not an entry by a user, or transforming this entry to a hidden value, especially in view of the specification.", + "Because we agree with at least one of the Appellants' contentions, we find that the Examiner has not made a requisite showing of obviousness as required to teach or fairly suggest the invention as recited in claims 1, 7, and 12 by the combination of Google, Toolbar, yCode, and Vickery.", + "The rejection of the dependent claims 2, 3, 5, and 10 contains the same deficiency.", + "The Appellants, thus, have demonstrated error in the Examiner' s reasoned conclusion for obviousness of the subject matter of claims 1-3, 5, 7, 10, and 12.", + "We, therefore, cannot sustain the rejection of claims 1-3, 5, 7, 10, and 12 under 35 U.S.C. & 103." + ] +} \ No newline at end of file diff --git a/opinion_split/2009011279_DECISION.json b/opinion_split/2009011279_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..59651239e73b0a879bb0de16ceead95c295b6cf4 --- /dev/null +++ b/opinion_split/2009011279_DECISION.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "Appellants argue Farkas does not disclose *electronically presenting to a customer a benchmarking provider list,\" as recited in claim 5, regardless of Farkas's disclosure that a *user links . \u00b7 \u00b7 from some other Web site to the main page for the welcome center\" (App. Br. 12-13, Farkas I [0057]).", + "Appellants also argue the Examiner fails to provide a rationale or extrinsic evidence demonstrating the claimed **electronically presenting\" step is inherent in Farkas's disclosure (App. Br. 13-14),", + "Further, Appellants argue Roche does not disclose the claim 5 recitation *one or more measure definitions grouped by each benchmark data provider.\"", + "Although Appellants contend the Examiner has not established how one of ordinary skill in the art would modify the prior art to achieve the claimed invention, Appellants provide no explanation why the Examiner's stated motivation is insufficient (App. Br. 14)." + ], + "examiner_findings": [ + "The Examiner rejected claims 5, 7-10, 12-15, and 17-19 under 35 U.S.C. $ 103(a) based upon the teachings of Farkas (US 2003/0208388 A1) and Roche (US 2004/0186755 A1).", + "The Examiner finds Farkas discloses a user **clicks a link in a web site that points the browser to the main page of the welcome center\" and, similarly, the \" user links from one of the links in step 11 from some other web site to the main page for the welcome center\" (Ans. 7, Farkas 11 [0056], [0057]).", + "The links from the other Web site correspond to the limitation of a benchmarking provider list including a link to the welcome center of Farkas's benchmarking system (Ans. 7).", + "As the Examiner points out, Farkas's *at least one link\" to the welcome center meets the limitation of a *benchmarking provider list\" and it is inherent that Farkas's *other web site\" electronically presents at least one link to the user because a link has necessarily been presented to the user once the user clicks the link to reach the welcome center (Ans. 7-8).", + "The Examiner finds Roche discloses presenting \"a ranked list of providers,' wherein the ranked list includes \"\"[]he kind of coverage and premium to be paid\" with respect to each provider (Ans, 8; Roche I [0061]).", + "The Examiner finds the \"kind of coverage and premium to be paid\" are *measure definitions\" (Ans. 8).", + "Thus, the Examiner finds the combination of Farkas and Roche discloses a provider list that includes \"one or more measure definitions grouped by each benchmark data provider.\"", + "That is, one skilled in the art would be motivated to modify Farkas to include measure definitions in a provider list in the manner disclosed in Roche, enabling a customer to compare multiple service providers based on the measure definitions and choose the provider that meets his or her needs. (Ans. 8- 9; Roche I [0061])" + ], + "ptab_opinion": [ + "We disagree.", + "Appellants have not explained why the Examiner is incorrect in finding the links from the other Web site are a **benchmarking provider list\" (App. Br. 12-13; Reply Br. 3-4) (emphasis added.).", + "Additionally, it is noted claim 5 only requires the list include *information on one or more benchmark data providers. \"", + "Appellants have not provided arguments as to how the Examiner's specific inherency rationale is incorrect (App. Br. 13-14; Reply Br. 3).", + "Therefore, as found by the Examiner, Farkas discloses the claimed limitation of *electronically presenting to a customer a benchmarking provider list.\"", + "Appellants do not provide reasoning as to why Roche's coverage and premium information associated with the ranked list does not meet the claim term \" one or more measure definitions*** (App. Br. 14; Reply Br. 4).", + "Therefore, we agree with the Examiner that claims 5 and 7-9, which depend from claim 5, are obvious over Farkas and Roche.", + "Appellants provide no additional arguments for claims 10 and 15 (App. Br. 15; Reply Br. 4-5).", + "Thus, claims 10 and 15, and claims 12-14 and 17-19, which depend therefrom and are not separately argued, are also obvious over Farkas and Roche for the reasons discussed above." + ] +} \ No newline at end of file diff --git a/opinion_split/2009011781_DECISION.json b/opinion_split/2009011781_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..734187d0a0ca0daa71736c7fbaf219b30e1aff53 --- /dev/null +++ b/opinion_split/2009011781_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Appellants' arguments, with respect to the obviousness rejection of independent claims 1, 6, and 8, focus on the contention that the Examiner has not established a proper basis for the proposed combination of Keronen and Weston.", + "According to Appellants, the Examiner has not explained how the contact-less RFID tag teachings of Weston would be applied to Keronen since, by necessity, the smart card 10 of Keronen is required to be inserted into controller I where the controller contacts 7 mate with the smart card contacts 18 (App. Br. 7-14; Reply Br. 4-8).", + "In other words, as argued by Appellants, Keronen's smart card 10 and controller 1 are required to be in precise physical contact in order for the touch sensitive membrane 8 to accurately detect the user actuation of the buttons 22 and 24 and the directional controller 20 on the face of the smart card 10." + ], + "examiner_findings": [ + "Claims 1-9, 11, 12, 14, 17, 18, and 23-27 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Keronen in view of Weston.", + "Claim 10 stands rejected under 35 U.S.C. S 103(a) as being unpatentable over Keronen in view of Weston and Djuknic.", + "Claim 13 stands rejected under 35 U.S.C. 8 103(a) as being unpatentable over Keronen in view of Weston and Decombe.", + "Claim 13 stands further rejected under 35 U.S.C. a 103(a) as being unpatentable over Keronen in view of Weston and Hayhurst.", + "Claim 15 stands rejected under 35 U.S.C. 8 103(a) as being unpatentable over Keronen in view of Weston and Lynch.", + "Claim 16 stands rejected under 35 U.S.C. , 103(a) as being unpatentable over Keronen in view of Weston and Bloomberg.", + "We understand the Examiner's position to be that an ordinarily skilled artisan would have found it obvious to modify Keronen to provide for contact-less communication between the smart card 10 and the card reader controller 1 to allow freedom of movement of the smart card user as well as permitting the smart card to be used with differently physically configured card readers (Ans. 15-16)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. s 6(b).", + "We reverse.", + "Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed Oct. 29, 2008), the Answer (mailed Dec. 31, 2008), and the Reply Brief (filed Mar. 2, 2009) for the respective details.", + "We have considered in this decision only those arguments Appellants actually raised in the Briefs.", + "Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived.", + "We agree with Appellants.", + "Initially, we note that our interpretation of the disclosure of Keronen coincides with that of Appellants, i.e., controller 1 has a touch sensitive surface 8 which detects user input interaction with the smart card 10 when the smart card is inserted into the controller so that corresponding contacts 7/18 on the controller and smart card are in a mating relationship (Figs. 1 and 2; col. 4, 1. 39-col. 5, 1. 27).", + "Given this disclosure of Keronen, we find that the Examiner has not satisfactorily explained how and in what manner Keronen would be modified by the contact-less RFID tag teachings of Weston to arrive at the claimed invention.", + "We agree with Appellants, however, that modifying Keronen in such a manner would fundamentally alter the principle of operation of Keronen which relies upon precise physical contact between smart card 10 and controller 1 to accurately detect user input (App. Br. 7-14; Reply Br. 4-8).", + "Further, although the Examiner asserts (Ans. 16) that Keronen suggests that other user input detection arrangements besides a touch sensitive membrane can be used, we agree with Appellants (Reply Br. 7-8) that Keronen has no disclosure of placing any such user input detection arrangements anywhere but on the controller.", + "As previously discussed, since Keronen requires that the smart card 10 and controller 1 be in precise physical contact, to allow Keronen's smart card 10 to freely move inside or outside the controller 1 in a contact-free relationship as suggested by the Examiner would fundamentally alter the primary purpose and operation of Keronen.", + "In our view, given the disparity of problems addressed by the applied prior art references, and the differing solutions proposed by them, any attempt to combine them in the manner proposed by the Examiner could only come from Appellants' own disclosure using hindsight reconstruction.", + "In view of the above discussion, since we are of the opinion that the proposed combination of references set forth by the Examiner does not support the obviousness rejection, we do not sustain the rejection of independent claims 1, 6, and 8, nor the rejection of claims 2-5, 7, 9, 11, 12, 14, 17, 18, and 23-27 dependent thereon.", + "We also do not sustain the obviousness rejections of claims 10, 13, 15, and 16 in which the Examiner has applied various additional references to the combination of Keronen and Weston.", + "We find nothing in these additional references, taken individually or collectively, which overcomes the innate deficiencies of the combination of Keronen and Weston as discussed supra.", + "Based on the analysis above, we conclude that the Examiner erred in rejecting claims 1-18 and 23-27 for obviousness under 35 U.S.C. 8 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2009012302_DECISION.json b/opinion_split/2009012302_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f56a0186cfad047c7eee640314a3bdec18a5af66 --- /dev/null +++ b/opinion_split/2009012302_DECISION.json @@ -0,0 +1,62 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "Claims 11-20 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over McLaughlin *589 and McLaughlin *089. Ans. 5.", + "McLaughlin '589 discloses the basic claimed structure but lacks folded gloves.", + "McLaughlin *589 Figures 1-3; Ans. 3-5.", + "McLaughlin '089 demonstrates that it was known in the art that folding gloves in the manner claimed would conserve space and allow for a compact design.", + "Col. 3, 11. 29- 32; Ans. 5-6.", + "Thus, the claimed subject matter amounts to applying the technique of McLaughlin '089 to the device of McLaughlin *589 in order to yield the predictable result of conserving space and allowing for a compact design.", + "As the Examiner points out, only the third glove must be folded in this format.", + "Ans. 6." + ], + "ptab_opinion": [ + "We affirm.", + "We therefore agree with the Examiner that the subject matter described by claims 11 and 17 would have been obvious to one having ordinary skill in the art.", + "Appellants' argument concerning the claimed *attachment device\" (Br. 12-14) is unpersuasive for several reasons.", + "First, claim 11 does not require an actual attachment device.", + "Rather, the claim requires a **housing \"configured for cooperating with\" an attachment device.", + "We do not interpret this limitation to require any specific structure not present in McLaughlin *589.", + "The same structures enabling McLaughlin '589's enclosure 20 to receive rivets 36 and chain 38 could be used to *cooperate with\" an attachment device.", + "Second, we agree that it was reasonable for the Examiner to include chain 38 as exemplary of the claimed *attachment device.\"", + "It was reasonable for the Examiner to conclude that chain 38 could function to allow the enclosure to be worn on a person.", + "Where a functional recitation is relied upon for patentability of an apparatus the relevant question is whether a prior art device is capable of performing the recited function, not how well it would perform that function.", + "Contra Br. 13.", + "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.", + "See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations omitted).", + "Appellants have not provided sufficient evidence or arguments to establish that the Examiner's finding that chain 38 could serve as the claimed \"attachment device\" is in error.", + "See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (\"[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. \").", + "Third, McLaughlin '589 expressly suggests \"enclosure 20 may be provided with any appropriate hardware of conventional design so as to permit it to be hung on a wall or the like. \"", + "Col. 4, II. 42-44.", + "We see no distinction between a housing configured for cooperating with an attachment device for hanging it on a wall or on a person.", + "See, e.g., Spec. 10, para. [0045] (attachment device allows for cooperation with \"a clip, a hook, [or] a loop\" --all of which may be wall-mounted).", + "Appellants' argument that the Examiner's s proposed combination would not function properly because the presence of leaf spring 40 in McLaughlin '589 would prevent the use of folded gloves (Br. 14) is also unpersuasive.", + "First, Appellants have not provided sufficient evidence or technical reasoning to support this position.", + "Second, combining the teachings of references does not mandate combination of their specific structures.", + "In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).", + "McLaughlin *589 offers sufficient guidance to enable one of ordinary skill in the art to determine whether or not to incorporate leaf spring 40 in order to facilitate removal of the last few remaining gloves.", + "Col. 4, 11. 52-64.", + "Appellants' argument that McLaughlin *089 teaches away from the claimed invention (App. Br. 14-15) is premised upon the notion that the language of claims 11 and 17 excludes the folding technique demonstrated by McLaughlin *089, as opposed to criticizing or discrediting the claimed folding arrangement.", + "See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "Appellants* underlying contention that it was unreasonable for the Examiner to read the gloves of McLaughlin '089 as: a first glove, a second glove, and a third glove folded in a lapped, superjacent-opposing fold format . \u00b7 \u00b7 wherein the first glove is folded along a first axis to decrease its width and along a second axis decrease its length such that the cuff portion of the first glove is folded over the finger portion of the second glove; and 0 wherein the second glove is folded to decrease its width and folded a second time to decrease its length such that the cuff portion of the second glove is folded over the finger portion of the third glove is also unpersuasive.", + "During examination of a patent application pending claims are given their broadest reasonable construction consistent with the specification.", + "In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).", + "We agree with the Examiner that clauses 1 and 2 of claims 11 and 17 do not require the overlapping of individual gloves.", + "Ans. 6; contra Br. 11.", + "A cuff portion of one glove is reasonably read as **folded over\" a finger portion of another non-adjacent glove when a stack of gloves is folded in half to decrease their length as is done by McLaughlin *089.", + "We are mindful of the fact that McLaughlin '089 is not entirely clear regarding the position of the glove thumbs.", + "It would appear from the figures that all thumbs in the stack are folded toward front wall 28 and all cuffs are folded toward rear wall 22.", + "Figs. 1-3.", + "This is somewhat different from the Examiner's understanding of McLaughlin '089's folding pattern (Ans. 6-9), but the difference is not sufficient to change our determination that the Examiner properly concluded that McLaughlin *089 teaches the claimed folding arrangement.", + "Appellants' Specification provides examples of what is considered a *lapped, superjacent-opposing fold format\" but does not expressly define that term.", + "We interpret that term in a manner consistent with the Specification to include at least a glove folded over such that opposing sides of the glove overlie something, to lap or surround it.", + "See, e.g., Spec. 4, paras. [0013]-[0014].", + "However, the claims do not require any specific portion of one glove to lap or surround any specific portion of any other glove.", + "Each of McLaughlin '089's outer gloves are folded over such that opposing sides of the glove overlie another glove to lap or surround it.", + "Thus, it was reasonable for the Examiner to conclude at least the outer one of McLaughlin '089's gloves is **folded in lapped, superjacent-opposing fold format.\"", + "While the folding pattern depicted in Appellants' preferred embodiment (see Spec. 4; figs. 2A-H) may differ from that of McLaughlin *089, Appellants have chosen to employ language in the claims broader than that used to describe the preferred embodiment.", + "It would be improper to read language from the preferred embodiment into the claims.", + "See SuperGuide Corp. V. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted) (\"Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.", + "For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. \")" + ] +} \ No newline at end of file diff --git a/opinion_split/2009013224_DECISION.json b/opinion_split/2009013224_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..63d0a07bee27deec71de95d69f75dd23ca057f90 --- /dev/null +++ b/opinion_split/2009013224_DECISION.json @@ -0,0 +1,28 @@ +{ + "appellant_arguments": [ + "ANALYSIS Issue 1- Claims 1-26 Appellants assert that Vanderpool does not \"disclose a process that includes \u00b7\u00b7\u00b7 fassociating at least a first compression routine with the first user-defined data type' --- +, (App. Br. 8.)", + "Issue 2 \u00b7 Claims 27-37 Appellants assert that *Vanderpool does not disclose a system that includes *a plurality of compression routines to apply respective different compression algorithms,' was . (App. Br. 14.)", + "Appellants argue that **Vanderpool only describes a single compression algorithm and thus clearly fails to disclose a plurality of compression routines to apply respective different compression algorithms.\" (Id.)", + "Appellants also assert that \"Vanderpool does not disclose a system that includes *a controller adapted to invoke one of plurality of compression routines to compress data stored in the table. .. (App. Br. 14.)", + "To support this assertion, Appellants argue only that \"Vanderpool is necessarily precluded from disclosing such a feature because Vanderpool fails to disclose a plurality of compression routines and ~ (Id.)" + ], + "examiner_findings": [ + "The Examiner rejected claims 1-37 as anticipated under 35 U.S.C. \u25cf 102(b) by Vanderpool (US 5,781,773, July 14, 1998). (Ans. 3-14.)", + "The Examiner reasons that Vanderpool discloses compressed image data that *includes at least a first compressed image and a second compressed image of lesser resolution than the first compressed image.\" \" (Ans. 4; see also Ans. 15-16.)" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. .8 6(b).", + "We affirm-in-part.", + "1. Did the Examiner establish that Vanderpool discloses *associating at least a first compression routine with the first user-defined data type,\" as recited in claim 1, and as similarly recited in claim 13?", + "2. Did the Examiner establish that Vanderpool discloses \"a plurality of compression routines to apply respective different compression algorithms,\" and \"a controller adapted to invoke one of plurality of compression routines to compress data stored in the table,\" as recited in claim 272", + "PRINCIPLES OF LA W The Examiner bears an initial burden of factually supporting an articulated rejection.", + "\"It is axiomatic that anticipation of a claim under S 102 can be found only if\" \"the prior art reference discloses every element of the claim.\"", + "But independent claims 1 and 13 require more; they require associating a first compression routine with a first user-defined data type.", + "And the Examiner fails to identify the portions of Vanderpool that disclose this claim limitation. (See Ans. 4, 15-18.)", + "Therefore, we will not sustain the Examiner's rejection of independent claims 1 and 13, and claims 2-12 and 14-26 dependent therefrom.", + "Contrary to Appellants' argument, however, Vanderpool discloses a first compressed image and a second compressed image of lesser resolution than the first image. (Ans. 13, and 18; accord FF 1 and 2.)", + "Accordingly, Vanderpool discloses at least two compression algorithms including one to produce the first compressed image and another to produce the second compressed image of lesser resolution. (See Ans. 18; FF 1 and 2.)", + "This argument is not persuasive because as explained supra, Vanderpool does, in fact, disclose at least two compression routines.", + "For these reasons, we sustain the Examiner's rejection of independent claim 27, as well as the rejections of the claims dependent therefrom (i.e., claims 28-37) because Appellants did not set forth any separate patentability arguments for these dependent claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2009013518_DECISION.json b/opinion_split/2009013518_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..bb8a6c6d4920db0c702a2bc2b9d8f7b75d93b477 --- /dev/null +++ b/opinion_split/2009013518_DECISION.json @@ -0,0 +1,24 @@ +{ + "appellant_arguments": [ + "1. A method of operating a kiosk to perform financial services, the method comprising: receiving personal data of a user into the kiosk; verifying an identity of the user based on the personal data; in response to a valid verification of the identity of the user, dispensing a stored-value card from a kiosk wherein the stored-value card is associated with a bank card association and the stored-value card is not associated with a bank account; determining a stored-value account related to the stored- value card for the user of the kiosk; receiving user instructions for a banking transaction using the stored-value account; and processing the user instructions to perform the banking transaction using the stored-value account." + ], + "examiner_findings": [ + "Claims 1-3, 5, 7-11, 13-18, 20-24, 26-28, 30, 32-36, and 38-43 stand rejected under 35 U.S.C. . 103(a) as unpatentable over Phelan (US Pub. 2003/0200180 A1, pub. Oct. 23, 2003) in view of Maskatiya (US Pat. 6,758,394 B2, iss. Jul. 6, 2004) and Risafi (US Pat. 6,999,569 B2, iss. Feb. 14, 2006); and claims 12, 25, and 37 stand rejected under 35 U.S.C. 6 103(a) as unpatentable over Phelan in view of Maskatiya, Risafi, and Bator (US Pat. 6,575,362 B1, iss. Jun. 10, 2003)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1-3, 5, 7-18, 20-28, 30, and 32-43.", + "We have jurisdiction to review the case under 35 U.S.C. 56 134 and 6 (2002).", + "The claimed invention is directed to systems and methods for implementing banking transactions using a stored-value card (Spec., para. [00021).", + "Claim 1, reproduced below, is further illustrative of the claimed subject matter.", + "ISSUE Did the Examiner err in asserting that a combination of Phelan, Maskatiya, Risafi, and Bator renders obvious the subject matter of claims 1- 3, 5, 7-18, 20-28, 30, and 32-43?", + "FINDINGS OF FACT We adopt the Examiner* s findings of fact, as set forth on pages 3-16 of the Examiner's Answer.", + "ANALYSIS The Appellants' arguments that there is no reason to combine Phelan and Maskatiya in the manner suggested by the Examiner is unconvincing (App. Br. 2-8; Reply Br. 2-7).", + "In response to Appellants' arguments, we incorporate herein the Examiner' s responses as set forth on pages 9-16 of the Examiner's Answer.", + "Specifically, the fact that the money card of Phelan cannot be used as a form of identification in the verification system of Maskatiya (App. Br. 5) does not mean that another form of identification cannot be used to transfer monetary value from another financial instrument to the money card.", + "Furthermore, the fact that the identification verification system may be cumbersome to some users who lack identification does not mean the combination would not be obvious (App. Br. 5-7; Reply Br. 2-7).", + "First of all, there are still other \"underbanked\" or \"self-banked\" individuals with identification who could take advantage of the combined system.", + "Moreover, Appellants appear to be confusing whether a business would find it profitable to combine the systems with whether such a combination would have been obvious.", + "Even if such a combination may not be profitable, if the combination was within the technical capabilities of one of ordinary skill, i.e., if one of ordinary skill would know how to add the identification system of Maskatiya to the ATM-based money-card system of Phelan, for any reason, the combination is obvious.", + "To that end, the Examiner has provided an adequate reason: to prevent fraud." + ] +} \ No newline at end of file diff --git a/opinion_split/2009013998_DECISION.json b/opinion_split/2009013998_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ccb7d9fc82abbeba9c4dfaf1bcba77272f0279f1 --- /dev/null +++ b/opinion_split/2009013998_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Appellant contends that Turner does not teach a first contact pillar extending substantially to a bottom surface of the first metal layer within the trench. Br. 11.", + "In particular, Appellant contends that the element 68 of Turner cannot be a first metal layer because element 68 is part of a capacitor, and the capacitor is a separately claimed element from the first metal layer in claim 49. Br. 12.", + "Appellant contends that one of ordinary skill in the art would not have modified Turner to include a trench. Br. 13.", + "Appellant contends that Turner teaches a trench capacitor, and Kurosawa teaches a stacked capacitor.", + "Appellant concludes that Kurosawa's teachings cannot be applied to the teachings of Turner. Br. 12-13.", + "Appellants contend that the combination of Turner and Kurosawa does not teach a second contact pillar extending substantially to a bottom surface of the first metal layer within the trench. Br. 13-14.", + "Appellants contend that the combination of Turner and Kurosawa does not teach that the capacitor is formed in the trench overlying the first contact pillar that extends substantially to the first metal layer and the capacitor comprises a storage element of the memory cell. Br. 15-16.", + "Appellants contend that the combination of Turner and Kurosawa does not teach that a storage node comprises the first contact pillar that extends substantially to the first metal layer. Br. 17-18.", + "Appellant contends that Turner does not teach a conducting layer lining the side of the first contact pillar that extends to a bottom surface of the first metal layer within the trench. Br. 21." + ], + "examiner_findings": [ + "Claims 49-52 and 54 stand rejected under 35 U.S.C. .5 103(a) as being unpatentable over Turner and Kurosawa.", + "Claim 53 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Turner, Kurosawa, and Fisher.", + "The Examiner finds that contact pillar 64 of Turner is within a trench. Ans. 3.", + "Further, the Examiner finds that including a trench that does not extend beyond a top surface of a substrate as taught by Kurosawa aids in providing high integration density. Ans. 4.", + "The Examiner finds that the combination of Turner and Kurosawa teaches this limitation. Ans. 4.", + "The Examiner finds that the Abstract of Turner teaches this limitation. Ans. 4.", + "However, the Examiner relies on Fisher to teach this limitation. Ans. 8.", + "Rather, the Examiner finds that a bit line contact pillar that is substantially the same height as the first contact pillar is not recited in claim 54. Ans. 8." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. \u25cf 6(b).", + "We affirm-in-part.", + "Appellant's argument is inconsistent with Appellant's statement in the Summary of Claimed Subject Matter section of the Brief, identifying, inter alia, element 1375 of Fig. 23 as a first metal layer, and element 1375 as part of the capacitor. Br. 7.", + "We agree with the Examiner' s finding.", + "The area that contains pillar 64 is a \"trench\" within the meaning of claim 49.", + "We find that the trench containing pillar 64 does not extend below the top surface of substrate 10. See Figs. 9 and 10 of Turner.", + "Therefore, Turner alone teaches the contact pillar within the trench.", + "However, Appellant has not presented evidence or persuasive argument to rebut the Examiner' s finding.", + "It is well settled that mere lawyer' s arguments and conclusory statements, which are unsupported by factual evidence, are 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 it take the place of evidence lacking in the record. Meitzner V. Mindick, 549 F.2d 775, 782 (CCPA 1977).", + "We sustain the rejection of claim 49 under 35 U.S.C. & 103.", + "However, Figure 9 of Turner shows a second contact pillar 62 in the trench.", + "We sustain the rejection of claim 50 under 35 U.S.C. & 103.", + "We agree with the Examiner.", + "Both Turner and Kurosawa teach that the capacitor is a storage element of the memory cell. See Turner, Abstract; Kurosawa, Abstract.", + "We sustain the rejection of claim 51 under 35 U.S.C. \u25cf 103.", + "We agree with the Examiner.", + "We sustain the rejection of claim 52 under 35 U.S.C. \u25cf 103.", + "We sustain the rejection of claim 53 under 35 U.S.C. & 103.", + "The Examiner has not addressed these limitations of claim 54.", + "We disagree with the Examiner.", + "We do not sustain the rejection of claim 54 under 35 U.S.C. 5 103." + ] +} \ No newline at end of file diff --git a/opinion_split/2009014397_DECISION.json b/opinion_split/2009014397_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..656dc212304cca32e0dc5eedac52f7da2b2e0ddd --- /dev/null +++ b/opinion_split/2009014397_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Appellants contend [T]he passage in Daniell that the Examiner cites [(Daniell I [0036], 11. 19-23)] . \u00b7 . makes no mention of any choice to replace each of the features of the electronic document that include undesired executable coding.", + ". . Daniell eliminates all offending embedded code and allows a user an option to either view the original unmodified document or the subsequently modified document. (App. Br. 10).", + "**Appellant[s*] claimed invention claims the [sic] producing an alternate source code of said electronic document, which eliminates said undesired executable coding \u00b7\u00b7\u00b7 to replace said original source code with said alternate source code for each of said features? * (App. Br. 11)." + ], + "examiner_findings": [ + "Claims 1-4, 8-11, 18-23, 25, 34-38, 42-44, and 46 stand rejected under 35 U.S.C. & 102(e) as anticipated by Daniell.", + "2 Claims 5 and 39 stand rejected under 35 U.S.C. & 103(a) as unpatentable over Daniell in view of Carpenter.", + "Claims 6-7 and 40-41 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Daniell in view of Carpenter and Crosbie.", + "Claims 24 and 45 stand rejected under 35 U.S.C. .8 103(a) as unpatentable over Daniell in view of Official Notice.", + "Claims 13-17, 26-30, 32, and 47- 51 stand rejected under 35 U.S.C. \u25cf 103(a) as unpatentable over Daniell in view of Pennell.", + "Claim 31 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Daniell in view of Pennell and Corboy.", + "Claim 33 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Daniell in view of Pennell and Carpenter.", + "The Examiner finds that Daniell discloses the allowing step at paragraph [0036] (Ans. 4), which states that \"the system may be adapted to provide the option of viewing the original message having the embedded functions, or \u25a0 \u25a0 the modified message without the embedded functions\" (Daniell I [0036], 11. 19-23).", + "The Examiner further explains: By eliminating all offending embedded code (based on a user's choice, see par. [0036]) Daniell eliminates each instance of offending embedded code and thus anticipates the claims (see e.g. par. [0028], [0054] and [0036]).", + ". Specifically while the claim recites replacing code for each feature, it contains no indication that this is done in an iterative process (e.g. detecting a first undesired executable coding, asking the user if it should be replaced and repeating the process for each subsequent detected undesired executable coding).", + "Thus while Daniell only discloses consulting the user once and replacing or leaving each of the features as a single unit based on the consultation, this still meets the broad claim language. (Ans. 18-19)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellants' invention \"relates to computer technology, and more particularly to buffering systems which provide security in accessing/ viewing electronic documents and web pages.\" (Spec. I [0001]).", + "An electronic document received by a client computer from a host computer may be a web page, an electronic mail message, an electronic mail attachment, a note in a hypertext format, a text document, a text file, or an application-specific electronic document.", + "The invention determines whether the original source code of the electronic document includes executable source coding that, when executed by the client computer, causes the client computer to perform undesired operations, and produces an alternate source code of the electronic document that eliminates the undesired operations. (Abstract).", + "Claim 1, which is illustrative of the invention, reads as follows: 1. A method of buffering an electronic document containing features received from a sender, said method comprising: determining whether an original source code associated with one of said features of said electronic document includes undesired executable coding which, when executed by a client computer, causes said client computer to perform undesired operations; if said original source code includes said undesired executable coding, producing an alternate source code of said electronic document, which eliminates said undesired executable coding, wherein said undesired operations are characterized as undesirable based on predetermined settings established by said client computer; and allowing said client computer a choice of whether to replace said original source code with said alternate source code for each of said features.", + "The Examiner relies on the following prior art in rejecting the claims: Pennell US 2003/0098883 A1 May 29, 2003 Daniell US 2004/0068695 A1 Apr. 8, 2004 Carpenter US 6,986,062 B2 Jan. 10, 2006 (filed Feb. 5, 2004) Corboy US 7,284,187 B1 Oct. 16, 2007 (filed May 30, 1997) Crosbie et al., Defending a Computer System Using Autonomous Agents, Technical Report No. 95-022, Dept. of Comp. Sciences, Purdue University, March 1996, available at [aphilinavaringesbabubabteffunatina.lonfin]", + "3 Rather than repeat the arguments here, we make reference to the Briefs (App. Br. filed Feb. 2, 2009; Reply Br. filed July 24, 2009) for the positions of Appellants and the Final Rejection (Fin. Rej. mailed Sept. 3, 2008) and Answer (Ans. mailed June 24, 2009) for the positions of the Examiner.", + "ISSUE The dispositive issue\" presented by Appellants' arguments is: Does Daniell disclose \"allowing said client computer a choice of whether to replace said original source code with said alternate source code for each of said features\" (hereinafter the \"allowing step\"), as recited in claim 12", + "Claim construction is an issue of law that we review de novo.", + "Cordis Corp. 17. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009).", + "Claims are not to be read in a vacuum, but must be given their broadest reasonable interpretation in light of the Specification as it would be interpreted by ordinary artisans.", + "Phillips 12. A WH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).", + "\"[Cllaims are interpreted with an eye toward giving effect to all terms in the claim.\"", + "\" Bicon, Inc. 12. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).", + "We find that the Examiner has erred in construing the allowing step.", + "The Examiner'. s proposed claim construction (see Ans. 19), which would encompass a method that only allows the client computer to make a single choice to replace all of the original source code with alternate source code, as disclosed by Daniell (I [0036]), would read the phrase *for each of said features\" out of the claim.", + "See Bicon, 441 F.3d at 950.", + "The definition of \"each\" is *adj. 1. every one of two or more considered individually or one by one \u00b7\u00b7\u00b7 pron. 2. each one.\"", + "The Random House College DICTIONARY 414 (rev. ed. 1980).", + "We conclude that the plain and ordinary meaning, and broadest reasonable interpretation, of the allowing step recited in claim 1 is that for each one of the **features** the client computer is allowed to make an individual choice (i.e., one by one) between original source code and alternate source code for that feature.", + "The passages of Daniell cited and described by the Examiner (see Ans. 3-4, 17-21) disclose allowing the client computer to make a single choice as to whether to replace the entire original source code of an electronic document having the source code of the \"features\" with an alternate source code having the source code of the \"features\" removed.", + "Daniell does not disclose allowing a client computer to make a choice for each \"feature\" as to whether to replace an original source code of the \"feature\" with an alternate source code for the **feature,\" as recited in the allowing step of claim 1.", + "We find that the allowing step, as properly construed, does not read on the cited passages of Daniell.", + "Therefore, we will not sustain the rejection of (1) claim 1; (2) claims 18, 19, and 35, which recite limitations substantially similar to the allowing step; (3) claims 2-11 and13-17 which depend from claim 1; and (4) claims 20-33 and 36-51, which depend from claims 19 and 35 respectively.", + "We note that the Examiner has suggested that the combination of Daniell and Carpenter \"would have made the narrower interpretation [argued by the Appellants] obvious.\" (Ans. 19).", + "However, the rejection before us is the rejection for anticipation by Daniell under 35 U.S.C. & 102(e), not a potential rejection for obviousness under 35 U.S.C. & 103(a).", + "We leave to the Examiner for the instant application to determine if a further rejection under 35 U.S.C. \u25cf 103(a) should be entered." + ] +} \ No newline at end of file diff --git a/opinion_split/2009014636_DECISION.json b/opinion_split/2009014636_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f46c6088ebf060e578835a7c624c27e21022a5df --- /dev/null +++ b/opinion_split/2009014636_DECISION.json @@ -0,0 +1,53 @@ +{ + "appellant_arguments": [ + "The Appellants argue that Nakamae, Mayer *794, Weitzel *224, Weitzel '978 and Mayer '078 do not disclose a polyvinyl alcohol having an ethylene unit content of 1-12 mol% (Br. 8; Reply Br. 3-4).", + "Regarding claims 32-39 the Appellants argue that Nakamae, Mayer *794, Weitzel *224, Weitzel '978 and Mayer '078 do not disclose a polyvinyl alcohol having a 1,2-glycol bond content of at least 1.9 mol% (Br. 8; Reply Br. 4).", + "The Appellants argue that \"[the second PVA of Nakamae '903 must be different from the first PVA because the first PVA includes a mercapto group (see column 1, lines 48-59)\" (Reply Br. 3), and that Mayer *794, Weitzel *224, Weitzel '978 and Mayer '078 do not disclose the Appellants' polyvinyl alcohol (B) (Reply Br. 3-4)." + ], + "examiner_findings": [ + "The Examiner argues that the Appellants' claim requirement that the polyvinyl alcohol has an ethylene unit content of 1-12 mol% is met by Nakamae's polyvinyl alcohol having an ethylene unit content of preferably 5 mol% or less (col. 3, 11. 10-12, 34-35) (Ans. 3-4).", + "The Examiner argues that Mayer *794, Weitzel *224, Weitzel '978 and Mayer *078 disclose a polyvinyl alcohol having up to 10 mol% of units from a hydrophobic monomer such as ethylene which, the Examiner argues, meets the Appellants' claim requirement of an ethylene unit content of 1-12 mol% (Ans. 4-5).", + "The Examiner argues that \"it is reasonable that the polyvinyl alcohol of [each reference] would possess the presently claimed amounts [of] 1,2- glycol bonds since the composition of the polyvinyl alcohol in [each reference], based on it's [sic] composition, is essentially the same as in the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort\" (Ans. 7, 8, 10 and 12).", + "Regarding the rejection over Nakamae the Examiner argues that \"it is reasonable that a PVA having the same ethylene content as the first PVA would be using [sic] as the second added PV a for the purpose of simplicity\" (Ans. 6).", + "With respect to the rejections over Mayer *794, Weitzel *224, Weitzel '978 and Mayer *078 the Examiner argues that although the references do not disclose the ethylene content of the polyvinyl alcohol atomization aid, it is clear to the Examiner that the polyvinyl alcohol used as the atomization aid is the same as that used as the protective colloid and, therefore, has an ethylene unit content of 0.1-10 wt% (Ans. 7-9, 11)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We reverse the rejections.", + "The Examiner has the initial burden of establishing a prima facie case of anticipation by pointing out where all of the claim limitations appear in a single reference.", + "The overlap between the ethylene unit contents of Nakamae and the Appellants is evidence of prima facie obviousness of the Appellants' ethylene unit content.", + "Nakamae's 's range having an endpoint of 5 mo1% within the Appellants' range is not an anticipatory disclosure, however, because \"the disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.\"", + "The Examiner* s argument that Mayer *794, Weitzel *224, Weitzel '978 and Mayer *078 disclose a polyvinyl alcohol having up to 10 mo1% of units from a hydrophobic monomer such as ethylene is incorrect.", + "The Examiner has not established that Mayer *794, Weitzel *224, Weitzel '978 or Mayer *078 discloses an ethylene content within the Appellants' 1-12 mol% range.", + "Hence, the Examiner has not established a prima facie case of anticipation by those references.", + "Conclusion of Law The Appellants have indicated reversible error in the Examiner's s determination that Nakamae, Mayer *794, Weitzel *224, Weitzel '978 or Mayer '078 discloses forming a polymer emulsion (A) comprising a dispersant and a dispersoid, wherein the dispersant has an ethylene unit content of from 1 to 12 mol%.", + "As discussed above regarding the rejections of claims 40-45 and 47- 58 the Examiner has not established that Nakamae, Mayer *794, Weitzel *224, Weitzel '978 or Mayer '078 discloses a polyvinyl alcohol having an ethylene unit content within the Appellants' range of 1-12 mol%.", + "Hence, the Examiner has not established a prima facia case of anticipation of the powders claimed in the Appellants' claims 15-20 and 22-31.", + "The Examiner has not provided evidence or reasoning which shows that the polyvinyl alcohols of the references and the Appellants' polyvinyl alcohol having a 1,2-glycol bond content of at least 1.9 mol% are essentially the same.", + "Nor has the Examiner provided any reasoning as to why one of ordinary skill in the art would have modified the references' polyvinyl alcohols such that they have a 1,2-glycol bond content of at least 1.9 mol%.", + "Thus, the Examiner has not established a prima facie case of anticipation or obviousness of the powders claimed in the Appellants' claims 32-39.", + "The disclosure of the use of the polyvinyl alcohols having a mercapto group at an end thereof in combination with other polyvinyl alcohols appears to indicate that the other polyvinyl alcohols are not the same as the one having a mercapto group at an end thereof.", + "Thus, the Examiner's argument that \"it is reasonable that a PV a having the same ethylene content as the first PVA would be using [sic] as the second added PVA for the purpose of simplicity\" (Ans. 6) does not appear to follow from Nakamae's s disclosure.", + "As for the Examiner's s argument that it is clear that the polyvinyl alcohol atomization aids of Mayer *794, Weitzel *224, Weitzel '978 and Mayer *078 are the same as the polyvinyl alcohol protective colloid (Ans. 7- 9, 11), the Examiner has not pointed to any disclosure in those references or provided any technical reasoning as to why that is so.", + "The Examiner's mere speculation is not sufficient for providing a prima facie case of unpatentability.", + "Conclusion of Law The Appellants have indicated reversible error in the Examiner's s determination that Nakamae, Mayer *794, Weitzel *224, Weitzel '978 or Mayer *078 discloses, or would have rendered prima facie obvious to one of ordinary skill in the art, 1) forming a polymer emulsion (A) comprising a dispersant and a dispersoid, and mixing the polymer emulsion (A) with a polyvinyl alcohol (B) having an ethylene unit content of from 1 to 12 mo1% (claim 15), and 2) forming a polymer emulsion (A) comprising a dispersant and a dispersoid, and mixing the polymer emulsion (A) with a polyvinyl alcohol (D) having a 1,2-glycol bond content of at least 1.9 mo1% (claim 32).", + "I respectfully dissent from the majority's s opinion.", + "The initial inquiry into the propriety of the Examiner's 's & 102 or \u25cf 103(a) rejections requires the determination of the scope of the claims on appeal.", + "The determination of the scope of the claims on appeal via claim interpretation is a question of law which I must review de novo.", + "As correctly pointed out by Appellants at page 5 of their Appeal Brief, claims 40 and 15 are written in a product-by-process format.", + "When product claims are drafted in a product-by-process format, i.e., a product defined by a process limitation, the *determination of patentability is based on the product itself.\"", + "\"If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even thought the prior art product was made by a different process.\"", + "By virtue of using the transition term \"comprising,\" the claimed polymer emulsion is open to the presence of other additional ingredients which are not specifically recited.", + "According to claim 40 and pages 3 and 9 of the Specification, the dispersant can be a polyvinyl alcohol having an ethylene unit content of from 1 to 12 mol%, which is identical to the polyvinyl alcohol subsequently added.", + "By virtue of using the transition term \"comprising,\" the claimed polymer emulsion is open to the presence of other additional ingredients which are not specifically recited.", + "It follows that claims 15, like claim 40, recite a synthetic resin emulsion powder obtained by drying a polymer emulsion comprising a polyvinyl alcohol having an ethylene unit content of from 1 to 12 mol% and a polymer having one or more ethylenic unsaturated monomers and dienic monomers.", + "According to pages 3 and 4 of the Specification, a polyvinyl alcohol having an ethylene unit content of from 1 to 12 mol% can be added as part of an original polymer emulsion or added subsequently to the polymer emulsion containing the same to form a polymer emulsion containing the same.", + "Having interpreted claims 40 and 15 in the above manner, I compare the claimed invention with the content of the applied prior art, in particular Nakamae.", + "Since there is a substantial overlap between the ethylene unit contents of Nakamae's s polyvinyl alcohol dispersant and the claimed polyvinyl alcohol, I concur with the Examiner that the claimed synthetic resin emulsion powder would have been readily envisaged by one of ordinary skill in the art within the meaning of 35 U.S.C. 5 102(b).", + "Appellants' reliance on a showing of unexpected result cannot rebut the prima facie case of anticipation established by the Examiner.", + "Accordingly, I would affirm the Examiner's decision rejecting claims 40-45 and 47-58 under 35 U.S.C. \u25cf 102(b) as anticipated by Nakamae", + "Although the claims require further adding a polyvinyl alcohol having an ethylene unit content of from 1 to 12 mol% to a polymer emulsion containing the same to form a polymer emulsion, the Examiner has a reasonable basis to believe that the claimed and prior art synthetic resin emulsion powders are identical or substantially identical since they both are obtained by drying polymer emulsions containing the same ingredients.", + "On this record, Appellants have not shown that the claimed mixing sequence, i.e., further adding a polyvinyl alcohol having an ethylene unit content of from 1 to 12 mol% to a polymer emulsion containing the same to form a polymer emulsion, renders the claimed synthetic resin emulsion powder patentably different from that taught by Nakamae.", + "Accordingly, I would also affirm the Examiner's decision rejecting claims 15-17, 19, 20 and 22-39 under 35 U.S.C. 5 102(b) as anticipated by or, in the alternative, under 35 U.S.C. & 103 as unpatentable over Nakamae." + ] +} \ No newline at end of file diff --git a/opinion_split/2009014788_DECISION.json b/opinion_split/2009014788_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..fe91dd9333c0d04ac44c4a47de70bdf351835dfd --- /dev/null +++ b/opinion_split/2009014788_DECISION.json @@ -0,0 +1,28 @@ +{ + "appellant_arguments": [ + "Specifically, Appellants contend that \"numerous examples of third party teachings\" (App. Br. 14) establish that *[t]ransdermal drug delivery is a very complex and delicate art\" and \"the identification of specific permeation or penetration enhancers for specific active agents is an extremely difficult and complicated challenge\" (id. at 13), difficult to predict, and \"must be carefully analyzed and demonstrated by empirical work\" (id. at 17).", + "Appellants contend that Venkateshwaran \"provides extremely limited teachings or correlation of specific active agents with specific permeation enhancers and provides no teaching correlating fatty acid esters of lauryl alcohol with antiparkinsonism drugs, let alone huperzine\" (id. at 13).", + "Appellants contend that, \"based on the knowledge in the art, one of ordinary skill in the art would not have had reason to combine the cited references nor would they have had reasonable expectations of success in forming such a combination\" (id. at 16)." + ], + "examiner_findings": [ + "The claims stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Hwang* and Venkateshwaran.", + "The Examiner acknowledges that Hwang does not explicitly teach *the blood plasma levels of huperzine provided by the transdermal system\" (Ans. 4) or the \"specific permeation enhancer as instantly claimed\" (id.), but notes that [Hwang] disclosed the amount of the drug used in the transdermal patch in acrylate adhesive is . a 2.25% (table 2), and applicants disclosed 1-20% huperzine in their formulations (examples).", + "Therefore, [Hwang] teaches the same claimed adhesive, same drug in the same amount, and further teaches permeation enhancer. . . .", + "Further applicants disclosed in pages 21-23 that the claimed plasma level is achieved by permeation rate of huperzine to the skin between 0.01 to 15 ug/cm2/hr, and the reference teaches effective permeation rate more than 1.46 ug/cm2/hr \u00b7 . (id. at 6-7).", + "The Examiner concludes that it would have been obvious \"to provide a transdermal drug delivery system to deliver huperzine to treat patients suffering from [Alzheimer's disease] wherein the system comprises polyacrylate adhesive and . . \u00b7 [a] permeation enhancer as disclosed by [Hwang]\" (Ans. 5).", + "The Examiner further concludes that it would have been obvious to use a fatty acid ester of lactic acid as the permeation enhancer because Venkateshwaran describes an **adhesive matrix [which] comprises acrylic . \u00b7 \u00b7 adhesive[ ] and permeation enhancer including fatty acid esters including lauryl lactate\" (id. at 4)." + ], + "ptab_opinion": [ + "The claims have not been argued separately, therefore, we select claim 81 as representative, and the remaining claims will stand or fall according to claim 81. 37 C.F.R. 5 41.37(c)(1)(vii).", + "5 We affirm.", + "10. Hwang's **adhesive-type transdermal drug delivery device\" is a *matrix patch,\" as that term is defined in the present Specification (compare FF2, FF8, and FF9).", + "In addition, Hwang teaches that \"`[The permeation rate required to achieve the therapeutic levels of [huperzine] by transdermal delivery is calculated to be 4.2 ug/cm2/hr if a 10 cm2 patch is used\" (FF12), which is well within the \"about 0.01 ug/cm2/hr to about 15 ug/cm2/hr\" therapeutic range disclosed in Appellants' Specification (FF7), and Hwang further teaches that a permeation enhancer can be used to increase the skin permeability of huperizine to therapeutic levels if desired (FF12).", + "The Examiner's conclusion that the claimed invention would have been obvious over the prior art is supported by the evidence of record, and we are not persuaded otherwise by Appellants' arguments.", + "We have carefully considered Appellants' arguments, but are not persuaded that the Examiner erred in concluding that the claimed invention would have been obvious to one of skill in the art.", + "While the evidence of record generally supports Appellants' assertion that it is not predictable ahead of time which, if any, permeation enhancers would be compatible with Hwang's huperzine/polyacrylate matrix patch, the evidence of record also shows that it was considered routine in the art to identify compatible combinations and relative amounts of permeation enhancers empirically (FF15-16).", + "Moreover, Hwang suggests that a permeation enhancer can be included in the transdermal formulation to achieve a therapeutic dosage, and Hwang's disclosed therapeutic dosage is within the range asserted in the present Specification to be therapeutic (FF7, FF11, FF12).", + "In any case, even if we accept for the sake of argument that identifying a permeation enhancer ideally suited for Hwang's matrix patch would have required evaluating a large number of candidates, that doesn't 't mean that one of ordinary skill in the art wouldn't 't have had a reasonable expectation of identifying a compatible permeation enhancer through routine, empirical experimentation.", + "By the same token, it doesn't mean that the identity of a permeation enhancer identified by such routine experimentation would have been in any way unexpected or surprising - especially as Venkateshwaran shows that acrylate polymer adhesives are conventionally combined with permeation enhancers like lauryl lactate (FF13-14).", + "Nor is there anything in Appellants' Specification that indicates otherwise \u00b7 indeed, Appellants' Specification teaches on one hand that \"[a] wide range of known permeation enhancers have been found to enhance the delivery of huperzine\" (FF5) and, and on the other hand, that \"no enhancer is necessary in order to achieve the desired blood plasma levels in many instances,' thus, a transdermal formulation may \"consist essentially of an amount of huperzine sufficient to achieve a huperzine blood plasma level of from about 0.1 to about 30 ng/ml admixed with an inert carrier\" (FF6)." + ] +} \ No newline at end of file diff --git a/opinion_split/2009015334_DECISION.json b/opinion_split/2009015334_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..dbaefa06d19d6f7e886b249568d46b7ef58f200d --- /dev/null +++ b/opinion_split/2009015334_DECISION.json @@ -0,0 +1,44 @@ +{ + "appellant_arguments": [ + "Although Appellants admit that \"Yuknewicz discloses methods for retrieving and manipulating data using parameterized queries\" (App. Br. 10), Appellants contend that \"a requirement placed on an input of a query is not the same as requesting a predefined desired results characteristic\" (App. Br. 11).", + "Although Appellants admit that \"Dettinger discloses methods for modifying elements of a query to produce a desired result size\" (App. Br. 10), Appellants contend that \"Dettinger does not disclose query modification comprising removing the at least one condition (of the parameterized query) comprising the parameter marker, whereby the parameterized query is transformed into a non-parameterized executable query\" (App. Br. 11).", + "Appellants also contend that the Examiner relies on Dettinger to disclose \"modifying the query\" but relies on Curtis to disclose \"if the selection does not specify a value for the parameter marker,\" and thus, such \"parsing of the claims elements by the Examiner is improper\" (App. Br. 12)." + ], + "examiner_findings": [ + "However, the Examiner finds that \"Yuknewicz discloses requesting a predefined result characteristic by selecting a query\" wherein \"the user is requesting that the results of the executed query, in this instance, be characterized by value entered into the parameter '@ZipCode' in the shown query\" (Ans. 18).", + "The Examiner explains that \"the user is selecting before the query is executed, and before a value is assigned to the query parameter, that the results of the query be determined \u00b7\u00b7\u00b7 based on a yet to be assigned zip code\" and \"[]hus the desired result characteristic is predefined\" (Ans. 18-19).", + "The Examiner also finds that Dettinger discloses that \"the query can [be] modified by changing the value of a condition\" (Ans. 20) wherein \"a parameterized query, i.e. a modifiable abstract query, is transformed into a non-parameterized, i.e. a concrete, executable query\" (Ans. 21).", + "The Examiner also explains that \"Curtis is not solely referenced to simply disclose 'if the selection does not specify a value for the parameter marker' as Appellant appears to be arguing\" but rather \"Curtis discloses every limitation element \u00b7\u00b7\u00b7 except for the element 'the modification comprising removing the at least one condition comprising the parameter marker** (App. Br. 22-23).", + "As the Examiner explains, \"Curtis is not solely referenced to simply disclose 'if the selection does not specify a value for the parameter marker' as Appellant appears to be arguing\" (Ans. 22-23).", + "As the Examiner finds, the references \"are in the field of endeavor relating to modification of a query\" (Ans. 25)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We affirm.", + "The dispositive issue before us is whether the Examiner has erred in determining that the combination of Yuknewicz, Dettinger, and Curtis teaches or would have suggested \"requesting a predefined desired results characteristic without specifying a value for the parameter marker\" and, *if the selection does not specify a value for the parameter marker, modifying the query \u00b7 \u00b7, the modification comprising removing the at least one condition comprising the parameter marker, whereby the parameterized query is transformed into a non-parameterized executable query\" (claim 1)?", + "The following Findings of Fact (FF) are shown by a preponderance of the evidence.", + "By arguing what Yuknewicz and Dettinger do not teach (App. Br. 10- 11), Appellants appear to be arguing that the references do not individually anticipate the claimed invention.", + "However, since the Examiner rejects the claims as obvious over the combined teachings of Yuknewicz, Dettinger, and Curtis, the test for obviousness is not what each reference shows but what the combined teachings would have suggested to one of ordinary skill in the art.", + "See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "We find Yuknewicz to disclose or at the least suggest \"requesting a predefined desired results characteristic without specifying a value for the parameter marker,\" as required by claim 1.", + "That is, we find no error in the Examiner's finding that Yuknewicz discloses \"the results of the query be determined \u00b7- based on a yet to be assigned zip code\" and \"[thus the desired result characteristic is predefined\" (Ans. 18-19).", + "Thus, we find Yuknewicz also discloses or would have suggested \"modifying the query\" wherein \"the modification comprising removing the at least one condition comprising the parameter marker, whereby the parameterized query is transformed into a non-parameterized executable query\" as required by claim 1.", + "Thus, we find Dettinger also discloses or would have suggested \"modifying the query\" wherein \"the modification comprising removing the at least one condition, \" whereby the query is transformed, as required by claim 1.", + "We find Dettinger to also disclose or would have suggested *requesting a predefined desired results characteristic without specifying a value,\" as required by claim 1.", + "Thus, the combination of Yuknewicz in view of Dettinger teaches or at the least would have suggested requesting a predefined results characteristic without specifying a value and modifying a parameterized query to transform it into a non-parameterized query.", + "We find that the only feature of Appellants' invention missing from the combined teachings of Yuknewicz and Dettinger is an explicit teaching that the modification of the parameterized query transforms the parameterized query into a non- parameterized query \"if the selection does not specify a value for the parameter marker\" (claim 1).", + "We find \"requesting a predefined desired results characteristic without specifying a value for the parameter marker\" (claim 1) to read on Curtis's s request in the event that no values are passed, and we find \"if the selection does not specify a value for the parameter marker, modifying the query -- whereby the parameterized query is transformed into a non-parameterized executable query\" (claim 1) to read on Curtis's modification of the query to a default value when no values are passed.", + "Although Appellants contend that relying on Dettinger to disclose \"modifying the query\" but on Curtis to disclose *if the selection does not specify a value for the parameter marker\" is \"improper\" (App. Br. 12) and that \"Dettinger and Curtis are incompatible and cannot be combined\" (App. Br. 13), Appellants are viewing the references from a different perspective than the Examiner.", + "Further, the issue is not whether the system of Dettinger can be combined with the system of Curtis.", + "That is, the issue here is whether a person of ordinary skill, upon reading Curtis's teaching of modifying a query to provide a default value when no value is being specified in query modification, would be discouraged from providing a default value when no value is being specified to the query modification that the combined teachings of Yuknewicz and Dettinger teach or suggest.", + "We agree with the Examiner that Curtis's teaching would not have been discouraged the artisan from combining the references.", + "The Supreme Court has determined that the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art.", + "KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).", + "The skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" since the skilled artisan is \"a person of ordinary creativity, not an automaton.\"", + "Id. at 420-21.", + "Accordingly, we find that Appellants have not shown that the Examiner erred in rejecting claim 1 over Yuknewicz, Dettinger and Curtis.", + "Since Appellants do not provide arguments for independent claim 23 and claims 2-4, 7-9 and 24, respectively depending from claims 1 and 23, separate from those of claim 1 (App. Br. 11-14), we also find that Appellants have not shown Examiner error in rejecting claims 2-4, 7-9, 23, and 24 over Yuknewicz, Dettinger and Curtis.", + "As discussed above with respect to claim 1 (and thus claim 23), we find no error with the Examiner's rejection over Yuknewicz, Dettinger and Curtis.", + "Accordingly, we find no Examiner error in rejecting claim 6 over Yuknewicz, Dettinger, and Curtis in further view of ASP FAQ and in rejecting claim 25 over Yuknewicz, Dettinger, and Curtis in further view of Antoshenkov." + ] +} \ No newline at end of file diff --git a/opinion_split/2010000005_DECISION.json b/opinion_split/2010000005_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9166047a2464116845f1997d015e936af351f417 --- /dev/null +++ b/opinion_split/2010000005_DECISION.json @@ -0,0 +1,45 @@ +{ + "appellant_arguments": [ + "With respect to independent claims 1 and 3, Appellant argues that the combination of Otake and Badehi does not teach or suggest \"a microcontroller\" because the Examiner improperly interpreted this claim term. (App. Br. 7, 12-14.)", + "With respect to independent claims 1 and 3, Appellant argues that Ostler does not teach or suggest \"the microcontroller having an n-bit data bus; and up to n-pins electrically coupled to the microcontroller.\" (App. Br. 16, 20-24.)", + "In particular, Appellant argues that Ostler does not teach that the number of external pins is a result-effective variable (App. Br. 20-21) and reducing the number of pins of a microcontroller (App. Br. 21-24)." + ], + "examiner_findings": [ + "The Examiner found that the claimed \"microcontroller\" corresponds to the \"microcomputer'' of Otake. (Ans. A-3.)", + "The Examiner cited Badehi as evidence that a \"microcontroller\" is equivalent to a \"microcomputer.\" (Ans. 8, A-4.)", + "The Examiner argues that Ling provides evidence to support the position that a \"microcontroller\" is equivalent to a \"microcomputer.\" (Ans. 8.)", + "The Examiner acknowledged that Ostler does not teach or suggest \"the microcontroller having an n-bit data bus; and up to n-pins electrically coupled to the microcontroller.\" (See Ans. A-5.)", + "However, the Examiner concluded that this claim feature would have been obvious because **claiming the specific reduction in pins to be up to the number of pins in the data bus is merely a result effective variable that follows from optimizing the reduction of the number of pins at the explicit suggestion in Ostler to reduce the number of pins.\" (Ans. A-5.)", + "In the alternative, the Examiner relied upon Otake, for its teaching of \"the microcontroller having an n-bit data bus; and up to n-pins electrically coupled to the microcontroller.' (Ans. A-7.)" + ], + "ptab_opinion": [ + "The record supports the following findings of fact (FF) by a preponderance of the evidence.", + "With respect to the first issue, we are convinced by Appellant's argument (App. Br. 7, 12-14) that the combination of Otake and Badehi does not teach or suggest \"a microcontroller, as recited in claims 1 and 3.", + "We do not agree.", + "Thus, the \"microcomputer\" of Otake is not a \"microcontroller\" because it does not include a memory. (See FF 1.)", + "Thus, in comparing Figure 1 of Otake with Figure 20.2 of Tietze/Schenk, the \"microcomputer\" of Otake is a \"CPU\" rather than a \"microcontroller.\" (See FF 2, 4.)", + "Badehi, which was relied upon by the Examiner for its teaching of integrated circuit packaging (Ans. A-4; FF 9), does not cure the above-noted deficiencies of Otake.", + "As discussed previously, the \"microcomputer\" of Otake is a CPU and does not have all the functions of a complete computer.", + "Therefore, the Examiner has erred in finding the combination of Otake and Badehi teaches or suggests \"a microcontroller,\" as recited in claims 1 and 3.", + "We conclude that the Examiner has erred in rejecting independent claims 1 and 3 under 35 U.S.C. & 103(a) as being obvious over Otake and Badehi.", + "With respect to the second issue, we are convinced by Appellant's argument (App. Br. 16, 20-24) that Ostler does not teach or suggest \"the microcontroller having an n-bit data bus; and up to n-pins electrically coupled to the microcontroller\" as recited in independent claims 1 and 3.", + "We do not agree.", + "In other words, Ostler teaches that instead of increasing the number of external pins to accommodate the special function circuits, each of the existing external pins has the additional capability of transmitting address/data signals and special I/O signals from special function circuits. (See FF 6-7.)", + "Thus, Ostler does not teach or suggest reducing the total number of external pins, but instead maintains the existing number of external pins. (See FF 5.)", + "Furthermore, Ostler does not provide any recognition that the number of pins 111 is a result-effective variable (i.e., varying the number of pins 111 achieves a recognized result).", + "Therefore, the number of pins 111 in Ostler has not been shown to be a parameter subject to optimization.", + "Therefore, the Examiner has erred in finding that Ostler teaches or suggests \"the microcontroller having an n-bit data bus; and up to n-pins electrically coupled to the microcontroller,' as recited in claims 1 and 3.", + "However, Otake does not cure the above-noted deficiencies of Ostler because, as discussed previously, Otake does not teach or suggest a \"microcontroller.\" \" but instead relates to a microcomputer in which a **built-in ROM is not needed\" (FF 3).", + "We conclude that the Examiner erred in rejecting independent claims 1 and 3 under 35 U.S.C. & 103(a) as being obvious over Ostler or over Ostler and Otake.", + "Claims 2 and 4 depend from independent claims 1 and 3, and we likewise conclude that the Examiner erred in rejecting these claims under 35 U.S.C. \u25cf 103(a) as being obvious over Ostler or over Ostler and Otake for the reasons discussed with respect to independent claims 1 and 3.", + "We conclude that the Examiner erred in rejecting this claim, as well as claims 6-15, which depend from claim 5, for the reasons discussed with respect to independent claims 1 and 3.", + "The Philips-NE Data Sheet, which was relied upon by the Examiner for its teaching of \"an integrated circuit package comprising a left side and a right side\" and \"a plurality of pins extending from said left side and said right side of said integrated circuit package\" (Ans. A-8; FF 10), does not cure the above-noted deficiencies of Ostler.", + "Otake also does not cure the above-noted deficiencies of Ostler for the reasons previously discussed.", + "Claim 16 indirectly depends from independent claim 5 and the Examiner has erred in rejecting this claim for the reasons discussed previously with respect to independent claim 5.", + "Hall, which was relied upon by the Examiner for its teaching of \"wherein said memory device is a SRAM, DRAM, EPROM, EEPROM, ROM, PROM or a logic device\" (Ans. A-13 to -14; FF 11), does not cure the above-noted deficiencies of Ostler.", + "Otake also does not cure the above-noted deficiencies of Ostler for the reasons previously discussed.", + "Claims 17 and 18 indirectly depend from independent claim 5 and the Examiner has erred in rejecting these claims for the reasons discussed previously with respect to independent claim 5.", + "The APA, which was relied upon by the Examiner for its teaching of \"a bi-directional I/O port unit\" and \"a serial programming unit\" (Ans. A-14 to -15), does not cure the above-noted deficiencies of Ostler.", + "Otake also does not cure the above-noted deficiencies of Ostler for the reasons previously discussed." + ] +} \ No newline at end of file diff --git a/opinion_split/2010000800_DECISION.json b/opinion_split/2010000800_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..e7fb3f439de2aae2e92c013a817002ba5fec4699 --- /dev/null +++ b/opinion_split/2010000800_DECISION.json @@ -0,0 +1,72 @@ +{ + "appellant_arguments": [ + "Appellant contends that (1) \"Clark is directed to a template; i.e., array 12, and not a molecular switch\" (App. Br. 6); (2) \"the array 12 is removed from the final product\" (id.); and (3) Clark's structure is \"used for incorporating active biomolecules 36 in nanometer dimensioned holes 16,\" but when the array which is used to form the holes is removed, projections are left as rows of islands as shown in Clark's s Fig. 7C (id. at 7.)", + "According to Appellant, Clark did not disclose the claimed arrangement of layers directly under other layers in the working device because Clark' s layers are removed. (Id. at 7-8.)", + "Concerning the substitution of Kossovsky' s cytochrome c for Clark's protein, Appellant contends that it would be incongruous to use Kossovsky'. is \"electronically active\" biochemical in conjunction with Clark's \"template.\" (Id. at 8-9.)", + "Even if such a substitution were made, \"the combination still would not result in a biomolecular electronic switch, as claimed in independent claims 10, 11, 12 and 15.\" (Id. at 9.)", + "Regarding claims 18 and 19, Appellant additionally argues that both claims recite a monolayer of globular protein 20-40 A thick, but \"[n]either Clark nor Kossovsky disclose the concept of a single monolayer.\" (Id. at 24.)", + "Finally, Appellant argues that Clark did not disclose the arrangement of layers recited in claims 10 and 11. (App. Br. 12.)", + "Appellant argues that Clark does not disclose the arrangement of layers as instantly claimed. (App. Br. 12.)", + "Appellant argues that Clark did not disclose a switch. (App. Br. 13.)", + "Appellant argues that Clark's disclosure described only templates or masking, and not functional switching devices having a monolayer of protein. (App. Br. 13.)", + "Clark taught that cytochrome oxidase could be used (FF 1), but Appellant argues that there is no reason why cytochrome c could be substituted for cytochrome oxidase (App. Br. 16).", + "Appellant's argument is apparently based on a general definition of oxidase.", + "Appellant argues that Clark did not disclose an arrangement having a monolayer of protein directly under a layer of electrode, or sandwiched between contacts, purportedly because the protein layer in Clark's device was placed in an open hole, not directly under a layer nor sandwiched between layers. (App. Br. 14.)", + "Appellant contends that Clark removed array 12 from the final product, pointing to Clark's Figs. 6A-6H and 8A-8E.", + "Appellant acknowledges the Examiner* s case for substituting Kossovsky's 's cytochrome c into Clark's device but argues that it would have been incongruous to make the substitution \"[i]nasmuch as the 2-dimensional array of film layers (12) in Clark function as a template and not as *improved semiconductor [materials] for use in electronic switching devices.\" (App. Br. 8-9.)", + "Appellant argues that \"[nJeither Clark alone or modified in view of Kossovsky disclose an electronic switch wherein at least one of the first and second contacts is a wire.\" (App. Br. 17.)", + "Appellant reiterates arguments about the Clark and Kossovsky disclosures (App. Br. 20-24) that we again find unpersuasive for the reasons discussed above." + ], + "examiner_findings": [ + "The Examiner rejected claims 10-19 under 35 U.S.C. 5 103(a) in view of Clark' and Kossovsky. 2", + "The Examiner* s position is that Clark described a biomolecular device having all the features of Appellant's device except for \"globular protein or cytochrome c as the protein layer.\" (Ans. 4.)", + "The Examiner found that Kossovsky taught similar but \"improved\" bio-electronic devices with cytochrome c as the protein layer having semiconductor properties. (Id. at 5.)", + "The Examiner concluded it would have been obvious to use cytochrome c for Clark's two-dimensional protein layer because Kossovsky taught that cytochrome c \"provides improved semiconductor properties for use in electronic switching devices.\" thus providing the switch or device Appellant now claims. (Id.)", + "First, the Examiner found that Clark did not \"expressly teach the use of a globular protein\" as the protein layer in the device. (Ans. 4.)", + "Second, the Examiner found that Clark's device comprised the layers recited in claims 10 and 11. (Ans. 7-8.)", + "The Examiner cited Clark at col. 3 for a silicon substrate coated with silicone dioxide, and at col. 8 for overlayers comprised of titanium and aluminum. (Ans. 4.)" + ], + "ptab_opinion": [ + "The issues with respect to this appeal are: did Clark disclose a switch; did Clark disclose an arrangement having a monolayer of protein directly under a layer of electrode, or sandwiched between contacts; did Clark or Kossovsky disclose the concept of a single monolayer of protein; and did Clark disclose the layers as recited in claims 10 and 11?", + "1. We adopt the Examiner* s findings concerning the scope and content of the Clark and Kossovsky disclosures, with two exceptions.", + "We find to the contrary that Clark taught using *hemocyanin, cytochrome oxidase, porin, ... acetyleholine[sterase]. \u00b7\u00b7\u00b7 rhodopsin\" (Clark, col. 4, 11. 23-27), \"bacteriorhodopsin\" (id. at col. 4, 1. 64), \"lysozyme,\" \"hemoglobin\" (id. at col. 5, 1. 32), or \"ferritin\" (id. at col. 15, 11. 11- 13), each of which is a globular protein.", + "For the reasons explained below, we find the evidence does not support that finding.", + "8. We find that Clark's embodiments having sensor molecules, i.e., proteins, occupying sites between the perforated metal film and the conductive substrate were embodiments in which the protein layer was directly underneath the perforated metal layer, and sandwiched between the perforated metal layer and the conductive substrate. (Id. at Figs. 61 and 8E.)", + "We agree that Clark taught several ways of arranging various materials as the layers. (FF 11 and 12.)", + "However, we find no evidence that Clark taught seven layers ordered as claimed.", + "The rejection does not present a case for why the claimed arrangement would have been obvious.", + "We therefore reverse the rejection of claims 10 and 11.", + "We disagree.", + "Clark explicitly taught a switching embodiment using bacteriorhodopsin, and further taught that any protein having multiple states would work in a switching device. (FF 10.)", + "We disagree.", + "Clark expressly taught devices having a monolayer of protein and functioning as switches and memory devices. (FF 8 and 10.)", + "We agree with the Examiner' s explanation for substituting Kossovsky's 's cytochrome c into Clark's device. (Ans. 5.)", + "Appellant has not produced evidence that a person of ordinary skill in the art would have doubted Clark's teaching that cytochrome oxidase would work in a switching device, or Kossovsky's teaching that cytochrome c would work in a switching device.", + "We disagree.", + "Clark explicitly described protein array 12 between conductors (FF 8) and illustrated several such embodiments (FF 4 and 9).", + "We agree that Clark did describe one embodiment that involved placing functional material into an **open hole\" and removing a layer to leave an array of islands (Clark, col. 2, 11. 42-55; Fig. 7C), but that was only one embodiment among several Clark taught.", + "Appellant is mistaken.", + "Figs. 6A-6H and 8A-8E show layer 12 being perforated, not removed.", + "In Clark's finished products, layer 12 is still present, and still present between other layers, and is expressly labeled in the finished products. (FF 9.)", + "We also disagree with Appellant's argument that Clark's is layers 14 and 12 \"are merely templates or masks, \" not present in Clark's 's finished devices.", + "While portions of these layers may be removed to form patterns of holes or pits, layers 14 and 12 are present in Clark's functioning switches and other devices as shown in Figs. 5, 61 and 8E, all of which Clark described as **finished** devices. (FF 4 and 9.)", + "The evidence contradicts Appellant\". s argument that these layers are merely temporary templates.", + "The facts do not support this argument.", + "Clark described protein layer 12 as a functioning part of the switch.", + "Clark explicitly instructed that \"any protein having multiple states with different dipole or charge distributions\" could be used for the switch. (FF 10.)", + "Based on Kossovsky': s disclosure, a monolayer of cytochrome c would have been expected to meet that requirement.", + "Appellant's s arguments about the importance of the claims' preamble term \"biomolecular electronic switch\" are premised on a mistaken reading of the prior art that overlooks Clark's description of a biomolecular electronic switch.", + "The Examiner found that Clark taught a monolayer of protein between 1-50 nanometers in thickness, i.e., 10-500 A, and we agree the evidence supports that finding.", + "We have agreed with the Examiner that using Kossovsky' s cytochrome c for Clark' is protein monolayer would have been obvious.", + "The fact that the monolayer would have a thickness of 40 A as recited in claim 14 is a result of using the obvious cytochrome c in a monolayer. (Ans. 10.)", + "Similarly, the **high dipole moment\" of claim 15, the **programmable\" feature recited in claim 16, and the \"resistance\" recited in claim 17 reasonably appear to be properties of the obvious cytcochrome c monolayer. (Ans. 10.)", + "The rejection does not present a case for why the claimed arrangement would have been obvious.", + "We therefore reverse the rejection of claim 13.", + "On this record, Appellant and the Examiner have not provided an analysis of Clark's 's bacterorhodopsin switch.", + "However, for the reasons explained above, we agreed with the Examiner that the evidence supports a conclusion that it would have been obvious to use Kossovsky' cytochrome c in Clark's switch.", + "See discussion of claims 12-17, above.", + "Appellant provided no argument or evidence to persuade us that Clark's switch, made with cytochrome c, would not have had the properties that Appellant attributes to its own switch made with cytochrome c.", + "Under these circumstances, we think the Examiner'. s evidence was sufficient to shift the burden to Appellant to show that the obvious cytochrome c switch would not have had the same properties.", + "See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (\"the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product\")." + ] +} \ No newline at end of file diff --git a/opinion_split/2010001033_DECISION.json b/opinion_split/2010001033_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..82279ed7c64c98a250c61f20de3c10981f3528c1 --- /dev/null +++ b/opinion_split/2010001033_DECISION.json @@ -0,0 +1,20 @@ +{ + "appellant_arguments": [ + "Appellant's invention is directed to a method for storing one or more search parameters from a user as a preconfigured search. See Spec. 13, Abstract of the Disclosure.", + "Claim 1 is illustrative, with key disputed limitations emphasized: 1. A method comprising: accepting at least one entry from a user for at least one of a plurality of search parameters; receiving a selection of one of a plurality of storage classes; and storing the at least one entry as a preconfigured search according to the selected storage class, wherein the selected storage class limits an availability of the preconfigured search to the user.", + "Appellant argues that nothing in Coiera discloses that the selection of a particular storage class limits the availability of the preconfigured search to the user. App. Br. 6." + ], + "examiner_findings": [ + "The Examiner relies on the following as evidence of unpatentability: Coiera US 2005/0086204 A1 Apr. 21, 2005 Bradburn US 6,745,188 B2 Jun. 1, 2004", + "The Examiner rejected claims 1-5 under 35 U.S.C. $102(e) as anticipated by Coiera. Ans. 3-4.1 I", + "The Examiner rejected claims 6-8 under 35 U.S.C. $103(a) as unpatentable over Coiera and Bradburn. Ans. 4-6.", + "The Examiner finds that Coiera discloses the selection of various search parameters, including a search profile that delimits the search according to a number of parameters, including selection of one of a plurality of storage classes. Ans. 6-7.", + "Thereafter the Examiner concludes that a failure of the user to select a particular storage class will limit the availability of that preconfigured search to the user. Id. at 7." + ], + "ptab_opinion": [ + "Based upon our review of the record, the arguments proffered by Appellant and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under S 102, has the Examiner erred in rejecting claims 1-5 by finding that Coiera discloses accepting a plurality of search parameters and a selection of one of a plurality of storage classes and then storing the preconfigured search wherein the selected storage class limits an availability of the preconfigured search to the user?", + "We find Appellant's arguments persuasive.", + "We find that the Examiner' s arguments would have been persuasive if Appellant's claim 1 had read \"wherein the storage class limits an availability of the preconfigured search.\" \"", + "However, Appellant's claims require the \"selected storage class\" to limit availability of the preconfigured search to the user, rendering the Examiner's hypothetical limitation based upon non-selection of a storage class irrelevant to our conclusion." + ] +} \ No newline at end of file diff --git a/opinion_split/2010001888_DECISION.json b/opinion_split/2010001888_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..e24188cef38d801482a945eceb0f2026a3a6ea83 --- /dev/null +++ b/opinion_split/2010001888_DECISION.json @@ -0,0 +1,88 @@ +{ + "appellant_arguments": [ + "Appellants state that claims 21 and 25 are patentable over Roberts and Pook for \"at least reasons similar to the reasons stated herein with regard to independent claim 1.\" App. Br. 8-9.", + "Appellants argue that the combination of Roberts and Pook does not teach a layout component that displays a detailed subset of information, comprising textual information, within the area defined by the lens component based upon the search result, the detailed subset of information is animated to enlarge in size as compared to the amount of information associated with the at least one other search result displayed outside the lens region. App. Br. 5-8; Reply Br. 3-6.", + "Appellants argue that each reference individually fails to teach a system where a detailed subset of information is animated to enlarge in size and to include additional textual information that is selected from the at least one search result for insertion into the detailed subset of information based in part on a query associated with the at least one search result.", + "Appellants argue that Roberts's S 3, I 5, teaches a system in which, as the focus view changes, any additional information is located in a new focus view window.", + "Appellants argue that Roberts fails to teach a system in which the detailed subset of information is animated to enlarge in size and to include additional textual information that is selected from the at least one search result for insertion into the detailed subset of information.", + "Appellants also argue that Roberts teaches a system in which the additional information is not located in the focus view.", + "Appellants cite as support for this argument the fact that each of the SRE's are stored in a list that can be visualized on demand. Reply Br. 5-6 (citing Roberts & 2.1, I 2).", + "Appellants argue that Szabo teaches neither progressively inserting additional information related to a search result nor progressively inserting additional information based on the amount of time the mouse hovers over a search result. App. Br. 10-11." + ], + "examiner_findings": [ + "The Examiner rejected claims 1-12, 15-17, and 19-27 under 35 U.S.C. 5 103(a) as being unpatentable over Roberts in view of Pook. Ans. 5-14.3", + "The Examiner rejected claim 13 under 35 U.S.C. .5 103(a) as unpatentable over Roberts, Pook, and Wolton. Ans. 14.", + "The Examiner rejected claim 14 under 35 U.S.C. & 103(a) as unpatentable over Roberts, Pook, and Montague. Ans. 15.", + "The Examiner rejected claim 18 under 35 U.S.C. & 103(a) as unpatentable over Roberts, Pook, and Szabo. Ans. 16.", + "The Examiner finds that Roberts discloses every feature of claim 1 including a layout component that displays a detailed subset of information, comprising textual information, within the area defined by the lens component based upon the search result. Ans. 18-19.", + "The Examiner finds that Roberts does not disclose that the detailed subset of information is animated to enlarge in size as compared to the amount of information associated with the at least one other search result displayed outside the lens region.", + "The Examiner cites Pook as teaching this feature. Ans. 20.", + "The Examiner finds that Roberts discloses a layout component that displays a detailed subset of information, comprising textual information, within the area defined by the lens component based upon the search result. Ans. 19.", + "Specifically, the Examiner finds that Roberts's Figure 1 describes a web search results page in which more detailed information is displayed for search results in the focus view as opposed to search results in the context view.", + "The Examiner also finds that Roberts teaches a system in which more detailed information, such as text snippets, is displayed when a SRE is moved into the focus view. Ans. 19.", + "The Examiner finds that Roberts does not disclose that the detailed subset of information is animated to enlarge in size as compared to the amount of information associated with the at least one other search result displayed outside the lens region.", + "The Examiner cites Pook as teaching this feature. Ans. 20-21.", + "The Examiner finds that it would be obvious to modify the system of Roberts so that the text in the focus view is animated to enlarge in size as suggested by Pook. Id.", + "The Examiner finds that the combination of Roberts, Pook, and Szabo teaches a computer-implemented interface for data presentation embodied on a computer-readable storage medium in which a dynamic information view is coordinated with an amount of information to progressively insert additional information associated with the at least one search result into the detailed subset of information according to an amount of time a mouse hovers over the at least one search result. Ans. 16, 26-27.", + "The Examiner relies upon Pook for teaching the progressive insertion of information. Ans. 16.", + "The Examiner relies upon Szabo for teaching the use of the mouse hovering technique to initiate the progressive insertion of information taught by Pook. Id." + ], + "ptab_opinion": [ + "Although Appellants nominally argue independent claims 1, 21, and 25 separately in the Appeal Brief, we will group the claims and treat claim 1 as representative of the group.", + "Any additional argument with respect to claims 21 and 25 is either a mere assertion that Roberts and Pook do not teach what the claims recite or a discussion of where the claimed subject matter is supported in the Specification or Figures.", + "The discussion includes text copied from the Summary of the Claimed Subject Matter. Id.", + "Accordingly, we will select claim 1 as representative and decide the appeal with respect to the group on the basis of claim 1 alone.", + "Based on the record before us, we find no error in the Examiner's s obviousness rejection of representative claim 1.", + "This finding is supported by evidence in Roberts that describes additional information that could be associated with a SRE and returned by a search engine. FF 3.", + "We therefore agree with the Examiner that Roberts teaches a layout component that displays a detailed subset of information, comprising textual information, within the area defined by the lens component based upon the search result.", + "Based on our review, we agree that Pook teaches enlarging a section of a view that a user finds interesting. FF 4.", + "We agree with the Examiner that this modification would be obvious.", + "Our conclusion of obviousness is also supported by additional evidence in the record.", + "Before discussing the merits of Appellants' arguments in their Appeal Brief, we will first summarize them.", + "Appellants first discuss claim 1 in view of the Specification. App. Br. 6.", + "Appellants then repeat the limitation of claim 1 at issue and assert that Roberts and Pook, either alone or in combination, do not teach it. Id.", + "This assertion is followed by a discussion of each reference individually. App. Br. 6-7.", + "Appellants then copy their discussion of claim 1 from the Summary of the Claimed Subject Matter into their arguments. App. Br. 7-8.", + "Appellants then conclude with another discussion of claimed subject matter in view of their Specification. App. Br. 8.", + "Appellants' arguments in the Appeal Brief have not persuaded us of reversible error in the rejection of claim 1 under 35 U.S.C. \u25cf 103(a).", + "Where Appellants discuss the claimed subject matter in view of their Specification, we fail to see how this discussion identifies an error in the rejection.", + "Where Appellants provide specific arguments with respect to Pook and Roberts, Appellants only address the references individually and do not address the combination set forth by the Examiner.", + "We agree with Appellants that neither reference alone teaches both including additional textual information and then animating to enlarge in size that additional text.", + "The Examiner, however, relies upon the combination of the two references to teach both features and does not rely upon a single reference.", + "Since Appellants' specific arguments with respect to the individual references do not identify an error in the combination, we do not find them persuasive.", + "Where Appellants argue the combination, it is merely an assertion without any supporting reasoning.", + "Given the evidence in the record supporting the Examiner* s rejection, we are not persuaded of error in that rejection based upon Appellants' mere assertion.", + "Accordingly, Appellants' arguments in the Appeal Brief have failed to persuade us of reversible error.", + "Appellants' arguments in the Reply Brief have not persuaded us of reversible error in the rejection of claim 1 under 35 U.S.C. 5 103(a).", + "We fail to see how this paragraph of Roberts teaches what Appellants assert.", + "Appellants may be referring to Roberts's Figure 5, which shows a multiple view variant where the full SRE information for a search result is displayed in a different window.", + "Roberts's Figures 1 and 4, however, show examples where the detailed SRE information is displayed in the same window.", + "The Examiner, however, relies upon the combination of Roberts and Pook to teach both features and does not rely solely upon Roberts.", + "Since Appellants' argument only addresses a single reference and does not identify an error in the combination, we do not find the argument persuasive.", + "Appellants appear to be arguing that since the SRE information is stored in a list to be visualized on demand, SRE information is not automatically displayed when a user changes the focus view.", + "We fail to see persuasive evidence in Roberts supporting the argument that additional user interaction is required in order to display SRE information.", + "In fact, we only see persuasive evidence that no additional interaction is required.", + "Roberts's discussion of the sliding window methodology describes the only user interaction required to display the SRE information -- the user sliding the focus view. Roberts & 3, I 5.", + "However, Figure 4 shows no other button or GUI element that would allow a user to demand the details from a SRE.", + "The weight of the evidence indicates Appellants are not correctly interpreting the language *on demand.\"", + "The \"demand\" to display SRE information is the user' s sliding of the focus view and does not require some additional interaction.", + "We therefore do not find Appellants' argument persuasive and we affirm the rejection of independent claims 1, 20, 21, and 25, and dependent claims 2- 12, 15-17, 19, 22-24, 26, and 27.", + "Although Appellants nominally argue claim 13 separately in the Appeal Brief, they merely: (1) incorporate their arguments with respect to claim 1; (2) provide a statement that Wolton does not cure the deficiencies identified with respect to claim 1; and (3) provide a general characterization of Wolton. App. Br. 9-10.", + "In the Reply Brief, Appellants merely argue that Wolton fails to cure the deficiencies of Roberts and Pook with respect to claim 1 and then incorporate their arguments from the Appeal Brief. Reply Br. 6.", + "Since the Examiner does not rely upon any teaching from Wolton in the rejection of claim 1 and Appellants have not provided arguments for the separate patentability of claim 13, we affirm the rejection of claim 13 as well.", + "Although Appellants nominally argue claim 14 separately in the Appeal Brief, they merely: (1) incorporate their arguments with respect to claim 1; (2) provide a statement that Montague does not cure the deficiencies identified with respect to claim 1; and (3) provide a general characterization of Montague. App. Br. 10.", + "In the Reply Brief, Appellants merely argue that Montague fails to cure the deficiencies of Roberts and Pook with respect to claim 1 and then incorporate their arguments from the Appeal Brief. Reply Br. 6-7.", + "Since the Examiner does not rely upon any teaching from Montague in the rejection of claim 1 and Appellants have not provided arguments for the separate patentability of claim 14, we affirm the rejection of claim 14 as well.", + "The issue before us, then, is as follows:", + "Appellants' arguments in the Appeal Brief have not persuaded us of reversible error in the rejection of claim 18 under 35 U.S.C. 5 103(a).", + "Where Appellants discuss the claimed subject matter in view of their Specification, we fail to see how this discussion identifies an error in the rejection.", + "Where Appellants provide specific arguments with respect to Szabo, Appellants only address Szabo individually and do not address the combination set forth by the Examiner.", + "Since Appellants have not provided specific arguments with respect to all of the references, we are not persuaded of error in the rejection.", + "\"[O]ne cannot show nonobviousness by attacking references individually where \u00b7 \u00b7 \u00b7 the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Where Appellants assert that the combination of Roberts, Pook, and Szabo does not teach the limitation at issue, Appellants provide no supporting rationale.", + "A general allegation of patentability does not convince us of reversible error in the rejection of claim 18.", + "Appellants' arguments in the Reply Brief have not persuaded us of reversible error in the rejection of claim 18 under 35 U.S.C. 5 103(a).", + "Appellants merely argue that Szabo fails to cure the deficiencies of Roberts and Pook with respect to claim 1 and then incorporate their arguments from the Appeal Brief. Reply Br. 7.", + "Given our discussion of claims 1 and 18 above, we are not persuaded that the arguments in the Reply Brief have identified reversible error." + ] +} \ No newline at end of file diff --git a/opinion_split/2010003000_DECISION.json b/opinion_split/2010003000_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..597f55309fc7da8c8259d14b6f0815777ea0155e --- /dev/null +++ b/opinion_split/2010003000_DECISION.json @@ -0,0 +1,54 @@ +{ + "appellant_arguments": [ + "The Appellants contend that the 9 Specification fully describes this limitation, network resources have been in 10 existence as described by the prior art, and a person with ordinary skill in the 11 art would have understood what was being claimed. App. Br. 10-13 and 12 Reply Br. 7-8.", + "The Appellants first contend that (1) Saylor fails to describe network 4 resources can be contributed to a network by one or more contributing 5 computer systems, as per claim 22, App. Br. 2-4 and Reply Br. 1-2.", + "The Appellants also argue 18 that the claimed invention is distinguished from the prior art because the 19 claimed invention keeps track of which users provide resources, content, and 20 indexing services within the network. App. Br. 3.", + "The Appellants also contend that (2) Saylor fails to describe earning 24 credits by contributing network resources to a network, as per claim 22. 25 App. Br. 4-5 and Reply Br. 2-3.", + "The Appellants 10 further argue that Saylor fails to describes the network resources include any 11 of disk space, bandwidth, or CPU cycles. App. Br. 4.", + "The Appellants further contend that (3) Saylor fails to describe a 17 distributed system for publishing and retrieving content, as per claim 22, 18 App. Br. 5-6 and Reply Br. 3-4,", + "The Appellants specifically argue that the 19 Specification defines a distributed system to consist of a group of non-alike 20 computers that are connected together by a network and equipped with 21 corresponding software so that the computers can coordinate their activities 22 in a common scheme. App. Br. 5.", + "The Appellants additionally contend that (4) Saylor fails to describe 4 publishing and retrieving content via peer-to-peer interactions and (5) Saylor 5 fails to describe agent applications distributed across the network, as per 6 claim 22. App. Br. 6-7 and Reply Br. 4-5.", + "The Appellants specifically 7 argue that a user must access some server to access a desired VPage and 8 therefore Saylor must be using a client-server model instead of a peer-to- 9 peer model. App. Br. 6.", + "The Appellants further contend that (6) the Examiner has failed to set 21 forth any evidence of a motivation to modify Saylor and (7) there is no 22 motivation to modify Saylor. App. Br. 8-10 and Reply Br. 6-7." + ], + "examiner_findings": [ + "The Examiner found that the limitation \"having characterizing network 7 resources including... \" is vague and indefinite because the claim 22 fails to 8 define this limitation. Ans. 3 and 10." + ], + "ptab_opinion": [ + "We agree with the Appellants.", + "The test for definiteness 13 under 35 U.S.C. I 112, second paragraph, is whether \"those skilled in the art 14 would understand what is claimed when the claim is read in light of the 15 specification.\" Orthokinetics, Inc. V. Safety Travel Chairs, Inc., 806 F.2d 16 1565, 1576 (Fed. Cir. 1986)(citations omitted).", + "Claim 22 specifically recites 17 that characterizing network resources includes any disk space, bandwidth, 18 and CPU cycles for performing peer-to-peer interactions across the network.", + "As such, a person with ordinary skill in the art would have understood what 20 was being claimed since the claim language itself provides an adequate 21 description of what is being claimed.", + "The Examiner failed to set forth any 22 specific rationale that illustrates why this limitation is vague and indefinite.", + "As such, we find that the Examiner erred in rejecting claim 22 under 35 24 U.S.C. , 112, second paragraph, as being indefinite.", + "We 6 disagree with the Appellants.", + "Saylor describes a system where a user can 7 access content that is provided by a content provider. FF 02.", + "The system 8 includes users, voice network access providers (VNAPs), VPage server 9 systems, and a VCode registration system that are all connected over a 10 communications network. FF 01.", + "The VCode registration system maintains 11 the address of the content and users can access the content from either 12 VNAP databases or from VPage server systems of the content providers. FF 13 01-02.", + "Since the content can be accessed by a server system provided by the 14 content providers that are independent of the VNAPs, the content providers 15 are contributing these server systems, the disk space required to store the 16 content, and the bandwidth to transfer the content to the VNAP network.", + "As 17 such, Saylor describes this limitation of claim 1.", + "However, claim 22 does 21 not require these limitations and therefore this argument is not found to be 22 persuasive.", + "We disagree with the Appellants.", + "The plain 26 and ordinary definition of the term \"credit\" encompasses any benefit, 1 compensation, or acknowledgement for the performance of a task.", + "Saylor 2 describes various fee generating and billing methodologies may be 3 implemented for the system. FF 03.", + "The VNAP charges the user for the 4 content and shares a proportion of the revenue generated with the display 5 host. FF 04.", + "In situations where the display host and the content providers 6 are the same entity, content provider receives a share proportional to its 7 contribution to the system. FF 04.", + "As such, the content providers are 8 compensated for their contributions to the system and therefore are receiving 9 or earning credits for their contributions to the network.", + "However, as 12 discussed supra, Saylor describes that a content provider contributes VPage 13 server systems that provide content to the users and therefore contribute the 14 disk space to store the content and the bandwidth to transfer the content to 15 the user.", + "We disagree with the Appellants.", + "As 23 discussed supra, Saylor describes a system that includes users, voice 24 network access providers (VNAPs), VPage server systems, and a VCode 25 registration system that are all connected over a communications network. 26 FF 01.", + "Each computer in this system includes software that enables a user to 1 access content. FF 01-04.", + "As such, Saylor describes a distributed system, 2 even as defined by the Appellants.", + "We disagree with the Appellants.", + "Saylor describes 10 that the address of a VPage is returned based on a submitted VCode. FF 02.", + "A VCode can be a multi-level VCode, where the registry can resolve the 12 various portions of the VCode to identify the content. FF 02.", + "Since content 13 is distributed amongst several servers and a user accesses content by 14 accessing specific portions of the content on different servers, Saylor 15 describes a peer-to-peer model and the use of agent applications to publish 16 and retrieve content from the network.", + "Although a user connects to a server 17 to find the address of a VPage and that model resembles a client-server 18 model, the access of content where the content is distributed in portions 19 across several machines is descriptive of a peer-to-peer model.", + "We 23 disagree with the Appellants.", + "As discussed supra, Saylor suggests that 24 content providers are compensated for their contributions of disk space 25 (storage of content) and bandwidth (access to content) to the VNAP 26 network.", + "Saylor is concerned with distributing revenue generated by the 1 VNAP and collected from users to display hosts and content providers for 2 their contributions to the network. FF 04.", + "Therefore, it would have been 3 obvious to a person with ordinary skill in the art to measure contributions by 4 disk space, bandwidth, or CPU cycles since such metrics are commonly used 5 in the computer networking arts.", + "Saylor suggests a content provider 6 contributes at least one of disk space, bandwidth, or CPU cycles and a 7 person with ordinary skill in the art would have found it obvious compensate 8 content providers based on any of these metrics in order to fairly distribute 9 revenue.", + "As such, a person with ordinary skill in the art would have found it 10 obvious to modify Saylor to include these features." + ] +} \ No newline at end of file diff --git a/opinion_split/2010003102_DECISION.json b/opinion_split/2010003102_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..033d66c48272e157dbd9a4256cb51f9ddc897bec --- /dev/null +++ b/opinion_split/2010003102_DECISION.json @@ -0,0 +1,51 @@ +{ + "appellant_arguments": [ + "Appellants contend that Mikurak does not disclose a proposed standard that relates to one or more actions required to be enforced by an organization (Br. 7:2-24); and that the other references do not teach the features that are missing in Mikurak.", + "Although Appellants agree that Mikurak teaches security standards and that procedures should be developed and implemented, they contend that Mikurak does not teach a standard that \"relates to one or more actions required to be enforced by an organization based on a rule applicable to the organization,\" with particular emphasis on the required implementation of the standard.", + "Appellants agree that Tracy teaches a predefined standard, but contends that Tracy does not teach scoring the standard or scoring the specific features as arranged and recited in the claim.", + "Appellants contend that Mikurak paragraph 1184 does not teach linking a proposed standard and a proposed procedure.", + "Appellants argue that claim 25 uses permissible means-plus-function language to recite the structure of their apparatus and that their Specification describes various structures for performing the functions recited in claim 25, including hardware.", + "Appellants describe that the term, \"module,\" can correspond to a software application." + ], + "examiner_findings": [ + "The Examiner finds that Mikurak teaches every recited feature of representative claim 1 except for a module for scoring the proposed standard; a module for scoring the proposed procedure; a module linking the proposed standard to the rule and linking the proposed procedure to the proposed standard; and a database configured for storing the at least one standard and the at least one procedure such that the standard and procedure are linked to one another.", + "The Examiner finds that the secondary references teach the features that Mikurak does not teach and that it would have been obvious to combine the references to obtain the claimed device.", + "In any event, the Examiner finds that Mikurak I 2583 teaches this limitation.", + "The Examiner finds that Mikurak teaches standards, that Tracy teaches scoring a proposed standard, and that it would have been obvious to combine the Tracy teaching in the Mikurak system because it would allow enhancement of fine tuning the system.", + "The Examiner finds that the combination of Tracy and Blom teach this limitation and that it would have been obvious to combine the Blom teaching in the Mikurak system because it would allow for improvement of the invention by incorporating proposed procedures.", + "The Examiner finds that the combination of Mikurak and Tracy teach this limitation and that it would have been obvious to combine the Tracy teaching in the Mikurak system because it would allow enhancement of fine tuning the system.", + "The Examiner, however, finds that this limitation is taught by paragraph 1184's discussion of matching.", + "The Examiner concludes that because claim 25 does not recite any hardware components, claim 25 is software per se.", + "Alternatively, the Examiner concludes that Appellants' Specification states that propagation discussed in paragraph 31 of the disclosure is not limited to a computer medium." + ], + "ptab_opinion": [ + "Because the referenced recitation is in claim I's preamble and does not appear elsewhere in claim 1, the recitation concerning the standard relating to one or more actions required to be enforced by an organization is entitled to little weight because it recites an intended use.", + "Here, the claim is directed to a standard and a system (including modules, memory, and database) for rationalizing the standard.", + "The intended use of the standard (actions required to be enforced) is of no significance to the claimed standard and system because the body of the claim does not act on the actions required to be enforced, such that the preambular limitation to the \"actions\" is essential to understanding the recitations in the claim body.", + "In addition, deletion of the disputed limitation would not affect the claimed structure.", + "We therefore conclude that the disputed phrase merely recites an intended use and that Mikurak is capable of having a standard that relates to an action required to be enforced by an organization.", + "Appellants do not respond or rebut this finding.", + "We find that the Examiner's finding is reasonable and we agree with the Examiner.", + "Appellants' argument is not persuasive because one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.", + "Appellants' arguments (Br. 9:1-16) are not persuasive because they have argued the references individually, rather than arguing the combination relied upon by the Examiner.", + "A DATABASE CONFIGURED FOR STORING THE AT LEAST ONE STANDARD AND THE AT LEAST ONE PROCEDURE SUCH THAT THE STANDARD AND PROCEDURE ARE LINKED TO ONE ANOTHER", + "Appellants do not respond to the Examiner's s finding.", + "In addition, Appellants argue the references individually, rather than arguing the combination relied upon by the Examiner.", + "Consequently, Appellants' arguments are not persuasive.", + "We are therefore not persuaded that the Examiner erred in rejecting (1) representative claim 1; (2) independent claims 9 and 25 for similar reasons; and (3) claims 6, 10-14, 20, 21, 23, and 24 not separately argued with particularity.", + "Accordingly, we will sustain the Examiner's rejection of claims 1, 6, 9-14, 20, 21, and 23-25.", + "We will also sustain the rejections of claims 2-5, 7, 8, 15-19, and 22 which have been rejected as obvious over Mikurak, Tracy, Blom, and various additional references because the references have been argued individually and the claims have not been argued separately with particularity.", + "We find that 35 U.S.C. & 112, I 6 has been invoked with respect to claim 25.", + "As such, the means-plus-function limitations in claim 25 must be construed by \"lookling] to the specification and interpret[ing] that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.\"", + "Similarly, we find that these \"means for\" limitations in claim 25 can broadly, but reasonably correspond to modules or are software application.", + "Yet, in light of the disclosure, the breadth of the term, **apparatus\" includes a computer usable or readable storage medium including program instructions (i.e., the \"means for\" limitations.\"", + "This paragraph of the Specification describes these implementations in the alternative.", + "Thus, the stream of information as well as the electronic, magnetic, optical, electromagnetic, and infrared propagation medium are all alternatives to computer hardware.", + "The clear import of this discussion is that the invention, including the broadly recited, **apparatus,\" can exist solely as signals, which are not patentable subject matter under & 101.", + "Reading independent claim 25 in light of the Specification, the recited **apparatus\" encompasses a signal that performs the recited operations.", + "Therefore, when read in light of the Specification, claim 25 includes both statutory subject matter (means-plus-function limitations stored on a diskette) and non-statutory subject matter (means-plus-function limitations conveyed by a signal).", + "According to USPTO guidelines, such claims must be amended to recite solely statutory subject matter.", + "\") For the foregoing reasons, independent claim 25 does not recite statutory subject matter under 35 U.S.C. 5 101.", + "Accordingly, we will sustain the Examiner's \u25cf 101 rejection of independent claim 25." + ] +} \ No newline at end of file diff --git a/opinion_split/2010003152_DECISION.json b/opinion_split/2010003152_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..15109b9950f228895bc0df6730df82083b9ad096 --- /dev/null +++ b/opinion_split/2010003152_DECISION.json @@ -0,0 +1,62 @@ +{ + "appellant_arguments": [ + "Rather, Appellant argues that, in light of the description in the Specification that the intermediary playing card receiver may be a carousel 210, 212 or equivalent, a person of ordinary skill in the art would not interpret Grauzer's roller* as corresponding to an intermediary playing card receiver.", + "Appellant asserts that the Examiner' s claim construction is overbroad in that it would cover perhaps every component of Grauzer' s shuffler as facilitating shuffling.", + "Appellant also argues that there is no rational basis for construing some of Grauzer's rollers as corresponding to the transport path and other rollers as corresponding to the intermediary playing card receiver.", + "Appellant argues that Grauzer's elevator platform 512, flip-up cover 502, and arm extension 514 cannot be construed as corresponding to the claimed playing card output receiver for several reasons.", + "First, Appellant argues that when Grauzer's playing card support surface (elevator platform 512) is below the \"cover-contact level, ..8 it moves independently of the ceiling (flip-up cover 502), while the playing card support surface and ceiling of claim 1 move together.", + "Second, Appellant asserts that Grauzer' is arm extension 514 \"merely contacts or presses against the underside of the *flip-up cover\"\" when elevator platform 512 is at or above the \"cover contact level\" and does not contact the flip-up cover during shuffling.", + "Third, Appellant argues that the member of claim 1 extends to the playing card support surface, while Grauzer's s arm extension 514 is \"to a side of the unlabeled top surface (playing card support surface) of the elevator platform.\"", + "Appellant contends that Grauzer's s nip rollers insert cards into the stack of cards carried by the elevator platform in the same order which the playing cards were inserted into the card accepting area, and thus Grauzer does not perform the identical function specified in claim 5 in substantially the same way.", + "Appellant concedes that in the \"cover-contact position,\" Grauzer's s device is configured as two horizontal surfaces (elevator platform 512 and section 504 of flip-up cover 502) and a vertical member (arm extension 514)." + ], + "examiner_findings": [ + "The Examiner found that Grauzer's roller 6702 corresponds to the intermediary playing card receiver of claim 1 because it is positioned and functions as called for in claim 1.3 Ans. 9-11.", + "The Examiner found that Grauzer discloses at least one member (arm extension 514) physically extending from the ceiling (flip-up cover 502) to the playing card support surface (elevator platform 512) for movement therewith. Ans. 3.", + "The Examiner found that the Specification describes that rollers are a \"means for providing,\" as called for in claim 1, and that Grauzer's s rollers 146 perform the identical function in substantially the same way by providing cards in \"an order\" to the output receiver (elevator platform 156). Ans. 3, 8, 14-15 (citing Spec. 46, 1. 15).", + "The Examiner found that Grauzer's section 606 of flip-up cover 602 locks and unlocks elevator platform 512 in the lowered position as called for in claim 7, because section 606 restricts access to area 682 so that the unshuffled cards may not be too readily accessed. 11 Ans. 16.", + "The Examiner found that Grauzer discloses a playing card output receiver (section 504 of flip-up cover 502) comprising a playing card support surface (elevator platform 512). Ans. 5-6.", + "The Examiner also found that Grauzer's s elevator (elevator platform 512) is an equivalent device to the ordering means of claim 19. Ans. 19.", + "The Examiner found that Grauzer' s apparatus provides the cards in a different order to the playing card support surface of the playing card output receiver (elevator platform 512). Ans. 3, 6, 20." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We affirm-in-part.", + "Independent claim 1 Appellant argues claims 1-4, 6, and 14-16 as a group, and we select claim 1 as representative.", + "Appellant separately argues claims 5, 7, and 17.", + "Appellant does not challenge the Examiner's s finding that Grauzer's roller 670 is positioned and functions as called for in claim 1.", + "We agree with the Examiner (Ans. 10-11) that a carousel is but one example (Spec. 10:15-20) of an embodiment of an intermediary playing card receiver, and because the language of claim 1 is broader than this example, it is not imported as a limitation into claim 1.", + "See SuperGuide Corp. V. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (\"Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. \u00b7 \u00b7 \u00b7 [A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. \").", + "Thus, Appellant's argument is unpersuasive because it is not commensurate in scope with claim 1.", + "This argument is unpersuasive because the Specification, like Grauzer, refers to the intermediary playing card receiver 122 as facilitating shuffling for the apparatus as a whole (handling system 110).", + "The Examiner's is rejection is not erroneous simply because similar elements of the prior art (rollers) have been interpreted as corresponding to different elements of claim 1.", + "The proper inquiry is whether Grauzer's s roller 670 corresponds to an intermediary playing card receiver as called for in claim 1.", + "We interpret the claim and then look to the prior art.", + "Therefore, a receiver receives and grasps something by some physical means.", + "We discern nothing in the Specification inconsistent with this ordinary meaning.", + "Thus, we interpret claim 1 as requiring the intermediary playing card receiver to receive and grasp playing cards by some physical means.", + "Therefore, Grauzer's roller 670 receives and grasps the playing card by some physical means (the surface of the roller).", + "Appellant failed to demonstrate error in the Examiner's s finding that Grauzer discloses an intermediary playing card receiver (roller 670).", + "This argument concedes that when Grauzer's elevator platform 512 is above the *cover-contact level,\" the playing card support surface (elevator platform 512) and ceiling (flip-up cover 502) move together.' 9", + "Thus, Appellant's argument is premised on a claim construction that claim 1 calls for the member to physically extend from the ceiling to the playing card support surface for movement therewith at all times.", + "Claim 1 contains no such limitation.", + "Further, we cannot find, nor has Appellant identified, a portion of the Specification necessitating such a claim interpretation.", + "However, such assertion is unpersuasive because claim 1 does not call for the member to physically extend from the ceiling during shuffling.", + "To the contrary, Grauzer's 's member (arm extension 514) physically extends from the playing card support surface (elevator platform 512), as called for in claim 1.", + "Appellant failed to demonstrate error in the Examiner's 's finding that Grauzer discloses a ceiling as called for in claim 1.", + "As such, we sustain the rejection of claims 1-4, 6, and 14-16.", + "The rejection is deficient on its face in that it finds that Grauzer's is device provides playing cards to the playing card output receiver in \"an order\" rather than in a sorted or a random order as called for in claim 5. 10", + "Thus, off-set rollers 146 do not provide playing cards in a sorted or a random order to elevator platform 156; rather, the combination of off-set rollers 146, separation element 154, and elevator platform 154 places the playing cards in a sorted or random order.", + "As such, we cannot sustain the rejection of claim 5.", + "Appellant argues, and we agree, that the Examiner': s rejection is in error because claim 7 does not call for restricting access to the unshuffled cards.", + "Claim 7 calls for selectively locking and unlocking the playing card output receiver in the lowered position, and the Examiner made no finding that Grauzer discloses such limitation.", + "As such, we cannot sustain the rejection of claim 7 and its dependent claims 8-13.", + "Such configuration is a rectangular box that is open on three sides.", + "Consequently, we agree with the Examiner that Grauzer discloses a rectangular box open on one side.", + "As such, we sustain the rejection of claim 17.", + "Appellant argues, and we agree, that Grauzer's s elevator platform 512 cannot correspond to both the playing card support surface of the playing card output receiver and the ordering means because claim 19 calls for the ordering means to provide the playing cards to the playing card output receiver, and elevator platform 512 cannot provide the cards to itself.", + "As such, we cannot sustain the rejection of claim 19 and its dependent claims 20-31.", + "Appellant argues, and we agree, that Grauzer's playing card handling system does not provide playing cards to the elevator platform 512 in an order different from the order of the playing cards in the playing card input receiver because Grauzer' is nip rollers insert cards into the stack of cards carried by the elevator platform in the same order which the playing cards were inserted into the card accepting area.", + "As such, we cannot sustain the rejection of claim 32 and its dependent claims 33-40." + ] +} \ No newline at end of file diff --git a/opinion_split/2010004005_DECISION.json b/opinion_split/2010004005_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1fbf861c8ddf15e723feb7ec46afae1579e26d23 --- /dev/null +++ b/opinion_split/2010004005_DECISION.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [ + "Appellant argues that figure 2 of Pase suggests that there would be no room to put flexible members in the apparatus of Pase. App. Br. 10.", + "Appellant argues that Clements does not disclose a frame assembly with upper and lower portions each having an opening through which the material may pass. App. Br. 11, 21." + ], + "examiner_findings": [ + "The Examiner rejected under 35 U.S.C. & 103(a) claims 1-5, 7-16, 18, and 19 as unpatentable over Pase (US 3,528,570, iss. Sep. 15, 1970) and Clements (US 4,275,869, iss. Jun. 30, 1981); claims 1-5, 7-12, and 19 as unpatentable over Pase, Clements, and Mills (US 4,461,455, iss. Jul. 24, 1984); claims 13-16 and 18 as unpatentable over Pase and Mills; and claim 19 as unpatentable over Pase, Clements, and Emrey (US 5,542,500, iss. Aug. 6, 1996).", + "The Examiner found that Pase's apparatus includes a generally rectangular frame assembly having an upper portion and a lower portion generally coextensive with one another. Ans. 3-4; Pase, fig. 8 (depicting upper H-frame 21 and lower frame comprising pivot shafts 48, 48' and stringers 52).", + "As pointed out by the Examiner (Ans. 4), Clements teaches a plurality of spaced apart air cushions used as a stable elevating means of an upper portion without any other structural attachments between the upper load member and lower (base) surface. Fig. 8." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. .5 6(b).", + "We AFFIRM.", + "For each of the rejections involved in this appeal, the issue raised is whether the combined teachings of the applied references would have prompted a person of ordinary skill in the art to modify the Pase unloading apparatus by replacing the elevating mechanism of Pase (lifting arms 44, 46, 44' 46', pivot shafts 48, 48'. crank arms 56, 56' pneumatic power cylinder 60, etc.) with inflatable flexible lifting members disposed at or adjacent each of said four corners of said frame assembly and around openings in the upper and lower frame members to permit passage of bulk material, as called for in independent claims 1, 13, and 19.", + "Each of Clements, Mills, and Emrey evidences that inflatable air cushions or bellows were well known mechanisms for elevating a load at the time of Appellant's invention.", + "Accordingly, the modification of Pase to provide a plurality of inflatable flexible members between the upper frame and lower frame at spaced locations around the openings therein including at or adjacent the four corners thereof, for elevating the upper frame and flexible boot 14 supported thereon, as proposed by the Examiner (Ans. 4, 8, 10, 11), is nothing more than the simple substitution of one known elevating mechanism for another known elevating mechanism to yield the predictable result of a simple, stable, and relatively inexpensive lifting mechanism.", + "\"[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.\" KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 416 (2007).", + "Thus, the Examiner did not err in determining that the modification would have been obvious.", + "We have considered the arguments set forth in the Appeal Brief and Reply Brief, but we do not find them persuasive.", + "For purposes of showing obviousness under 35 U.S.C. .5 103(a), \"[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.\" In other words, **familiar items may have obvious uses beyond their primary purposes.\" In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (citations omitted).", + "Inasmuch as Appellant's invention and each of the cited references (Pase, Clements, Mills, and Emrey) deals with the problem of elevating a load, each of the references applied by the Examiner is reasonably pertinent to Appellant's invention.", + "Any suggestion that a person of ordinary skill in the art would not have been expected to look to these references for a solution to problems facing Appellant (i.e., that these references are not analogous art), is not persuasive. See App. Br. 13-16 (discussing \"the analogous-art test*); Reply Br. 2 (suggesting that the prior art references combined in the rejections in this case may not be \"closely related\").", + "Appellant's arguments directed to the age of the Pase reference and the long-known use of inflatable flexible members for lifting (App. Br. 18; Reply Br. 3) do not point to the nonobviousness of the claimed invention.", + "Absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness. Iron Grip Barbell Co., Inc. 17. USA Sports, Inc., 392 F.3d 1317, 1324-25 (Fed. Cir. 2004).", + "It is well established that the mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).", + "Appellant has not pointed to any evidence in the record that there was a long-felt need in the art that others tried and failed to solve, notwithstanding knowledge of the teachings of the applied references.", + "Based on a review of the top view of the apparatus shown in figure 6 of Pase, it is not readily apparent that there would be insufficient room to incorporate the flexible members between the upper and lower frame members, in place of the lifting arms 44, 46, 441, 46' pivot shafts 48, 48*, crank arms 56, 56, pneumatic power cylinder 60, etc. of Pase's elevating mechanism.", + "In any event, to the extent that the frame structure of Pase's unloading apparatus might require some modification to accommodate the flexible members, Appellant has not adequately explained why this would have been beyond the technical grasp of a person of ordinary skill in the art.", + "\"A person of ordinary skill is also a person of ordinary creativity, not an automaton. \" KSR, 550 U.S. at 421.", + "See also Perfect Web Tech., Inc. V. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (\"while an analysis of obviousness always depends on evidence \u00b7\u00b7\u00b7 it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference\").", + "As for the particular placement of the flexible members disposed at or adjacent each of said four corners of said frame assembly and around openings in the upper and lower frame members to permit passage of bulk material, as called for in independent claims 1, 13, and 19, Appellant has not pointed out any flaw in the Examiner's reasoning in the Answer at page 8, lines 1-10; page 10, lines 5-18; and page 13, lines 8-17.", + "This argument is not persuasive, because, as pointed out by the Examiner (Ans. 13), Pase is relied on for this feature.", + "Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Appellant's argument that Emrey does not teach an opening therethrough (App. Br. 21) is unconvincing for the same reason.", + "For the above reasons, we sustain all of the Examiner' is rejections." + ] +} \ No newline at end of file diff --git a/opinion_split/2010004549_DECISION.json b/opinion_split/2010004549_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a67603b6cb41ee8a57093fa5d03e75a6fa602d72 --- /dev/null +++ b/opinion_split/2010004549_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "The Examiner found that Mayberry discloses a consumable cartridge case for a muzzle loading firearm, except that Mayberry does not disclose that the cartridge case (tube of paper A) is composed of a consumable solid explosive material comprising nitrate sale, perchlorate salt and fuel as called for in independent claims 1 and 17. Ans. 3.", + "The Examiner found that Griesbach discloses a cartridge case (premeasured compressed powder charge 2) composed of a consumable solid explosive material as claimed, that acts as a cartridge in that \"it is used behind a bullet\" so that it **functions as a cartridge much like appellant's cartridge.\" ~ Ans. 3, 8; see also Griesbach, fig. 5.", + "The Examiner concluded that it would have been obvious \"to take the device of Mayberry and add the consumable cartridge of Griesbach\" to allow the device to be more complete and rapidly burn. Ans. 3-4." + ], + "ptab_opinion": [ + "We reverse.", + "The Examiner* s proposed combination is unclear.", + "The rejection proposes to \"add\" Griesbach's premeasured compressed powder charge 2 to Mayberry' s device, implying that the entirety of Mayberry' s device is retained. See Ans. 3.", + "In such a combination the cartridge case (Mayberry's tube A) is unmodified and thus composed of paper, rather than a consumable solid material comprising nitrate salt, perchlorate salt, and fuel as called for in claims 1 and 17. Mayberry, col. 1, 11. 35-36, figs 1, 2.", + "A second interpretation is that the Examiner proposes to replace the paper in Mayberry's tube a with a consumable solid material comprising nitrate salt, perchlorate salt, and fuel, as disclosed by Griesbach.\"", + "However, Griesbach': premeasured compressed powder charge 2 is a solid structure. See Griesbach, col. 6, 11. 18-19; figs. 1-6; see also Br. 10.", + "While the Examiner contends such structure functions as a cartridge (Ans. 8), the Examiner does not provide any evidence or reasoning to establish that Griesbach's solid structure could function as a case including a central internal cavity for receipt of granular, explosive powder. See Griesbach, col. 6, 11. 18-19; figs. 1-6; Spec. figs. 1-4.", + "While Griesbach's premeasured compressed charge 2 may be used in a cartridge case, Griesbach does not teach or suggest using it as a cartridge case. Griesbach, col. 15, 11. 5-8; see also Br. 11.", + "The fact that Griesbach's premeasured compressed powder charge 2 may function similar to a cartridge does not demonstrate that the material used therein would be suitable for use as a case for such a cartridge. Ans. 8.", + "Thus, the Examiner has not established that there was a reasonable expectation that Mayberry's s cartridge case (tube A) would function properly if it were made from the material of Griesbach's powder charge 2.", + "The rejection fails to adequately articulate why the subject matter of claims 1 and 17 would have been obvious to a person of ordinary skill in the art in light of Mayberry and Griesbach.", + "Accordingly, we cannot sustain the rejection of independent claims 1 and 17 and their respective dependent claims 2-7, 10, 18, and 19.", + "The rejection does not rely upon Nadel to correct the deficiency of the Mayberry and Griesbach combination explained in the analysis of independent claims 1 and 17, supra. Ans. 6-7, 9.", + "Accordingly, we cannot sustain the rejection of claims 8, 9, and 20 because their rejection suffers from the same shortcoming as the rejection of independent claims 1 and 17.", + "Though this rejection is stated as Griesbach and Mayberry, rather than Mayberry and Griesbach, the rejection still relies upon the erroneous finding that Griesbach's premeasured compressed powder charge 2 corresponds to a\" consumable cartridge case as claimed.\" Cf Ans. 7-9 (Griesbach and Mayberry) to Ans. 3-4 and 8 (Mayberry and Griesbach).", + "Thus, our analysis of the rejection of claims 1 and 17, supra, is equally applicable here.", + "Accordingly, we cannot sustain the rejection of independent claim 11 and its dependent claims 12-16." + ] +} \ No newline at end of file diff --git a/opinion_split/2010004729_DECISION.json b/opinion_split/2010004729_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..96bdf768b6cc508c8196608a4f3ac2c5e345e761 --- /dev/null +++ b/opinion_split/2010004729_DECISION.json @@ -0,0 +1,15 @@ +{ + "appellant_arguments": [ + "According to page 6 of the Appeal Brief, the attaching means recited in claims 29 and 35 is said to constitute the holder 33 and the attachment faces recited in claim 29 are said to constitute the U-shaped rails 33c." + ], + "examiner_findings": [], + "ptab_opinion": [ + "ISSUE AND CONCLUSION The dispositive question raised by the Examiner and Appellants is: Has the Examiner shown that Narusawa describes or illustrates a plane including a pair of attachment faces or rails straddling a motor shaft and extending in parallel with the same at the two sides of a motor case as recited in claims 29 and 35 within the meaning of 35 U.S.C. 5 102(b)?", + "On this record, we answer this question in the negative for the reasons stated by Appellants in the Appeal Brief.", + "DISCUSSION As correctly interpreted by Appellants, the phrases \"a plane including a pair of attachment faces\" and \"a plane including a pair of rails\" recited in claims 29 and 35, respectively means that a pair of attachment faces or a pair of rails straddling a motor shaft and extending in parallel with the same at the two sides of a motor case lie in the same plane.", + "This interpretation is reasonable and consistent with the plain meaning of the term \"a plane including.. \" and with amended paragraph [0091] of the Specification which defines coplanar surfaces of rails 33c in figure 3 as attachment faces.", + "Having interpreted claims 29 and 35 as requiring coplanar attachment faces or rails, we agree with Appellants that the Examiner has not demonstrated that Narusawa teaches such fcatures.", + "Although the Examiner relies on a pair of spring curved pieces 33 of a holder frame 30 in Narusawa's 's figure 1C as attachment faces or rails, Narusawa's figure 1 does not illustrate such pair of curved spring pieces 33 or its faces straddling a motor shaft 22 lying in the same plane as correctly argued by Appellants at pages 12-13 of the Appeal Brief.", + "Accordingly, we reverse the Examiner's decision rejecting claims 29, 30, 35, and 36 under 35 U.S.C. .8 102(b) as anticipated by the disclosure of Narusawa." + ] +} \ No newline at end of file diff --git a/opinion_split/2010005584_DECISION.json b/opinion_split/2010005584_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..75681aba1bd28d0bb9bd44e56dbee9e593ec0fb6 --- /dev/null +++ b/opinion_split/2010005584_DECISION.json @@ -0,0 +1,53 @@ +{ + "appellant_arguments": [ + "Appellants appeal therefrom under 35 U.S.C. \u25cf 134(a).", + "Invention This invention relates to data transmission techniques, and more particularly, to an optimized method for efficiently transmitting data frames using MAC protocols, such as wireless IEEE 802.11 protocol. (Spec. 1).", + "Claim 1, reproduced below, is illustrative of the claimed subject matter:", + "1. a method of transmitting data frames over a data network, comprising transmitting a plural number of MAC (Media Access Control) data frames, each MAC data frame including a header, a data field, and a frame check sequence (FCS), with only a single PLCP (Physical Layer Control Procedure) overhead; and transmitting a concatenated MAC header indicating said plural number of MAC data frames with the single PLCP.", + "(Disputed limitation emphasized).", + "Appellants make the following contentions:", + "Appellant's claimed invention is completely different because the combination of Nishimura and Ho does not disclose or suggest a header indicating the number of MAC data frames (wherein each MAC data frame includes a header, a data field, and a frame check sequence).", + "As explained above, Ho relates to the MSDU, which is a subset of the aggregation frame, while Nishimura relates to the MAC packet, which is a subset of the MPDU.", + "Therefore, the claimed invention would not be obvious to one of ordinary skill in view of the combination of Nishimura and Ho because the cited references appear to be related to the number of subsets of the claimed MAC data frame and not the number of MAC frames in the MAC sublayer.", + "Furthermore, neither Ho nor Nishimura suggests a need for a header to indicate the number of aggregation frames (Ho) or the number of MPDUs (Nishimura).", + "As such, the combination of Nishimura and Ho does not disclose all of the limitations of claim 1.", + "Furthermore, as pointed out above, the combination of Nishimura and Ho would not motivate or enable one of ordinary skill in the art to invent the features of claim 1. (Reply Br. 6-7).", + "Regarding the independent claim 11, Appellants contend claim 11 is allowable for the same reasons claim 1 is allowable. (Reply Br. 7).", + "Regarding the dependent claims 2, 4-10, 12, and 14-20, Appellants contend these claims are allowable by virtue of their dependency from claims 1 and 11. (Reply Br. 7-8)." + ], + "examiner_findings": [ + "STATEMENT OF THE CASE The Patent Examiner rejected claims 1, 2, 4-12, and 14-20.", + "Claims 3 and 13 were canceled.", + "REJECTION Claims 1, 2, 4-12, and 14-20 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Nishimura (US Patent Application Publication No. 2003/0210673 A1, November 13, 2003) in view of Ho (US Patent Application Publication No. 2003/0169769 A1, September 11, 2003).", + "Since Nishimura already discloses transmitting a plurality of MAC data frames as recited by claim 1, the 35 U.S.C. 103(a) prior art rejection relies on the count value as taught by Ho et al. to indicate the number of MAC data frames that are combined with a single PLCP header as taught by Nishimura. (Ans. 12; emphasis removed and added).", + "The Examiner relies on Ho's general teaching of a frame counter (126) in the header (1 16) that indicates the number of data frames in the frame body (1 18) behind the header (1 16). (Ans. 12; Ho, Fig. 6).", + "Nishimura further discloses detecting the size of the received packet to determine whether the received packet is a conventional packet with a single data unit or a more efficient packet that contains a plurality of data units (see paragraphs 80-83).", + "By using the frame sub-body count field 126 as disclosed by Ho et al., Nishimura will be able to determine whether the received packet contains a plurality of data units for processing without the step of detecting the size of the received packet.", + "Therefore, the motivation for using the frame sub-body count field with the apparatus of transmitting combined data frames over a data network is to provide information regarding the transmitted data in order to allow the receiver to determine whether a received packet contains multiple data units without having to detect the size of the received packet. (Ans. 13)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We affirm.", + "GROUPING OF CLAIMS Based on Appellants' arguments, we will decide the appeal of the obviousness rejection of claims 1, 2, 4-12, and 14-20 on the basis of claim 1.", + "See 37 C.F.R. & 41.37(c)(1)(vii).", + "ANALYSIS We disagree with Appellants' contentions regarding the Examiner's s obviousness rejection of the claims.", + "We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants' Appeal Brief. (Ans. 11-14).", + "We highlight and address specific findings and arguments below.", + "Issue: Under & 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested \"transmitting a concatenated MAC header indicating said plural number of MAC data frames with the single PLCP,\" within the meaning of claim 1 and commensurate language of claim 11?", + "Based upon our review of the record, we find Appellants' principal argument urging patentability is predicated on non-functional descriptive material (i.e., the format of a data frame). (App. Br. 6-8; Reply Br. 6-7).", + "Claim 1 merely requires transmitting MAC data frames according to a specific format (i.e., a data structure per se).", + "Claim 11 is broadly directed to forming a frame structure of packet data including MAC data frames.", + "As such, claims 1 and 11 do not positively recite that the contents of the data (or arrangement or structure of the data) is used to change or alter any computer function.", + "I See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, affd, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), affd, 191 Fed. Appx. 959 (Fed. Cir. 2006).", + "Thus, Appellants' arguments urging patentability are predicated on non-functional descriptive material, which we do not give patentable weight.", + "Even if we arguendo accorded patentable weight to the disputed data frame, we are not persuaded by Appellants' arguments for at least the following reasons:", + "(1) We agree with the Examiner's findings: Ho et al. discloses a method and apparatus for frame aggregation of MAC data (see paragraph 15) wherein the aggregated frame includes a frame sub-body count field 126 that indicates the number of frames that are aggregated (see paragraph 41 and figure 6).", + "(2) We also agree with the Examiner's responsive argument: While the Appellant argues that the frame subbody 132 as disclosed by Ho is not the same or equivalent to a MAC data frame as in Appellants' claim 1, the prior art rejection does not require Ho et al. to disclose [a] MAC data frame because the primary reference already discloses the limitation. (Ans. 13).", + "(3) We agree with the Examiner's underlying factual findings and ultimate legal conclusion of obviousness as further articulated in the responsive arguments: With respect to the combination of Nishimura and Ho et al. in the 35 U.S.C. 103(a) prior art rejection, it is noted that Nishimura and Ho et al. both disclose a system and method for combining and transmitting a plurality of data units into an extended frame or packet.", + "Moreover, Appellants fail to present evidence or substantive arguments to rebut the Examiner's proffered motivation to combine Nishimura and Ho. (See Ans. 4).", + "For the above reasons, we are not persuaded of Examiner error regarding the rejection of claim 1.", + "We did not find these arguments persuasive for the same reasons discussed above regarding claim 1.", + "For the reasons discussed above regarding claims 1 and 11, we disagree.", + "Therefore, we sustain the rejection of claim 1 and that of claims 2, 4-12, and 14-20, which fall therewith." + ] +} \ No newline at end of file diff --git a/opinion_split/2010005612_DECISION.json b/opinion_split/2010005612_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..60a0d3c6d3b55a965634dfccbe41250227676465 --- /dev/null +++ b/opinion_split/2010005612_DECISION.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "Contentions Appellant contends: Independent claim 1 recites, in part, \"the processor selects the store buffer data for use by a data load operation if both (i) a selected way of the plurality of ways matches the store buffer way \u00b7\u00b7\u00b7 wherein the result of the comparison of the hashed addresses is a current way value indicative of the selected way.\"", + "Independent claim 10 recites similar limitations.", + "However, Examiner erred in rejecting the claims because the cited references fail to teach or suggest the quoted limitations.", + "On page 7 of the Final Office Action, Examiner cites Hughes at col.2 1.36-44 as allegedly teaching the quoted limitation.", + "At the cited location, Hughes states \"Ii]n set associative embodiments, the way in which the load hits is compared to the way in which the store hits to further verify the correctness of the forwarding.\"", + "However, an independent way determination fails to teach or suggest the result of hashed address comparison being the way value. (App. Br. 12-13).", + "However, Appellant additionally contends that the Examiner has erred regarding claims 16-20 in view of the claimed virtual address: Additionally, independent claim 16 recites, in part, \"a virtual address.\"", + "However, Examiner erred in rejecting the claims because the cited references fail to teach or suggest the quoted limitation.", + "On page 9 of the Final Office Action, \"Examiner cites Gruner at col.5 1.25-21 as allegedly teaching the quoted limitation.", + "At the cited location, Gruner teaches an interleaved memory system in which words that are normally expected to be used sequentially are stored in different memory modules.", + "However, storing words in different memory modules fails to teach or suggest a virtual address.", + "For at least these reasons, Examiner erred in rejecting independent claim 16, along with dependent claims 17-20, because the claims are allowable over Razdan in view of Hughes in even further view of Gruner. (App. Br. 14)." + ], + "examiner_findings": [ + "REJECTION Claims 1-5, 7, 8, 10-13, and 15-22 stand rejected under 35 U.S.C. $103(a) as being unpatentable over the combination of Razdan, Hughes, and Gruner.", + "The Examiner disagrees.", + "In particular, the Examiner responds that **Applicant has not argued against Razdan in view of Hughes, instead preferring to attack Hughes singly.\" (Ans. 9).", + "The Examiner further responds: The Appellant's s statement to the effect of \"Thlowever, an independent way determination fails to teach or suggest the result of hashed address comparison being the way value\" (pg 13) does not appear reflective of positively recited claim requirements.", + "The claimed phrasing \"wherein the result of the comparison of the hashed addresses is a current way value indicative of the selected way\" does not positively require that the comparison generate the way; it merely requires that the comparison generate a value that is indicative of the way, which can be interpreted as being fulfilled by Hughes disclosure of recalling the forwarding if the way determination misses, in that the recall signal is a value indicative of the way being incorrect. (Ans. 9-10, underline added).", + "Razdan discloses using a hash of a portion of the load address and an un-hashed portion of the address to determine if a load hits in the cache (figure 6), while Hughes accepts the address and way of a load address in determining whether a load hits in the store queue (figure 1).", + "At the time of the invention, it would have been obvious to a person having ordinary skill in the art to modify Razdan to buffer the store operations, as taught by Hughes, and to operate the store queue given the hashed address and un-hashed address already calculated by Razdan.", + "The motivation for doing so would have been that it allows the processor to store writes that are still speculative and to flush those writes when they turn out to be non-coherent (Hughes, column 1 lines 14-42).", + "Therefore, it would have been obvious to modify Razdan to use Hughes store buffer for the benefit of flushing speculative writes that turn out to be non-coherent. (Ans. 4-5).", + "The Examiner disagrees: Applicant has failed to provide any reasoned rationale as to why storing words in different memory modules fails to teach or suggest a virtual address.", + "Gruner' s storing of words in different memory modules means that the inputted addresses are mapped to different modules, that there is a conversion between the inputted address and the address the actual memory modules see.", + "The Examiner asserts that this can clearly be seen as disclosing a virtual address. (Ans. 11-12).", + "The Examiner finds that, because \"Gruner' s storing of words in different memory modules means that the inputted addresses are mapped to different modules, \u00b7 \u00b7 \u00b7 there is a conversion between the inputted address and the address the actual memory modules see.\" (Ans. 11-12, emphasis added)." + ], + "ptab_opinion": [ + "STATEMENT OF CASE Appellant appeals under 35 U.S.C. & 134 from a rejection of claims 1-5, 7, 8, 10-13, and 15-22.", + "We have jurisdiction under 35 U.S.C. .5 6(b).", + "We affirm-in-part.", + "The claims are directed to store buffer forwarding in a pipelined computer processing system.", + "Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system, comprising: a processor coupled to an address bus; a cache memory that couples to the address bus and comprises cache data, the cache memory divided into a plurality of ways; and a store buffer that couples to the address bus, and comprises store buffer data, a store buffer way and a store buffer index, wherein, the processor selects the store buffer data for use by a data load operation if both (i) a selected way of the plurality of ways matches the store buffer way and (ii) at least part of a virtual address on the address bus matches the store buffer index; otherwise, when the selected way matches the store buffer way, the processor selects the cache data corresponding to the selected way, and when the selected way does not match the store buffer way, the processor ends a store buffer access; a hashed address generator that couples to the address bus and converts the virtual address present on the address bus into a current hashed address; and a hash memory that couples to the address bus and comprises a saved hashed address associated with the cache data; wherein the current hashed address is compared to the saved hashed address; and wherein the result of the comparison of the hashed addresses is a current way value indicative of the selected way.", + "(disputed limitations emphasized).", + "REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Gruner US 4,048,623 Sept. 13, 1977 Razdan US 6,253,285 B1 Jun. 26, 2001 Hughes US 6,662,280 B1 Dec. 09, 2003", + "GROUPING OF CLAIMS In light of Appellant's s arguments, we will decide the appeal of the obviousness rejection of claims 1-5, 7, 8, 10-13, 15, 21, and 22 on the basis of claim 1. See 37 C.F.R. \u25cf 41.37(c)(1)().", + "We will similarly decide the appeal of the obviousness rejection of independent claim 16 and associated dependent claims 17-20 on the basis of claim 16. (Id.).", + "Issue Under S 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested \"the processor selects the store buffer data for use by a data load operation if both (i) a selected way of the plurality of ways matches the store buffer way \u00b7 \u00b7 \u00b7 wherein the result of the comparison of the hashed addresses is a current way value indicative of the selected way,\" within the meaning of claim 1 and the commensurate language of claim 102 (emphasis added).", + "ANALYSIS Regarding the disputed hashed address limitation, we agree with the Examiner (Ans. 9) that Appellant is attacking the Hughes reference in isolation, while ignoring the teachings and suggestions of Razdan, as relied on by the Examiner in combination with Hughes (and Gruner), as follows:\"", + "We also observe that Appellant does not further rebut the Examiner's s responsive arguments (Ans. 9-10) and broader claim construction (id.) by filing a Reply Brief.", + "Therefore, on this record we are not persuaded of Examiner error regarding the rejection of representative claim 1.", + "Accordingly, we affirm the Examiner's rejection of claim 1 and of claims 2- 5, 7, 8, 10-13, 15, 21, and 22 (not argued separately) which fall therewith. See 37 C.F.R. & 41.37(c)(1)().", + "Claims 16-20 Appellant contends that claims 16-20 are allowable for the same reasons discussed above regarding claim 1 which we did not find to be persuasive. (App. Br. 13-14).", + "We reproduce the pertinent portions of Gruner below: Further, the memory system may be arranged to be used in an interleaving process. In non-interleaved memory systems, groups of memory words (e.g., instruction words) which are normally used in sequence are often stored in the same memory module. Accordingly, such sequentially used words cannot be made available simultaneously since access to only one module at a time can be achieved. The process of interleaving memory words reduces the chance that sequentially used memory words will reside in the same memory module and increases the chance that sequential words can be accessed simultaneously. In accordance with such an interleaving memory word arrangement, words which are normally expected to be used sequentially are stored in different memory modules. (Gruner, col. 5, 11. 25-39) Normally, without interleaving, the most significant bit or bits (MSB) of an address identify the memory module which is addressed and the remaining bits of the address identify the particular word within a memory module. Thus, in a 64K memory system using eight 8K memory modules, a 16-bit address is required, the first three most significant bits identifying the module which is addressed and the remaining 13 bits identifying one word of the 8K words within such selected module. If the memory words are interleaved in a 8-way interleaving arrangement, it can be shown that the three least significant bits (LSB) identify the module which is addressed, while the remaining 13 bits identify one word of the 8K words within such module. (Gruner, col. 6, 11. 13-26).", + "We begin by broadly but reasonably construing a *virtual address\" in accordance with its plain meaning as requiring a mapping between a defined virtual address space and a physical address space.", + "We agree with the Examiner that Gruner teaches a conversion between the inputted address which is 16 bits (as required to address a 64K memory physical memory space containing 2^16 memory locations) and the 13-bit address that the respective eight physical memory modules \"see\" (i.e., 13-bits are required to address the 8K (2^13) memory locations within a particular 8K memory module).", + "However, we find this conversion is merely the result of decoding a physical 16-bit address as required to address eight 8K physical memory modules.", + "Thus, the 16-bit address in Gruner is an absolute machine address that specifies a physical location in memory, and is not a virtual or logical address which is typically used to address a virtual memory space that may exceed the available physical memory of the machine, and where memory pages may be swapped between physical memory and the hard disk using page frames and page faults.", + "In particular, the Examiner has not shown where any virtual address space is defined in Gruner that is mapped to a physical address space.", + "In Gruner's s interleaved method of addressing eight memory modules of 8K each, the physical address space is 64K (i.e., the sum total of the memory locations contained in eight 8K memory modules).", + "In accordance with Gruner' s disclosed interleaving method, the least significant three bits of the 16-bit address are decoded to enable and select one of the eight 8K memory modules. (Gruner, col. 6, 11. 22-25).", + "The most significant 13 bits of the 16 bit address are used to address the respective memory locations contained within a selected 8K memory module. (Gruner, col. 6, 11. 25-26).", + "In summary, we find Gruner's s \"conversion\" at best merely teaches a conventional method of decoding a physical 16-bit absolute machine address to address the sum total of 64K physical memory locations as contained within eight 8K physical memory modules.", + "Thus, in our view, the Examiner has confused conventional physical address decoding with virtual address to physical address mapping.", + "Because we find the weight of the evidence supports Appellant's position as articulated in the Brief, we reverse the Examiner's rejection of independent claim 16 and also associated dependent claims 17-20, which stand therewith." + ] +} \ No newline at end of file diff --git a/opinion_split/2010005848_DECISION.json b/opinion_split/2010005848_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3d5f58513d0cefd5eca8c2a772b8f141b83057c8 --- /dev/null +++ b/opinion_split/2010005848_DECISION.json @@ -0,0 +1,39 @@ +{ + "appellant_arguments": [ + "Appellants argue that there is no motivation to combine Burghoorn with Langdon. App. Br. 6-8; Reply Br. 1-4.", + "Appellants also argue that there is no motivation to combine Burghoorn with Bartram. App. Br. 9-10; Reply Br. 4.", + "Appellants further argue that there is no motivation to combine Langdon with Holzapfel. App. Br. 10.", + "Finally, Appellants argue that Joyce has wa bandwidth of at least about 400 kHz,' whereas the crystal oscillator** of Bartram \"operates nominally at 10.7 MHz\" and, thus, the combination of Joyce and Bartram is in error because Joyce's bandwidth is not greater than Bartram's frequency. App. Br. 11.", + "Issue 1 Appellants have made various assertions in support of an argument that the references teach away from their combination.", + "Specifically, Appellants have asserted that Burghoorn teaches away from its combination with Langdon because Burghoorn \"seeks to avoid frequency pulling or mode hopping*' whereas the laser source in Langdon *has a frequency that is modulated by a triangular modulation signal.\" App. Br. 6-7.", + "Appellants also argue that the proposed combination of Burghoorn and Bartram would change the principle of operation of Burghoorn because the *measurement principle\" of Bartram is different than that of Burghoorn. App. Br. 9.", + "Appellants further argue that Holzapfel teaches away from its combination with Langdon because Langdon's 's laser source *has a frequency that is modulated by the modulation signal,\" whereas Holzapfel *states that in position measuring arrangements, fluctuations in wavelength result in erroneous measurements.' App. Br. 10.", + "Finally, Appellants argue that the Examiner has not provided a rationale for the combination of Burghoorn with Langdon or Bartram. App. Br. 7-8, 9-10.", + "Moreover, Appellants themselves point out that the Examiner's rejection is based not on the elimination of one component from Burghoorn, but a substitution of components for other components (i.e., *replacing the piezo-electric modulator 83 and its appurtenant equipment, controls, etc. as described by Burghoorn with the *frequency modulated system described in Langdon m). Reply Br. 2.", + "Issue 2 In addition to the arguments addressed above relating to the combinations suggested by the Examiner, Appellants argue that claim 15 is not obvious in view of Burghoorn, Bartram, and Joyce because the bandwidth mentioned by Joyce is not above the frequency described by Bartram. App. Br. 11-12." + ], + "examiner_findings": [ + "The Examiner responds to Appellants' argument that Burghoorn teaches away from Langdon by pointing out that both Burghoorn and Langdon modulate their respective lasers, but use different methods. Ans. 14.", + "Moreover, the Examiner points out that, rather than teaching away from using the modulation method of Langdon, incorporation of such a method could eliminate the piezoelectric device, which may remove unwanted back reflections. Id.", + "The Examiner states that Bartram is used \"to show that one can modulate a laser by using a variable current power supply superimposed on a direct current supply \u00b7 \u00b7 \u00b7 instead of modulating the beam as seen in Burghoorn.' Ans. 17.", + "The Examiner finds that Langdon modulates a laser such that it changes frequency linearly with time, which is not the same as the detrimental fluctuations in wavelength mentioned in Holzapfel and referenced by Appellants. Ans. 19.", + "The Examiner's rationale for combination is that \"lilt would have been obvious to one of ordinary skill in the art at the time the invention was made to vary the current to the laser as in [Langdon/Bartram] to modulate the laser instead of modulating the beam directly,\" as in Burghoorn. Ans. 4, 7.", + "The Examiner points out that Joyce is being used for *the idea of using an amplifier with a bandwidth that is larger than an applied alternating current component, not to replace [the] actual amplifier circuit in Burghoorn as modified by Bartram. \" Ans. 20." + ], + "ptab_opinion": [ + "ANALYSIS We have reviewed Appellants' arguments in the Appeal Brief and Reply Brief, the Examiner's rejection, and the Examiner's response to the Appellants' arguments.", + "We agree with the Examiner.", + "We agree with the Examiner's findings and conclusions.", + "We are not persuaded by Appellants' arguments that changing the modulation method would increase the chances of frequency jumping or mode hopping.", + "Thus, Appellants have not pointed to, nor do we find, anything in Burghoorn to persuade us that a person of ordinary skill in the art would have been discouraged or 1ed away from using a modulation method different from the method taught in Burghoorn.", + "*Teaching an alternative or equivalent method does not teach away from the use of a claimed method. \" In re Dunn, 349 F.2d 433, 438 (CCPA 1965).", + "Once again, we agree with the Examiner.", + "Burghoorn's 's principle of operation is not changed merely by substituting one method of modulating the laser for another, which is how the Examiner has explained the combination of Burghoorn and Bartram. Ans. 17.", + "Therefore, we do not find Appellants' arguments persuasive that Bartram and Burghoorn teach away from their combination.", + "Appellants have not offered persuasive evidence to show that modulating a laser as taught by Langdon is inconsistent with the teachings of Holzapfel.", + "Therefore, we agree with the Examiner's findings based on the combination of Holzapfel and Langdon.", + "Thus, as acknowledged by Appellants and explained by the Examiner, the rationale for the combination of Burghoorn with Langdon or Bartram is the substitution of one known technique for another to yield predictable results. See App. Br. 8 (citing MPEP 5 2143 and KSR Int 'I Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396 (2007)).", + "We agree with the Examiner's findings.", + "Appellants have not presented persuasive arguments indicating why the concept of Joyce's circuit having an amplifier bandwidth greater than the applied alternating current could not be integrated into the Burghoorn-Bartram combination." + ] +} \ No newline at end of file diff --git a/opinion_split/2010006465_DECISION.json b/opinion_split/2010006465_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..de767167c2e2c31af4839b1e7d6b762ecc3643b3 --- /dev/null +++ b/opinion_split/2010006465_DECISION.json @@ -0,0 +1,49 @@ +{ + "appellant_arguments": [ + "Appellant notes that the claimed tethers fix the upper and lower rails to the first base independent of the anchor pulley and argues that Abouzakhm does not disclose the claimed tethers because contrary to the arrangement in Abouzakhm, *Appellant's tethers secure the remaining (unbroken) rail independently to a base so that the vehicle unit does not drop to the ground.\" App. Br. 9.", + "Appellant contends that Abouzakhm does not disclose different elongation characteristics for each of the two rails (cables 17, 19). See App. Br. 10.", + "Appellant additionally contends that the \"counter balance system is totally absent from Abouzakhm.\" App. Br. 10." + ], + "examiner_findings": [ + "The Examiner finds that Abouzakhm discloses each of the features recited in claim 13. Ans. 3.", + "More specifically, the Examiner finds that *[s]upport bars 21, 23 [in Abouzakhm] are positioned throughout the length of the system \u00b7 \u00b7 \u25a0 [and] connect and tether the upper and lower rails [17, 19] together.\" Id.", + "The Examiner finds that Abouzakhm discloses each of the features recited in claim 18. Ans. 3.", + "With regard to the counter balance system, the Examiner finds that in Abouzakhm, the *piston and cable tensioning ram 60 act to counter act the weight of the vehicle\" and disclose the claimed counter balance system. Ans. 3.", + "The Examiner finds that Abouzakhm discloses each of the features recited in claim 23 and specifically finds that the ram 60 in Abouzakhm discloses the counter balance system of claim 23. Ans. 3.", + "The Examiner finds that Abouzakhm teaches the claimed rail system, but **only shows that the cable used in the system has cover of stainless steel.' Ans. 4.", + "The Examiner cites Rubin as teaching \"a cable construction having a core 12 with fiber reinforced extruded plastic 14 braided around the center core 12\" with \"[t]he core 12 and fiber reinforcement 14 \u00b7 \u00b7 \u00b7 covered by an additional layer 20 of extruded plastic serving as a casing for the cable.\" Ans. 4.", + "The Examiner reasons that \"lilt would have been obvious to one of ordinary skill in the art to apply a cable covering construction, like that of Rubin et al to a cable rail system like that of Abouzakhm, so as to equip the system with a lighter weight, yet durable cable with the expected result of being able to support more weight and movements of the vehicle as well as reduce maintenance needs. Id." + ], + "ptab_opinion": [ + "We REVERSE.", + "We agree.", + "The Examiner makes no findings regarding the \"first tether fixing said upper flexible rail to said first base independent of said fixed anchor pulley\" or the \"second tether fixing said lower flexible rail to said first base independent of said fixed anchor pulley\" as required by claim 13.", + "Rather, the Examiner simply asserts that \" Abouzakhm discloses various tethers mounted throughout the system as well as at the terminal bases at either end of the system to connect the upper and lower rails and the terminal bases.\" Ans. 5.", + "However, the support bars 21, 23 extend between and couple the upper and lower rails to one another, not to a base as claimed. See Abouzakhm col. 4, II. 40-57.", + "The support bars 21, 23 are extended and retracted during operation to change the slope of the cable (upper rail) 19 and control the vehicle riding on the cables 17, 19. See Abouzakhm col. 4, 1. 58 - col. 5, 1. 8.", + "The support bars 21, 23 in Abouzakhm (considered \"tethers\" by the Examiner) do not fix the upper and lower rails to the first base independent of the fixed anchor pulley as required by claim 13.", + "Accordingly, we do not sustain the rejection of claim 13.", + "Claims 14- 17 depend from claim 13 and the stated basis for the rejection of claims 14- 17 does not cure the deficiencies in the rejection of claim 13.", + "Thus, the rejection of claims 14-17 is also not sustained.", + "However, the Examiner makes no findings regarding where the different elongation characteristics of the rails is disclosed in Abouzakhm.", + "As noted above, the Examiner fails to indicate, and we do not see, where two rails having different elongation characteristics are disclosed in Abouzakhm.", + "We agree.", + "The cable tensioning ram 60 in Abouzakhm (considered a *counter balance system\" by the Examiner) is actually a control mechanism for the upper cable 19.", + "Column 9. lines 14-18 of Abouzakhm explain that *extending and retracting movement of the ram 60 . . \u00b7 accomplish[es] adjustments in the angle of the cable 19 with respect to the associated ground surface.\"", + "\" The hydraulic ram 60 includes *a cylinder 83 ha[ving] a piston 85 slidingly contained therein and having attached thereto a piston rod 87.\" Abouzakhm col. 8. 11. 7-9.", + "\"Hydraulic fluid 82 within the cylinder 83 fluidly communicates to coupling 86 which has attached thereto hydraulic hose 88 which fluidly communicates with a positive displacement pump 90 controlled through the control signals sent thereto by electrical conductor 91\" to control the ram 60 and ultimately the angle of the upper cable 19. Abouzakhm col. 8, 11. 9-14.", + "Thus, we do not agree that the ram 60 of Abouzakhm discloses the claimed counter balance system.", + "Accordingly, we do not sustain the rejection of claim 18.", + "Claims 19- 22 depend from claim 18 and the stated basis for the rejection of claims 19-22 does not cure the deficiencies in the rejection of claim 18.", + "Thus, the rejection of claims 19-22 is also not sustained.", + "We disagree for the reasons set forth above regarding claim 18.", + "Accordingly, we do not sustain the rejection of claim 23.", + "Claims 24- 27 depend from claim 23 and the stated basis for the rejection of claims 24- 27 does not cure the deficiencies in the rejection of claim 23.", + "Thus, the rejection of claims 24-27 is also not sustained.", + "Initially, we again note that the Examiner makes no findings regarding the different elongation characteristics of the rails recited in claim 28 and we do not see where this feature is taught by Abouzakhm or Rubin.", + "Further, the Examiner provides no reasoning why it would have been obvious to include rails having different elongation characteristics in the proposed modified rail system of Abouzakhm.", + "For these reasons, we do not sustain the rejection of claim 28.", + "Claims 29-32 depend from claim 28 and the stated basis for the rejection of claims 29-32 does not cure the deficiencies in the rejection of claim 28.", + "Thus, the rejection of claims 29-32 is also not sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2010006844_DECISION.json b/opinion_split/2010006844_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4d5540540becf10249273ca0102e3a73ecaa5fc3 --- /dev/null +++ b/opinion_split/2010006844_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "The secondary reference cited by the Examiner, Banerjee, does not change the fact that Hipp would have led a person of ordinary skill in the art away from the claimed subject matter.", + "Specifically, Banerjee does not disclose anything that can reasonably be construed as disclosing a send thread adapted to send the outgoing data concurrently with the receive thread receiving the incoming data.", + "Paragraph [0007] of Banerjee cited by the Examiner simply discloses processing multiple threads in parallel, which has nothing to do with a send thread and receive thread that are part of a virtual port that concurrently send and receive data.", + "In fact, Banerjee notes that a \"socket is used to connect a thread to a virtual port.\" Banerjee, I [0008].", + "Thus, according to Banerjee, one socket connects one thread to one port, which does not provide any hint of concurrent bidirectional communications using a single virtual port that has a send thread and a receive thread that can operate concurrently.", + "Rather, Banerjee, like Hipp, discloses sequential communication.", + "See, e.g., Banerjee, II [0042]-[0045] (describing transmitting data and then receiving data from a port selected in a round robin manner). (Reply Br. 4; See also App. Br. 10)." + ], + "examiner_findings": [ + "REJECTION Claims 1-7, 9. 11-22 and 32-34 stand rejected under 35 U.S.C \u25cf 103(a) as being unpatentable over the combination of Hipp (US 6,859,835) in view of Banerjee (US 2002/0199000).", + "In particular, the Examiner concludes that the disputed claim term \"virtual port\" should be construed more broadly than the interpretation argued by Appellant:\" In response, Examiner sets forth that the **virtual port\" set forth in the claim [\"]does not preclude the use of a second port with an intended first port.\" [See Board Decision filed, March 27, 2007, page 3].", + "As also stated in the Board Decision, Hipp creates a virtual port by multiplexing the send and receive data between at least two ports (col. 3, 11. 22 to 33; col. 4, 11.27 to 40; col. 5, 11. 15 to 18, 39 to 42, and 64 to 67; col. 6, 11.15 to 17; col. 7,1.66 to col. 8,1.12; col. 8,11.53 to 58).", + "Hipp uses the term \"a virtual port\" because the second port is transparent to the two applications that are sending and receiving data to an intended first port (col. 2, 11.33 to 36 and 52 to 55, col. 3, 11.1 to 22; col. 6, 11. 15 to 17). (Ans. 12, emphasis added).", + "Regarding the disputed claimed send and receive threads, the Examiner (Ans. 4, 10-11) points to Appellant's Specification, which acknowledges that \"to activate a particular socket for communication, a send or receive thread is called according to well known techniques in the art. (Spec. 2, para. [0007]).", + "As pointed out by the Examiner, the rejection is based on the combined teachings and suggestions of the Hipp and Banerjee references. (Ans. 10-11)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. .5 6(b).", + "We Affirm.", + "Based on Appellant's arguments (App. Br. 5-16), we decide the appeal on the basis of claims 1 and 3.", + "This appeal turns upon claim construction.", + "We agree with the Examiner (and the prior BPAI Decision at 4) that under a broad but reasonable construction, the claimed **virtual port\" does not preclude the use of a second port with an intended first port, as taught or suggested by Hipp. (Id.).", + "This reasoning is applicable here, given the use of \"comprising\" in Appellant's claims.", + "Moreover, when we look to Appellant's Specification for context, we conclude that the scope of the disputed claim term **virtual port\" broadly covers any connection(s) between software applications: *Virtual port and port are used interchangeably to identify connections between software applications, i.e., between the OS and device drivers.\" (Spec., para. [0007], emphasis added).", + "Nor does Appellant disclose in the Specification that the claim term \"virtual port\" has any particular recognized meaning in the art.", + "We also observe that Banerjee specifically teaches that \"multiple threads may be processed by the processor simultaneously.\" (Banerjee, para. [0007], emphasis added).", + "Regarding the secondary Banerjee reference, Appellant also presents a \"teaching away\" argument regarding the Examiner's proffered combination:", + "This reasoning is applicable here.", + "Appellant's independent claims are silent regarding sockets.", + "In reviewing the record, we find the Examiner provides an articulated reasoning with some rational underpinning that sufficiently supports the legal conclusion of obviousness. (Ans. 4-5).", + "We find this is a case, as the Supreme Court guides, where the skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" since the skilled artisan is \"a person of ordinary creativity, not an automaton.\"", + "Moreover, \"[the combination of familiar elements [e.g., network devices, virtual ports, send and receive threads-- claim 1] according to known methods is likely to be obvious when it does no more than yield predictable results.\"", + "Appellant has presented no evidence that combining the teachings of Hipp with the features relied on by the Examiner in Banerjee would have been *'uniquely challenging or difficult for one of ordinary skill in the art\" or \"represented an unobvious step over the prior art.\" Leapfrog, 485 F.3d at 1162 (citing KSR, 550 U.S. at 418-19).", + "Although the Examiner's construction of *virtual port\" is broad (Ans. 12), because \"applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.\" In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).", + "On this record, Appellant has not persuaded us that the Examiner's s construction of the disputed claim term *virtual port\" is overly broad, unreasonable, or inconsistent with the Specification.", + "For essentially the same reasons set forth by the Examiner (Ans. 8-14), and for the reasons discussed above, we are of the view that the disputed limitations are at least suggested by the cited combination of Hipp and Banerjee.", + "For these reasons, we are not persuaded of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness.", + "Accordingly, we sustain the Examiner' s obviousness rejection of claim 1, and claims 9, 16, and 32 which recite commensurate limitations.", + "Dependent Claims 3 and 15 Regarding the additional argued limitations of send and receive threads being sub-threads of the master communication thread (App. Br. 11- 12), we agree with the Examiner'. s underlying factual findings and ultimate legal conclusion of obviousness for the reasons articulated by the Examiner. (Ans. 14-15).", + "As previously discussed, Appellant's Specification discloses that \"It]o activate a particular socket for communication, a send or receive thread is called according to well known techniques in the art.\" (Spec. 2, para. [0007], emphasis added).", + "Banerjee specifically teaches that **multiple threads may be processed by the processor simultaneously\" (Banerjee, para. [0007], emphasis added).", + "Therefore, we sustain the Examiner's 's rejection of dependent claims 3 and 15.", + "The remaining dependent claims (not argued separately) fall for the same reasons discussed above regarding the respective independent claims.", + "Arguments not made are considered waived." + ] +} \ No newline at end of file diff --git a/opinion_split/2010007205_DECISION.json b/opinion_split/2010007205_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..88f3c43aac096ee7dc8ddce1c37294abb7ae0203 --- /dev/null +++ b/opinion_split/2010007205_DECISION.json @@ -0,0 +1,42 @@ +{ + "appellant_arguments": [ + "The Appellant discloses that snack mixes come in a wide variety of ingredients and flavors and individual snack pieces come in a wide variety of sizes and shapes. Spec. 1, II. 19-20.", + "The Appellant discloses that a well-known snack mix is available under the Chex brand.", + "The mix is said to include ready-to-eat cereal pieces, pretzels, and crackers.", + "The cereal pieces are said to be in the form of a biscuit fabricated from a grid or matrix of cooked cereal dough.", + "The pretzels may have common shapes, such as a simple rod, or may have more complex shapes, such as a heart.", + "The crackers may also have simple geometric shapes, such as a rod or a square flat cracker.", + "According to the Appellant, these simple shapes have been combined in television commercials to depict various shapes and characters in elaborate displays that often simulate animation. Spec. 2, II. 8-21.", + "An object of the Appellant's invention is to improve conventional snack mixes by adding snack pieces that can be used to create shapes and figures.", + "The improved snack mix is said to have an enhanced play value and be more appealing to children. Spec. 2, II. 28-33.", + "20. A method of enhancing the play value of a dry snack mix comprising the steps of: admixing first dry identifying shaped pieces, including at least eye shaped planar backed cracker pieces having a docking hole positioned to provide a pupil feature and planar baked crackers having opposed major faces and one major face having at least three incisions thereon forming a face pattern, with a first quantity of first puzzle member shaped pieces fabricated from a first dry food composition and a second quantity of second puzzle member shaped pieces fabricated from a second dry food composition to form a puzzle snack mix; and packaging the puzzle snack mix in a package to provide a dry snack puzzle kit.", + "21. A dry snack mix puzzle kit in the form of a loose blend of individual pieces suitable for arranging to form a play figurine pattern, comprising: a quantity of first dry shaped cereal based planar pieces including shield shaped baked cracker pieces and planar baked crackers having opposed major faces and one major face having at least three incisions thercon forming a face pattern; a quantity of second dry pretzel base pieces including letter shaped baked pretzel pieces, and limb suggestive shaped baked pretzel pieces; a quantity of third dry shaped cereal based planar pieces defined by planar baked geometric shapes selected from the group consisting of ovals, rings, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, octagons, saddles, and mixtures thereof; and a package containing the quantity of the first dry shaped cereal based planar pieces, the quantity of the second dry pretzel base pieces and the quantity of the third dry shaped cereal based planar pieces, wherein select ones of the quantity of the first, second and third shaped pieces can be used to form a variety of objects including a figurine having a head, two arms, two legs and a shield. App. Br., Claims Appendix.'", + "As for the eye shaped cracker piece recited in claims 20 and 28, the Appellant argues the Examiner has not cited a single reference which teaches an eye shaped cracker piece wherein docking holes make up the pupil feature. App. Br. 10, 14, 17." + ], + "examiner_findings": [ + "1 The Appellant seeks review of the following rejections: (1) the rejection of claims 20-33 under 35 U.S.C. 5 103(a) as unpatentable over the Appellant's admission of the prior art2 in view of Witkowski, as further evidenced by Vasic, 4 Okos 407.' Okos 405.6 Fink,' Murray, 8 Tsunematsu Shigeto, 9 Jin Chiyoshige, 10 Olschewski Oliver, 11 Barilla Alimentare, 12 Brown, 13 Moreau, 14 Pettit, IS Hoy, 16 and Zwiers\" 17. : and (2) the rejection of claims 20-33 under 35 U.S.C. 5 103(a) as unpatentable over Witkowski, as further evidenced by Vasic, Okos 407, Okos 405, Fink, Murray, Tsunematsu Shigeto, Jin Chiyoshige, Olschewski Oliver, Barilla Alimentare, Brown, Moreau, Pettit, Hoy, and Zwiers, in view of the Appellant's admission of the prior art.", + "The Examiner also finds it was known to form a variety of food products into a variety of novelty shapes. See, e.g., Witkowski, para. [0008] (disclosing that foods, such as cereal and crackers, in die cut, extruded or molded shapes of cartoon characters, animals, unusual shapes, and icons were known); Witkowski Figs. 1, 3, 11 (depicting food products in the form of characters having a face pattern); Witkowski Fig. 4 (depicting food products in the shape of a letter of the alphabet); Okos 405, para. [0044] (food piece in the shape of a head may be provided with recessed portions depicting eyes and a mouth); Okos 405, Fig. 3.", + "Moreover, the Examiner finds it was known to combine shaped food products to form a face or figurine. See, e.g., Witkowski, para. [0062] (selection of edible articles may provide the parts to allow a consumer to form a face, skeleton, robot, or person) 18. Witkowski Fig. 8; Okos 407, Fig. 1; Vasic, para. [0007] (disclosing a prepackaged assemblage of edible components of various shapes and sizes and/or specially formed shapes suitable for assembly into various types of toys or toy-like figures).", + "The Examiner concludes it would have been obvious to one of ordinary skill in the art to add any number of novelty-shaped food products to a conventional snack mix, such as the Chex brand snack mix, or combine a variety of food products in a variety of shapes to create a snack mix as recited in the claims on appeal for the predictable result of enhancing its play value. See, e.g., Witkowski, para. [0016] (potential benefits of the invention include stimulating imagination and encouraging creative thinking); Okos 407, para. [0004] (disclosing that edible food puzzle pieces provide added play value).", + "To the extent that the prior art does not expressly disclose a one-to-one correspondence between a particular food product and a particular shape as recited in the claims on appeal, the Examiner finds the claimed food products and the claimed shapes were known in the art.", + "The Examiner concludes it would have been obvious to one of ordinary skill in the art to form known food products into other shapes known in the art. See KSR Int 7 Co. V. Teleflex Inc., 550 U.S. 398, 421 (2007) (\"A person of ordinary skill is also a person of ordinary creativity, not an automaton. .\").", + "The Examiner explains the Appellant was not the first to form foods, such as crackers, to impart a simulation. See, e.g., Witkowski Figs. 4 and 8 (depicting an oval shaped food piece having a hole positioned to provide a pupil feature)\", 19. Witkowski, para. [0020] (disclosing the food materials used in the invention include crackers).", + "The Examiner also contends the Appellant \"is not the inventor of docking holes, which are notoriously conventional expedients to vent dough during baking of baked goods such as crackers.\" Ans. 8, 11-12.", + "The Examiner concludes it would have been obvious to one of ordinary skill in the art to use a conventional docking hole to provide the pupil feature illustrated in Witkowski Figures 4 and 8. Ans. 8, 12." + ], + "ptab_opinion": [ + "A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. 8 134 from an Examiner's decision finally rejecting claims 20-33, which are all of the pending claims.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We AFFIRM.", + "The subject matter on appeal is directed to a dry snack mix that can be used to form figurines and enhance play value.", + "Claims 20 and 21, reproduced below, are representative of the subject matter on appeal.", + "We affirm both of these rejections for the reasons well-stated in the Examiner's Answer dated November 16, 2009 (\"Ans. \"), and add the following for emphasis.", + "B. DISCUSSION The prior art of record establishes that, at the time of the Appellant's invention, snack mixes comprising a variety of food products in a variety of shapes were known.", + "For example, the Chex brand snack mix was known to contain cereal pieces in the form of a grid or parallelogram and pretzel pieces in the form of rods. Spec. 2, II. 8-18.", + "Significantly, the Appellant has failed to establish, through evidence and/or argument, that the Examiner's factual findings or legal conclusions, based on the combined teachings of the prior art, are erroneous. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is *[not] that the claimed invention must be expressly suggested in any one or all of the references\"; the test for obviousness is \"what the combined teachings of the references would have suggested to those of ordinary skill in the art\").", + "For example, the Appellant does not direct us to any evidence establishing that it would have been outside the level of ordinary skill in the art to form a known food product into a known shape.", + "The Appellant's argument fails to consider the prior art as a whole. See Keller, 642 F.2d at 425.", + "The Appellant does not explain, in any detail, why the Examiner' s position is erroneous.", + "For the reasons set forth above and in the Examiner's s Answer, the 8 103(a) rejections will be sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2010008271_DECISION.json b/opinion_split/2010008271_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..90ba546ad0b20926577db03d6e716f249b882f76 --- /dev/null +++ b/opinion_split/2010008271_DECISION.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "Based on Specification paragraph 0019, and Figures 1A/IB showing double headed arrows 108, Appellant contends that the disclosure provides requisite support because *\"[t]his description is sufficient to enable one of ordinary skill in the art to make or use Appellant's claimed invention\" (App. Br. 16-19; Reply Br. 3-55) so that one skilled in the art \"can clearly conclude that as of the filing date the inventor Appellants had possession of the claimed invention.\"", + "Appellant argues that Specification paragraphs 0018 and 0020 provide sufficient information to enable one skilled in the art to make and use the claimed invention in sufficient detail to conclude that as of the filing date Appellant had possession of the claimed invention.", + "Appellant argues the references individually, rather than as a combination (App. Br. 24-27) and contends that the Examiner does not provide an explanation of how or why the references could be combined to produce the claimed invention.", + "Appellant, in the Reply Brief, first contends that the Answer does not identify where missing claim limitations are found in the references.", + "Appellant's Reply Brief also contends that Saitou does not teach or suggest the limitation *an ultrasonic array that directs guided waves to the sample and receives guided waves from the sample.\"", + "In addition, the Reply Brief contends that Saitou does not teach *an ultrasonic array that directs guided waves to the sample and receives guided waves from the sample\" (Reply Br. 11, 16) or guided waves (Reply Br. 20- 21; 28-30)." + ], + "examiner_findings": [ + "Without expressly withdrawing this rejection, the Answer newly rejected claims 11 and 23 as stated in the text.", + "The Examiner concludes that the original Specification does not support the limitation *each of said transducers within the ultrasonic array having an axis for directing and receiving guided waves. .,4 Ans. 4:14-16.", + "That is, he concludes, there is no support for each individual transducer having an axis for directing and receiving guided waves.", + "Rather, the Examiner concludes, the original Specification supports only an \"ultrasonic array having an axis for directing and receiving guided waves. \u00b7\u00b7 Ans. 4:17-18 (emphasis added).", + "The Examiner concludes that the originally filed Specification and claims fail to provide support for each transducer of the array having *an annular shape for radial wave propagation.\" Ans. 12.", + "The Examiner finds that Giurgiutiu teaches the claimed invention except for the recited matrix switch, switch controller, computer and software interface, and more than four receivers with amplification.", + "The Examiner further finds that Saitou teaches the claimed matrix switch (Ans. 7:3-6, 15:9-18), switch controller (Ans. 7:6-7; 15:20-23), computer and software interface (Ans. 7:7-8), and more than four receivers (Ans. 7:8- 14; 15:25-16:6)." + ], + "ptab_opinion": [ + "We agree with the Examiner's findings and reasoning (Ans. 4-5, 14- 15) and adopt them as our own.", + "We emphasize that Appellant has failed to provide written description support in the Specification describing \"each of said transducers having an axis.", + "Therefore, the Examiner did not err in rejecting claims 25-31 under 35 U.S.C. 5 112, first paragraph, as failing to comply with the written description requirement.", + "Appellants' analysis is not persuasive.", + "We therefore again agree with the Examiner's findings and reasoning (Ans. 12-13) and adopt them as our own.", + "Accordingly, Appellant has not persuaded us that the Examiner erred in determining that claims 9 and 21 fail to comply with the written description requirement under 35 U.S.C. \u25cf 112, first paragraph.", + "The Examiner does, however, explain how and why it would have been obvious to combine the references.", + "We disagree.", + "Arguments directed to that limitation are therefore waived.", + "We are therefore not persuaded that the Examiner erred in rejecting (1) representative claim 1; (2) claim 13 for similar reasons; and (3) claims 5- 7 and 16-19 not separately argued with particularity.", + "Accordingly, we will sustain the Examiner's rejection of claims 1, 5- 7, 13, and 16-19.", + "Appellant's arguments are not persuasive regarding the patentability of claims 8 and 20; 10 and 22; 11 and 23; and 12 and 24 because Appellant attacks the references individually and relies upon recitations of the claim limitations.", + "Arguments regarding the ultrasonic array limitation and the guided waves limitation are waived because they are presented for the first time in the Reply Br.", + "We are therefore not persuaded that the Examiner erred in rejecting claims 8, 10-12, 20, and 22-24.", + "Accordingly, we will sustain the Examiner's rejection of claims 8, 10-12, 20, and 22-24." + ] +} \ No newline at end of file diff --git a/opinion_split/2010008636_DECISION.json b/opinion_split/2010008636_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..47cf24c8d281f9b66561a89b51964638fb6d207d --- /dev/null +++ b/opinion_split/2010008636_DECISION.json @@ -0,0 +1,59 @@ +{ + "appellant_arguments": [ + "ANALYSIS Appellants argue..." + ], + "examiner_findings": [ + "The following grounds of rejection are before us for review: I. Claims 1, 2, 9, 14, 24, 29-33, 36, 45, 47, 48, 55, 60, 70, 75-79, 91, and 95 stand rejected under 35 U.S.C. \u25cf 101 because the claimed invention is directed to non-statutory subject matter.", + "II. Claims 1, 2, 9, 14, 24, 29-33, 36, 45, 47, 48, 55, 60, 70, 75-79, 91, and 95-97 stand rejected under 35 U.S.C. . 102(b) as being anticipated by Chirino'." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Claims 1 and 47 are representative of the claims on appeal, and read as follows: 1. A system, comprising: at least one computer program for use with at least one computer system and wherein the computer program includes a plurality of instructions including but not limited to a first set of instructions for designating one or more epitopes of at least one agent, a second set of instructions for predicting one or more changes determined by analysis of past variations in the one or more epitopes of the at least one agent, a third set of instructions for aiding the identification of one or more immune response components associated with the predicted changes in the one or more epitopes of the at least one agent, and a fourth set of instructions for communicating at least one of the identified one or more immune response components to a system user.", + "47. A computer-implemented method, comprising: designating one or more epitopes of at least one agent; predicting one or more changes determined by analysis of past variations in the one or more epitopes of the at least one agent; aiding the identification of one or more immune response components associated with the predicted changes in the one or more epitopes of the at least one agent; and communicating at least one of the identified at least one immune response components to at least one system user.", + "We affirm.", + "ISSUE (Rejection 1) Has the Examiner established by a preponderance of the evidence that claims 1 and 47 are drawn to nonstatutory subject matter under 35 U.S.C. \u25cf 101?", + "FINDINGS OF FACT FF1 The Specification teaches that the \"present application relates, in general, to detection and/or treatment\" (Spec. 2).", + "FF2 The Specification teaches further \"a system includes but is not limited to: a computer program for use with a computer system\" (id.).", + "FF3 The Specification defines epitope as: the epitope \u25a0 . or parts thereof may be displayed by the agent \u00b7 \u00b7 \u00b7\u00b7 may be displayed on the surface of the agent \u00b7 I \u00b7\u00b7 extend from the surface of the agent \u00b7 . \u00b7\u00b7 and/or may only be partially accessible by the immune response component.", + "The term **epitope\" . \u00b7 \u00b7 as used herein, may include, but is not limited to, a sequence of at least 3 amino acids, a sequence of at least nine nucleotides, an amino acid residue, a nucleotide, a carbohydrate, a protein, a lipid, a capsid protein, a polysaccharide, a lipopolysaccharide, a glycolipid, a glycoprotein, and/or or at least a part of a cell.", + "As used herein, the term **epitope\" \u00b7 \u00b7 \u00b7 may be used interchangeably with antigen, paratope binding site, antigenic determinant, and/or determinant.", + "As used herein, the term determinant can include an influencing or determining element or factor, unless context indicates otherwise.", + "In one aspect the term \"epitope\" \u00b7 . \u00b7 includes, but is not limited to, a peptide binding site.", + "As used herein, the term **epitope\" \u00b7 \u00b7 \u00b7 may include structural and/or functionally similar sequences found in the agent \u00b7 a . \u00b7", + "The term **epitope\" \u00b7 \u00b7 \u00b7 includes, but is not limited to, similar sequences observed in orthologs, paralogs, homologs, isofunctional homologs, heterofunctional homologs, heterospecific homologs, and/or pseudogenes of the agent \u00b7 \u00b7 \u00b7 \u00b7 (Id. at 9.)", + "FF4 The Specification defines \"fimmune response component** as including: but \u00b7 . \u00b7 not limited to, at least a part of a macrophage, a lymphocyte, a T-lymphocyte, a killer T-lymphocyte, an immune response modulator, a helper T-Iymphocyte, an antigen receptor, an antigen presenting cell, a cytotoxic T-Iymphocyte, a T-8 lymphocyte, a CDI molecule, a B lymphocyte, an antibody, a recombinant antibody, a genetically engineered antibody, a chimeric antibody, a monospecific antibody, a bispecific antibody, a multispecific antibody, a diabody, a chimeric antibody, a humanized antibody, a human antibody, a heteroantibody. a monoclonal antibody, a polyclonal antibody, an antibody fragment, and/or synthetic antibody. (Id.)", + "FF5 Referencing Figure 14, the Specification teaches depicted is a partial view of a system that may serve as an illustrative environment of and/or for subject matter technologies.", + "In one aspect the environment depicted includes a computer system 1400 including a computer program 1402.", + "Depicted is the computer program 1402 including instructions 1403, 1404, and/or 1405.", + "The computer program 1402 may include a first set of instructions for designating one or more epitopes of at least one agent 1403.", + "The computer program 1402 may include a second set of instructions for predicting changes in the one or more epitopes of the at least one agent 1403.", + "The computer program 1402 may include a third set of instructions for aiding the identification of one or more immune response components associated with the one or more epitopes of the at least one agent 1404.", + "In one exemplary implementation of the system, depicted is a user 1410 (e.g., a medical professional, a researcher, a scientist, a patient, a technician, a manufacturer, a drug maker or the like) employing the system.", + "In another exemplary implementation of the system, the computer program 1402 has access to a database 1406.", + "In one exemplary implementation a feedback loop is set up between the computer program and the database 1406.", + "The output 1407 may be fed back into the computer program 1402 and/or displayed on the computer system 1400.", + "The system may be used as a research tool, as a tool for furthering treatment or the like. (Id. at 24-25.)", + "FF6 The Specification also teaches: Those having skill in the art will recognize that the state of the art has progressed to the point where there is little distinction left between hardware and software implementations of aspects of systems; the use of hardware or software is generally (but not always, in that in certain contexts the choice between hardware and software can become significant) a design choice representing cost vs. efficiency tradeoffs.", + "Those having skill in the art will appreciate that there are various vehicles by which processes and/or systems and/or other technologies described herein can be effected (e.g., hardware, software, and/or firmware), and that the preferred vehicle will vary with the context in which the processes and/or systems and/or other technologies are deployed.", + "For example, if an implementer determines that speed and accuracy are paramount, the implementer may opt for a mainly hardware and/or firmware vehicle; alternatively, if flexibility is paramount, the implementer may opt for a mainly software implementation: or, yet again alternatively, the implementer may opt for some combination of hardware, software, and/or firmware.", + "Hence, there are several possible vehicles by which the processes and/or devices and/or other technologies described herein may be effected, none of which is inherently superior to the other in that any vehicle to be utilized is a choice dependent upon the context in which the vehicle will be deployed and the specific concerns (e.g., speed, flexibility, or predictability) of the implementer, any of which may vary. (Id. at 35.)", + "FF7 The Examiner's statement of the \u00a7101 rejection may be found at page 3 of the Answer.", + "As Appellants only argue claims 1 and 47 separately, the remaining system claims (claims 2, 9, 14, 24, 29-33, 36, and 45) stand or fall with claim 1 and the remaining method claims (claims 48, 55, 60, 70, 75-79, 91, and 95) stand or fall with claim 47.", + "See 37 C.F.R. \u00a7 41.37(c)(1)(vii).", + "FF8 We adopt the Examiner's findings of fact and reasoning as our own.", + "PRINCIPLES OF LAW During prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art.", + "In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).", + "In addition, the claims are not to be confined to the embodiments found in the Specification, and it is improper to import limitations from the Specification into the claims.", + "In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007).", + "If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is \"necessary to give life, meaning, and vitality\" to the claim, then the claim preamble should be construed as if in the balance of the claim. . . .", + "If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.", + "Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).", + "*An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous.", + "Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.*", + "In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).", + "Moreover, it is during prosecution that applicants have \"the opportunity to amend the claims to obtain more precise claim coverage.\"", + "American Academy, 367 F.3d at 1364.", + "It is well established that laws of nature, physical phenomena, and abstract ideas are not patentable subject matter under 35 U.S.C. 101.", + "Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347, 1354 (Fed. Cir. 2010).", + "While it is true that in making that determination the claim must be considered as a whole, \"[n]onetheless, a scientific principle cannot be made patentable by limiting its use to a particular technological environment or by adding insignificant post-solution activity.\" (Id.)" + ] +} \ No newline at end of file diff --git a/opinion_split/2010008920_DECISION.json b/opinion_split/2010008920_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..381f424ad37614befc8f966cb67223f765dcfd32 --- /dev/null +++ b/opinion_split/2010008920_DECISION.json @@ -0,0 +1,47 @@ +{ + "appellant_arguments": [ + "Appellant relies on the original drawing FIGS. 1 and 2 for support for this claimed feature.", + "The Appellant argues that claims 13 and 14 are \"reasonably definite\" when read in light of the specification. App. Br. 5.", + "Rejection of claims 9-12, 16, 20, 21, 23, and 24 as anticipated by Mintz Appellant argues claims 9-12, 16, 20, 21, 23 and 24 as a group for the first ground of rejection. App.Br. 5-9.", + "Appellant further argues dependent claims 15, 16, 21 and 22 and dependent claims 16-19 and 21 as separate groups for the second ground of rejection.", + "Appellant contends that the tie strings 18, 20 disclosed by Mintz do not constitute the claimed cinch assemblies because using one tie from each pair of strings would accomplish the same thing.", + "From this, Appellant concludes that the strings constitute a single cinch assembly as opposed to two cinch assemblies that are independently operable." + ], + "examiner_findings": [ + "REJECTIONS Claims 20 and 21 stand rejected under 35 U.S.C. 8 112, first paragraph, as containing subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that Appellant, at the time the application was filed, had possession of the claimed invention.", + "Claims 13 and 14 stand rejected under 35 U.S.C. 9 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention.", + "Claims 9-12, 16, 20, 21, 23 and 24 stand rejected under 35 U.S.C. $ 102(b) as being anticipated by Mintz (US 5,557,815, iss. Sep. 24, 1996\").", + "Claims 15, 16, 21 and 22 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over the teachings of Mintz in view of the teachings of Lincoln (US 7,252,330, iss. Aug. 7, 2007).", + "Claims 16-19 and 21 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over the teachings of Mintz as applied to claims 16 and 21 and further in view of the teachings of Alivizatos (US 5,297,237, iss. Jan. 18, 1994),", + "ANALYSIS 35 U.S.C. , 112, first paragraph The Examiner's basis for rejecting claims 20 and 21 under the first paragraph of 35 U.S.C. S 112 is that the application as originally filed did not provide written description support for the limitation in claims 20 and 21 \"a generally flat panel.\"", + "The Examiner's position for rejecting claims 13 and 14 under the second paragraph of 35 U.S.C. 8 112 is that the claims are indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention.", + "The Examiner finds that claims 13 and 14 are unclear as to the relationship between the *first and second tabs\" on line 2 thereof, and the **adjustable tab(s)\" on line 2 of claim 10. Ans. 4-5.", + "The Examiner finds that Mintz discloses a cushion comprising: a central portion 26 defined by a perimeter (col. 3, lines 13-16); an outer portion including a top 12 having an inner edge (col. 3, lines 13-16) and an outer edge (Fig. 3), a bottom 10 having an inner edge (col.3, lines 13-16) and an outer edge (Fig.3), a sidewall (at14) having upper and lower edges defining a circumference (Fig.3), and a filler 16; and cinch assemblies 18,20 each including a fastener strip of hook and loop material (col.3, lines 5-6), as claimed. Ans. 6.", + "The Examiner also finds that the individual tabs of the tab pair 18 or 20 could be wrapped around the cushion and tied to each other. Ans. 7.", + "The Examiner contends that the functional language of claim 9 which Appellant relies upon to distinguish the Mintz disclosure was fully considered but does not define any structure beyond the structure disclosed by Mintz and that no apparent structural limitation related to this language has been advanced by Appellant. Ans. 8." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "In this case, we agree with the Appellant that FIGS. I and 2 illustrate that the depressed central portion 14 of the cushion 10 is \"a generally flat panel, \" as recited in claims 20 and 21.", + "This is conveyed by the absence of contours being designated by the presence of curved lines as are used to represent the stuffing or filler material located between the upper portion 26 and the lower portion 28, and by the statement made by the inventor at page 7, lines 12-16 of the specification that the depressed central portion 14 is stitched so that \"a thin layer of batting or filler material may be sandwiched I \u00b7 \u00b7 to provide a light cushioning effect within the depressed central portion 12.", + "It therefore is our view that the specification and drawings convey with reasonable clarity to those skilled in the art, as of the filing date, that Appellant constructively possessed the invention as now claimed.", + "This being the case, we will not sustain the rejection of claims 20 and 21 under 35 U.S.C 112, first paragraph.", + "We agree with the Examiner because it is unclear whether the first and second tabs recited in claim 13 and 14 refer back to the two tabs required by the parent claims or if claim 13 and 14 recite additional tabs.", + "Therefore these claims are ambiguous and, as such, do not adequately define the metes and bounds of claim 13 and 14.", + "Accordingly, we affirm the rejection of claims 13 and 14 under 35 U.S.C. 112, second paragraph.", + "We select claim 9 as the representative claim for each group.", + "Claims 10-24 stand or fall with claim 9. See 37 C.F.R. , 41.37(c)(1)(vii).", + "Re claim 9, the Examiner correctly finds that the cinch assemblies are capable of adjusting the circumference of the cushion, and are \"independently operable relative to each other\". because they can be tied to each other in multiple different configurations.", + "We disagree.", + "The Examiner correctly finds that Appellant's claimed clinch assemblies are inherently flexible and given the length of the tabs 18, 20 one of the tabs 18 could be tied to one of the tabs 20 and the circumference of the cushion could be adjusted by such tying. Ans. 7.", + "The fact that a string from each pair could potentially be tied at the same time and location to achieve the same or a similar degree of cinching does not mean that each pair of strings could not operate independently.", + "Appellant does not apprise us of any language in the claim that expressly or implicitly requires a different result to follow from the *independent[] operaltion].\" Therefore, the Examiner correctly concludes that the tabs 18, 20 disclosed by Mintz meet the limitation imparted by the terminology *cinch assemblies \u00b7\u00b7\u00b7 for adjusting the circumference of the cushion\" and that the first and second cinch assemblies be *independently operable.\" Contra App.Br. 7.", + "Other than citing the claim language (App.Br. 8) Appellant provides no convincing argument to dispute that the Examiner has correctly shown where the claimed elements appear in Mintz.", + "We have been presented with no persuasive evidence to the contrary.", + "Therefore the rejection of independent claim 9 and dependent claims 10-12, 16, 20, 21, 23 and 24 under 35 U.S.C. 8 102(b) as being anticipated by Mintz will be sustained.", + "Appellant does not present arguments for separate patentability of claims 15, 16-19, 21 and 22 but rather relies on arguments presented for the patentability of claim 9, which we find unpersuasive.", + "We sustain the rejection of claims 15, 16-19, 21 and 22 under 35 U.S.C. 8 103(a).", + "Appellant does not present arguments for separate patentability of claims 16, 19 and 21 but rather relies on arguments presented for the patentability of claim 9. which we find unpersuasive.", + "We sustain the rejection of claims 16, 19 and 21 under 35 U.S.C. , 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2010009484_DECISION.json b/opinion_split/2010009484_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4eccb69b374651c54ec380a957aea5ca76a790d2 --- /dev/null +++ b/opinion_split/2010009484_DECISION.json @@ -0,0 +1,46 @@ +{ + "appellant_arguments": [ + "Appellants seek our review under 35 U.S.C. 5 134 from the Examiner's final rejection of claims 1-6, 9-15, and 18.", + "Appellants claim systems and methods for computing and manipulating migration and performance matrices in order to analyze risk and performance. (Specification 9[0021).", + "Appellants argue the term \"based on\" in the claim is definite (Appeal Br. 11-12).", + "Appellants first argue \"Recalculating risk has nothing to do with comparing ratings, and therefore, cannot teach or suggest 'comparing \u00b7\u00b7\u00b7 ratings of the selected entities at the beginning of the rating period with ratings of the selected entities at the end of the rating period to determine rating migrations. as recited in claim 1\" (Appeal Br. 13).", + "Appellants further argue *determined change is not used for *arranging an order' of the items in basic financial system table 143, as recited in claim 1.\" (Appeal Br. 13).", + "Appellants argue claim 10 by reference to the arguments directed to claim 1 (Appeal Br. 15)." + ], + "examiner_findings": [ + "The Examiner rejected claims 1 and 10 under 35 U.S.C. & 112 Second Paragraph as being indefinite.", + "The Examiner rejected claims 1, 3, 5, and 9 under 35 U.S.C. 5 103(a) as being unpatentable over Eder and Creager.", + "The Examiner rejected claims 2, 4, and 6 under 35 U.S.C. S 103(a) over Eder, Creager, and Brooks.", + "The Examiner rejected claims 10, 12, 14, and 18 under 35 U.S.C. \u25cf 103(a) over Eder, Creager, and Ram.", + "The Examiner rejected claims 11, 13, and 15 under 35 U.S.C. 5 103(a) over Eder, Creager, Ram, and Brooks.", + "The Examiner rejected independent claims 1 and 10 under Section 112 Second Paragraph as indefinite, reasoning that the term \"based on\" in the clause forming a base matrix after aggregation based on the arranged base matrix before aggregation is \"vague and indefinite.' (Ans. 4).", + "However, the Examiner found the determination of ratings migrations, based on determining the change in ratings, as the *defining, measuring and continuously monitoring matrices of value and risk\" (Ans. 5, 11).", + "Thus, the Examiner found cash flow in Eder as a rating, but found determining ratings migrations is not based on the ratings/cash flow, but is based instead on ratings as \"monitoring \u00b7\u00b7\u00b7 of value and risk\" (Ans. 11).", + "The Examiner found the step of arranging an order of the selected entities, which are listed in the base matrix \u00b7\u00b7\u00b7 according to the rating migrations at Eder's *generating a matrix [0063], including summing the results a *, (Ans. 5, 12)." + ], + "ptab_opinion": [ + "We reverse.", + "We find the following facts by a preponderance of the evidence.", + "We agree with Appellants, because we construe \"based on\" to mean the same things as \"used as an input for,' in that the base matrix before aggregation is used as an input for the base matrix after aggregation.", + "We therefore find \"based on\" here conveys a reasonable meaning to one of ordinary skill in the art, and cannot sustain the rejection under Section 112.", + "We agree there is error in the rejection, for the following reasons.", + "We therefore do not find the required connection between ratings and ratings migrations as presented by the Examiner.", + "Even if \"monitoring\" involves some form of comparing, Eder does not disclose comparing/monitoring the \"cash flows\" that the Examiner found are the claimed ratings.", + "We agree with Appellants.", + "The Examiner found the step of arranging an order of the selected entities, which are listed in the base matrix \u00b7\u00b7\u00b7 according to the rating migrations at Eder's *generating a matrix [0063], including summing the results a *, (Ans. 5, 12).", + "We do not find that generating a matrix necessarily involves arranging an order, since the claim recites that the data is already in a base matrix.", + "Therefore creating one matrix from another involves only copying without any arranging.", + "That is because we construe the term arranging to require something more than mere copying, such as sorting, ranking, or other steps to affect the arrangement of the data, as described by the Specification by example (FF 2).", + "We thus find error in the prima facie case of obviousness because the claim requirements of determining ratings migrations, and arranging an order according to the ratings migrations is not met by the prior art.", + "Therefore, we cannot sustain the rejection of claim 1.", + "Since claims 2-6 and 9 depend from claim 1, and since we cannot sustain the rejection of claim 1, the rejection of claims 2-6 and 9 likewise cannot be sustained.", + "Because of the similarities of the above to claim limitations to the corresponding limitations in claim 1 (Answer 10), we find error by Examiner at the rejection of claim 10 for the same reasons set forth above at claim 1.", + "We therefore cannot sustain the rejection of claim 10.", + "Since claims 11-15 and 18 depend from claim 10, and since we cannot sustain the rejection of claim 10, the rejection of claims 11-15 and 18 likewise cannot be sustained.", + "The Examiner erred in rejecting claims 1 and 10 under 35 U.S.C. \u25cf 112, second paragraph, as being indefinite.", + "The Examiner erred in rejecting claims 1, 3, 5, and 9 under 35 U.S.C. \u25cf 103(a) as being unpatentable over Eder and Creager.", + "The Examiner erred in rejecting claims 2, 4, and 6 under 35 U.S.C. \u25cf 103(a) over Eder, Creager, and Brooks.", + "The Examiner erred in rejecting claims 10, 12, 14, and 18 under 35 U.S.C. 5 103(a) over Eder, Creager, and Ram.", + "The Examiner erred in rejecting claims 11, 13, and 15 under 35 U.S.C. 5 103(a) over Eder, Creager, Ram, and Brooks." + ] +} \ No newline at end of file diff --git a/opinion_split/2010009518_DECISION.json b/opinion_split/2010009518_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d00b0c62163229b30056b0af9106ed5af37ceee1 --- /dev/null +++ b/opinion_split/2010009518_DECISION.json @@ -0,0 +1,41 @@ +{ + "appellant_arguments": [ + "Appellants assert that the Examiner erred because Draughon does not disclose claim I's limitation of *wherein deformation of said tines connects the tubular tissue structures together.\" App. Br. 4.", + "Appellants argue that the foregoing is a structural limitation and not merely a statement of intended use. App. Br. 3-4.", + "Appellants contend that Draughon merely *describes a 'means for fastening roll roofing to roofs, .. and otherwise fails to disclose that it connects tubular tissue structures together within the meaning of the claim 1. Ans. 4.", + "Appellants argue claims 15 and 17-19 as a group and we select independent claim 15 as the representative claim. See App. Br. 6: see also 37 C.F.R. , 41.37(c)(1)(vii) (2011).", + "Appellants offer no new arguments in support of the patentability of claim 15 and merely rely on the same arguments presented in support of claim 1. App. Br. 6.", + "Appellants argue that the Examiner's obviousness rejection is legally improper because claim 20 is a dependent claim and the Examiner failed to reject the underlying independent claim (claim 15) as unpatentable under 35 U.S.C. 6 103.", + "In effect, Appellants interpret the Examiner's 35 U.S.C. 102(b) anticipation- only rejection of claim 15 as tantamount to a finding that claim 15 is non- obvious." + ], + "examiner_findings": [ + "The Examiner found that \"Draughon discloses a staple fastening means that is fully capable of being used in surgery\" and also discloses each and every element in order to anticipate claim 1. Ans. 3.", + "The Examiner made the same findings as discussed supra with respect to claim 1. Ans. 3." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We AFFIRM-IN-PART, THE INVENTION Appellants' invention relates \"to a staple used in an anastomosis procedure.\" Spec. 1, para. [0002].", + "Generally, the patentability of an apparatus claim is based on the apparatus rather than the manner in which it is used. See In re Casey, 370 F.2d 576, 579-80 (CCPA 1967).", + "However, in certain circumstances, functional language may be used to add limitations to an apparatus claim. See K-2 Corp. V. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999).", + "In cases in which functional language adds a structural limitation to an apparatus claim, it does so because the language describes something about the structure of the apparatus rather than merely listing its intended or preferred uses. See, e.g., K-2, 191 F.3d at 1363 (\"[T]he functional language tells us something about the structural requirements of the attachment between the bootie and the base [of an inline skate] \u00b7 \u00b7 \").", + "In the instant case, the limitation *wherein deformation of said tines connects the tubular tissue structures together\" \" describes something about the structure of the surgical staple.", + "In Appellants' invention, the tines are deformable in a manner that preserves the opening of the lumen in the tubular tissue.", + "In other words, deformation of the tines on the staple does not collapse the tubular tissue in a manner that would cut off fluid circulation through the tubular tissue.", + "Thus, the tissue retains its character of being \"tubular\" after implementation of the surgical staple.", + "The Examiner has not provided an adequate explanation as to how Draughon\u2019s fastening means is capable of connecting **tubular tissue structures\" together.", + "Although Draughon may be capable of connecting tissue together, the Examiner has not adequately explained how such tissue would remain \"tubular\" and thus capable of sustaining arterial and/or venous fluid flow after being connected.", + "Thus, the Examiner's finding appears to be speculative and conclusory.", + "Inasmuch as the Examiner has not provided sufficient technical reasoning to reasonably support the finding that Draughon\u2019s fastening means is capable of connecting tubular tissue structures together, we do not sustain the Examiner's rejection of claim 1, or claims 2, 4-7 and 9-11 which depend therefrom.", + "Claims 17-19 stand and fall with claim 15.", + "With respect to Appellants' argument that the three foot length of Draughon' 's means for fastening would prevent its placement inside the human body (App. Br. 4), we find Appellants' argument based on the size of Draughon to be unpersuasive as nothing in claim 15 requires that the surgical staple be sized to fit inside a human body.", + "Therefore, Appellants' arguments are insufficient to overcome the Examiner's prima facie case of anticipation.", + "We agree with the Examiner that Draughon discloses all of the limitations of the claim 15.", + "Accordingly, we sustain the Examiner' s rejection of claims 15 and 17- 19.", + "For the same reasons discussed above regarding tubular tissue structures with respect to claim 1. we do not sustain the Examiner's rejection of claim 16.", + "For the same reasons as discussed supra with respect to claim 1, we do not sustain the Examiner's s rejection of claim 3 under 35 U.S.C. 8 103(a) as unpatentable over Draughon and Cook.", + "We reject the Appellants\" position.", + "It is well settled that a disclosure that anticipates under 35 U.S.C. 8 102 also renders the claim unpatentable under 35 U.S.C. $ 103 since anticipation is the epitome of obviousness. In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982),", + "As Appellants have failed to rebut the Examiner's prima facie of unpatentability, we sustain the Examiner's rejection of claim 20.", + "For the same reasons as discussed supra with respect to claim 1, we do not sustain the Examiner's rejection of claim 8 under 35 U.S.C. 6 103(a) as unpatentable over Draughon." + ] +} \ No newline at end of file diff --git a/opinion_split/2010009578_DECISION.json b/opinion_split/2010009578_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ba5fb098a348bdd1ff2fec4cb25f70503ead2120 --- /dev/null +++ b/opinion_split/2010009578_DECISION.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [ + "The Appellants argue that the SPEM thickness disclosed in Formato (i.e., 4~0.1 to ~5.0, preferably <~1 mil\") is very close to, but does not overlap or touch, the claimed range.", + "In particular, the Appellants contend that \"[s]ince 0.1 mil = 2.54 micron, a range with a minimum of 0.1 mil (2.54 micron) does not overlap a range with a maximum of 2.5 micron.\" \" Br. 6.", + "The Appellants also question whether Formato enables the manufacture or use of the very thin membranes recited in claim 1. See Br. 6." + ], + "examiner_findings": [ + "4 The Examiner explains: Formato's Fig. I shows that the composite solid polymer electrolyte membrane (SPEM) is made by depositing an ion conducting polymer on the outer surfaces and interpenetrating uniformly into a microporous substrate.", + "In other words, the substrate is entirely enclosed within the composite membrane, and therefore necessarily has a less thickness than the SPEM membrane [(i.e., less than the thickness of the SPEMs reported in Table 1). Ans. 5; see also Formato, para. [0042] (\"The composite SPEM of the present invention comprises a porous polymer substrate that is interpenetrated with an ion- conducting material. \").", + "The Examiner also finds that Formato only discloses thickness to two significant figures (i.e., \"0.1\" and *5.0*).", + "Thus, the Examiner contends that 0.1 mil converts to 2.5 micrometers (two significant figures), not 2.54 micrometers (three significant figures) as contended by the Appellants. Ans. 6-7.", + "Moreover, even if the conversion were carried out to three significant figures as proposed by the Appellants, the Examiner interprets the symbol w\"as meaning \"about\" and contends that \"about\" encompasses a small range of variation, such as the difference between 2.54 micrometers (i.e., 0.1 mil carried out to three significant figures) and \"2.5 micrometers\" as recited in claim 1. Ans. 3-4." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "B. ISSUE The dispositive issue in this appeal is: Did the Examiner reversibly err in concluding that the claimed ion-conductive membrane comprising \"a porous polymer substrate having a thickness of 2.5 micrometers or less\" is rendered obvious by the solid polymer electrolyte membrane (SPEM) disclosed in Formato which has a thickness of \"~0.1 to ~5.0, preferably <~1 mil**?", + "For the reasons set forth below, we answer this question in the negative.", + "The Appellants\" argument is not persuasive of reversible error.", + "The Examiner correctly points out that the SPEM thickness referred to by the Appellants is the thickness of the membrane, not the thickness of the substrate.", + "Significantly, the Appellants have not directed us to any evidence to the contrary.", + "Based on the foregoing, the Examiner correctly concludes that the thickness of the substrate recited in claim 1 is rendered prima facie obvious by the teachings of Formato.", + "5 See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (even a slight overlap in range establishes a prima facie case of obviousness).", + "A patent is presumed valid by statute.", + "In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also Amgen Inc. V. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (*a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled. \").", + "As discussed above, Formato discloses a porous polymer substrate having a thickness within the claimed range.", + "Formato also describes various methods of making the substrate. See, e.g., Formato, paras. [01 18], [0119], [0121], [0122], [0124].", + "The Appellants have not directed us to any evidence demonstrating that undue experimentation would have been required to make or use the membrane described in Formato.", + "See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (\"it is well established that enablement requires that the specification teach those in the art to make and use the invention without undue experimentation%).", + "Therefore, the Appellants' argument is not persuasive of reversible error.", + "For the reasons set forth above, the 103(a) rejection of claims 1-4 and 6-8 is affirmed." + ] +} \ No newline at end of file diff --git a/opinion_split/2010009644_DECISION.json b/opinion_split/2010009644_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0249ab94afb66da87f9f7b0227c08deec57c11f5 --- /dev/null +++ b/opinion_split/2010009644_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellants, however, have provided evidence that (they contend) casts doubt on that expectation.", + "Specifically, Appellants rely on a Declaration under 37 C.F.R. 5 1.132 of Robin Steigerwald (Appeal Br. 12-17).", + "Dr. Steigerwald declared that Meyer's description of MVA as containing six deletions that occurred during serial passage of the virus would have 1ed him to expect, as of July 1995 (the apparent effective filing date), that MVA was likely to be genetically unstable (Steigerwald Declaration, II 26-29).", + "Dr. Steigerwald also declared that in July 1995, \"little was known about the suitability of sites within the MV A genome for insertion of foreign DNA\" (id. at I 36) and that the MV A genome was thought to have genetically stable and genetically unstable regions (id. at II 39, 49).", + "In support of the latter statement, Dr. Steigerwald cited Scheiflinger, 8 which characterized the thymidine kinase (tk) locus as a **genetically stable region of the genome\" (Scheiflinger 667).", + "Dr. Steigerwald also declared that Antoine? \"evaluated the MVA hemaggluttinin [sic] gene locus (ha) as an insertion site for foreign genes\" (Steigerwald Declaration, I 51), which \"was deemed to be necessary because of the special properties of MVA such as extreme attenuation, its apparent HA- phenotype, and highly restricted host range\" (id. at I 54).", + "Antoine states that *[allthough the ha locus had previously been shown to be a potential integration site in other vaccinia strains, the special properties of MVA such as extreme attenuation, its apparent HA\" phenotype and highly restricted host range made the evaluation of the ha gene as an insertion site necessary\" (Antoine 45)." + ], + "examiner_findings": [ + "The Examiner has rejected claims 31-38 under 35 U.S.C. .5 103(a) as obvious based on Sutter,' Meyer,2 and Alexander\" (Answer 3).", + "The Examiner has also rejected claims 31-40 under 35 U.S.C. 5 103(a) as obvious based on Small,4 Sutter, Kwon, Meyer, Montagnier, and Alexander (Answer 4).", + "The Examiner finds that Sutter discloses *recombinant MVA expressing heterologous polypeptides \u00b7 \u00b7 wherein the genes encoding said polypeptides are inserted into the naturally occurring deletion site III of said MVA virus\" (Answer 3) and Meyer discloses \"the six naturally occurring deletion sites of MV A\" (id.).", + "The Examiner concludes that \"it is obvious for the skilled artisan to use . . . any of the other 5 naturally occurring deletion sites of MVA a for the expression of heterologous genes in the method of Sutter\" (id. at 4) with a reasonable expectation of success \"[gliven the success of utilizing the naturally occurring deletion site III of MVA for the expression of heterologous polypeptides\" (id.)", + "The Examiner* s reasoning is the same with respect to the second ground of rejection, except that the Examiner also cites Small as suggesting the insertion of antigenic determinants into any of the naturally occurring deletion sites in MV a (id. at 4-5).", + "The Examiner responds that Scheiflinger and Antoine \"are drawn to non-analogous insertion sites (i.e. deletion sites that are not naturally occurring. Sutter more definitively reflects the state of the art as it discloses the stable insertion of foreign DNA into MVA.\" (Answer 10.)" + ], + "ptab_opinion": [ + "Because the same issue is dispositive with respect to both rejections, we will address them together.", + "We agree with the Examiner that the disclosures of the references cited in the Answer would have provided a person of ordinary skill in the art with a reasonable expectation that Sutter's method could be successfully modified to insert a foreign gene in one of the other known deletion sites of MVA.", + "\"If a prima facie case is made in the first instance, and if the applicant comes forward with reasonable rebuttal, whether buttressed by experiment, prior art references, or argument, the entire merits of the matter are to be reweighed.\" In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986).", + "\"If rebuttal evidence of adequate weight is produced, the holding of prima facie obviousness, being but a legal inference from previously uncontradicted evidence, is dissipated.' In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).", + "We conclude that the rejections on appeal are not supported by a preponderance of the evidence of record.", + "While the references cited by the Examiner support a prima facie conclusion of obviousness, the Steigerwald Declaration and Scheiflinger reference cited therein provide evidence that those of skill in the art considered MVA to have genetically stable regions, and therefore by implication other regions that would be considered genetically unstable.", + "The Steigerwald Declaration and the Antoine reference cited therein show that, because of the properties of the MVA virus, those of skill in the art considered it necessary to evaluate potential sites for insertion of foreign DNA, even when the site had been used previously in other vaccinia strains.", + "The Examiner has provided no direct evidence to support his position that the successful insertion of a foreign gene in deletion site III would be sufficient to provide a skilled worker with a reasonable expectation of successfully inserting a foreign gene in one of the other naturally occurring deletion sites in the MV A genome.", + "Thus, when \"the entire merits of the matter are . . . reweighed,\" Hedges, 783 F.2d at 1039, we conclude that a preponderance of the evidence does not support a reasonable expectation of success." + ] +} \ No newline at end of file diff --git a/opinion_split/2010010421_DECISION.json b/opinion_split/2010010421_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..159deff8b38787b93a4adb521ef83407ea5c2af4 --- /dev/null +++ b/opinion_split/2010010421_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellant argues that independent claim I is not anticipated by Podsobinski. App. Br. 6.", + "In particular, Appellant asserts, inter alia, that *the 'rim portion' of the filter [of Podsobinski] need not (and does not) form a seal but rather need only filter the incoming air.\" App. Br. 9.", + "Appellant further argues that independent claims 16 and 18 recite limitations similar to those referred to with respect to claim 1 and are not anticipated by Podsobinski for the reasons expressed in connection with claim 1. App. Br. 10." + ], + "examiner_findings": [ + "With respect to claims 1, 10, 16, 18, and 22, the Examiner finds that Podsobinski discloses a pneumatic power tool having a body 1, a handle 2, a cap member 9 and a gasket assembly 10. Ans. 3.", + "The Examiner takes the position that the gasket assembly 10 includes a first portion comprising a compressible band (located on one end of element 10 in Figure 2) and a second portion comprising a porous screen (indicated as element 10 in Figure 2) coupled to an interior region of the first portion. Id.", + "The Examiner relies on Amada to teach an air filter comprising a porous material over molded with a resin. Ans. 5." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "We agree with Appellant.", + "Each of independent claims 1, 16, and 18 recites a gasket assembly or gasket having two portions, with a first portion sealingly abutting or engaging the body and the cap member of the pneumatic power tool.", + "As correctly noted by Appellant, the only reference in Podsobinski to element 10 is the statement that \"compressed air passes through filter screen 10 into inlet passage 11.\" Podsobinski, col. 3, II. 19-20.", + "Given that Podsobinski provides nearly no written description of the element's structure, it appears that the Examiner's findings with respect to filter screen 10 are based entirely on what is depicted in Figure 2. See Ans. 3, 5-6.", + "A close examination of Figure 2 shows that filter screen 10 does not abut or engage, much less sealingly abut or engage, both a body and a cap member of the Podsobinski device.", + "Specifically, filter screen 10 is shown as contacting only the inner bore of the *cap member\" 9 in Figure 2.", + "The filter screen 10 is not shown as contacting any other structure and thus cannot be said to contact a \"body\" of the housing assembly.", + "The Examiner contends that element 1 of Podsobinski' is the body (Ans. 3) but does not provide an explanation of how filter screen 10 contacts this structure.", + "The unnumbered structure shown at the right of the tool in Figure 2 (i.e., the structure that receives the cap member 9 and to which the lever 20 is pivotally mounted at element 21) might be considered to be the **body,\" but Figure 2 shows a gap between the leftmost edge of filter screen 10 and the adjacent surface of the unnumbered structure.", + "As such, filter screen 10 does not abut or engage this structure either.", + "We also disagree with the Examiner's statement that the *rim portion\" of filter screen 10 \"seals against the inlet portion of the tool since it is sized to fit therein such that ALL air flow passes through the porous portion of (10), thereby sealing-out any other air flow into the tool.\" Ans. 6.", + "Podsobinski does not explicitly disclose such a seal.", + "Moreover, the Examiner has not established that Podsobinski inherently discloses such a seal as there is no showing that filter screen necessarily seals against the inlet portion.\" See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (\"Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. \" (citations omitted)).", + "The Examiner has not explained how such a seal necessarily abuts or engages structure that corresponds to a body and cap as called for in claims 1, 16, and 18.", + "For the above reasons, we determine that the Examiner's 's finding that Podsobinski discloses a portion of a gasket assembly sealingly abutting or engaging the body is not supported by a preponderance of the evidence.", + "Accordingly, we do not sustain the rejection of independent claims 1, 16, and 18, or claims 2. 3, 6, 7, 9-15, 17, 19, and 21-27 depending therefrom, as anticipated by Podsobinski.", + "The Examiner does not rely on Amada to disclose a portion of a gasket assembly sealingly abutting or engaging a body and a cap member.", + "As such, the Examiner does not rely on Amada to cure the above-noted deficiencies of Podsobinski with regard to independent claim 1, from which claims 4. 5, and 8 depend.", + "Accordingly, we cannot sustain the Examiner's rejection of dependent claims 4, 5, and 8 under 35 U.S.C. 8 103(a) as being unpatentable over Podsobinski and Amada." + ] +} \ No newline at end of file diff --git a/opinion_split/2010010491_DECISION.json b/opinion_split/2010010491_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..85ecf66f6447ce029ffa12361f15f817bf1cd872 --- /dev/null +++ b/opinion_split/2010010491_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Appellant argues that claims 1 and 10 recite, in step (m), \"repeating steps (e) [through] (1) in the event that step (1) indicates that macro-reentrant circuits can exist in the estimated area not treated\" such that the claims recite multiple assessments of treatment options prior to implementation of a treatment plan in step (n). App. Br. 9.", + "Appellant then argues that Keidar teaches performing multiple actual ablations, rather than at least repeatedly performing simulations of inserting a sheath and inserting a medical device through the sheath, and therefore does not teach or suggest each feature of the invention as recited in independent claims 1 and 10, and their dependent claims. App. Br. 9-10." + ], + "examiner_findings": [ + "The Examiner finds, with respect to independent claims 1 and 10, that the claims do not require any physical transformation and that the invention as claimed does not produce a useful, concrete, and tangible result.", + "The Examiner acknowledges that Claims 1 and 10 recite, in step (n), \"implementing the treatment plan of steps (g) through (i),\" but finds that steps (g) through (i) only involve simulation and not actual treatment. Ans. 3-4.", + "The Examiner additionally finds that, while Appellant has recited performing \"simulations\" on a computer, a solution of the method is not implemented by a machine and the majority of the steps claimed are not required to be implemented by a machine, and that steps (g) and (h) amount to insignificant extra-solution activity. Id. at 8.", + "The Examiner states that the object of the invention, as indicated in Claim 7, is to actually ablate the heart of a patient, and that step (n) of \"implementing the treatment plan of steps (g) through (i)\" is just a repeated step of simulating a medical procedure, which is basically performing more computer calculations without using the data to transform a particular article. Id. at 8-9.", + "On lines 2-5 of page 9 of the Answer, the Examiner suggests \"adding the limitation of actually inserting the sheath into a patient\" to overcome the section 101 rejection.", + "The Examiner finds that Ciaccio discloses a method of preventing reentrant circuits in the heart comprising the steps of constructing an image of the heart (Paras. [0183]-(0184]), displaying the image on a screen (Para. [0082]), marking areas on the map where adjacent areas had a difference in electrogram duration of 15 ms or more, connecting the points to define the estimated reentrant circuit isthmus, estimating a best ablation line based on the estimated isthmus, and determining the surface area of the isthmus (Para. [0187]). Ans. 5.", + "The Examiner also finds that, in locating the isthmus, various conduction criteria can be set for determining if a particular area is prone to reentrant circuits (Para. [01 14). Id.", + "The Examiner finds that Ciaccio does not disclose simulating the procedure or assessing data post ablation to determine if the reentrant circuit still exists and then reapplying therapy if a determination is made that the reentrant circuit still exists. Id.", + "The Examiner finds, however, that DiCuccio discloses a system for mapping out a patient's heart on a display (Para. [0025]) and simulating insertion of a medical device, such as an ablation catheter (Para. [0027]), through a sheath 175 (Para. [0026]) for the purpose of reducing the amount of training that occurs on an actual patient (Para. [0004]). Id. at 5-6.", + "The Examiner finds that Keidar teaches measuring pre-ablation tissue characteristics 62, applying RF to ablate tissue 66, measuring post-ablation tissue characteristics 68, comparing actual ablation to predicted ablation 70, and repeating the steps if the characteristics do not fall within a specified tolerance 72 (fig. 3 and para. [0077]), and that this procedure is performed to improve the precision and consistency of RF ablation procedures (Para. [0005]). Id. at 6.", + "The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Ciaccio to include simulating the ablation procedure, as taught by DiCuccio, and calculating pre-ablation and post-ablation tissue characteristics to determine if the reentrant circuit was successfully treated, for the purpose of reducing the need to practice critical procedures on live patients and improving the precision and consistency of RF ablation procedures. Id.", + "The Examiner determines that Appellant uses the language comprising, which is inclusive or open-ended and does not exclude additional, unrecited method steps, and that claims 1 and 10 therefore do not preclude performing multiple ablation steps. Ans. 9." + ], + "ptab_opinion": [ + "Construing element (n) of claims 1 and 10 aids us in determining whether claims 1-17 are directed to statutory subject matter.", + "One skilled in the art, upon reviewing Appellant's written description and claims, would understand that the treatment plan of step (g) includes insertion of a sheath into the heart and the treatment plan of step (h) includes insertion of a medical device through the sheath and within the heart.", + "Thus, construing the claims to include insertion of the sheath into the heart overcomes the Examiner': is rejection under section 101.", + "We therefore do not sustain the rejection of claims 1-17 under 35 U.S.C. 5 101.", + "The Examiner is correct that a claim employing the transitional term **comprising\" may not exclude additional, unrecited elements (i.e., steps in a method claim). In re Baxter, 656 F.2d 679, 688-89 (CCPA 1981).", + "Regardless of the meaning of the term \"comprising\" and the effect of such a term on the scope of Appellants' claims, we agree with Appellant that Keidar does not teach or suggest at least repeatedly performing simulations of inserting a sheath and inserting a medical device through the sheath.", + "Rather, Keidar teaches iterative ablations based on calculating and re- calculating an appropriate RF dosage for measured pre-ablation tissue characteristics. Keidar, fig. 3 and para. [0077].", + "Such iterative estimation and ablation is not iterative simulation as recited in the claims.", + "Indeed, the Examiner does not explicitly find that any of the references, alone or in combination, teach iterative simulation and assessment prior to treatment, regardless of whether ablation additionally occurs.", + "We therefore cannot sustain the rejection of claims 1-5, 7-14, 16, and 17 under 35 U.S.C. & 103(a) as unpatentable over Ciaccio, DiCuccio, and Keidar.", + "With respect to the rejection of dependent claims 6 and 15 under 35 U.S.C. 5 103(a), Taylor does not cure the above-stated deficiencies of Ciaccio, DiCuccio, and Keidar.", + "We therefore cannot sustain the rejections of claims 6 and 15 under \u25cf 103(a) as unpatentable over Ciaccio, DiCuccio, Keidar, and Taylor." + ] +} \ No newline at end of file diff --git a/opinion_split/2010010888_DECISION.json b/opinion_split/2010010888_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a9fff23481cb492e56d66a89996f77b48a4fc7df --- /dev/null +++ b/opinion_split/2010010888_DECISION.json @@ -0,0 +1,21 @@ +{ + "appellant_arguments": [ + "Appellants claim a steel alloy comprising a defined composition which contains less than 0.1% by weight copper and exhibits a PRE value greater than 25, wherein PRE = %Cr + 3.3x%Mo+16x%N (claim 17).", + "Representative claim 17, the sole independent claim on appeal, reads as follows: 17. A steel alloy, comprising: a composition including (in % by weight): C 0.40-0.60 Si 0.1-1.0 Mn 0.3-1.0 Cr 12-15 Mo 2.5-4.0 Ni 0-1.0 Co 0-4.0 N 0.15-0.20 Cu <0.1 balance Fe as well as normally occurring impurities; a hardness > 56 HRC; and a value for PRE > 25, wherein PRE - % Cr + 3.3 . % Mo + 16 \u00b7 % N.", + "Appellants argue that the applied prior art fails to disclose or render obvious the claim 17 steel alloy having less than 0.1 weight percent copper and a PRE value greater than 25 (Br. 6).", + "As correctly pointed out by Appellants, JP 399 does not recognize PRE as a result-effective variable, and the steel alloy composition of example 8 falls outside the claim 17 composition with respect to, for example, the Mo and Cu claim limitations (Br. 9)." + ], + "examiner_findings": [ + "The Examiner concedes that JP 399 teaches a steel alloy having a lowermost copper amount of 0.1 % but concludes that it would have been obvious to reduce this amount to less than 0.1% as required by claim 17 (Ans. 4, 7).", + "The Examiner's obviousness conclusion regarding the claim 17 PRE value of greater than 25 is based on the fact that the example 8 steel alloy of JP 399 contains Cr, Mo, and N concentrations which, according to the claim 17 PRE formula, result in a PRE value of 25.3 (id. at para. bridging 4-5, 9)." + ], + "ptab_opinion": [ + "We agree.", + "This obviousness conclusion is not without some merit.", + "Nevertheless, the Examiner's position is weakened by the undisputed fact that JP 399 (as well as Uehara) expressly teaches away from a copper amount of less than 0.1% (i.e., because sufficient pitting corrosion resistance cannot be obtained if the copper amount is less than 0.1%).", + "Accordingly, the fact that the example 8 alloy possesses by happenstance a PRE value of 25.3 does not support the Examiner's unpatentability position.", + "In short, we agree with Appellants that the applied prior art fails to recognize Appellants' discovery that a specific combination of Cr, Mo, and N (see the corresponding concentrations and PRE values of claim 17) provides pitting corrosion resistance without the need for a Cu concentration of at least 0.1%, thereby avoiding deterioration in hot working properties of the claimed alloy by keeping the Cu concentration below 0.1% (Br. 8, 9).", + "The absence of such recognition by the applied prior art indicates that the Examiner's obviousness conclusions regarding the above discussed claim 17 limitations are based on impermissible hindsight.", + "Under these circumstances, we cannot sustain the Examiner's 8 103 rejection of claims 2-23 as unpatentable over JP 399 alone or in view of Uehara." + ] +} \ No newline at end of file diff --git a/opinion_split/2010011011_DECISION.json b/opinion_split/2010011011_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d2a2ecb80a09765b55c76fc6edb3796f41c06870 --- /dev/null +++ b/opinion_split/2010011011_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellants argue that: Marrs discloses an integrated circuit chip to substrate interconnection and method.", + "Specifically, referring to col. 10, lines 14-17, and Figs. 7, 8, Marrs teaches that the resulting bond 801 is a direct gold to gold connection between coined ball bond bump 312 on chip 201 and metallization 502 on substrate bonding contact 501C on substrate 501.", + "In this teaching, it is taught or suggested to those skilled in the art that the coined ball bond bump 312 is gold.", + "Moreover, referring to col. 10, lines 20-31 of Marrs, the passage \"the resulting weld is not as susceptible to melting as solder\" teaches or suggests that the coined ball bond bump 312 is NOT made by solder. Appeal Brief 6." + ], + "examiner_findings": [ + "Rejections on Appeal Claims 29, 31, 37 and 38 stand rejected under 35 U.S.C. & 102(b) as being either anticipated by Marrs (U.S. Patent Number 5,795,818; issued August 18, 1998) or in the alternative, rejected under 35 U.S.C. 5 103(a) as unpatentable over Marrs. Answer 3-5.", + "Claims 30, 32-34 and 36 stand rejected under 35 U.S.C. S 103(a) as being unpatentable over Marrs and Beddingfield (U.S. Patent Number 5,977,632; issued November 2, 1999). Answer 5-6.", + "The Examiner finds that: 1. Marrs' \"bump\" is the same structure as Appellants' \"solder compound\" because appellants use the term(s) \"bump\" or \"solder bump\" in many instances throughout the disclosure to refer to the same structure (see specification, page 19, lines 19-20 (..solder bump..); page 22, lines 10-12 (...more solder can be deposited to create a larger bump... \"); page 23, line 3, line 4, lines 6-7, line 12 (. (.Mbump...T); \"); etc.", + "2. Marrs teaches a bonding contact using weld or welding.", + "By using weld or welding, Marrs does not need to use additional solder or epoxy material to bond the bump 312 to an UMB layer 502 (col. 10, lines 15-20).", + "However, the bonding contact in Marrs is NOT the same structure as the \"solder compound\" in applicants' claim.", + "Appellants' claimed structure is essentially a bump, which is the same bump 312 in Marrs.", + "Appellants' bump is made of metal.", + "Marrs' bump is also made of metal.", + "Applicants' UMB layer is made of metal or gold.", + "Marrs' UMB layer is also a metal or gold. Answer 7." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b) (2012).", + "We reverse.", + "We agree with the Examiner that Marrs discloses a **bump** configuration in relation to an interconnect structure; however, Marrs does not disclose \"at least one solder compound overlying the UBM layer\" as recited in independent claims 29, 37 and 38. See Answer 7; see also Appeal Brief 6.", + "The Examiner findings are based on a comparison of the shapes of Marrs' interconnection bump with the claimed invention's interconnection bumps; yet the Examiner fails to indicate where Marrs employs the usage of solder as indicated in the claims. See Answer 4-8.", + "Therefore we agree with Appellants' arguments that Marrs teaches away from utilizing solder in conjunction with the interconnection bump. See Appeal Brief 6.", + "We reverse both the Examiner's anticipation and obviousness rejections of independent claims 29, 37 and 38, as well as claims 30-34 and 36 dependent therefrom.", + "Beddingfield does not address the deficiency of Marrs." + ] +} \ No newline at end of file diff --git a/opinion_split/2010011131_DECISION.json b/opinion_split/2010011131_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..cabf94f19f2c6cb0a04d9a5613dc88b8e94e9e3b --- /dev/null +++ b/opinion_split/2010011131_DECISION.json @@ -0,0 +1,44 @@ +{ + "appellant_arguments": [ + "Based on Appellant's arguments, the issue on appeal is whether the combination of Bilder and Moore teaches or suggests \"to communicate a media object to \u00b7 \u00b7 \u00b7 one or more called/calling devices in response to the user electronic equipment placing the call on hold in accordance with hold settings of the user electronic equipment,\" as recited in claim 1, and \"hold settings including criteria for selecting a media object,\" as recited in claim 16.", + "Appellant contends that the combination of Bilder and Moore fails to teach or suggest \"hold settings\" as recited in claim 1 and \"hold settings including criteria for selecting a media object\" as recited in claim 16, features described by Appellant as \"customized hold settings.\" App. Br. 5- 7; Reply Br. 2-6.", + "Specifically, Appellant alleges that the Examiner erred in relying on Bilder because Bilder does not *provid[e] criteria for determining a selection of a media object as provided by the claimed hold settings.\" App. Br. 6; Reply Br. 4.", + "Appellant also alleges that the Examiner erred in relying on Moore for teaching *hold settings\" as recited in Appellant's claims because *[plaragraph [0016] of Moore merely discloses how a call is placed on hold. \u00b7 \u25a0 \u00b7 [It] does not relate at all to what happens during the hold state. ~, Reply Br. 2." + ], + "examiner_findings": [ + "The Examiner has rejected claims 1-6, 9-11, and 14-17 under 35 U.S.C. 5 103(a) as being unpatentable over Bilder (US 6,400,804 B1, June 4, 2002) and Moore (US 2005/0096023 A1, May 5, 2005). Ans. 4-9.", + "The Examiner has rejected claim 7 under 35 U.S.C. 5 103(a) as being unpatentable over Bilder, Moore, and Hamilton (US 2005/0152531 A1, July 14, 2005). Ans. 9-10.", + "The Examiner has rejected claim 8 under 35 U.S.C. 5 103(a) as being unpatentable over Bilder, Moore, and Kiiskinen (US 2007/0211869 A1, Sept. 13, 2007). Ans. 10.", + "The Examiner has rejected claims 12 and 13 under 35 U.S.C. \u25cf 103(a) as being unpatentable over Bilder, Moore, and Florkey (US 2007/0047711 A1, Mar. 1, 2007). Ans. 10-11." + ], + "ptab_opinion": [ + "Appellant's invention relates to a service for providing personalized call features to electronic equipment within a communications network. Spec. 1, 11. 5-6.", + "Claims 1 and 16 are illustrative of the invention (disputed limitations in italics): 1. A server for providing call hold functions to a communications network through which a call between a user electronic equipment and one or more called/calling devices is routed, the server comprising: a network interface that connects the server to the communications network; and a controller that is coupled to the communications network via the network interface, the controller being operatively configured to receive a request from the user electronic equipment to communicate a media object to at least one of the one or more called/calling devices in response to the user electronic equipment placing the call on hold in accordance with hold settings of the user electronic equipment.", + "16. A user electronic equipment designed for use in combination with a server as recited in claim 1, the user electronic equipment comprising: call circuitry that enables the user electronic equipment to establish a call with a called/calling device; hold circuitry that enables the user electronic equipment to place the call established with the called/calling device on hold; an interface for receiving hold settings including criteria for selecting a media object; and a controller operative in conjunction with the call circuitry and hold circuitry to communicate a request to the server indicating that the call is placed on hold, wherein the request includes the criteria of the hold settings.", + "Bilder discloses an on-hold activity selection device 114 that provides activity services to parties that are placed on hold during a call. Bilder, col. 2, 11. 66-67; Fig. 1.", + "On-hold activity selection device 114 is connected to a communications network, as are user terminals 102 and 104. Id., col. 2, 11. 4-11; Fig. 1.", + "When a calling party uses terminal 104 to communicate with terminal 102, for example, the call is routed through on- hold activity selection device 114. Id., col. 3, 11. 18-21.", + "Bilder discloses that when one of the terminals 102 or 104 places the other terminal on hold during a call, on-hold activity device 114 provides on-hold activities to the on-hold party's terminal. Id., col. 3, 11. 42- 44.", + "\"The on-hold activities may include, for example, listening to music, listening, viewing or reading advertisements, news, sports, graphical presentations, prerecorded video messages, playing video games, browsing the Internet, reading textual messages, and any other type of entertaining and/or informative activity. \" Id., col. 4, 11. 29-35.", + "The on-hold activity to be provided to the on-hold party's 's terminal may be selected from a menu. Id., col. 3, 11. 38-42.", + "Bilder teaches customizing the available on-hold activities based on a user profile associated with the on-hold party. Id., col. 8, 11. 29- 32.", + "The user profile for a particular party may be correlated with the party's terminal, which may be identified, for example, by its telephone number. Id., col. 8, 11. 37-51.", + "Bilder also teaches customizing the available on-hold activities based on the approximate on-hold time. Id., col. 10, 11. 5-7.", + "Moore discloses a mobile phone 100 that can place an incoming call on hold. Moore, I [0016].", + "Mobile phone 100 contains controller 140, which can be configured to play for the caller a pre-recorded message or a digital music file stored in memory when the call hold feature is activated. Id., \" [0017], [0018].", + "We are not persuaded by Appellant's arguments.", + "First, with respect to Bilder, we do not agree that the reference fails to teach or suggest criteria for determining a selection of a media object.", + "Bilder teaches that the list of available on-hold activities (including \"media objects\" such as audio and video messages) may be customized based on identification of the on-hold party. FF3.", + "Appellant's Specification provides the same example when describing criteria for selecting a media object. Spec 12 (\"[T]he user may select to input different criteria to be used in conjunction with the selection of the particular media objects to be communicated. For example, the user may be presented with an option to associate specific media object (e.g., songs) based on the identification of the called/calling party.\" (emphasis added)).", + "Bilder also teaches customizing the available on-hold activities based on approximate on-hold time. FF3.", + "Thus, contrary to Appellant's argument, we find that Bilder teaches criteria for selecting media objects.", + "Moreover, because Bilder's system uses criteria to determine a list of available media objects from which the media object to be communicated to the on-hold party will be selected, we find that Bilder teaches, or at least suggests, providing criteria for selecting a media object to be communicated to the on-hold party.", + "We also disagree with Appellant's contention that Moore does not teach \"hold settings\" as recited in Appellant's claims because it merely discloses how a call is placed on hold rather than what happens during the hold state.", + "We agree with Appellant that paragraph [0016] of Moore describes various means for placing a call on hold. See Reply Br. 2.", + "However, paragraphs [0017] and [0018] of Moore describe what happens during the hold state, i.e., a pre-recorded message or digital music file is played for the caller placed on hold. FF4.", + "Thus, we find unpersuasive Appellant's argument that Moore fails to teach \"hold settings\" because it does not describe what happens during the hold state.", + "Based on our analysis of the references, we concur with the Examiner's conclusion that claims 1 and 16 would have been obvious because the combination of Bilder and Moore teaches or suggests all the limitations of claims 1 and 16. See Ans. 14.", + "Accordingly, we sustain the Examiner's $ 103(a) rejection of claim 1 and 16, as well as the .8 103(a) rejections of dependent claims 2-15 and 17, which were not separately argued with particularity. App. Br. 7-8.", + "Because our conclusion relies on findings different from those made by the Examiner, we designate our affirmance as a new ground of rejection over the art relied on by the Examiner." + ] +} \ No newline at end of file diff --git a/opinion_split/2010011715_DECISION.json b/opinion_split/2010011715_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..31181d89ddde495b01947b90487ce04a0cf6fea8 --- /dev/null +++ b/opinion_split/2010011715_DECISION.json @@ -0,0 +1,25 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "The Examiner rejects the claims as follows: claims 1-4, 15-20, 22-25, 27, 28, and 30 under 35 U.S.C. $102(b) as anticipated by Smith (U.S. 5,845,372, iss. Dec. 8, 1998); claims 12-14, 21, 26, and 29 under 35 U.S.C. \u25cf 103(a) as unpatentable over Smith in view of Takada (U.S. 4,371,193, iss. Feb. 1, 1983); and claim 31 under 35 U.S.C. $103(a) as unpatentable over Smith.", + "Presumably, with respect to the interpretation of the claimed \"controlled-slippage clamp,\" the Examiner argues that the clamp disclosed in Smith anticipates this feature because the clamp of Smith \u00b7 \u00b7 \u00b7 is capable of performing the intended use of the present invention, which is to control slippage of a vehicle safety belt.", + "Said slippage control, as taken at its broadest reasonable interpretation, can include stopping slippage altogether or even allowing maximum slippage (Ans. 6).", + "Further, the Examiner' argues, presumably with respect to the claimed *reduc[tion of] the variable-size web loop in size and \u00b7 \u00b7 increase \u00b7 \u00b7 \u00b7 [in] effective length of the extensible restraint strap, \" that \"the clamp of Smith \u00b7\u00b7 while disclosing the structural details of the claimed invention, is capable of performing the intended use, which in this case constitutes forming a loop in the section of seat belt\" (Ans. 6)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We REVERSE.", + "We are persuaded of error by Appellants' arguments that Smith does not disclose the claimed features of a controlled-slippage clamp coupled to portions of the first and third strap segments to form a variable-size web loop comprising the second strap segment and configured to compress the portions of the first and third strap segments at a predetermined clamping load to allow controlled slippage of the web in the controlled-slippage clamp in response to application of a tugging force to the first strap segment to reduce the variable- size web loop in size and to increase an effective length of the extensible restraint strap as recited in independent claim 1.", + "We agree with Appellants, however, that the correct interpretation of the claimed \"controlled[-]slippage clamp is not [a] zero movement clamp\" (Reply Br. 2), and that Smith . \u00b7 \u00b7 does not disclose any controlled- slippage clamp \u00b7 \u00b7 \u00b7 . [because the claims] are directed to a controlled-slippage clamp that permits controlled-slippage (or movement) of a strap (underlining original) (App. Br. 8).", + "This interpretation of \"controlled- slippage clamp\" is consistent with the description used throughout Appellants' Specification.", + "Thus, in view of the foregoing, we must reverse the rejection of independent claim 1.", + "We agree with 3 For example, paragraph [0003] of the Specification states \"The controlled- slippage clamp is used to control the rate of deceleration of an occupant seated in a vehicle seat by extending the effective length of the restraint strap in a controlled manner during application of a tugging force to the restraint strap caused by a sudden stoppage or slowdown of the vehicle, and paragraph [0004] of the Specification states \"Such controlled slippage allows regulated 'payout' of a reserve portion of the restraint strap to increase the effective length of the restraint strap and thereby control the rate of deceleration of a vehicle occupant and/or juvenile seat coupled to the restraint strap. \" Appellants, however, that the Examiner has not presented evidence sufficient to support this argument (Reply Br. 2) or provided a citation in the reference that discloses this.", + "Thus, for this independent reason, we must reverse the rejection of independent claim 1.", + "For reasons similar to those discussed above, we are persuaded of error by Appellants' arguments that Smith does not disclose the claimed features of a controlled-slippage clamp coupled to a portion of the first strap segment and configured to compress the portion of the first strap segment at a predetermined clamping load normally to establish a web section comprising only the first strap segment extending between the anchor fastener and the controlled-slippage clamp and to define an effective length of the web section to allow controlled slippage of the web in the controlled- slippage clamp in response to application of a tugging force to the first strap segment to increase the effective length of the web section by using the first strap segment and at least a portion of the second strap segment to define the web section as recited in independent claim 18.", + "Specifically, we agree with Appellants that Smith does not disclose the claimed \"controlled-slippage clamp,\" and the Examiner does not present sufficient evidence to support the argument that Smith discloses the claimed \"increase [of] the effective length of the web section\" or show such a citation in the reference.", + "Thus, in view of the foregoing, we must reverse the rejection of independent claim 18.", + "For reasons similar to those discussed above, we are persuaded of error by Appellants' arguments that Smith does not disclose the claimed features of \"a controlled-slippage clamp\" as recited in independent claim 28.", + "Thus, we must reverse the rejection of claim 28.", + "We must reverse the rejections of the remaining claims, inasmuch as these claims depend from one of independent claims 1, 18, and 28." + ] +} \ No newline at end of file diff --git a/opinion_split/2010012232_DECISION.json b/opinion_split/2010012232_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..cc66305a5564205198df1f0fb1321f647fd07808 --- /dev/null +++ b/opinion_split/2010012232_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellants argue that Sullivan *300 does not disclose a method for treating a subterranean formation penetrated by a wellbore by injecting the formation with a well treatment fluid having an initial pH of at least about 11.", + "In particular, Appellants assert that the Examiner's analysis presented in an Advisory Action does not accurately characterize Sullivan 300.", + "Appellants argue that Sullivan *300 forms a filter cake with a solid base-soluble material (first stage) and after that the solid base-soluble material is degraded with a base (second stage).", + "Appellants further argue that examples 1 and 2 of Sullivan *300 refer to *embodiments where a base is added not to the initial fluid, but after to a viscoelastic fluid.\"", + "Appellants also argue that example 2 of Sullivan 3300 can only refer to the second stage corresponding to introduction of a base for the degradation of the solid base-soluble material.", + "Appellants argue that Sullivan '731 does not disclose that the VES has an initial pH above 11 but instead highlights the difference between a VES system typically buffered to a pH of above 12 in normal use and the solid acid/pH control agent combination described in Sullivan *731, which shows the highest pH buffer being at pH 9.5.", + "Appellants argue that nothing in Sullivan '731 shows a system made of a VES, a solid acid, and buffer with a pH above 11." + ], + "examiner_findings": [ + "Claim 9 is rejected under 35 U.S.C. . 102(b) as being anticipated by Sullivan 300 (US 2004/0094300 A1; pub. May 20, 2004).", + "Claim 9 is rejected under 35 U.S.C. . 102(e) as being anticipated by Sullivan '731 (US 7,219,731 B2; iss. May 22, 2007).", + "The Examiner found that Sullivan *300 discloses a method of treating a subterranean formation penetrated by a well bore by injecting into the formation a well treatment fluid comprising a viscoelastic surfactant with at least one degradable linkage surfactant (see para. [0037]), a hydrolysable fiber (paras. [0025, 0044]), and a pH control material (para. [0035]) where the hydrolysable fiber and viscoelastic surfactant form non-solid products upon hydrolysis and the fluid has an initial pH of at least 11 (paras. [0035- 1 See Advisory Action, mailed Apr. 8, 2010 (entering amendment with claim 9 re-written in independent form). 0037]).", + "The Examiner found that Sullivan *300 discloses the use of viscoelastic surfactant fluids at pH's of 12.5 or higher.", + "The Examiner responds that the limitation of \"wherein said fluid has an initial pH of at least about 11\" is disclosed at paragraphs [0035] to [0037] of Sullivan 300.", + "The Examiner finds that these paragraphs disclose that \"[slome of the [viscoelastic surfactant] fluids described are normally used at pH's s of as much as 12.5 or higher,\" and therefore, Sullivan 300 provides for an initial pH of the fluid of at least about 11.", + "The Examiner found that Sullivan '731 discloses a method for treating subterranean formations penetrated by a well bore by injecting the formation with a well treatment fluid comprising a VES having at least one degradable linkage (col. 10, 11. 1-23 incorporating US patents), a hydrolysable fiber (col. 12, 11. 7-19), and a pH control material (col. 7, 11. 34-37), where hydrolysable fiber and viscoelastic surfactants form non-solid products upon hydrolysis and the fluid has an initial pH of at least about 11 (col. 10, 11. 6-11).", + "The Examiner also found that Sullivan '731 discloses that VES systems may not always be beneficial with the solid acid pH control agents of the invention, but Sullivan '731 does not exclude all uses of VES systems with a pH above 12 with a solid acid/pH control agent combination of the disclosed invention of Sullivan *731." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "Appellants' arguments do not persuade us of error in the Examiner's s findings that Sullivan *300 discloses the claimed method with a well treatment fluid with an initial pH of at least about 11, as set forth at pages 3- 5 of the Answer.", + "Sullivan *300 discloses that any viscoelastic surfactant (VES) fluids can be used for hydraulic fracturing in or after the pad and some VES fluids are used at pH's s of 12.5 or higher.", + "We sustain the rejection of claim 9.", + "These arguments do not persuade us of error in the Examiner's s findings that Sullivan '731 discloses a method for treating a subterranean formation by injecting a well treatment fluid with a VES with an initial pH above 11 and other claimed components, as set forth at pages 4 and 5-6 of the Answer.", + "Sullivan '731 discloses the use of VES systems with a pH of above 12 and notes that the solid acid/pH control agent combination of Sullivan '731's invention may not always be beneficial with such VES systems.", + "We sustain the rejection of claim 9." + ] +} \ No newline at end of file diff --git a/opinion_split/2010012561_DECISION.json b/opinion_split/2010012561_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0cb27d7ab9cff04658c7903f015f3d14db2822a9 --- /dev/null +++ b/opinion_split/2010012561_DECISION.json @@ -0,0 +1,58 @@ +{ + "appellant_arguments": [ + "Appellants argue on pages 13-18 of the Appeal Brief that the Examiner' is rejection of claim 1 is in error.\"", + "Appellants acknowledge that Albert discloses an electrophoretic medium having all features recited in claim 1 except for the specified difference between the refractive index of the suspending fluid and the continuous phase (Br. 14).", + "In addressing the Examiner's citation of col. 20, 11. 16-41 of Albert, particularly the disclosure at 11. 37-41 that \"[the wall material may \u00b7\u00b7\u00b7 be chosen to match the refractive index of the internal phase of the capsule (i.e., the suspending fluid) or a binder in which the capsules are to be dispersed,\" Appellants argue that this defines a \"relatively minor objective\" in Albert (Br. 17).", + "Appellants further contend that it would be \"highly unlikely\" for a skilled worker following the teaching of Albert to produce a structure having refractive indices that meet the claim limitation (Br. 17).", + "Appellants argue on pages 18-19 of the Appeal Brief that the Examiner's s rejection of claim 22 is in error.", + "Appellants argue on pages 19-20 of the Appeal Brief that the Examiner'. s rejection of claim 23 is in error.", + "Appellants argue on pages 20-21 of the Appeal Brief that the Examiner' s rejection of claim 5 is in error.", + "Appellants argue on page 21 of the Appeal Brief that the Examiner's rejection of claims 7-11 and 14-17 is in error." + ], + "examiner_findings": [ + "Claims 1, 2, 6, 12, 13, 22, and 23 stand rejected under 35 U.S.C $102(b) as anticipated by U.S. Pat. No. 6,262,706 (\"Albert\") (Ans. 4).", + "Claims 3-5, 7-11, and 14-21 stand rejected under 35 U.S.C. $103(a) as unpatentable over Albert (Ans. 9).", + "The Examiner finds that Albert teaches the carbon black particles are contained on the transparent substrate/panel. Ans. 20.", + "The Examiner finds that this association teaches that the panel comprises an absorber and meets the claim limitation. Ans 20.", + "The Examiner identifies a lengthy disclosure in Albert for various compositions of the suspending fluid.", + "The Examiner notes certain similarities in chemical structures for some of the disclosed compositions to what is recited in the claim (Ans. 21)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We affirm-in-part and enter a new ground of rejection for claim 22.", + "We have reviewed Appellants' arguments in their Appeal Brief and have reviewed the Examiner's response to Appellants' arguments.", + "This argument presents us with the issue of: Whether the Examiner erred in finding that Albert discloses the limitation of claim 1 that recites \"wherein the difference between the refractive index of the suspending fluid and the continuous phase is not greater than about 0.03.\"", + "We disagree that the Examiner has erred.", + "This argument misapplies the test for anticipation, which is satisfied when a single prior-art reference describes each and every element as set forth in the claim.", + "See, e.g., Verdegaal Bros. V. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).", + "Since Albert discloses index matching of a suspending fluid to a capsule wall in an electrophoretic medium, we disagree that the Examiner has erred in finding the limitation disclosed.", + "We accordingly sustain the Examiner* s rejection of claim 1.", + "These arguments present us with the following issues: (1) Whether the Examiner erred in finding that Albert discloses \"two light-transmissive panels spaced from one another**; and (2) Whether the Examiner erred in finding that Albert discloses that \"at least one of the light-transmissive panels comprises an absorber for electromagnetic radiation of [a wavelength to which the electrophoretic medium is sensitive].\"", + "With respect to the first issue, we disagree that the Examiner has erred.", + "We disagree with Appellants' assertion that Albert has no suggestion that both substrates be transparent and provided with light-transmissive electrodes so that the whole display is light-transmissive (see Br. 18).", + "The Examiner correctly observes that Albert discloses an embodiment at col. 12, 11. 29-38 in which \"all of the pixels present in the display are largely transparent,\" thereby requiring two transmissive substrates to contain the electrophoretic medium (Ans. 20).", + "Therefore, Albert discloses two light- transmissive panels spaced from one another.", + "We disagree; the claim distinguishes between the light-transmissive panels and the electrophoretic medium.", + "Albert teaches the carbon-black particles are part of the electrophoretic medium but we do not find that the light- transmissive panels are also part of the medium.", + "We accordingly do not sustain the Examiner's rejection.", + "This argument presents us with the issue of whether the Examiner erred in finding that Albert discloses electrically charged, substantially transparent particles within an electrophoretic medium.", + "We disagree that the Examiner has erred.", + "Appellants have not presented sufficient evidence or argument to persuade us of error in the Examiner's findings.", + "Specifically, Appellants have not shown the Examiner erred in finding Albert discloses a second set of clear or transparent particles that have an electrical charge (see Ans. 7, citing Albert, col. 6, 11. 52-62; col. 7, 11. 37-40)", + "We accordingly sustain the Examiner's s rejection of claim 23.", + "This argument presents us with the issue of whether the Examiner erred in finding it obvious over Albert for the suspending fluid to comprise a mixture of a hydrocarbon and chloronaphthalene.", + "We agree that the Examiner has erred.", + "However, the Examiner has provided insufficient reasoning to support the conclusion that it would be obvious to one of skill in the art to substitute chloronaphthalene for naphthalene in a suspending- fluid mixture.", + "We therefore do not sustain the Examiner' s rejection of claim 5.", + "This argument presents us with the issue of whether the Examiner erred in finding that Albert discloses \"an electrophoretic medium \u00b7\u00b7\u00b7 sandwiched between two transparent substrates\" (Br. 21).", + "We disagree that the Examiner has erred.", + "For the reasons we express there, we find that Albert discloses the claimed structure.", + "We accordingly sustain the Examiner's rejection of claims 7-11 and 14-17.", + "We enter a new ground of rejection of claim 22 under 35 U.S.C. $103(a) as unpatentable over Albert in view of U.S. Pat. No. 6,950,220 (\"Abramson\").", + "Except for the limitation of \"at least one of the light- transmissive panels compris[ing] an absorber for electromagnetic radiation of [a wavelength to which the electrophoretic medium is sensitive],' Albert discloses all limitations of claim 22 for the reasons given by the Examiner, which we adopt, along with the Examiner's 's findings, as our own.", + "Accordingly, Abramson teaches light- transmissive panels that comprise an absorber for electromagnetic radiation of this wavelength.", + "Thus, we find Abramson teaches \"at least one of the light-transmissive panels comprises an absorber for electromagnetic radiation of this wavelength.\"", + "We further find an ordinarily skilled artisan would include such ultraviolet filters with the devices disclosed in Albert to address the recognized ultraviolet sensitivity of the electrophoretic medium.", + "We thus conclude that Albert and Abramson render the invention as recited in claim 22 obvious." + ] +} \ No newline at end of file diff --git a/opinion_split/2011000236_DECISION.json b/opinion_split/2011000236_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0f07cb8af9609f990e7e49ac9cadbb283a9c1c02 --- /dev/null +++ b/opinion_split/2011000236_DECISION.json @@ -0,0 +1,38 @@ +{ + "appellant_arguments": [ + "Appellant contends that the Examiner has taken an extremely broad interpretation in finding that the individual fractionation trays of an industrial distillation column would read on a system designed for laboratory use. (App. Br. 6-7).", + "Appellant supports this contention by purporting narrower meanings to the term \"reaction vessel\" and *independent work stations\" that would exclude the claim from reading on an industrial distillation column, as allegedly disclosed in Young (id. 7-8).", + "Appellant contends that the term means that the work stations have \"different chemicals (reactants) and different reaction characteristics (heating, cooling, gas blanket, etc.)\" such that \"li]t is impossible to interpret the functionally interconnected fractionation trays of a distillation reactor as independent\" due to the flow of liquids and gases of the same chemicals needed for the fractionation reactor to work (App. Br. 7-8).", + "Appellant asserts that the term \"reaction vessel\" is clearly defined in the Specification \"as generally referring to bench scale flasks, beakers and other reactors used by bench researchers\" (App. Br. 8).", + "Appellant also contends that one of ordinary skill in the art would not have combined the stirring mechanism of Johnson with the fractionation trays of Young because (a) the distillation column already has \"violent movement of cascading liquids through rushing upwardly flowing gases\" rendering a stirring mechanism meaningless and (b) a plasma discharge reactor requires very different technology from the process described in Young (App. Br. 8)." + ], + "examiner_findings": [ + "The Examiner provides a broader interpretation in that a \"reaction vessel\" is *any structure capable of holding liquid and intended to be used to conduct reactions\" (Ans. 5) (emphasis added)." + ], + "ptab_opinion": [ + "We affirm.", + "However, because our affirmance relies on a different interpretation of claim 21 and different reasoning than the Examiner's reasoning, we designate our affirmances as new grounds of rejection.", + "Accordingly, all the appealed claims stand or fall together with sole independent claim 21.", + "We are not persuaded that \"reaction vessel\" and *independent work stations\" recited in claim 21 would not have been met by the teachings of Young for two reasons.", + "First, the distillation column of Young is not limited to an industrial application.", + "Second, we do not agree with Appellant's s narrower purported meaning of the term *independent work stations.\"", + "We agree with the Examiner that the broadest reasonable interpretation of the term *independent work stations,\" according to the skilled artisan when read in light of the Specification, does not require all the characteristics and features indicated by Appellant.", + "Appellant provides no evidentiary support for the position that the term \"independent\" narrows the meaning of the term \"work stations\" to require all reaction conditions to be different from one reaction vessel to another.", + "In particular, we find no requirement in claim 21 that each reaction vessel utilizes different reactants.", + "Accordingly, we decline to limit the meaning of the term *independent work stations\" as argued by Appellant.", + "Since the term \"work stations\" requires controlled cooling, at most, the term \"independent\" limits the \"work stations\" to be capable of independently controlled cooling.", + "Since Young teaches independently controlled heating and cooling of each tray 20 (see Young, Abstract and II [0002] and [0031]), the system providing the heating and cooling operations to each of the plurality of trays 20 constitutes the limitation in claim 21 of *independent work stations.\"", + "We find the Appellant's Specification provides for an interpretation narrower than the Examiner*. s purported interpretation.", + "The broad interpretation relied upon in the rejection of \"any structure capable of holding liquid and intended to be used to conduct reactions\" does not take into account the express guidance provided in Appellant's Specification.", + "Accordingly, we find that the term \"reaction vessel\" to have a narrower meaning than that relied upon by the Examiner* s rejection.", + "Despite the narrower meaning, however, we determine that Young would have suggested to a skilled artisan a bench-top or laboratory \"reaction vessel.\"", + "Because Young teaches that the system could be any size including *in the form of a bench lab setup\" (Young, I [0059]), the claimed \"reaction vessel\" is not distinguished from tray 20 of Young solely on the basis of size or laboratory bench suitability.", + "Further, we find that the term \"reaction vessel\" is not structurally limited so as to distinguish one of the trays 20 as taught by Young.", + "Claim 21 does not structurally or functionally distinguish tray 20 from the open reservoir \"reaction vessel\" disclosed in Figure 5 of Appellant's Specification, reproduced above.", + "We are not persuaded by Appellant's contentions.", + "Thus, it is reasonable to conclude that one of ordinary skill in the art would have incorporated a stirring mechanism in those situations where it is desirable to obtain a reflux condition for a liquid reactant, including in a distillation column such as that taught by Young.", + "To do so would have been no more than the predictable use of a stirring mechanism according to its established function as a mechanism for creating a reflux condition.", + "Moreover, the problem being addressed by the stirring mechanism is for obtaining movement of liquid, which is not a problem specific to the type of reaction taking place.", + "Johnson evinces that such a problem has already been solved in the art." + ] +} \ No newline at end of file diff --git a/opinion_split/2011000545_DECISION.json b/opinion_split/2011000545_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..fe9a7e469330368961db509550966d2b794975be --- /dev/null +++ b/opinion_split/2011000545_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "Appellant contends that the Examiner erred in finding that the combination of Sullivan, Eatability, and Bates teaches or suggests a \"type or a degree\" of association, as recited in claims I and 17.", + "Appellant argues that Bates merely teaches group membership without a type or degree of association. App. Br. 6 (citing Bates, col. 7, II. 13-18; Figs. 12 and 4).", + "Appellant argues that Bates cannot teach the disputed limitation because Bates also teaches that rankings can be provided without the use of group search results." + ], + "examiner_findings": [ + "The Examiner withdraws the rejection of independent claim 33 and its dependent claims 56 and 57 because the Examiner indicates that the claims contain allowable subject matter. Ans. 2-3.", + "Claims 1-6, 8, 9, 12, 14, 16-22, 24, 25, 28, 30, 34-40, 42-49, 51 and 58-67 stand rejected under 35 U.S.C $103(a) as being unpatentable over Sullivan (Danny Sullivan, \"Eurekster Launches Personalized Social Search:, Jan 21,2004, http:/www.scarcheaginewatch.com), Eatability (Eatability.com, 2003, haph//weet.andive/ww/wal/2003312127912 http://www.eatability.com/) and Bates (US 6,947,924, Sep. 20, 2005). Ans. 3-25.", + "Claims 7, 11, 23, 27, 32 and 52-55 stand rejected under 35 U.S.C $103(a) as being unpatentable over Sullivan, Eatability, Bates and Ng (US 6,405,175 B1, Jun. 11, 2002). Ans. 25-29.", + "Instead, the Examiner finds that one embodiment of the reference teaches performing a search using a particular group's search information, wherein the user is associated with the group. Ans. 30 See also Bates col. 6, 11. 42-57." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We affirm.", + "OPINION Issue: Did the Examiner err in finding that Bates, Eatability, and Sullivan teach or suggest *ranking articles responsive to the first search query based on a type or degree of the association between the first member and the first user, \" as recited in independent claims 1 and 17?", + "However, we agree with the Examiner (Ans. 29-30), that a user who is a member of a group is associated with that group.", + "Since, in one of Bates' embodiments, ranking is a result of group search results, we agree with the Examiner (Ans. 29-30) that ranking is based on a type of association, as claimed.", + "Contrary to Appellant's contention (App. Br. 6-8; Reply 1-2), the Examiner is not explicitly relying on the lack of a group being associated with a particular search to teach the disputed limitation. See Ans. 29-30.", + "Thus, we agree with the Examiner.", + "Appellant's additional argument that neither Bates, Sullivan, nor Eatability teach or suggest different types or degrees of association is not commensurate in scope with the claims.", + "Claims 1 and 17 do not require multiple types of associations but only require that results *rank[] articles responsive to the first search query based on a type \u00b7 \u00b7 of the association between the first member and the first user\" not multiple types of associations.", + "Thus, Appellant's admission that \"Sullivan and Eatability are limited to single category of association\" (App. Br. 6), supports that the combination of Sullivan, Eatability, and Bates teaches or suggests at least one type of association between a first member and first user that is used to rank articles responsive to a search query.", + "Based on the foregoing, we find that the Examiner did not err in finding that that Bates, Eatability, and Sullivan teach or suggest \"ranking articles responsive to the first search query based on a type or degree of the association between the first member and the first user\" as recited in independent claims I and 17.", + "Appellant made no separate arguments for claims 7, 11, 23, 27, 32 and 52-55, Since Appellant presented no separate arguments with respect to the claims that depend from independent claims 1 and 17 (see App. Br 8), we sustain the Examiner's rejection under 35 U.S.C 9 $103(a) of independent claims 1 and 17 and the claims that depend therefrom, dependent claims 2-9, 11. 12, 14, 16, 18-25, 27, 28, 30, 32, 34- 40, 42-49, 51-55, and 58-71." + ] +} \ No newline at end of file diff --git a/opinion_split/2011000671_DECISION.json b/opinion_split/2011000671_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..60d04801fccc03700ce40e12b02bad7f1f37afe9 --- /dev/null +++ b/opinion_split/2011000671_DECISION.json @@ -0,0 +1,46 @@ +{ + "appellant_arguments": [ + "Appellants' Contentions Appellants contend (Br. 6-16) that the Examiner erred in rejecting (a) claims 1-4 and 15-18 under 35 U.S.C. \u25cf 102(b), (b) claim 6 under 5 103(a) over Matsumoto, and (c) claims 7 and 20 under \u25cf 103(a) over Matsumoto and Hwang for numerous reasons, including:", + "(A) Matsumoto fails to teach or suggest a *doped halo\" (Br. 8), which is shown in Figure 2A of Appellants' Drawings and is defined by the Specification at page 8, lines 19-22 as \"a suitably doped portion of a semiconductor body \u00b7\u00b7\u00b7 situated between active source/drain regions of the semiconductor body, but where the doped halo does not completely fill that region\" (Br. 8);", + "body-effect in said transistor test structure\" where the doped halo is under a gate, which in turn is situated over a semiconductor body (claims 1 and 15).", + "Appellants state (Br. 3-4, Summary of Claimed Subject Matter, claim 1) that \"doped halo\" is defined in the Specification at page 8, lines 19-22." + ], + "examiner_findings": [ + "The Examiner's Rejections (1) The Examiner rejected claims 1-4 and 15-18 under 35 U.S.C. \u25cf 102(b) as being anticipated by Matsumoto (US 2002/0109187 A1).' Ans. 3- 4.", + "(2) The Examiner rejected dependent claim 6 as being unpatentable under 35 U.S.C. 5 103(a) over Matsumoto.\" Ans. 4-5.", + "(3) The Examiner rejected dependent claims 7 and 20 as being unpatentable under 35 U.S.C. 5 103(a) over Matsumoto and Hwang (US 6,218,248 B1).3 Ans. 5-6." + ], + "ptab_opinion": [ + "STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. 5 134(a) from a final rejection of claims 1-4, 6, 7, 15-18, and 20.", + "Claims 5, 8-14, and 19 have been canceled.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We affirm.", + "Exemplary Claim Exemplary independent claim 1 under appeal, with emphases added to disputed portions of the claim, reads as follows:", + "Claim 1: A silicon-on-insulator (SOI) transistor test structure comprising: a gate situated over a semiconductor body and over a doped halo: at least two semiconductor body contacts situated on opposing sides of said doped halo, wherein one or more of said at least two semiconductor body contacts forms a direct electrical contact with said doped halo underlying said gate, thereby increasing current flow to said doped halo to facilitate measuring body-effect in said transistor test structure.", + "In view of the foregoing, we select claim 1 as representative of the group of claims consisting of claims 1-4 and 15-18.", + "Principal Issue on Appeal Based on Appellants' arguments in the Appeal Brief (Br. 6-16), the following principal issue is presented on appeal:", + "Did the Examiner err in rejecting (i) claims 1-4 and 15-18 as being anticipated and (ii) claims 6, 7, and 20 as being obvious because Matsumoto fails to teach the *doped halo\" limitation at issue in representative claim 12", + "ANALYSIS We have reviewed the Examiner's s rejections in light of Appellants' arguments in the Appeal Brief and Reply Brief that 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, as well as the Advisory Action mailed January 26, 2010, and (2) the reasons set forth by the Examiner in the Examiner's s Answer (Ans. 3- 9) in response to Appellants' Appeal Brief.", + "We concur with the conclusions reached by the Examiner.", + "At issue is the meaning of \"doped halo\" as that term is used in the claims and as defined by Appellants' Specification (Spec. 6:11-14; doped halo 108 shown in Figs. 1A and 1B).", + "Doped halo 208 (Figs. 2A and 2B) is described as being **formed, for example, by doping the region of semiconductor body 202 under gate 204 with a suitable P type dopant\" (Spec. 8:20-22), and \"[a]s shown in Figure 2B, doped halo 208 in semiconductor body 202 is situated under gate 204 and adjacent to semiconductor body tie region 210\" (Spec. 8:19-20).", + "Doped halo 108 shown in Figures 1A and 1B is similarly described in the Specification (Spec. 6:11- 14).", + "In this light, Appellants' Contentions (A), (B), and (C) are not persuasive because Appellants' arguments improperly narrow the definition of doped halo which is provided at page 8, lines 20-22 of the Specification, simply as formed by doping the region of a semiconductor body that is under a gate with a suitable P type dopant.", + "We agree with the Examiner (Ans. 7-9) that Matsumoto meets the limitations of claim 1, including disclosing a doped halo (P doped region 17b) under a gate (gate oxide film 5, side wall 6, and gate electrode 71).", + "Matsumoto discloses a pocket region that is equivalent to the doped halo of the claims (I [0298]; Figs. 36 and 37).", + "We also agree with the Examiner (Ans. 7-8) that Matsumoto's pocket implant 17b is equivalent to a halo implant because we agree with the Examiner (Ans. 8) that Ravindhran (US 5,395,773) (col. 2, 11. 57-59) serves as extrinsic evidence proving that a pocket implant is equivalent to a halo implant.", + "Appellants have not filed a Reply Brief or otherwise contradicted this assertion and definition provided by the Examiner.", + "Additionally, while features of an apparatus or system may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).", + "**[A]pparatus claims cover what a device is, not what a device does.\" Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).", + "Appellants have failed to structurally distinguish the prior art's s pocket region from the test structure and system having a doped halo as recited in representative claim 1.", + "And, the function of *increasing current flow to said doped halo to facilitate measuring body-effect in said transistor test structure\" recited in independent claims 1 and 15 does not serve to distinguish Appellants' invention from Matsumoto's disclosure. Schreiber, 128 F.3d at 1477-78.", + "Therefore, Appellants' Contentions (E), (F), and (G) relating to the function of Matsumoto's device are not persuasive.", + "Appellants' Contentions (A), (B), (D), (E), and (F) listed supra (see Br. 9-13) are not commensurate in scope with the language of representative claim 1 and are therefore not persuasive.", + "Representative claim 1 does not recite source/drain regions, that there are no intermediate regions between the doped halo and the semiconductor body contact, and/or the degree to which accuracy is of body-effect measurement is increased.", + "In view of the foregoing, we sustain the rejection of representative claim 1 as well as claims 2-4 and 15-18 grouped therewith as being anticipated by Matsumoto.", + "We sustain the rejection of claim 6 for the reasons provided as to claim 1 and because Appellants have not argued claim 6 separately.", + "We sustain the rejection of claims 7 and 20 for similar reasons as provided for claims 1 and 15 from which claims 7 and 20 respectively depend." + ] +} \ No newline at end of file diff --git a/opinion_split/2011001442_DECISION.json b/opinion_split/2011001442_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..760cf77f6aa34937416cdb74d8da47d0bff6de4b --- /dev/null +++ b/opinion_split/2011001442_DECISION.json @@ -0,0 +1,43 @@ +{ + "appellant_arguments": [ + "[T]he Maeda Patent fails to disclose a user interface comprising an array of one-touch print buttons.", + "Moreover, this deficiency reflects that, by teaching the desirability of efficient automated web access printing, the Maeda Patent effectively teaches away from the desirability of adding even more buttons for on- demand web access printing, \u00b7 \u00b7 \u00b7\u00b7 App. Br. 12; see Reply Br. 2.", + "The Appellants also contend that Schwerin teaches away from claim 9 by teaching that access device 10 relies on PC 11. App. Br. 16.", + "Therefore, according to Appellants, Schwerin teaches away from retrieving the web page via the printer exclusively independent of a separate computer, as recited in claim 9. Id.", + "The Appellants contend that Cass fails to cure the deficiencies of Maeda and Schwerin because Cass requires interactive communication between a fax machine and a separate computer, as per claims 12-15. App. Br. 17-18.", + "Therefore, according to Appellants, because Cass requires communication with a computer, it also teaches away from the present invention. Id.", + "The Appellants contend that one skilled in the art would not be motivated to combine the teachings of Maeda and Schwerin, and Maeda, Schwerin and Cass. (App. Br. 12; 20-21.)", + "The Appellants argue that attempting to add an array of one touch print buttons to Maeda, would work to defeat the desire of the Maeda for automated web access printing, as users would need to press a button each time that their desired web page is to be printed. (App. Br. 13-14.)" + ], + "examiner_findings": [ + "The Examiner rejects claims 1, 3, 6, and 20-22 under 35 U.S.C. \u25cf 103(a) as being unpatentable over Maeda (U.S. Patent No. 6,791,703 B1, issued September 14, 2004 (filed May 10, 1999)), and Schwerin (U.S. Patent No. 6,691,187 B1, issued Feb. 10, 2004 (filed July 2, 2001)).", + "The Examiner rejects claims 2 and 5 under 35 U.S.C. \u25cf 103(a) as being unpatentable over Maeda, Schwerin, and Well-known Prior Art.", + "The Examiner rejects claim 9 under 35 U.S.C. \u25cf 103(a) as being unpatentable over Schwerin and Maeda.", + "The Examiner rejects claims 12-15 under 35 U.S.C. & 103(a) as being unpatentable over Schwerin and Maeda and Cass (U.S. Patent No. 5,692,073, issued Nov. 25, 1997).", + "The Examiner presented rationales for the above-mentioned combinations. Ans. 4; 13." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. .5 6(b).", + "We AFFIRM.", + "We disagree with the Appellants.", + "\"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be 1ed in a direction divergent from the path that was taken by the applicant.\" In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks omitted).", + "See also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives).", + "This reasoning is applicable in the present case.", + "We find that the apparatus disclosed in Maeda (claims 1-3, 5-6, and 20-22) does not actually teach away from soft touch buttons merely because of the absence of soft touch buttons.", + "Maeda does not otherwise criticize, discredit, or otherwise discourage the addition of buttons.", + "We disagree essentially for the reasons discussed supra whereby Appellants fail to provide any evidence that Schwerin discourages or discredits retrieving a webpage via a printer and independent of a separate computer.", + "We find this argument unavailing for the reasons discussed supra.", + "Again, we find that Cass does not discredit or discourage the limitations recited in claims 12-15 and the Appellants do not provide any other persuasive evidence to support their argument.", + "Based on this record, we conclude that neither of Maeda, Schwerin or Cass teaches away from independent claims 1, 9, 14, and 20.", + "In order to present a prima facie case of obviousness, the Examiner must articulate a reasoning with some rational underpinning to support the legal conclusion of obviousness.", + "\"[Rlejections 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.\" KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 418(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).", + "\"[Alny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.\" In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting KSR at 550 U.S. 413).", + "Given the breadth of Appellants' claims, we are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner was \"'uniquely challenging or difficult for one of ordinary skill in the art\" (see Leapfrog Enters., Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).", + "Therefore, we find the Examiner's 's proffered combination of familiar prior art elements according to their established functions would have yielded nothing more than predictable results.", + "Based on this record, we conclude that the Appellants have not shown the Examiner failed to provide a motivation to combine Maeda, Schwerin and Cass.", + "At the outset, we observe that the Examiner merely looks to the secondary references as evidence that one-touch soft buttons (Schwerin), retrieving the web pages exclusively independent of a separate computer (Maeda), and marking and scanning web pages (Cass), were well known to artisans at the time of Appellants' invention. (Ans. 4; 9; 10.)", + "After considering the evidence before us, it is our view that the Appellants' arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and, is therefore, ineffective to rebut the Examiner' s prima facie case of obviousness.", + "\"What appellants overlook is that it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.\" \" In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citations omitted; emphasis added); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (\"Combining the teachings of references does not involve an ability to combine their specific structures. \") (Emphasis in original).", + "The test for obviousness is not whether the features of a reference may be bodily incorporated into the structure of another reference but what the combined teachings of those references would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981)." + ] +} \ No newline at end of file diff --git a/opinion_split/2011002402_DECISION.json b/opinion_split/2011002402_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..6d1147ed89952466da10c8a14728f350c1fca94e --- /dev/null +++ b/opinion_split/2011002402_DECISION.json @@ -0,0 +1,43 @@ +{ + "appellant_arguments": [ + "1. A method for determining the function of one or more effector nucleic acid sequences from a library of effector nucleic acid sequences comprising: i) determining the distribution of a detectable label expressed from one of a group of indicator nucleic acid sequences expressed in cells in both the presence and the absence of one of a group of chemical modulators which affect said distribution of said detectable label, wherein the cells express one of said effector nucleic acid sequences; ii) repeat step i) with a different effector nucleic acid sequence from said library of effector nucleic acid sequences; iii) analyzing the distribution data of said detectable label from all combinations of said effectors, modulator and indicator to derive functional linkages among said effectors, modulator and indicator; and iv) repeating steps i) to iii) with different combinations of effector nucleic acid sequences, chemical modulators and indicator nucleic acid sequences until a function is assigned successfully to said one or more effector nucleic acid sequences.", + "1. According to the Specification, an effector is \"a nucleic acid sequence with biological function or activity, resulting either from an expressed protein with biological function or activity (e.g. cDNA or other coding nucleic acid sequence) or resulting from another mechanism of action (e.g. antisense and RNAi sequences). (Spec., 7.)", + "2. According to the Specification a modulator is \"a chemical moiety with biological function or activity.\" \" (id.)", + "3. According to the Specification, an indicator is \"a nucleic acid sequence which comprises a detectable label, encodes a detectable label or which may optionally be fused to a sequence encoding a detectable protein label and expressed in a cell resulting in a characteristic localisation of the detectable protein.\" (id.)", + "4. According to the Specification, page 10, procedures may be used to ligate the effector and indicator nucleic acid sequences of the invention.", + "Appellants argue that Thastrup fails to teach an effector molecule, as claimed.", + "Appellants argue that Thastrup does not disclose an effector molecule because according to the Specification, the fusion between a detectable marker and an effector constitutes an indicator. (Br. 5.)" + ], + "examiner_findings": [ + "Cited References Thastrup et al. (Thastrup) WO 98/45704 Oct. 15, 1998 Bastiaens et al. (Bastiaens) WO 00/08054 Feb. 17, 2000 Gonye et al. (Gonye) WO 01/679419 A2 Oct. 25, 2001", + "Claims 1, 3, 4, 6, 7, 9-11 and 16-19 are rejected under 35 U.S.C. \u25cf 102(b) over Thastrup.", + "Claims 1, 3, 4, 6, 7, 9-11 and 16-19 are rejected under 35 U.S.C. \u25cf 103(a) over Thastrup.", + "Claims 1, 3, 4, 6, 7, 9-12 and 16-19 are rejected under 35 U.S.C. \u25cf 103(a) over Thastrup in view of Bastiaens.", + "Claims 1, 3, 4, 6, 7, 9-12 and 16-19 are rejected under 35 U.S.C. $103(a) over Thastrup in view of Bastiaens and Gonye.", + "The Examiner* s findings of fact are set forth in the Answer at pages 4-14.", + "The Examiner finds that Thastrup teaches each element claimed.", + "The Examiner finds that Thastrup's is fusion protein is a combination of a lumiphore (GFP) and an intracellular signaling protein (PKA).", + "The Examiner argues that this is similar to Appellants' disclosure in the Specification, Example 4, of a lumiphore (GFP) fused to the intracellular signaling protein (NFkB p65)." + ], + "ptab_opinion": [ + "The following facts are highlighted.", + "The issue is: Does Thastrup teach an effector molecule, as claimed?", + "In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).", + "To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. 17. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).", + "\"In rejecting claims under 35 U.S.C. & 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.\" In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted).", + "In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham V. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present.", + "\"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. \" KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).", + "We agree with the Examiner' s fact finding, statement of the rejection, and responses to Appellants' arguments as set forth in the Answer.", + "We provide the following additional comment.", + "We find that the Examiner has set forth in the Answer both a prima facie case of anticipation and a prima facie case of obviousness for the pending claims.", + "Since all rejections turn on the same issue, we decide the rejections together.", + "We are not persuaded by Appellants' argument.", + "We agree.", + "Appellants' Specification, pages 10 and 23-24, provides a reasonable basis for interpreting that an effector molecule may be ligated to an indicator molecule. (FF4.)", + "Appellants' Specification defines an effector as a nucleic acid sequence with biological function (FF 1); e.g., cellular distribution.", + "Appellants' Specification defines an indicator as a nucleic acid which comprises or encodes a detectable label (FF 3); e.g., GFP.", + "Neither definition excludes the effector and the indicator from being part of the same nucleic acid; i.e., encoding parts of the same fusion protein.", + "We therefore agree with the Examiner that the broadest reasonable interpretation of the claims reads on Thastrup's method.", + "We do not find that Appellants have provided sufficient argument or evidence to rebut the Examiner's prima facie case, and the anticipation and obviousness rejections are affirmed for the reasons of record." + ] +} \ No newline at end of file diff --git a/opinion_split/2011002977_DECISION.json b/opinion_split/2011002977_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..fb157101582881227f3b964a1f73a060be461ebb --- /dev/null +++ b/opinion_split/2011002977_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellants argue on pages 14 through 16 of the Appeal Brief and pages 5 and 7 of the Reply Brief, the Examiner* s rejection of independent claim 1 is in error.", + "Appellants argue on pages 16 and 17 of the Appeal Brief and page 8 of the Reply Brief, the Examiner's s rejection of independent claim 2 is in error." + ], + "examiner_findings": [ + "The Examiner has rejected claims 1, 2, 5 through 8, 11 and 12 under 35 U.S.C. & 102(b) as anticipated over Eshghi (US 5,893,083, Apr. 6, 1999). Answer 3-8.", + "The Examiner has rejected claims 3, 4, 9 and 10 under 35 U.S.C. \u25cf 103(a) as unpatentable over Eshghi and Sankaranarayan (US 2005/ 0033846 A1, Feb. 10, 2005, filed Aug. 31, 2004). Answer 8-10.", + "The Examiner has rejected claims 13 and 15 through 21 under 35 U.S.C. 5 103(a) as unpatentable over Sankaranarayan and Eshghi. Answer 11-18.", + "The Examiner has rejected claim 22 under 35 U.S.C. 5 103(a) as unpatentable over Eshghi. Answer 18-20.", + "The Examiner cites to Eshghi's s Abstract and portions of column 2, as providing a decision sequence as claimed. Answer 23-24.", + "The Examiner'. s obviousness rejections of claims 15 through 17 and 22 similarly rely upon the teachings of Eshghi, to teach this feature." + ], + "ptab_opinion": [ + "Appellants' arguments directed to independent claims 7 and 13 present us with similar issues as claim 1.", + "Appellants' arguments directed to the anticipation rejection of claim 8 and the obviousness rejection of independent claim 18 present us with the same issue. App. Br. 17, 21-22.", + "We have reviewed Appellants' arguments in the Briefs, the Examiner* s rejection and the Examiner': response to the Appellants' arguments.", + "We agree with Appellants' conclusion that the Examiner erred in rejecting claims 1, 7, 13, 15 through 17 and 22 but disagree with Appellants' conclusion the Examiner erred in rejection claims 2 through 6, 8 through 12 and 18 through 21.", + "We concur with the Appellants' conclusion that the Examiner erred in finding Eshghi teaches a policy indicating a decision sequence that is to be followed to reach the at least one desired end state based on the at least one conditional relationship specification.", + "We disagree with the Examiner and concur with Appellants' arguments on pages 14 and 15 of the Brief, and pages 5 and 6 of the Reply Brief as we do not see how the cited disclosures of Eshghi recite a decision sequence to reach a desired end state.", + "Accordingly, we do not sustain the Examiner' s anticipation rejection of claims 1 and 7.", + "Accordingly, we similarly do not sustain the Examiner' s rejection of claims 13, 15 through 17 and 22.", + "We disagree with the Appellants' conclusion that the Examiner erred in finding Eshghi teaches placing the autonomic computing system in the acceptable sub-state as a substitution for the desired end-state, wherein the acceptable sub-state becomes a new end-state in response to the substitution.", + "We are not persuaded by Appellants' arguments on pages 16 and 17 of the Brief, that Eshghi's goal \"is not a 'desired end state for the automatic computing system(.]\"", + "The Examiner has provided a comprehensive response to Appellants' arguments, with which we concur. Ans. 27.", + "Accordingly, we sustain the Examiner's is anticipation rejection of claims 2, 8, 11, and 12.", + "Appellants' arguments directed to independent claim 18 present us with the same issue and Appellants have not presented arguments directed the rejections of claims 3 through 6, 9, 10, and 19 through 21.", + "Accordingly, we similarly sustain the Examiner's s rejection of these claims.", + "Under 37 C.F.R. .5 41.50(b), we enter a new ground of rejection against claims 7 through 12 under 35 U.S.C. 5 101.", + "Thus, Appellants' Specification identifies that the medium can include a propagating signal.", + "a signal is not within one of the four categories of patentable subject matter as defined under 35 U.S.C. & 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).", + "See also our recent precedential decision Ex parte Mewherter (Appeal 2012-007692), 2013 WL 3291360 (PTAB 2013) Precedential, and guidance in the Manual of Patent Examining Procedure (\"MPEP\") \u25cf 2106(I), Ed. 8, Rev. 9 (Aug. 2012).", + "Accordingly, we now reject claims 7 through 12 as being drawn to subject matter that is not eligible for patent protection under 35 U.S.C. & 101." + ] +} \ No newline at end of file diff --git a/opinion_split/2011003292_DECISION.json b/opinion_split/2011003292_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c82a0793968bb57d62f39858e2ce9278f0ca3510 --- /dev/null +++ b/opinion_split/2011003292_DECISION.json @@ -0,0 +1,20 @@ +{ + "appellant_arguments": [ + "Appellant argues that the \"disclosure in Zunker regarding *fibers interlaid\\' does not teach or suggest a braided absorbent core\" (App. Br. 7)." + ], + "examiner_findings": [ + "Claims 1, 2, 6, 15, 18, 20, and 21 stand rejected under 35 U.S.C. \u25cf 103(a) as obvious over Zunker et a1. (US 2005/0256440 A1, Nov. 17, 2005) in view of Gueret (US 6,343,608 B1, Feb. 5, 2002) (Ans. 3).", + "Claims 3, 4, and 22 stand rejected under 35 U.S.C. 5 103(a) as obvious over Zunker in view of Gueret and Tao et al. (US 5,713,369, Feb. 3, 1998) (Ans. 7).", + "Claims 11 and 13 stand rejected under 35 U.S.C. . 103(a) as obvious over Zunker in view of Gueret and Strickland et al. (US 5,191,899, Mar. 9, 1993) (Ans. 8).", + "Claim 12 stands rejected under 35 U.S.C. & 103(a) as obvious over Zunker in view of Gueret, Strickland, and Pearce (US 6,723,057 B1, Apr. 20, 2004) (Ans. 8).", + "Claim 14 stands rejected under 35 U.S.C. & 103(a) as obvious over Zunker in view of Gueret, Strickland, and Kachigian (US 5,084,005, Jan. 28, 1992) (Ans. 10).", + "The Examiner relies on Zunker for disclosing a sampling device comprising: an elongated shaft 12 that defines a first end separated from a second end; an absorbent sampler 10 coupled to the first end of the shaft, the absorbent sampler including: a braided (fibers interlaid \u00b7 90029) absorbent core 20 disposed on a longitudinal axis of the elongated shaft, a plurality of fibers, i.e. flocking (90030) extending from the absorbent core \u00b7 \u00b7 . ; wherein the plurality of fibers is configured to atraumatically exfoliate cells from a tissue surface of a patient (due to textured surface \u00b7 90027), and the absorbent core is configured to absorb a portion of exfoliated cells (10032). (Ans. 3-4.)", + "The Examiner relies on Gueret for teaching *that an analogous device 1 including analogous plurality of fibers - flocking 3 \u25a0 are known to be made of cotton or rayon \u00b7 \u00b7 \u00b7 + wherein it is known that cotton and rayon are absorbable materials\" (id. at 4).", + "The Examiner concludes that it would have been obvious \"to have the plurality of fibers of Zunker et al be made of cotton or rayon as taught by Gueret\" (id.)." + ], + "ptab_opinion": [ + "Thus, we agree with the Examiner that the term **braided** should not be interpreted to require at least three strands (Ans. 11).", + "Instead, we interpret the term *braided** to include two intertwined strands.", + "However, the Examiner's argument does not persuade us that the term *braided* should be interpreted to encompass any interlaid fibers or that the reference to **knitted fabric\" in Zunker's definition of \"nonwoven fabric\" demonstrates that Zunker's interlaid fibers are **braided,\" as this term would be understood by one of ordinary skill in the art." + ] +} \ No newline at end of file diff --git a/opinion_split/2011003426_DECISION.json b/opinion_split/2011003426_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..bf1e5fb75b2d63a71e1d9d94234cb115505ab3c7 --- /dev/null +++ b/opinion_split/2011003426_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "The Appellant counters that the auxiliary transmission structure as indicated by the Examiner himself by the line \"x\" entered by the Examiner in Fig. 1 of Pelouch does not have a single input shaft 46 (46 actually designates a gear).", + "Rather, in accordance with the Examiner's line \"x\" Pelouch's auxiliary transmission structure has actually three input shafts.", + "App. Br. 4." + ], + "examiner_findings": [ + "REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Pelouch US 7,070,534 B2 Jul. 4, 2006 Steen WO 2004/023003 A1 Mar. 18, 2004", + "REJECTIONS The Examiner made the following rejections: Claims 1-5, 10 and 12 stand rejected under 35 U.S.C. $102(b) as being anticipated by Pelouch.", + "Claim 11 stands rejected under 35 U.S.C. $103(a) as being unpatentable over Pelouch and Steen.", + "ANALYSIS Anticipation by Pelouch Addressing claim 1, the Examiner finds that Pelouch discloses an auxiliary transmission structure (to the right of line \"X\") having a single input shaft (46) connected to, or forming an extension of, the end shaft (68 via gear train 56) of the dual clutch gear transmission structure and including at least two shift positions (first gear and ninth gear) with different transmission ratios and a single shifting mechanism (84) for shifting the auxiliary transmission between the at least two shift positions, the auxiliary transmission structure being drive connected to the driven vehicle wheels via an output shaft (16).", + "Ans. 4-5, citing Annotated fig. 1; Ans. 6.", + "The Examiner tries to clarify his position by arguing *an auxiliary transmission structure having a single input shaft connected to, or forming an extension of, the end shaf[t]\".", + "This limitation is very broad, and as such Pelouch reads on the claim.", + "The shaft to which gears (46) and (58) are a part of is connected to the end shaft (68) via the gear train (56).", + "Ans. 7." + ], + "ptab_opinion": [ + "STATEMENT OF CASE Appellant appeals under 35 U.S.C. 5 134 from the rejection of claims 1-5 and 10-12.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We reverse.", + "CLAIMED SUBJECT MATTER The claims are directed to a drive train of a motor vehicle.", + "Spec. 1.", + "Claim 1, reproduced below, is the sole independent claim: 1. a drive train (1) of a motor vehicle having an engine (5), a gearbox (10) and driven vehicle wheels (42), the gear box including[:] a dual clutch transmission structure (15) having two parallel gear transmissions (10,20) with a common end shaft (35), an auxiliary transmission structure (50) having a single input shaft (51) connected to, or forming an extension of, the end shaft of (35) the dual clutch gear transmission structure (15) and including at least two shift positions with different transmission ratios and a single shifting mechanism (56) for shifting the auxiliary transmission between the at least two shift positions, the auxiliary transmission structure (50) being drive- connected to the driven vehicle wheels (42) via an output shaft (13).", + "This argument is inconsistent with the Examiner's findings regarding the location of the auxiliary transmission structure, on which the Examiner's rejection relies.", + "The gears 46 and 58 are internal to, not inputs of, the \"auxiliary transmission\" defined by the Examiner.", + "The \"auxiliary transmission\" can accept inputs from countershaft 74 (when clutch 20 is engaged), countershaft 76 (when clutch 22 is engaged), or converter output shaft 88 (when the clutch 94 is engaged).", + "Thus, the Examiner's finding of an auxiliary transmission structure having a single input shaft is erroneous.", + "As such, we do not sustain the rejection of claim 1, or dependent claims 2-5, 10 and 12.", + "Obviousness over Pelouch and Steen.", + "Addressing claim 11, none of the Examiner's s findings with regard to Steen remedy the erroneous finding discussed above on which the Examiner's conclusion of obviousness is based.", + "As such, we do not sustain the rejection of claim 11." + ] +} \ No newline at end of file diff --git a/opinion_split/2011003429_DECISION.json b/opinion_split/2011003429_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d0aa0d0af6ddb79afee5f40e3f18fc9f80776829 --- /dev/null +++ b/opinion_split/2011003429_DECISION.json @@ -0,0 +1,14 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "\"Conrad fails to explicitly disclose where said implant is located entirely within a region laterally superior of the hyoid bone\" (Ans. 4).", + "Based on Conrad, Examiner concludes that, at the time of Appellant's claimed invention, it would have prima facie obvious to a person of ordinary skill in this art to combine the portion of the anchor that passes over the hyoid with the fibrosis inducing agent such as anchor 14 since Conrad provides motivation for the combination \u00b7\u00b7\u00b7 to achieve an implant located entirely within a region laterally superior of the hyoid bone in order to enhance manipulation of the hyoid bone for airway patency. (Ans. 4-5; id. at 6).", + "In support of this conclusion, Examiner characterizes Conrad's cable 190' as an anchor and reasons that since Conrad suggests fibrosis inducing agents as anchors, *`[t]he primary fibrosis inducing agent 14 could be relied on as the fibrosis agent that is attached to the portion of the anchor (190+) that passes over the hyoid bone\" (Id. at 4; see also id. at 5)." + ], + "ptab_opinion": [ + "We reverse.", + "Does the preponderance of evidence on this record support a conclusion that Conrad suggests an implant comprising a fibrosis-inducing agent and an anchor, wherein the fibrosis-inducing agent is anchored to the hyoid bone by the anchor, as required by Appellant's claimed invention?", + "Notwithstanding Examiner's assertion to the contrary, Conrad's element 190' is a cable not an anchor (FF 3; see Reply Br. 5 (Examiner`s rejection relies on an unsupported modification of \"the material of [Conrad's] cable 190* so as to provide anchoring characteristics\"); App. Br. 9 (Conrad's \"cable 190* is not anchored to the hyoid bone\"); Cf Ans. 4-6).", + "Accordingly, Examiner failed to establish an evidentiary basis on this record to support a conclusion that Conrad suggests an implant comprising a fibrosis-inducing agent and an anchor, wherein the fibrosis-inducing agent is anchored to the hyoid bone by the anchor, as required by Appellant's claimed invention." + ] +} \ No newline at end of file diff --git a/opinion_split/2011003705_DECISION.json b/opinion_split/2011003705_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7aea6198a55ab3cf35900a6bb90cf004ae9c050d --- /dev/null +++ b/opinion_split/2011003705_DECISION.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [ + "According to Appellants, the claimed method is contrasted with a conventional method which requires the determination of wavefronts needed to reconstruct every point in an object.", + "ANALYSIS Appellants' arguments with respect to the Examiner's obviousness rejection of representative independent claim 22 initially focus on the alleged deficiency of Grossetie in teaching or suggesting a display device which includes an optical system that images light into an observer plane as claimed.'", + "According to Appellants (App. Br. 7; Reply Br. 2), Grossetie, which discloses a computational method of calculating holographic data, merely provides a schematic reconstruction (Fig. 8) of an object, but does not disclose an optical display device operating under the principles of Fourier optics as claimed.", + "Lastly, we recognize that Appellants have undertaken a detailed analysis of Grossetie in support of their contention that the optical principle used by Grossetie is different from that of Schwerdtner and the claimed invention which expressly requires Fourier holography.", + "According to Appellants, Grossetie must operate under the principle of Fresnel holography and is not enabling for a display device operating under the principle of Fourier holography as would be required in the Examiner's proposed combination with Schwerdtner (App. Br. 8-10; Reply Br. 3-5)." + ], + "examiner_findings": [ + "Claims 2, 4, 5, and 15-24, all of the appealed claims, stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Schwerdtner in view of Grossetie.", + "As pointed out by the Examiner, it is Schwerdtner, not Grossetie, that is relied upon for a teaching of holographic object reconstruction using Fourier optics that includes an optical display device that images light into an observer plane (Ans. 9).", + "While Schwerdtner discloses only the calculation of a hologram such that the holographic reconstruction of an object is visible in front of the spatial light modulator, Grossetie is relied upon for the teaching of calculating a hologram to be encoded into a spatial light modulator so that the object reconstruction is visible behind the spatial light modulator (Ans. 10)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We affirm.", + "Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 16, 2010), the Answer (mailed Aug. 31, 2010), and the Reply Brief (filed Nov. 1, 2010) for the respective details.", + "We have considered in this decision only those arguments Appellants actually raised in the Briefs.", + "Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived.", + "We find Appellants' arguments unpersuasive of any error in the Examiner's stated position.", + "One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.", + "We also find that the Examiner has provided a valid articulated line of reasoning with a rational underpinning to support the conclusion of obviousness with respect to the proposed combination of Schwerdtner and Grossetic (Ans.9-10).", + "While Appellants contend that Grossetie has no specific disclosure as to how the disclosed hologram calculating method might be implemented in the system of Schwerdtner, we note that the Supreme Court has held that in analyzing an obviousness rationale, a court need not find specific teachings, but rather may consider \"the background knowledge possessed by a person having ordinary skill in the art\" and \"the inferences and creative steps that a person of ordinary skill in the art would employ.\"", + "Further, an artisan is presumed to possess both skill and common sense.", + "Aside from arguments of counsel, however, Appellants have set forth no evidence which would overcome the Examiner's 's stated position.", + "In particular, Appellants' reliance (Reply Br. 5) on the enablement requirements outlined in In re Kumar 418 F.3d 1361, 1368 (Fed. Cir. 2005) lacks merit.", + "Appellants' conclusory remarks, devoid of the type of rebuttal evidence addressed in Kumar, fail to rebut the Examiner's prima facie case of enablement for the application, to the system of Schwerdtner, of Grossetie's teaching of hologram calculation enabling an observer to view a reconstructed object behind the spatial light modulator.", + "\"The applicant has the burden of coming forward with evidence in rebuttal, when the prior art includes a method that appears, on its face, to be capable of producing the claimed composition.\"", + "Further, factual assertions of inoperability of the prior art, as argued by counsel without a supporting declaration, have no probative value.", + "For the above reasons, the Examiner's 35 U.S.C. 8 103(a) rejection of representative independent claim 22, as well as claims 2, 4, 5, 15-21, 23, and 24 not separately argued by Appellants, is sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2011004653_DECISION.json b/opinion_split/2011004653_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9039c4a3d1790b1705655a494ad17ab5575f2331 --- /dev/null +++ b/opinion_split/2011004653_DECISION.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "It is Appellants' position that claimed subject of wherein the charging/discharging device is *electrically connected\" to the frequency counter should be interpreted such that the electrical connection between that charging/discharging device and the frequency counter is a direct electrical connection.", + "Appellants submit that Figure I shows this direct electrical connection.", + "Br. 13-14.", + "Reply Br. 1-2.", + "Appellants submit that based upon the case law of Phillips v. A AWH Corp, 415 F. 3d 1303 (Fed. Cir. 2005), the claims must be read in light of the prosecution history and the Specification.", + "Appellants refer to their Brief and to Figure 1 in support of their interpretation of claim 1 that the charging/discharging device is directly electrically connected to the frequency counter.", + "Reply Br. 2-4." + ], + "examiner_findings": [ + "THE REJECTIONS 1. Claims 1-8 and 10-20 are rejected under 35 U.S.C $102(e) as being anticipated by Hales.", + "2. Claims 1 and 16 are rejected under 35 U.S.C 8103(a) as being unpatentable over Tazawa in view of Jaffar.", + "It is the Examiner's position that giving the claim language the more restrictive meaning as desired by Appellants would amount to importing a limitation into the claim from the Specification.", + "The Examiner also points out that as in Phillips, because one skilled in that art would understand what the term \"electrically connected\" means, one need not use a more restrictive meaning as described by the Specification.", + "Ans. 11." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1) A device comprising: a photoelectric device; a charging/discharging device; and a frequency counter; wherein the photoelectric device is electrically connected to the charging/discharging device; wherein the charging/discharging device is electrically connected to the frequency counter; wherein the photoelectric device converts a property of light into electrical current; such that the electrical current drawn through the photoelectric device discharges the charging/discharging device; such that a frequency of a charging and discharging of the charging/discharging device is determined by the frequency counter; such that an output of the frequency counter is proportional to the frequency of the charging and discharging of the charging/discharging device.", + "The prior art relied upon by the Examiner in rejecting the claims on appeal is: Jaffar US 7,262,560 B2 Aug. 28, 2007 Hales US 7,476,840 B2 Jan. 13, 2009 Tazawa (machine translation) JP 05-196500 A Aug. 6. 1993", + "ISSUE Did the Examiner err in determining that the applied art suggests the claimed subject matter, and in particular, the aspect of claim 1 pertaining to **wherein the charging/discharging device is electrically connected to the frequency counter\" [emphasis added]?", + "We answer this question in the negative and AFFIRM.", + "ANALYSIS As an initial matter, Appellants have not presented separate arguments for all of the rejected claims.", + "Rather, Appellants rely on the same arguments for each of independent claims 1, 10, and 16.", + "We therefore select claim 1 as representative of these claims.", + "Any claim not separately argued will stand or fall with the argued claims from which it depends.", + "See 37 C.F.R. 8 41.37(c)(1) (vii).", + "We adopt the Examiner's s findings pertinent to the issues raised by Appellants.", + "We therefore incorporate the Examiner* s position as set forth in the Answer.", + "We add the following for emphasis only.", + "We note that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the Specification.", + "In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989), Additionally, ordinary, simple English words whose meaning is clear and unquestionable are to be construed to mean exactly what they say--absent, of course, any indication that their use in a particular context changes their meaning.", + "Chef America, Inc. V. Lamb- Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004).", + "In the instant case, page 3 of the Specification indicates that the capacitor 110 shown in Figure I is *electrically connected\" to GND and to node VACP 116.", + "Node VACP 116 is *electrically connected\" to the input 128 of frequency counter 104.", + "Spec. p. 3, 11. 10-22.", + "Figure 1 of Appellants' Specification is reproduced below: 132 VREF1 112 108 $1 122 116 VCAP 106 COMPOUT 102 C1 VREF2 COMP 114 124 126 118 110 FREQUENCY FC..OUT 100 COUNTER 128 130 104 120 FIG. 1", + "The Examiner's interpretation of the phrase \"electrically connected\" is consistent with the Specification.", + "The Specification discloses that capacitor 110 is *electrically connected\" to GND and to node VACP 116.", + "The Specification discloses that node VACP 116 is *electrically connected\" to the input 128 of frequency counter 104.", + "Spec. p. 3, II. 10-22.", + "Absent claim language carrying a narrow meaning, we only limit the claim based on the specification when those sources expressly disclaim the broader definition.", + "In re Bigio, 381 F.3d 1320, 1324-25 (Fed. Cir. 2004).", + "Appellants have not directed us to any part of the Specification that disclaims the broader definition used by the Examiner.", + "In other words, Appellants do not point us to inconsistencies between the Specification and the Examiner's interpretation of the claim.", + "Appellants direct us to the embodiment of Figure 1.", + "However, we note that while we consult the Specification to determine the meaning of the claim terms, we take care to not limit the claim to the specific embodiments disclosed in the Specification when the terms appear to have a broader meaning.", + "See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).", + "Also, \"as applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.\"", + "ICON Health and Fitness, 496 F.3d 1374, 1379 (Fed. Cir. 2007).", + "\"It is the applicants' burden to precisely define the invention, not the PTO's.\"", + "In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).", + "We thus interpret the claims in the manner interpreted by the Examiner.", + "Because Appellants' arguments are based upon their flawed interpretation of their claims, we are not convinced by such arguments as they relate to the art rejections, and affirm Rejection I and Rejection 2 for the reasons provided by the Examiner throughout the Answer.", + "Ans. 4-13.", + "Limitations not appearing in the claims cannot be relied upon for patentability.", + "In re Self, 671 F.2d 1344, 1348 (CCPA 1982).", + "In view of the above, we affirm both rejections." + ] +} \ No newline at end of file diff --git a/opinion_split/2011004741_DECISION.json b/opinion_split/2011004741_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..35f7091e856fc0f9f1067ce9ee552f621b23cccb --- /dev/null +++ b/opinion_split/2011004741_DECISION.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "Appellants contend that Lands fails to disclose \"searching images stored in the mobile terminal according to the direction of movement of the mobile terminal, , as recited in claim 1 (App. Br. 6-8).", + "Appellants also contend that there is no reason to combine Nobukiyo with Tsunoda and Lands because Nobukiyo is unrelated to the other references (App. Br. 8-9).", + "Further, Appellants contend that there is no reasonable combination of the cited references that would result in the claimed invention (App. Br. 9-11).", + "Specifically, Appellants argue that \"Nobyukiyo [sic] is primarily directed to a character conversion scheme, which has no relevance to either image-searching or image-scrolling.", + "Hence, Nobyukiyo [sic] is unrelated to either Lands or Tsunoda\" (App. Br. 8-9).", + "In fact, Appellants have acknowledged the breadth of the term \"image\" by recognizing that Tsunoda's magnified display of a set of Japanese characters, where a user can view different portions of the characters by moving the device in a particular direction (see Tsunoda, Figs. 3A, 3B, 14), constitutes \"image-scrolling\" (see App. Br. 9)." + ], + "examiner_findings": [ + "The Examiner relies on Nobukiyo for disclosing the technique of moving a device once or twice in a particular direction to implement either of two particular commands (Ans. 5, 14-15)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. .5 6(b).", + "We affirm.", + "While we understand Appellants' argument that Lands' device performs image searching based on a resulting angle of the device with respect to a reference plane, as opposed to the direction the device was moved to achieve that angle (see App. Br. 6-8; Reply Br. 4-6), we note that Appellants have not addressed the collective teachings of the cited references with respect to the \"searching images \u00b7 \u00b7 according to the direction of movement\" limitation.", + "Although Nobukiyo's device is rotated about a central axis to perform commands (see Nobukiyo, col. 10, 11. 5-10; Fig. 12), we conclude that the claim 1 language \"direction of movement\" is broad enough to encompass angular or rotational movement.", + "Further, Nobukiyo's s commands are performed *according to the direction of movement\" as recited in claim 1- not \"irrespective of the direction of an angular movement,\" as Appellants argue regarding Lands (App. Br. 8)--because Nobukiyo's s device performs either of two different commands if the device is moved once or twice in the opposite direction (see Nobukiyo, Fig. 12).", + "In other words, Nobukiyo's commands are tied to the direction of movement and the number of movements in that same direction.", + "Thus, considering the combination of Tsunoda and Nobukiyo in view of Lands' disclosure of image searching (Appellants also admit that \"image-searching\" is \"well-known in the prior art\" (see Reply Br. 11), we find that the collective teachings of the cited references would have taught or suggested performing an image searching command in response to moving a device a specified number of times (once or twice) in a specific direction, which meets the claim 1 limitation \"searching images stored in the mobile terminal according to the direction of movement of the mobile terminal.\"", + "Further, we are not persuaded that Nobukiyo is unrelated to Tsunoda and Lands as Appellants argue (App. Br. 8-9).", + "However, we conclude the claim 1 term \"image\" is broad enough to include a set of characters displayed on a screen.", + "Thus, we find Nobukiyo also relates to \"images\" as claimed, particularly, image searching.", + "Further, although the example in Nobukiyo'. s Figure 12 shows that a single movement in a particular direction causes searching through candidate characters, we find that one of ordinary skill in the art would have recognized that Nobukiyo's searching function could also have been implemented with two movements in the same direction, in view of Nobukiyo's s general disclosure that \"the character conversion apparatus can execute different commands depending upon whether the body is tilted once or is successively tilted twice within a predetermined interval of time\" (Nobukiyo, col. 10, 11. 10-13).", + "Moreover, even though Appellants argue that Nobukiyo's device is primarily concerned with character conversion (App. Br. 8), we find an ordinarily skilled artisan would have recognized the usefulness of Nobukiyo's Japanese character conversion technique in a device capable of displaying and scrolling through Japanese characters, such as Tsunoda's s device.", + "See KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 420 (2007) (\"Common sense teaches . \u00b7 that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. \").", + "Accordingly, not only are Tsunoda and Nobukiyo related art, but one of ordinary skill in the art would have been motivated to assign Nobukiyo's s searching for candidate characters (image searching) function-- with image searching additionally disclosed in Lands---to two movements of Tsunoda's device in the same direction, in addition to Tsunoda's image scrolling function based on a single movement in that direction.", + "In view of the combination as discussed above, Appellants' argument that no reasonable combination of the cited references would result in the claimed invention (App. Br. 9-11) is not persuasive.", + "We are therefore not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 7, 8, 13, and 14 not separately argued." + ] +} \ No newline at end of file diff --git a/opinion_split/2011004792_DECISION.json b/opinion_split/2011004792_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..737dbb7a7acd1c1c462177c158a9ae6f22d10a7d --- /dev/null +++ b/opinion_split/2011004792_DECISION.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "Appellant contends that the disclosure in paragraph [0195] of Renz is unsupported by the *914 provisional application. (App. Br. 12.)", + "Appellant also argues that Figure 11 of the *914 provisional application does not correspond to Figure 11 of Renz, and further that no other figure of the '914 provisional application corresponds to Figure 11 of Renz. (App. Br. 13.)" + ], + "examiner_findings": [ + "The Examiner rejected claims 10, 21-24, 26-34, and 40-45 under 35 U.S.C. 8 103(a) as unpatentable over Renz et al. (US 2006/0185605 AI, published August 24, 2006) in view of Vock et al. (US 2008/0030330 A1, published February 7, 2008). (Examiner's Answer, dated January 21, 2011, \"Ans.\" 3-6.)", + "The Examiner rejected claims 10, 21-24, 26-34, and 40-464 under 35 U.S.C. 6 103(a) as unpatentable over Renz and Vock and further in view of Powell (US 7,240,023, issued July 3, 2007). (Ans. 6-9.)", + "The Examiner rejected claims 24, 32, and 44 under 35 U.S.C. & 112, first paragraph, for failing to comply with the written description requirement due to negative limitations. (Ans. 9-10.)", + "The Examiner relied on Renz to reject all appealed claims. (Ans. 3- 9.)", + "The Examiner found, inter alia, that paragraph [0195] of Renz discloses the \"distributing the validated rules \u00b7 \u00b7 \u00b7 \" step recited in each of the independent claims. (Ans. 6.)", + "As noted above, the Examiner relies on paragraph [0195] to reject the *distributing validated rules\" step in each of the independent claims. (Ans. 6.)", + "The Examiner found that: [Flig. [sic] [0195] refers to [Flig. 11, which is included in the provisional application, 60/609,914. In addition, the cited sections of Renz refer to 0 other drawings which are present in the provisional application. (Final 8.)" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We REVERSE.", + "Accordingly, Renz qualifies as prior art only by virtue of the filing date of the '914 provisional application.", + "Therefore, a threshold issue in this appeal is whether the portions of Renz on which the Examiner relies in rejecting the claims under 35 U.S.C. 8 103(a) are sufficiently supported by the provisional application?", + "In order to be entitled to the benefit of a provisional application, one requirement is that the invention presently claimed must have been disclosed in the provisional application in the manner provided by 35 U.S.C. 8 112, first paragraph. See 35 U.S.C. S 119(e)(1); New Railhead Mfg., L.L.C. V. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002).", + "We agree with Appellant that the Examiner has not established that the portion of Renz relied upon in rejecting the claims is supported by the '914 provisional application.", + "Notably, we have not been directed to, nor have we been able to identify, portions of the *914 provisional application that provide supporting disclosure for paragraph [0195] in Renz.", + "In addition, a comparison of Figure 11 of Renz, with Figure 11 in the '914 provisional application plainly reveals that the two figures are not the same.", + "Moreover, the Examiner has not pointed to any other figure in the '914 provisional application that would correspond to Renz's Figure 11.", + "Therefore, the Examiner has not established that the portions of Renz relied on to reject the claimed step of **distributing the validated rules \u00b7 \u00b7 . M are supported by the '914 provisional application so as to be entitled to the benefit of the earlier filing date of the '914 provisional and qualify as prior art disclosure to the claims on appeal.", + "Accordingly, we reverse Rejections I and II.", + "Accordingly, we do not sustain Rejection III." + ] +} \ No newline at end of file diff --git a/opinion_split/2011004824_DECISION.json b/opinion_split/2011004824_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..64cc825507a517d0502b375696494fc00e4f13f5 --- /dev/null +++ b/opinion_split/2011004824_DECISION.json @@ -0,0 +1,42 @@ +{ + "appellant_arguments": [ + "Appellant argues claims 31-37, 39-46, 48 and 49 as a group.", + "Appellant does not contest this position.", + "Appellant counters these positions principally by maintaining that the Examiner has failed to produce evidence in support of the position that any removal of material from the sclera, whether at an intermediate state in the March procedure or in the previous laser treatments that March discloses, will necessarily result in an increasing of the diameter of the sclera, as claimed. See, e.g., Appeal Br. 16-19; Reply Br. 4-6.", + "Appellant characterizes the Examiner's position as improperly shifting the burden to Appellant to disprove anticipation. Appeal Br. 18-19.", + "Appellant maintains that March is completely silent with respect to the behavior of the ciliary muscle in the procedures disclosed therein, including any increasing of the working distance of that muscle. Appeal Br. 20." + ], + "examiner_findings": [ + "The Examiner has rejected claims 31-50 under 35 U.S.C. \u25cf 102(b) as being anticipated by Wayne F. March, et al., Safety of High- Energy Neodymium:YAG Laser Pulses in YAG Sclerostomy, 6 Lasers in Surgery and Medicine, 584-87 (1987) (hereafter, \"March\").", + "The Examiner maintains that, \" \u00b7 \u00b7 the claims at bar would be met by any intermediate state of the procedure of March et al[.], for example at the seventh pulse thereof.\" (Ans. 5).", + "Supporting this finding, the Examiner maintains that removing of material from the eye will, to some degree weaken the eye and will, as a result, produce some degree of expansion of the eye. Id.", + "The Examiner additionally maintains, with respect to the previous laser treatments disclosed by March which did not achieve complete perforation of the sclera, that even though March \"does not detail the location of the tissue removal,\" persons of ordinary skill in the art' would understand that those procedures would have been **performed on the sclera proximate to the trabecular meshwork.\" Ans. 5-6.", + "The Examiner again notes that those previous treatments would weaken the eye and produce expansion of the eye, to some degree.", + "As pointed out by the Examiner, \"[n]o particulars of the degree or amount of tissue removal or amount of expansion of the eye is given in the originally filed disclosure . . \u00b7 \u00b7 and that Appellant has \"provide[d] no particulars as to the amount of tissue removed, the amount of laser energy to be applied, the pulse width, energy density, average power, peak power, wavelength exposure time, etc.[.] of the laser energy \u00b7 \u00b7 , used in Appellant's procedure." + ], + "ptab_opinion": [ + "Ronald A. Schachar (Appellant) seeks our review under 35 U.S.C. \u25cf 134 of the Examiner's s final rejection of claims 31-50.", + "Claims 1-30 are canceled.", + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We AFFIRM-IN-PART.", + "Appellant's invention is directed to a method of operating a laser to treat presbyopia or other ocular conditions.", + "Claims 31 and 38, reproduced below, are representative of the claimed subject matter:", + "31. A method, comprising: increasing a diameter of a sclera overlying a ciliary body of an eye as a function of irradiating at least a portion of the sclera; wherein increasing the diameter of the sclera comprises reducing a thickness of the sclera in a region of the ciliary body without forming an opening completely through the sclera.", + "38. The method of Claim 31, wherein increasing the diameter of the sclera increases a working distance of a ciliary muscle of the eye.", + "Has the Examiner established that March discloses a method in which the diameter of an eye overlying the ciliary body is increased by reducing the thickness of the sclera in the region of the ciliary body without forming an opening completely through the sclera?", + "Has the Examiner established that March discloses a method as summarized above, in which method the increasing of the diameter of the sclera increases a working distance of a ciliary muscle of the eye?", + "We take claim 31 as representative, and claims 32-37, 39-46, 48 and 49 stand or fall with claim 31.", + "The March publication discloses a sclerostomy process using a pulsed YAG laser for opening a channel completely through the sclera to form a permanent drainage fistula for drainage of aqueous humor from the interior of the eye. (March 584, Introduction).", + "In addition, March discloses that \"a number of previous laser treatments for glaucoma have been advocated and used clinically,\" and that \"none of these previous treatments created a complete scleral perforation or sclerostomy. (March 586, Discussion).", + "We are not persuaded that the Examiner's position improperly shifts the burden to Appellant.", + "Given this absence of disclosure as to the details of how Appellant's procedure achieves an increase in the diameter of the sclera, and given that it is reasonable to expect that a thinning of a material in general will weaken it, the Examiner's position that any removal of scleral material will weaken the eye and cause expansion due to the intraocular pressure within the eye, is reasonable as well.", + "The Examiner thus has a reasonable basis for maintaining that both an intermediate stage in the March procedure and the previous laser treatments described by March necessarily meet the limitation in claim 31 that the diameter of the sclera is increased as a result of the removal of scleral material.", + "Where the Examiner has such a reasonable basis for believing that the prior art inherently discloses the claimed invention, the burden properly is shifted to Appellant to produce evidence that the prior art does not meet one or more claim limitations.", + "In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990) (\"[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. \").", + "Appellant has provided no such evidence.", + "Therefore, the rejection of claim 31, and of claims 32-37, 39-46, 48 and 49 which stand or fall with claim 31, is sustained.", + "Claims 38, 47 and 50 depend, respectively, from independent claims 31, 40 and 48, and include the limitation that the increasing of the diameter of the sclera also increases a working distance of a ciliary muscle of the eye. Appeal Br., Clms. App'x.", + "While we agree that the Examiner's s general finding that removal of material from a structure is logically expected to weaken the structure, the Examiner has not established that \"removal of material from the eye, regardless of the precise location of the removal\" (Ans. 5) will have the effect of increasing a working distance of a ciliary muscle of the eye, as claimed.", + "The rejection of claims 38, 47 and 50 as being anticipated by March is not sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2011005425_DECISION.json b/opinion_split/2011005425_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0d4deffbd3231a67d21fd06e55f3c53a68cd38b9 --- /dev/null +++ b/opinion_split/2011005425_DECISION.json @@ -0,0 +1,47 @@ +{ + "appellant_arguments": [ + "The Appellant argues that neither Thomas nor Yamada discloses controlling the flow rate of water at predetermined times during the day so as to supply a predetermined volume of water." + ], + "examiner_findings": [ + "Claims 34 to 36, 38 to 41, 43, 50, 52, 54 to 55, and 60 under 35 U.S.C. 5 103(a) as unpatentable over Thomas (US 4,777,354; iss. Oct. 11, 1988), Gastouniotis (US 4,940,976; iss. Jul. 10, 1990), Gerken (US 4,888,702; iss. Dec. 19, 1989), Johnson (US 5,963,146; iss. Oct. 5, 1999), and Yamada (JP 355143613 A; pub. Nov. 10, 1980).", + "Claim 42 under 35 U.S.C. 5 103(a) as unpatentable over Thomas, Gastouniotis, Gerken, Johnson, Yamada, and Westfall (US 5,331,995; iss. Jul. 26, 1994).", + "Claims 56 to 58 under 35 U.S.C. & 103(a) as unpatentable over Thomas, Gastouniotis, Gerken, and Yamada.", + "Claim 60 under 35 U.S.C. 5 103(a) as unpatentable over Thomas and Yamada.", + "In rejecting the claims, the Examiner relies on Thomas for teaching a control unit for controlling the flow of water through the water meter at predetermined times during the day (Ans. 4).", + "The Examiner finds that as Thomas gives examples of time periods like 2-3 days and 30 days, any desired time period is suggested.", + "The Examiner relies on Gastouniotis, Gerken, and Johnson for teaching other aspects of the claimed subject matter but recognizes that none of these references discloses a control unit to supply a predetermined volume of water on a daily basis.", + "The Examiner relies on Y Yamada for teaching this subject matter." + ], + "ptab_opinion": [ + "Appellant seeks our review under 35 U.S.C. 5 134 of the Examiner's final decision rejecting claims 34 to 35, 38 to 43, 48, 50, 52, 54 to 58, and 60.", + "We have jurisdiction over the appeal under 35 U.S.C. & 6(b).", + "We REVERSE.", + "Claim 34 is illustrative: 34.", + "A mechanical and electronic water supply control assembly and system for automatically supplying water at a predetermined volume of water on a daily basis autonomously, supplying water at a predetermined flow rate at predetermined times and repeatedly until reprogramming and for monitoring water consumption during a predetermined time period, comprising: a water meter connected to a water outlet; a flow control valve connected to the water outlet; said system being enclosed in a sealed housing and said system having an interface unit connected to said water meter; a control unit connected to said water meter and flow control valve for controlling the flow rate of water through said water meter at predetermined times during a day; a gain unit and an actuation and retro-fitting unit connected to said control unit for actuating said control unit, said actuation and retro-fitting unit connected to said meter for actuating said flow control valve to supply the predetermined volume of water at a predetermined flow rate for a predetermined time period during a day on a daily basis; a communication unit connected to said control unit; a power unit for supplying electrical power to said assembly; and a protection and detection unit connected to said power unit to sense available power for said assembly and for preventing inversions of the polarity of said power unit; said sealed housing enclosing said system and protecting said system from environmental humidity, water and unauthorized intrusion, said assembly further comprising a computer receiving input signals from said communication unit.", + "Appellant appeals the following rejections: 1.", + "ISSUE Did the Examiner err in rejecting the claims because the prior does not disclose or suggest a control unit for controlling the flow rate of water at predetermined times during the day, and a gain unit for actuating a flow control valve to supply a predetermined volume of water at a predetermined flow rate for a predetermined time period during a day on a daily basis?", + "We agree.", + "We find that Thomas discloses a system for controlling the supply of utility services to consumers that includes an actuator card that may be used to supply the utility over a time period such as 30 days or to prepay the purchase of a certain dollar amount of services (col. 1, 11. 1 to 2, col. 2, 11. 10 to 18).", + "An indicator light is provided to alert the consumer when the predetermined time period has expired (col. 4, 11. 64 to 68).", + "At the end of the predetermined time period, the consumer may use the actuator card to purchase additional utilities (col. 5, 11. 1 to 5).", + "The Examiner has not directed our attention to disclosure in Thomas of controlling the rate of flow of a utility at predetermined times during a day or controlling the flow so as to supply a predetermined amount or volume of utilities during a day.", + "Yamada discloses an apparatus to control the rate of flow of water into and out of a purification plant so that excellent control over water distribution is achieved without causing the water level in the purification tank to change greatly (pp. 1 to 2).", + "Yamada does not disclose controlling the rate of flow of the water at predetermined times during a day but rather is directed to controlling the flow so that the level in the tank does not change greatly.", + "In addition, Y Yamada is not directed to controlling the flow of water so as to supply a predetermined volume of water during a day.", + "In our view, there is no teaching in either reference or in the combined teachings of the references of controlling the rate of flow of water at predetermined times during the day.", + "The teaching in Thomas is not related to the control of the rate of flow of the utility and Y Yamada is not directed to controlling the rate of flow in relation to predetermined times during the day.", + "The rate of flow of Y Yamada is changed so that the level of the tank does not change greatly and has no relation to a predetermined time during the day.", + "In addition, neither reference alone or in combination teaches controlling the rate of flow of water to supply a predetermined volume of water.", + "Thomas discloses controlling the flow of a utility over a specific time period not controlling the rate of flow of the utility.", + "Thomas also discloses controlling the amount or volume of a utility in accordance with a prepaid amount but not controlling the rate of flow of the utility to achieve the amount or volume of a utility.", + "In Thomas, a consumer can use the entire amount of prepaid utilities in one hour or conserve it and use it over a longer period of time.", + "Y Yamada controls the rate of flow of water into the tank so that the level of the tank does not change greatly but does not control the overall volume of water flowing through the system much less a predetermined volume of water.", + "In view of the foregoing, we will not sustain the Examiner's s rejection of claim 34 and claims 35, 36, 38 to 41, 43, 50, 52, and 54 to 55 dependent thereon.", + "We will not sustain the rejection of claim 60 because claim 60 also requires controlling the rate of flow of water at predetermined times during the day to supply a predetermined volume of water.", + "We will also not sustain the rejection of claim 42 because claim 42 is dependent on claim 34 and thus requires the same subject matter we found missing in Thomas and Yamada and because Westfall does not cure these deficiencies.", + "We will not sustain the rejection of claims 56 and claims 57 to 58 dependent thereon because the Examiner relies on Yamada for teaching supplying a predetermined allocated daily volume of water to the consumer on a daily basis.", + "As we stated above, we find that Yamada does not disclose controlling the supply of a predetermined volume of water, but rather controlling the rate of water into and out of a tank so that the level in the tank is not greatly changed.", + "There is no disclosure in Yamada related to the volume of the water that can flow into or out of the tank.", + "Any volume of water can flow into and out of the tank as long as the rate of flow into and out of the tank is controlled so that the level of the tank is not greatly changed." + ] +} \ No newline at end of file diff --git a/opinion_split/2011005591_DECISION.json b/opinion_split/2011005591_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..2e533aba1d014cb145f3af83393b939a0a655065 --- /dev/null +++ b/opinion_split/2011005591_DECISION.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [ + "Appellant does not dispute the Examiner's findings that each primary reference teaches a polyamide filament that was obtained by mixing overlapping amounts of polyamide (A) and (B) as recited in claim 9.", + "The only argument presented by Appellant is that each reference does not inherently disclose the thermal contraction stress property recited in the claims (App. Br. 7)." + ], + "examiner_findings": [ + "The Examiner maintains and Appellant appeals the following rejections: Claims 9-11 and 13 under 35 U.S.C. .5 102(b) as anticipated by, or alternatively under 35 U.S.C. & 103(a) as being obvious over JP *497 (Teijin Ltd., JP 67025497 published 1968); Claims 9-13 and 16 under 35 U.S.C. & 102(b) as anticipated by, or alternatively under 35 U.S.C. & 103(a) as being obvious over JP *550 (Iwamoto, JP 07009550 A published Jan. 13, 1995); Claims 9-13 and 16 under 35 U.S.C. .5 102(b) as anticipated by, or alternatively under 35 U.S.C .8 103(a) as being obvious over EP '862 (Shida, EP 0839862 A1 published May 6, 1998); Claims 12, 14, and 16 under 35 U.S.C. & 103(a) as being obvious over JP *497; and Claim 14 under 35 U.S.C. 5 103(a) as being obvious over JP *550 or EP '862." + ], + "ptab_opinion": [ + "Accordingly, the main issue on appeal is: Did the Examiner reversibly err in determining that the polyamide filament of claim 1 is anticipated, or alternatively obvious over each applied reference, because, as alleged by Appellant, the Murakami Declaration filed February 4, 2009 establishes that none of the three alternatively applied references inherently discloses the thermal contraction stress property limitation recited in Appellant's claim 1 (e.g., id. at 10; Reply Br. 7)?", + "We answer this question in the negative, and affirm all of the rejections on appeal.", + "We have thoroughly reviewed each of Appellant's s arguments for patentability.", + "However, we will sustain the Examiner'. s rejections for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis.", + "In reviewing the relevant facts of this case, the Examiner's s finding that each primary reference of JP *497, JP *550, and EP '862 discloses a polyamide filament with considerable overlap in the amount of each of the required polyamides (A) and (B) as claimed is reasonable (see, e.g., Ans. 4- 6).", + "Indeed, Appellant has not specifically rebutted this finding (see generally, App. Br.; Reply Br.).", + "Appellant has also not identified on this record\" any variable other than the mixing ratio of polyamides (A) and (B), such as molecular weight or a process condition, that is necessary to achieve the thermal contraction stress property and that is lacking in any of the primary references.", + "Thus, since the Examiner' s finding of overlapping ranges of all the components of the polyamide filament resin composition has not been rebutted (i.e., the mixing ratio), the Examiner's 's determination that the property limitation would inherently or naturally follow from the teaching or suggestion of the claimed composition by JP *497, JP *550 or EP '862 is also reasonable.", + "Appellant has made no such showing on this record.", + "Appellant's contentions that the claimed property is not inherently or naturally present in the compositions of any of the applied references because their evidence shows that a sample satisfying the compositional limitation of the claims (and which thus also satisfies the compositional ranges of any of the applied references) does not necessarily or inherently satisfy the required property recited in claim 1 (App. Br. 6-13; Reply Br. 7- 8) are unavailing.", + "As explained above, on this record, the Examiner had a reasonable basis to believe that the composition would have the properties recited in the claims.", + "Appellant has not offered persuasive evidence to the contrary.", + "While Appellant has provided the February 4, 2009 Murakami Declaration allegedly showing that one unidentified example, that is, Sample 21, does not have the property as claimed, this is not persuasive for reasons aptly pointed out by the Examiner (Ans. 9; *in the absence of information pertaining to the identity of the polymers and processes used in the production of the exemplified monofilaments, it is not apparent what is being compared\").", + "Notably, Appellant has not refuted the Examiner* s implicit finding that Sample 21 *presumably compris[es] the same polyamides and mixing ratios\" as Samples 17 and 21-2 (id.; generally Reply Br.).", + "Appellant has not identified on this record any variable other than the mixing ratio of polyamides (A) and (B) that is necessary to achieve the claimed thermal contraction stress property.", + "Without supporting evidence, the mere conclusion by the inventor that Sample 21 did not have the required property cannot establish patentability especially since such result can be attributed to an experimental error if Sample 21 is identical to Samples 17 and 21-2.", + "Therefore, we are constrained to conclude that Appellant has not shown that the evidence presented in the Declaration is reliable.", + "We, therefore, discern no error in the Examiner* s determination that the applied prior art renders unpatentable claim 1 of Appellant's invention.", + "Thus, Appellant has not persuasively argued that the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of anticipation, or alternatively, obviousness as to claim 1 based on any one of JP *497, JP *550, and EP '862.", + "In light of these circumstances, the preponderance of the evidence supports all of the Examiner* s rejections.", + "Accordingly, we sustain all of the rejections of the claims on appeal." + ] +} \ No newline at end of file diff --git a/opinion_split/2011005645_DECISION.json b/opinion_split/2011005645_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..43e4f8e45994d099f76b8dfc8b9297db06b8de94 --- /dev/null +++ b/opinion_split/2011005645_DECISION.json @@ -0,0 +1,55 @@ +{ + "appellant_arguments": [ + "Claim 1 is illustrative: 1. A computer-implemented method of influencing customer behavior, comprising the steps of: offering the customer a price-per-unit (PPU) discount for a future purchase of fuel as a reward for purchasing a cross- marketed product and performing a debit-type transaction; determining by using a computer to check records stored in a database related to said merchant that the customer purchased a cross-marketed product and performed a debit-type transaction at the merchant; and awarding the PPU discount for the future purchase of fuel to the customer.", + "In this regard, the Appellant argues that the Examiner interprets the limitation *and performing a debit-type transaction\" to mean \"during a debit-type transaction.\"", + "As such, the Appellant argues that the Examiner's s interpretation provides a discount when a debit card is used in a transaction rather than accruing discounts for a subsequent transaction.", + "The Appellant has once again argued that the Examiner did not properly interpret the claims." + ], + "examiner_findings": [ + "Claims 1, 5 to 7, and 9 under 35 U.S.C. .5 103(a) as unpatentable over Wilson (US 6,813,609 B2, iss. Nov. 2, 2004).", + "Claims 1, 5 to 10, and 25 under 35 U.S.C. 5 103(a) as unpatentable over Jacoves (US 6,741,968 B2, iss. May 25, 2004).", + "Claims 1, 5 to 10, and 25 under 35 U.S.C. 5 103(a) as unpatentable over Nicholson (US 6,332,128 B1, iss. Dec. 18, 2001).", + "Ans. 3 to 19, 22, and 26 to 30.", + "The Examiner relied on Official Notice, not inherency, to meet this aspect of the claims." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. 5 134 of the Examiner's final decision rejecting claims 1, 5 to 10, and 25.", + "We have jurisdiction over the appeal under 35 U.S.C. & 6(b).", + "A telephonic hearing was held on May 9, 2012.", + "We AFFIRM.", + "BACKGROUND Appellant's s invention is directed to a system and method for influencing customer behavior by providing an incentive to the customer behavior (Spec., para. [0002]).", + "Appellant appeals the following rejections:", + "FACTUAL FINDINGS We adopt the Examiner'. s findings as our own.", + "Additional findings of fact may appear in the Analysis that follows.", + "ANALYSIS Obviousness over Wilson We adopt the Examiner* s answers to the various arguments of the Appellant with respect to this rejection found in the Answer (37 to 40).", + "We add the following for emphasis only:", + "We are not persuaded of error on the part of the Examiner by Appellant'. s argument that the Examiner interpreted the claims contrary to its plain language.", + "The argument is not persuasive because the Examiner found that Wilson discloses discounts awarded in a subsequent visit (Ans. 5).", + "We are not persuaded of error on the part of the Examiner by Appellant's s argument that Wilson does not disclose awarding a discount for the use of a debit card.", + "We find that Wilson discloses that discounts can be awarded for the use of cards such as debit, credit, or smartcards (col. 18, 11. 23 to 25), and that those skilled in the art would recognize the benefits inherent in certain payment methods and would encourage payments beneficial to the station operator (col. 18, 11. 52 to 56).", + "As such, we agree with the Examiner that it would have been obvious to offer discounts for the use of any desired payment card.", + "We also not persuaded of error on the part of the Examiner by Appellant's s argument that the Examiner has improperly relied on the principle of inherency to meet the price-per-unit discount feature of the claims.", + "In view of the foregoing, we will sustain the Examiner* s rejection of claim 1.", + "We will also sustain the rejection as it is directed to claims 5 to 7 and 9 because these claims stand or fall with claim 1 (Br. 7).", + "Obviousness in view of Jacoves We adopt the Examiner* s responses to the Appellant' s arguments in regard to the rejection (Ans. 40 to 42).", + "We add the following for emphasis only.", + "We are not persuaded of error on the part of the Examiner by Appellant's argument, as was argued above, that the Examiner interprets the claims to require that the discount is received for using a debit card during a transaction.", + "We agree with the Examiner that Jacoves, like Wilson, discloses giving a discount subsequent to a qualifying purchase (col. 4, 11. 19 to 28).", + "We are not persuaded of error on the part of the Examiner by Appellant's s argument that Examiner's s reliance on Official Notice is improper.", + "We do not find in this record any challenge by Appellant of the facts of which the Examiner took Official Notice.", + "Appellant has not come forth with any information or argument that, on its face, casts reasonable doubt regarding the justification of the Official Notice.", + "See In re Boon, 439 F.2d 724, 728 (CCPA 1971) (an applicant has the right to challenge the official notice and demand production of evidence in support thereof, provided such challenge is accompanied by adequate information or argument that, on its face, creates a reasonable doubt regarding the circumstances justifying the official notice).", + "Thus, we hold that the Appellant has not adequately traversed the Examiner's taking of Official Notice, so as to require the Examiner to produce documentary evidence in support thereof.", + "Where, as here, the Appellant has failed to challenge a fact judicially noticed and it is clear that he has been amply apprised of such finding so as to have the opportunity to make such challenge, the finding will be considered conclusive.", + "In re Perkins, 346 F.2d 981, 985 (CCPA 1965).", + "In view of the foregoing, we will sustain the rejection of claim 1.", + "We will also sustain the rejection as it is directed to claims 5 to 10 and 25 because these claims stand or fall with claim 1 (Br. 10).", + "Obviousness in view of Nicholson We adopt the Examiner* s response to the various arguments in response to this rejection (Ans. 42 to 43).", + "We add the following for emphasis only.", + "In this regard, we find that Nicholson, like Wilson and Jacoves, discloses that after a customer makes a qualifying purchase, a discount is stored in a database and may be later used to purchase gasoline (col. 3, 11. 12 to 18).", + "As such, the Examiner has properly found that a discount is awarded for a qualifying purchase not just during a qualifying purchase.", + "The Appellant has not addressed the facts of the Official Notice relied on by the Examiner and therefore, as we discussed above, the facts of the Official Notice are considered conclusive.", + "In view of the foregoing, we will sustain the Examiner* s rejection of claims 1 and 25 as unpatentable over Nicholson.", + "We will also sustain this rejection as it is directed to claims 5 to 10 because these claims stand or fall with claim 1 (Br. 12)." + ] +} \ No newline at end of file diff --git a/opinion_split/2011006075_DECISION.json b/opinion_split/2011006075_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..15b379287418b35dd13a60f3073a8d40d030d1bc --- /dev/null +++ b/opinion_split/2011006075_DECISION.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "According to Appellants, the claimed LED provides an improved structure that smoothly injects holes into the active layer from the P-type semiconductor layer, thereby improving the recombination rate of electrons and holes. Abstract.", + "Appellants contend that Uemura's 5.5 pairs located in P-type clad layer 7 does not describe the *hole injection layer\" recited in independent claim 1. App. Br. 6.", + "In particular, Appellants argue that because Uemura only indicates that the impurity doping concentration of P-type clad layer 71 is lower than the impurity doping concentration of P-type clad layers 72 and 73, Uemura's 5.5 pairs cannot be relied upon to describe *wherein a doping concentration of the hole injection layer is lower than a doping concentration of the P-type clad layer[.]\" as claimed. App. Br. 6-7.", + "In response to the Answer, Appellants assert that Uemura's P-type clad layer 71 does not describe the claimed \"hole injection layer\" because Uemura's Figure 1 illustrates that P-type clad layers 72 and 73 are positioned on P-type clad layer 71. Reply Br. 6." + ], + "examiner_findings": [ + "Initially, the Examiner finds that Uemura's 5.5 pairs located in P-type clad layer 7 have a lower doping concentration than P-type clad layers 72 and 73. Ans. 5 (citing \" [0030],[0033], and [0035]).", + "Consequently, the Examiner finds that Uemura describes *wherein a doping concentration of the hole injection layer is lower than a doping concentration of the P-type clad layer(.]\" as recited in independent claim 1. Ans. 5.", + "In the Response to Argument section, the Examiner finds that Uemura discloses that the P-type impurity doping concentration of the first layer which is closest to the active layer (i.e., P-type clad layer 71) is lower than each of the other layers. Ans. 10 (citing 11 [0035] and [0063]).", + "As such, the Examiner finds that Uemura's P-type clad layer 71 has a lower doping concentration than P-type clad layers 72 and 73, as required by independent claim 1. Ans. 10.", + "At the outset, the Examiner takes the position that Uemura's 5.5 pairs layer located in P-type clad layer 7 has a lower doping concentration than P- type clad layers 72 and 73 and, therefore, describes *wherein a doping concentration of the hole injection layer is lower than a doping concentration of the P-type clad layer.\"", + "Next, the Examiner takes the position that Uemura's P-type clad layer 71 has a lower doping concentration than P-type clad layers 72 and 73 and, therefore, describes *wherein a doping concentration of the hole injection layer is lower than a doping concentration of the P-type clad layer.' \"" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We reverse.", + "Based on the record before us, we discern error in the Examiner's anticipation rejection of independent claim 1, which recites, inter alia: 1) \"a hole injection layer positioned on the P-type clad layer,\" and 2) \"wherein a doping concentration of the hole injection layer is lower than a doping concentration of the P-type clad layer.\"", + "However, we find that Uemura is silent with respect to whether the doping concentration of the 5.5 pairs layer is lower than the doping concentration of P-type clad layers 72 and 73.", + "However, while non-doped P-type clad layer 71 has a lower doping concentration than P-type clad layers 72 and 73 (see 11 [0033], [0035], and [0063), P-type clad layer 71 is not positioned on P-type clad layers 72 and 73.", + "Instead, Uemura's Figure 1 illustrates P-type clad layers 72 and 73 positioned on P-type clad layer 71.", + "If there is another P-type clad layer 71 closer to P-type contact layers 81 and 82, Uemura does not disclose such a layer.", + "As such, the Examiner's stated position with respect to P-type clad layer 71 fails to account for all the features of the claim--specifically \"a hole injection layer positioned on the P-type clad layer.\"", + "Because each of the Examiner's positions with respect to Uemura does not properly account for the disputed claim limitations, we need not reach the merits of Appellants' other arguments.", + "It follows that the Examiner erred in determining that Uemura anticipates independent claim 1.", + "Because dependent claims 2 and 5 incorporate by reference the same disputed claim limitations as their underlying base claim, the Examiner erred in rejecting these claims for the same reasons set forth in our discussion of independent claim 1.", + "As applied by the Examiner, Takahashi, Konno, and Goto do not remedy the above-noted deficiency of Uemura in the context of the Examiner's anticipation rejection of independent claim 1.", + "As a result, the Examiner has erred in concluding that: 1) the combination of Uemura and Takahashi renders dependent claims 3 and 4 unpatentable; 2) the combination of Uemura and Konno renders dependent claims 6, 7, and 12 unpatentable; 3) the combination of Uemura and Goto renders dependent claims 8 and 9 unpatentable; and 4) the combination of Uemura, Goto, and Konno renders dependent claims 10 and 11 unpatentable." + ] +} \ No newline at end of file diff --git a/opinion_split/2011006797_DECISION.json b/opinion_split/2011006797_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d83d31000f0de73301824cc9df03921891b8f339 --- /dev/null +++ b/opinion_split/2011006797_DECISION.json @@ -0,0 +1,52 @@ +{ + "appellant_arguments": [ + "The Appellant focuses this appeal on the rejection based on Halder and contends that Warner implicates essentially the same issues. App. Br. 13.", + "The Appellant contends that the Examiner errs in concluding that *claim I does not require a tank.\" Ans. 4; App. Br. 7-8.", + "Indeed, the Appellant admits that Halder's \"bathtub fixtures\" are **arguably [] structurally configured to effect maintenance of a desired temperature range in bath water.\"", + "The Appellant argues that outlet pipe 10 does not reasonably appear to be capable of supplying a third component to the blender unit. App. Br. 12 (citing Halder page 1 lines 100- 105).", + "Regarding claim 13, the Appellant argues that Halder's \"bathtub is not even remotely related to\" the specified *semiconductor process tool.\" \" App. Br. 11; see Reply Br. 2-3 (arguing that the Examiner essentially finds that \"it is eminently plausible for Intel to install bathtubs from Home Depot into its Fabs for use in *rinsing a semiconductor\"T).", + "The Appellant, however, disputes the Examiner's finding that both Halder and Warner teach \"a tank\" that is structurally capable of functioning as specified in claim 13. Ans. 4; App. Br. 13; see Halder page I line 6, FIG. 1; Warner 4:2, FIG 1.", + "The Appellant contends that \"*[this is equally as absurd as the [Examiner's] position with regard to the bathtub of Halder.\" App. Br. 13." + ], + "examiner_findings": [ + "The Examiner relies upon the following as evidence of unpatentability (Ans. 3)!", + "THE REJECTIONS Claims 1-4 and 6-14 stand rejected under 35 U.S.C. 5 102(b) as anticipated by Halder. Ans. 3.", + "Claims 1-14 stands rejected under S 102(b) as anticipated by Warner. Id. at 4.", + "On this point, the Examiner finds that **Halder discloses two hand operated valves, either of which is capable of controlling the flow\" of hot and cold water into the system. Ans. 5; see Ans. 3 (identifying controller in Halder FIG. 1 (4, 5, 13, and/or 14).", + "Claim 11 specifies \"a third supply source,\" which in the Examiner's view, is met by Holder's outlet pipe 10. Ans. 3.", + "The Examiner correctly points out, however, that \"no *semiconductor' is required by\" claim 13: What is required is \"a tool \u00b7 capable of being used to carry out a process involving a semiconductor.\" Ans. 5.", + "\"The tool must include a tank.\" Id.", + "Specifically, the Examiner finds that Halder's bathtub **anticipates the claim because it may be used to accomplish a process such as rinsing a semiconductor.\" Ans. 5.", + "The Examiner further finds that the tank limitation is met by \"Warner's trough (20),\" which *is capable of being used to carry out a process involving a semiconductor material.\" \" Ans. 5." + ], + "ptab_opinion": [ + "We answer each question in the negative and AFFIRM.", + "We find no reversible error in the Examiner's fact finding and application of law.", + "Therefore, we adopt the fact findings and responses to argument presented in the Answer and add the following analysis primarily for emphasis.", + "We select claims 1, 11, and 13 as representative of the group.", + "Claims 2-10, 12, and 14 stand or fall with the claims upon which they depend. 37 C.F.R. 41.37(c)(1)(vii).", + "We thus focus our analysis primarily on Halder and discuss Warner only to the extent that the reference bears upon the Appellant's contentions.", + "We discern no error on this point.", + "It is well settled that **apparatus claims cover what a device is, not what a device does.\" Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990).", + "Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).", + "We thus agree with the Examiner that claim 1 specifies a blender unit \"capable of being used to perform the operation to which the phrase *configured to' is applied.\" Ans. 4.", + "A \"tank\" is not a structural limitation of the claimed apparatus, but is part of a clause that specifies a function that \"the blender and controller are intended to do during an intended operation.\" Id.", + "We further agree with the Examiner that the **chemical solution\" of claim I *is not a required element of the claimed blender system.\" Ans. 5.", + "It is \"instead a material upon which the claimed blender system is intended to operate during an intended operation.\" Id.", + "A material worked upon by an apparatus does not limit an apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).", + "The question remains whether the applied art discloses a controller that \"is structurally configured to maintain a specified concentration in a chemical solution bath\" according to claim 1. App. Br. 10.", + "In our view, claim I specifies a controller in terms broad enough to embrace the *hand operated valves\" disclosed in Halder.", + "Nothing in the claim language specifies the actual *selected concentration range\" nor the degree of accuracy in the control of the concentrations and therefore the claim encompasses hand operated valves of the type disclosed in Halder.", + "Regarding the Appellant's further contention that **temperature\" is not a *chemical concentration\" within the meaning claim 1, App. Br. 10-1 1. we are of the view that replacing hot and cold water with chemical compounds in a blending apparatus is no different than replacing oil with popped popcorn in a dispensing apparatus. See In re Schreiber, 128 F.3d at 1477-78,", + "The Appellant raises no separate argument against the finding that Warner discloses a controller according to claim 1, and we consider any challenge on this point waived. Ans. 4; App. Br. 10, 13.", + "The Examiner does not respond to this argument, Ans. 4-5, and we agree with the Appellant that outlet pipe 10 in Halder is described as a means for supplying water to an overhead shower and thus does not appear to be configured to serve as a third supply source. Ibid.", + "However, the Appellant raises no argument against the Examiner's further finding that Warner discloses \"a third source (line 26), \" which we find is supported by the record. Ans. 4; App. Br. 11-12; see Warner FIG. 1, 3:54-68 (disclosing ink, fountain concentrate, and water inlet pipes 24, 27, and 32).", + "On this record, we find that the Examiner does not err in determining that Warner teaches \"a third supply source\" as specified in claim 11.", + "We thus affirm the rejection of claim 11 as anticipated by Warner.", + "The Appellant submits that this finding *is absurd\" but comes forward with no persuasive argument or evidence to rebut it. App. Br. 11-12.", + "In our view, the finding is reinforced by the Appellant's admission \"that a bathtub is a type of tank.\" Id. at 9.", + "The Appellant's 's bare opinion on this point, however, falls short of establishing reversible error by persuasive argument or objective evidence.", + "On this record, we affirm the rejection of claims 1-4, 6- 10, and 12-14 as anticipated by Halder.", + "We affirm the rejection of claims 1- 14 as anticipated by Warner." + ] +} \ No newline at end of file diff --git a/opinion_split/2011007151_DECISION.json b/opinion_split/2011007151_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..45d35cbfd7b54b00c25cbbd7ff0028a023d6ac9e --- /dev/null +++ b/opinion_split/2011007151_DECISION.json @@ -0,0 +1,54 @@ +{ + "appellant_arguments": [ + "Appellants maintain that the Examiner erred in rejecting claims 15-17 under 35 U.S.C. \u25cf 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter of the invention (App. Br. 4 and Reply Br. 1-2).", + "Obviousness Independent claim 1 and dependent claims 5-7 Appellants argue that the Examiner erred in rejecting claim 1 under 35 U.S.C. & 103(a) because neither Dirie nor Kalail discloses or suggests booting a main operating system into a main memory \"responsive to a determination that the time card is plugged into the memory socket based at\" least in part on a register address, as recited in claim 1 (App. Br. 5 and Reply Br. 2-3).", + "Independent claims 9 and 11 and dependent claims 10, 12, and 16 Appellants argue claims 9 and 11 together (App. Br. 5-7).", + "Appellants argue that the Examiner erred in rejecting claim 9 under 35 U.S.C. & 103(a) because neither Dirie nor Kalail discloses or suggests \"plugging a time card having a counter into a DIMM socket of a computer motherboard, the counter being configured to be changed in a first temporal direction to reflect purchased rental time and to be changed in a second temporal direction in response to clocking signals, ++ as recited in claim 9 (App. Br. 5-7 and Reply Br. 3).", + "Appellants argue that the rejection of claim 9 cannot be sustained because Dirie has nothing to do with DIMM sockets and the Dirie ROM is part of the permanent firmware of the computer and, as such, is not plugged into a memory socket of the motherboard (App. Br. 5-7 and Reply Br. 3-4).", + "Here, Appellants argue that Dirie is different in that the ROM is part of the permanent firmware of the computer, rather than a memory module that can be plugged into a socket on a printed circuit, i.e., a motherboard.", + "Appellants argue that the Examiner erred in rejecting claim 3 under 35 U.S.C. & 103(a) because the \"relied-upon portion of Dirie [col. 2, 11. 36-37] teaches that encryption can be used to receive and authenticate updates to the timer and says nothing about the private key of a motherboard\" (App. Br. 7)." + ], + "examiner_findings": [ + "Claims 15-17 stand rejected under 35 U.S.C. 5 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention.", + "Claims 1-17 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Dirie (US 6,618,810 B1, iss. Sep. 9, 2003) in view of Kalail (US 5,345,902, iss. Sep. 13, 1994).", + "In contrast, the Examiner maintains that the rejection is proper because each of claims 15-17 \"is alleged to be an apparatus type of claim but there are recited steps of doing acts in the body of the claim\" (Ans. 3 and 11).", + "The Examiner asserts that \"[t]his appears to be mixing of both process and apparatus statutory classes and renders the claims indefinite.\" Id.", + "The Examiner concedes that Dirie does not explicitly disclose this feature, and cites column 3, line 54 of Kalail as curing the deficiency of Dirie (Ans. 4-5 and 11-12), Kalail discloses a device, provided as part of a fuel cut-off system, which includes a switch for selectively opening and closing the flow of fuel to an engine (Kalail, Abstr.).", + "The Examiner maintains that the rejection is proper, and cites column 1, line 45 and column 4, line 20 of Dirie as disclosing this feature (Ans. 7-8).", + "The Examiner cites column 2, lines 29-37 of Dirie as disclosing this feature (Ans. 13).", + "The Examiner cites Figure 4 and the description of the figure at column 3, lines 36-40 of Dirie as disclosing this feature: FIG. 4 is a flow diagram for disabling operation of a computer system upon expiration of a license to use the computer system and re-enabling operation of the computer system upon renewal of the license to use the computer system. (Ans. 7)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. \u25cf 6(b).", + "We do not agree that claims 15-17 are indefinite by virtue of claiming both an apparatus and a method.", + "a person of ordinary skill in the art would understand that claim 15 recites a computer system having a processor programmed to perform a particular function when the program is executed, namely, to increment a counter in response to a user purchasing additional time and would understand that claims 16 and 17 similarly recite functions that the processor is programmed to perform.", + "In our view, one of ordinary skill in the art would thus readily understand what is claimed when claims 15-17 are read in light of the Specification.", + "Therefore, we will not sustain the Examiner's rejection of claims 15-17 under 35 U.S.C. 5 112, second paragraph.", + "We agree with the Examiner that it would have been obvious to one of skill in the art to modify Dirie to include time card/memory socket functionality, as taught by Kalail, *in order to provide for an easily replaceable random access memory and timer\" (Ans. 5).", + "Modifying Dirie in this way constitutes nothing more than a combination of prior art elements according to their established functions, and yields a predictable result.", + "Therefore, it would have been obvious at the time of Appellants' invention.", + "In view of the foregoing, we will sustain the Examiner*. s rejection of claim 1 under 35 U.S.C. 5 103(a).", + "We also will sustain the Examiner's rejection of dependent claims 5-7, which were not separately argued.", + "We select claim 9 as representative.", + "Claim 11 stands or falls with claim 9.", + "Yet the mere existence of differences between the prior art and the claim does not establish nonobviousness.", + "The relevant question in considering obviousness is not whether the claimed invention is different from the prior art but rather \"whether the difference between the prior art and the subject matter in question is a [difference] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.\"", + "Indeed, the Supreme Court made clear in KSR that when considering obviousness, \"the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\"", + "But Appellants do not explain, for example, why it would have been non- obvious to replace the firmware ROM with a removable memory module, particularly in view of the disclosure at column 4, lines 13-20 of Dirie that at least a portion of the BIOS firmware can be implemented using volatile ROM, i.e., flash ROM, which is physically attached to the motherboard.", + "Moreover, it is clear that at some point, e.g., during assembly of the motherboard, the time card/memory is physically attached to, i.e., plugged into, the motherboard.", + "In view of the foregoing, we will sustain the Examiner* s rejection of claim 9 under 35 U.S.C. 5 103(a).", + "We also will sustain the Examiner's rejection of claim 11, which stands or falls with claim 9.", + "Appellants did not present any arguments for the separate patentability of these claims.", + "Therefore, we will sustain the Examiner's rejection of claims 10, 12, and 16 under 35 U.S.C. \u25cf 103(a).", + "Dependent claims 2 and 13 We are persuaded that the Examiner erred in rejecting claims 2 and 13 under 35 U.S.C. \u25cf 103(a) by Appellants' argument that neither Dirie nor Kalail discloses or suggests *if during boot a processor associated with the motherboard does not detect the time card, the processor ensures that booting is not completed,\" as recited in claims 2 and 13 (App. Br. 7 and Reply Br. 3-4).", + "But we find nothing in the cited portion of Dirie that discloses or suggests that a processor associated with the motherboard ensures that booting is not completed if during boot the processor does not detect the time card.", + "Therefore, we will not sustain the Examiner': s rejection of claims 2 and 13 under 35 U.S.C. S 103(a).", + "We agree with the Examiner that the feature is disclosed inasmuch as the timer in Dirie resides in a memory affixed to the motherboard (Ans. 13).", + "Therefore, we will affirm the Examiner's rejection of claim 3 under 35 U.S.C. & 103(a).", + "Dependent claims 4 and 14 We are not persuaded that the Examiner erred in rejecting claims 4 and 14 under 35 U.S.C. S 103(a) by Appellants' argument that neither Dirie nor Kalail discloses or suggests \"the socket is a DIMM socket or a SODIMM socket,\" as recited in these claims (App. Br. 8).", + "Therefore, we will sustain the Examiner's s rejection of claims 4 and 14 under 35 U.S.C. \u25cf 103(a).", + "Dependent claims 8 and 17 We are persuaded that the Examiner erred in rejecting claims 8 and 17 under 35 U.S.C. \u25cf 103(a) by Appellants' argument that neither Dirie nor Kalail discloses or suggests *if the time card is removed from the socket during computer operation, the computer returns to a boot loader operating system,\" as recited in these claims (App. Br. 8).", + "However, we agree with Appellants that there is nothing in this portion of Dirie that discloses the claimed feature.", + "Therefore, we will not sustain the Examiner's rejection of claims 8 and 17 under 35 U.S.C. S 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2011007235_DECISION.json b/opinion_split/2011007235_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9d38b45a22356ee45398e0346ee37d02f423574c --- /dev/null +++ b/opinion_split/2011007235_DECISION.json @@ -0,0 +1,21 @@ +{ + "appellant_arguments": [ + "ANALYSIS Appellant does not contest that Ikeguchi *585 does in fact teach a method allowing a user to select one of an analog signal source and a digital signal source (App. Br. 9).", + "However, Appellant argues that one skilled in the art would not look to Ikeguchi *542 to incorporate a comparison of audio program information into the apparatus of Ikeguchi *585, because such a combination would deprive a user of the ability to select a signal source (App. Br. 9-10).", + "Appellant explains that Ikeguchi *542 teaches performing such a selection automatically, without any user input (App. Br. 9-10; also citing to col. 2. 11. 60-62, col. 2, 1. 66-col. 3, 1. 5, and col. 3, 11. 28-40).", + "Appellant also argues that because the inventorship of both cited references is identical, if it were obvious to combine the audio program information as taught by Ikeguchi *542 with the device of Ikeguchi *585, the inventor would have done so (App. Br. 10)." + ], + "examiner_findings": [ + "REFERENCES and REJECTIONS The Examiner rejected claims 1-5 and 11 under 35 U.S.C. 8 103(a) based upon the teachings of Ikeguchi (US Patent Application Publication No. 2004/0100585 Al, May 27, 2004) (\"Ikeguchi *585) and Ikeguchi (US Patent No. 7,061,542 BI, June 13, 2006) (\"Ikeguchi *542)." + ], + "ptab_opinion": [ + "We Affirm.", + "We do not agree with Appellant's arguments.", + "We agree with the Examiner's findings and reasoning that both references constitute analogous art, and thus, are properly combinable (Ans. 9-10).", + "We also agree with the Examiner that both Ikeguchi *585 and Ikeguchi *542 identify a finite number of predictable solutions for switching between selection of an analog and digital broadcast after determining that the same program is being simulcast in analog and digital broadcasting (Ans. 13).", + "Accordingly, we agree with the Examiner's conclusion (Ans. 14) that both Ikeguchi *585 and Ikeguchi *542 disclose a finite number of identified, predictable potential solutions to the recognized need or problem of changing from an analog broadcast to a corresponding digital broadcast.", + "A person of ordinary skill has good reason to pursue the known options of user-selected or automatically selected within his or her technical grasp.", + "See KSR, 550 U.S. at 421.", + "Accordingly, we affirm the Examiner's rejection of claim I and for the same reasons the rejections of claims 2-5 and 11 for which no additional arguments of patentability were made (see App. Br. 10)." + ] +} \ No newline at end of file diff --git a/opinion_split/2011008367_DECISION.json b/opinion_split/2011008367_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a0caf43376b4db62b20336ebc9738371d8718fc1 --- /dev/null +++ b/opinion_split/2011008367_DECISION.json @@ -0,0 +1,62 @@ +{ + "appellant_arguments": [ + "Appellant's invention relates to an apparatus and method for recording at least one of video data and audio data generated by a capturing device. See Spec., p. 1, II. 2-4,", + "The data memory of the capturing device is connected to at least one recording device having a greater storage capacity. Id. at p. 1, II. 16-19.", + "A virtual memory is formed for the capturing device by the exchange of the data between the data memory and the at least one recording device. ld. at p. 1, II. 19-22.", + "The data on the data memory and the at least one recording device is then accessible at the capturing device. Id. at p. 2, 11. 18-21.", + "37. A method for recording at least one of video data and audio data generated by a capturing device having a data memory, comprising: connecting the data memory of the capturing device to at least one recording device that has a greater storage capacity than the data memory of the capturing device; exchanging data between the data memory of the capturing device and the at least one recording device, whereby a virtual data memory is formed for the capturing device by operational association between the data memory of the capturing device and the at least one recording device; at the capturing device, receiving a request from a user to access the exchanged data, wherein the request does not differentiate between data stored on the data memory of the capturing device and data stored on the virtual data memory; and responsive to the request, retrieving the exchanged data stored on the virtual data memory, the retrieving occurring at the capturing device.", + "With respect to independent claims 37, 64 and 72, Appellant does not dispute the Examiner's rationale for combining Shimizu and Nagaya. App. Br. 5-9.", + "Instead, Appellant simply argues that the Examiner's combination of Shimizu and Nagaya does not disclose or suggest two features: (1) \"at the capturing device, receiving a request from a user to access the exchanged data\" and (2) *responsive to the request, retrieving the exchanged data stored on the virtual data memory, the retrieving occurring at the capturing device.\" \" Id. at 7-8.", + "Nevertheless, Appellant argues that Nagaya does not disclose the request to access the exchanged data occurring at the capturing device because the operations involved in the survey or perusal are not part of the recording/playback apparatus 100 in Nagaya. App. Br. 7.", + "Appellant further argues that Nagaya does not suggest anything about a virtual memory. App. Br. 8.", + "Specifically, Appellant raises new arguments based on the asserted premise that Appellant's Specification provides an unequivocal definition of how a virtual memory is achieved. Reply Br. 4-6.", + "With respect to dependent claims 38-63 and 65-71, Appellant presents no separate patentability arguments apart from those presented for independent claims 37, 64 and 72. App. Br. 9-11." + ], + "examiner_findings": [ + "(1) Claims 37-48, 64-66 and 68-72 stand rejected under 35 U.S.C. $103(a) as being unpatentable over Shimizu and Nagaya. Ans. 4-20.", + "(2) Claims 49, 51-63 and 67 stand rejected under 35 U.S.C. $103(a) as being unpatentable over Shimizu, Nagaya and Kirsten. Ans. 20-30.", + "(3) Claim 50 stands rejected under 35 U.S.C. 5103(a) as being unpatentable over Shimizu, Nagaya, Kirsten and Simerly. Ans. 30-31.", + "First, as correctly found by the Examiner, Shimizu discloses a method for recording at least one of video data and audio data generated by a capturing device having a data memory. Ans. 4 (citing Shimizu col. 2, 11. 21-27),", + "The data memory of the capturing device is connected to at least one recording device that has a greater storage capacity than the data memory of the capturing device. Id. (citing Shimizu col. 7, II. 18-24).", + "Data is exchanged between the data memory of the capturing device and the at least one recording device, whereby a virtual data memory is formed for the capturing device by operational association between the data memory of the capturing device and the at least one recording device. Id. at 5-6 (citing Shimizu col. 7, 11. 32- 52).", + "As further correctly found by the Examiner, Nagaya discloses at a capturing device, receiving a request from a user to access the exchanged data. Id. at 6 (citing Nagaya col. 7, II. 2-16).", + "Nagaya also discloses that the request does not differentiate between data stored on the data memory of the capturing device and data stored on the virtual data memory, and retrieving the exchanged data stored on the virtual data memory in response to the request at the capturing device. Id. at 7 (citing Nagaya col. 9. II. 4-34).", + "According to the Examiner, the data retrieval method of Nagaya is incorporated into the capturing device of Shimizu to arrive at Appellant's claimed invention. Ans. 6-8.", + "The Examiner responds that the virtual memory is defined in the claims as being formed *by operational association','between the data memory of the capturing device and the at least one recording device.\" Ans. 35." + ], + "ptab_opinion": [ + "Claims 37, 64 and 72 are the independent claims on appeal.", + "Claim 37 is representative of the invention, as reproduced with disputed limitations emphasized below:", + "The prior art relied upon by the Examiner in rejecting the claims on appeal is:", + "Shimizu US 7,386,872 B2 Jun. 10, 2008", + "Nagaya et al. (Nagaya) US 6,741,977 B1 May 25, 2004", + "Kirsten US 5,724,475 Mar. 3, 1998", + "Simerly et al. (Simerly) US 6,954,859 B1 Oct. 11, 2005", + "Based on Appellant's arguments, the issues on appeal are whether the Examiner has erred in rejecting: (1) claims 37-48, 64-66 and 68-72 under 35 U.S.C. 8 103(a) as being unpatentable over Shimizu and Nagaya; (2) claims 49, 51-63 and 67 under 35 U.S.C. 103(a) as being unpatentable over Shimizu, Nagaya and Kirsten; and (3) claim 50 under 35 U.S.C. 6 103(a) as being unpatentable over Shimizu, Nagaya, Kirsten and Simerly. App. Br. 5.", + "In particular, the appeal turns on whether the Examiner's combination of Shimizu and Nagaya discloses or suggests several limitations of Appellant's independent claims 37, 64 and 72. App. Br. 5-9.", + "We do not find Appellant's arguments persuasive.", + "We disagree with Appellant.", + "Nagaya discloses an image recording system comprising a monitoring camera 200, a display unit 210 and an image recording/playback apparatus 100 having a memory 170. See Nagaya, FIG. I and FIG. 2.", + "Nagaya further discloses an auxiliary storage unit 160 removably mounted to the image recording/playback apparatus 100. Id. at col. 8, 11. 3-11.", + "FIG. 1 and FIG. 2 of Nagaya are reproduced below: FIG. 1 mainory FIG.2 NO CENTER , \u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7 ,110 .500 110--man VODER COMMISS \" FARM TIXICK 10 M nonsaing MIDIDOLOGY --- 220 From: flown MALE PURTOAX \u00b7- - and 112. un 131 MK ~ MUTICIFY \u25a0 ..118 REPARATLY and ww .502 .139 VIDED w ca 162-- \u25a0 ,170 110 120 180 210 WINGING 1713 MEMOM ,17 TILAMINA 100-- nees . common COSTER OHERE MONTUNES .130 161- \u00b7\u00b7 was now nn W DAMPLAY ~ ,114 ~ 182- new \u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7 - - no MOVERS FITTTRATED -- WORKEN 160", + "FIG. 1 shows a monitoring system including an image recording/playback apparatus 100 and a monitoring camera 200, whereas FIG. 2 shows the specifics of the image recording/playback apparatus 100.", + "In view of FIG. 1 and FIG. 2 of Nagaya, we find that Appellant's claimed \"capturing device\" is disclosed by the combination of the monitoring camera 200, the display device 210 and the image recording/playback apparatus 100, and that Appellant's s claimed *at least one recording device\" is disclosed by the auxiliary storage unit 160.", + "A request for data is input into the display device 210 which accesses the image recording/playback apparatus 100 for the retrieval of the data. Id. at col. 9, II. 4-30.", + "Accordingly, contrary to Appellant's argument, we find Nagaya discloses a request for data and a retrieval of data occurring at the capturing device. Id.", + "We agree with Examiner.", + "Claim terms are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004).", + "\"Morever, limitations are not to be read into the claims from the specification.\" See In re Van Geuns, 988 F.2d 1181, 1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 32 321(Fed. Cir. 1989)).", + "Here, Appellant's independent claims 37, 64 and 72 recite in pertinent part: \"a virtual data memory is formed for the capturing device by operational association between the data memory of the capturing device and the at least one recording device.\"", + "Giving its broadest reasonable construction, such limitations encompass Nagaya's 's operational association between the memory 170 in the capturing device and the auxiliary storage unit 160. See Nagaya, col. 8, 1. 42 - col. 9, 1. 32.", + "Accordingly, contrary to Appellant's argument, we find Nagaya discloses a virtual memory in the manner defined in Appellant's independent claims 37, 64 and 72.", + "Lastly, we note that Appellant has raised new arguments against the $103 rejection of claims 37-48, 64-66 and 68-72 over Shimizu and Nagaya in the Reply Brief.", + "However, these arguments are deemed waived.", + "Appellant has not explained why, nor is it apparent that, these arguments were necessitated by a new point in the Examiner Answer or any other circumstance constituting \"good cause\" for its belated presentation.", + "See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (*informative\") (*absent a showing of good cause, the Board is not required to address argument in Reply Brief that could have been presented in the principal Appeal Brief\").", + "Nevertheless, we disagree with Appellant's arguments.", + "As previously discussed, we find Nagaya discloses Appellant's claimed *virtual data memory\" *formed \u00b7\u00b7\u00b7 by operational association between the data memory of the capturing device and the at least one recording device\" as recited in Appellant's independent claims 37, 64 and 72. See Nagaya, col. 8, 1. 42 - col. 9, 1. 32.", + "For the reasons set forth above, Appellant has not persuaded us of error in the Examiner' rejection of independent claims 37, 64 and 72.", + "Accordingly, we sustain the Examiner's s rejection of claims 37, 64 and 72.", + "For the same reasons discussed, we also sustain the Examiner's obviousness rejections of claims 38-63 and 65-71." + ] +} \ No newline at end of file diff --git a/opinion_split/2011008543_DECISION.json b/opinion_split/2011008543_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d94ae9835a1ca556d37782c6723a554307274007 --- /dev/null +++ b/opinion_split/2011008543_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Appellants' invention relates to an apparatus for checking an error detection functionality of a data processor (see Spec. 1:15-19).", + "Independent claim 1 is exemplary of the claims under appeal and reads as follows with the disputed features highlighted:", + "1. An apparatus for checking an error detection functionality of a data processor having an arithmetic logic unit that provides an output datum based on an input datum, and an error detector that executes the error detection functionality and detects an error during correct execution of the error detection functionality based on the output datum, and, if an error is present, generates an error signal, comprising: a controller configured to: pass an error signal through to an error signal output in a normal operating mode, and block the error signal in a checking mode, in order to not let the error signal pass through to the error signal output; influence the arithmetic logic unit, the error detector or the input datum such that the error detector detects an error during correct execution of the error detection functionality; and, if no error signal is received in response to influencing, output an alarm signal indicating an incorrect execution of the error detection functionality; and a circuit configured to execute a security reset, when receiving the alarm signal.", + "Appellants contend the Examiner erred in rejecting claims 1. 2, 5-13, and 18 because Reinheimer is not concerned with checking the error detection functionality and instead, relates to error detectors (App. Br. 6).", + "Appellants point to Reinheimer's cited disclosure in column 11 and assert that the disclosed functionalities pertain to the error detection itself rather than **checking an error detection functionality\" (id.).", + "With respect to the teachings of Kuslak, Appellants argue that the cited portions indicate Kuslak is concerned with *alleviating the testing before shipping the electronic circuits\" and would not motivate the proposed combination with Reinheimer (App. Br. 7).", + "Appellants further assert that one skilled in the art would not have combined the testing of the error detection and recovery logic of Kuslak \"to check the error detection functionality provided by the parity predictors and calculators disclosed in Reinheimer\" (App. Br. 8).", + "With respect to the teachings of Blum, Appellants similarly contend Blum is not concerned with checking an error detection functionality and its combination with Reinheimer would not have resulted in Appellants' claims (App. Br. 8-9)." + ], + "examiner_findings": [ + "The Examiner rejected claims 1, 2, 5-13, and 18 under 35 U.S.C. a 103(a) as being unpatentable over Reinheimer (US 3,699,323), Kuslak (US 5,872,910), and Blum (US 3,959,638). 1 (See Ans. 3-9).", + "As explained by the Examiner, Kuslak was relied on for disclosing error injection for checking the error detection functionality of Reinheimer (id.).", + "In that regard, the Examiner properly explains the benefits of applying Kuslak's 's techniques for \"simulating an error\" to an instructional processor or an arithmetic logic unit similar to Reinheimer's s system (Ans. 16)." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred.", + "We disagree with Appellants' conclusion.", + "We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the rebuttals to arguments expressed by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (see Ans. 14-16).", + "With respect to Appellants' first contention, we agree with the Examiner that Reinheimer was cited for disclosing a data processor having an error detection functionality for detecting computational errors (Ans. 3-4, 14).", + "We also observe that Kuslak's invention is described as *selective injection of parity errors into data resident within a data processor for testing of error detection and recovery systems\" (Kuslak col. 1, II. 14-19) (emphasis added).", + "Regarding Appellants' second contention, we also agree with the Examiner that combining the teachings of Kuslak with those of Reinheimer would have been within the knowledge and skill level of the skilled artisan (Ans. 15).", + "In fact, contrary to Appellants' assertion (Reply Br. 2-4), the proposed modification allows for testing the error detection functionality in data processing systems such as Reinheimer's computer system based on design requirements that are known by the skilled artisan.", + "In that regard, the Supreme Court has indicated that: (It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.", + "\u00b7 \u00b7 Common sense teaches \u00b7 \u00b7 . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.", + "KSR Int 'I Co. V. Teleflex, Inc., 550 U.S. 398, 420 (citation omitted).", + "Additionally, Appellants have presented no evidence that applying the required process for testing of error detection and recovery systems of Kuslak to the computer system of Reinheimer was *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 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).", + "Regarding Appellants' third contention, we agree with and adopt the Examiner's findings and conclusions (see Ans. 6. 16).", + "1. The Examiner has not erred in rejecting claims 1-17 as being unpatentable under 35 U.S.C. $ 103(a) over Reinheimer, Kuslak, and Blum alone, or in combination with other cited references.", + "2. Claims 1-17 are not patentable." + ] +} \ No newline at end of file diff --git a/opinion_split/2011008748_DECISION.json b/opinion_split/2011008748_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c9f425ac63e5c068da9a84a20fab469fa195aad4 --- /dev/null +++ b/opinion_split/2011008748_DECISION.json @@ -0,0 +1,54 @@ +{ + "appellant_arguments": [ + "Neither Trans's PHY nor AAPA's master-slave roles teach monitoring, determining an encoding type of the master, and selecting a corresponding encoding scheme. App. Br. 7-8.", + "Contrary to the Examiner's finding, Trans does not teach selecting encoders. App. Br. 7.", + "Tran does not describe deciding which encoder to select. Id.", + "In connection with claim 17, the elements of Trans found by the Examiner to teach employing an encoding scheme of the master device when transmitting data are part of Trans's receiver section and therefore do not teach an encoding scheme for transmitting data. App. Br. 10.", + "In connection with claim 19, neither the receive section of Trans's PHY shown in Figure 3, nor the text describing Figure 3, describe a master device determining whether a link is achieved with a remote slave device, and selecting a different encoding scheme if a link is not achieved. App. Br. 11-12.", + "Appellant contends (contention 1(a)) neither AAPA nor Tran teaches the disputed limitation of claim 1, i.e., *wherein the PHY is operative . \u00b7 .to monitor data transmitted by a remote master device, determine the encoding type of the master device, and select the corresponding encoding scheme.\" App. Br. 7-8,", + "In connection with Tran, Appellant argues the Examiner's finding that a selection of the encoders must be based on an encoding type used by a master device is incorrect because a transceiver can encode and transmit data in a different format than that received by the transceiver. App. Br. 6-7.", + "Claim 17 Appellant contends the Examiner erred in rejecting claim 17 for the reasons argued in connection with claim 1. App. Br. 9.", + "Appellant further contends the Examiner's reliance on the Receive Section of Tran in rejecting claim 17 fails to address the step of employing a determined encoding scheme when transmitting. App. Br. 10.", + "Appellant argues the Examiner improperly \"devolves a 10/100BaseT system (as in Trans) into a 10BaseT only system (which is NOT in Trans).\" \" Reply Br. 2.", + "Claim 19 Appellant contends Trans \"does not teach determining whether a link is achieved with a remote slave device, and selecting a different encoding scheme if a link is not achieved, per claim 19.\" App. Br. 12." + ], + "examiner_findings": [ + "The Examiner rejected claims 1-3, 5-8, 17-25, 27, and 29 under 35 U.S.C. $ 103(a) as being unpatentable over Trans in view of AAPA. Ans. 3- 10.", + "The Examiner responds \"Trans teaches a 10/100/1 000/2000Base-T Gigabit PHY (GPHY4) that is backward compatible with 10/100BaseT systems (see I [0472]).", + "In order to be backward compatible, the GPHY4 device must determine and select the proper format that the remote backward device is capable of transmitting and receiving.\" Ans. 11.", + "The Examiner responds finding, to maintain backward compatibility with, for example, a 10Base-T device, Trans's GPHY4 would employ Manchester Encoder 321 in the Transmitter Section. Ans. 12.", + "The Examiner responds: Trans explicitly describes the GPHY4 as backward compatible with 10/100BaseT systems (see paragraph [0472]).", + "Thus for a 10Base-T only remote device, the GPHY4 would not have achieved a link ifit uses 4B/5B encoding for transmitting in 100Tx or 10B/PAM MAP for transmitting in 1000Tx (see Figure 3) since the 10Base-T only remote device cannot receive in these formats.", + "The GPHY4 would have had to use the Manchester Encoder 321 for transmitting in 10Base-T in order to provide backward compatibility for the 10Base-T only remote device.", + "The master-slave role would have been obvious based on the admitted auto-negotiation function including the assumption of master-slave roles. Ans. 13." + ], + "ptab_opinion": [ + "We have jurisdiction over the pending claims under 35 U.S.C. S 6(b).", + "We affirm.", + "We have reviewed the Examiner's rejections in light of Appellant's 's arguments that the Examiner has erred.", + "We disagree with Appellant's 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 (Ans. 3-10) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (Ans. 10-13) and concur with the conclusions reached by the Examiner.", + "We highlight the following for emphasis.", + "We agree with the Examiner.", + "Trans's GPHY4 includes coding-specific encoders including Manchester Encoders 321, 336 used in 10Base-T binary coding (Trans, 11 422-423), 4B/5B Symbol Encoder 322 and 5B/4B Decoder 334 used for 100Base-T (Trans, Fig. 3), and Quinary Symbol Encoders 325, 333 used for 1000Basc-T data (Trans, 11 141). See also Ans. 4-6.", + "Because Trans's GPHY4 is backward compatible (Trans, I 472), it is capable of establishing communication with a remote device using older coding schemes\" and therefore selecting an encoder compatible with a coding scheme supported by both devices.", + "Furthermore, because Tran's GPHY4 also provides auto-negotiation' (Trans, Fig. 1D, 11 499, 517, 519- 520) it teaches or, at a minimum, suggests a device that is operative to monitor and determine the encoding type of a device to which it is to connect, and select the corresponding encoding scheme.", + "Therefore, the combination of AAPA's auto-negotiation feature of master-slave roles and Trans's GPHY4 teaches or suggests the disputed limitation of a *PHY \u00b7 \u00b7 operative . . \u00b7 to monitor data transmitted by a remote master device, determine the encoding type of the master device, and select the corresponding encoding scheme, as recited by claim 1.", + "We are not persuaded of error by Appellant's similar contentions 1(b) and (c) that Trans does not teach selecting encoders or deciding which encoder to select for the reasons supra.", + "Therefore, in the absence of sufficient evidence or argument, we sustain the rejection of independent claim I under 35 U.S.C. $ 103(a) over Trans in view of AAPA together with the rejection of dependent claims 2, 3, and 5-8 not separately argued.", + "Finding those arguments unpersuasive of error for the reasons supra, we likewise find those arguments unpersuasive of error in connection with claim 17.", + "We agree with the Examiner and find Appellant's contention unpersuasive of error.", + "However, the Examiner uses the 10Base-T system only as an example of a remote device to which a connection is to be attempted and which is supported by Trans's GPHY4's backward compatibility feature and not for teaching a claim limitation.", + "Accordingly, we find no error.", + "Appellant provides no persuasive argument detailing error in the Examiner's example of how Trans's backward compatibility feature would operate.", + "Furthermore, the Examiner's basis for finding Trans's backward compatibility teaches determining an encoding scheme of a master device and employing that scheme when transmitting is equally persuasive based on 10/1 10/100Base-T limited system.", + "Such a remote system might be capable of both 10Base-T and 100Base-T encoding types but not 1000/2000Base-T, an additional capability of Trans's GPHY4 which would be deselected to provide 10/100BaseT backward capability.", + "Therefore, for the reasons supra, we find no Examiner error and sustain the rejection of independent claim 17 under 35 U.S.C. $ 103(a) over Trans in view of AAPA together with the rejection of dependent claim 18 not separately argued.", + "We again find the Examiner's explanation no less persuasive based on a 10/1 00BaseT system incapable of 1000Tx instead of a 10Base-T only system, there still being a requirement to provide backward compatibility.", + "Therefore, in the absence of sufficient evidence or argument persuasive of Examiner error, we sustain the rejection of findependent claim 19 under 35 U.S.C. 8 103(a) over Trans in view of AAPA together with the rejection of dependent claims 20-25, 27, and 29 not separately argued.", + "CONCLUSIONS We find:", + "1) In connection with the rejection of claim 1, the Examiner did not err in finding Trans's plurality of encoding schemes taken together with its backward compatibility results in an apparatus that determines and selects the proper format compatible with a remote device.", + "2) The Examiner did not err in finding Trans teaches **employing said encoding scheme when transmitting data from the slave to the master,\" as recited by claim 17.", + "3) In connection with the rejection of claim 19, the Examiner did not err in finding Trans's backward capability teaches, in response to failure to achieve a link after an attempt using an incompatible format, selecting a different format." + ] +} \ No newline at end of file diff --git a/opinion_split/2011009076_DECISION.json b/opinion_split/2011009076_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9c05431f93df01a48e3c222a7459a469ef2cd643 --- /dev/null +++ b/opinion_split/2011009076_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "Appellants (App. Br. 9) requests review of the following rejections: I. Claims 1-7, 9, 10, 12-14, and 17-20 rejected under 35 U.S.C. 8 102(b) as anticipated by Wu *049 (US 7,238,049).", + "Appellants (App. Br. 10) argue: Wu \\'049 fails to teach or suggest a Mini Multilane internal connector because, at best, Wu \\'049 discloses only an external connector.", + "Specifically, under the heading \"Other Publications\" on the cover page of Wu \\'049, a publication is cited with the title *SFF-8088 Specification for Compact Multilane shielded connector.\"", + "In support of this argument Appellants referred to the abstract from the SFF-8088 publication. (Id.).", + "(App. Br. 11-12), Appellants specifically argued that the Examiner has not identified a description in Wu \\'049 that provides the dimensions of the EMI shield as recited in claims 5 and 6 or a description of unshielded Mini Multilane connectors as recited in claims 13, 17, and 19. (Id.)." + ], + "examiner_findings": [ + "STATEMENT OF THE CASE This is an appeal under 35 U.S.C. S 134 from a final rejection of claims 1-10, 12-14, and 17-20.", + "II. Claim 8 rejected under 35 U.S.C. 5 103(a) as unpatentable over of the combination of Wu \\'049 and Wu *382 (US 6,007,382).", + "The Examiner found that Wu *049 describes the system comprising, inter alia, a cable connector (200) that comprises a Mini Multilane internal connector as required by the subject matter of claim 1. (Ans. 3; Final Office Action 2).", + "The Examiner specifically pointed to cable connector (200) in Wu *049 as illustrating the claimed invention, i.e., a cable connector comprising a Mini Multilane internal connector." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6.'", + "The issue presented for our review is: Did the Examiner err in determining that the cable connector (200) of Wu *049 comprises a Mini Multilane internal connector as required by the subject matter of claim 1?", + "Appellants' argument is not persuasive of error in the Examiner's anticipation finding.", + "Appellants' arguments are all directed to a document that was cited in the prosecution of the Wu *049 patent.", + "Appellants do not show or argue that Wu *049 itself employs the type of the external Multilane shielded connector described in the SFF-8088 publication.", + "Appellants have not directed us to any disclosure of Wu *049 or any other evidence to contradict the Examiner's finding.", + "Consequently, we sustain the Examiner's rejection.", + "Claims 5. 6, 13, 17, and 19 We agree with Appellants that the Examiner erred in rejecting these claims because the Examiner has failed to identify specific features in Wu *049 that meet the specific claim elements.", + "Thus, we determine that the Examiner has not carried the burden of establishing a prima facie case of anticipation in the first instance by pointing out where each and every element of the claimed invention, arranged as required by the claim, is described identically in the reference, either expressly or under the principles of inherency, in a manner sufficient to have placed a person of ordinary skill in the art in possession thereof. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).", + "Accordingly, we do not sustain the Examiner's anticipation rejection of claims 5, 6, 13, 17, and 19 for the reasons presented by Appellants.", + "Obviousness Rejection We also will not sustain the Examiner's obviousness rejection of claim 8 for the reasons presented by Appellants. (App. Br. 12-13).", + "The Examiner has failed to show that the board to which the casing 1 of Wu *382 couples necessarily has a support hole for resilient arm 120.", + "The Examiner is also failed to explain why such modification would have been desirable in the invention of Wu \\'049.", + "The Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "\"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.\" KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 418 (2007)", + "Accordingly we do not sustain the Examiner's obviousness rejection of claim 8." + ] +} \ No newline at end of file diff --git a/opinion_split/2011009142_DECISION.json b/opinion_split/2011009142_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1bf45be9685a1a3f3bb12d90aeed6b78100a2201 --- /dev/null +++ b/opinion_split/2011009142_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "In particular, Appellants argue Metcalfe's drawings do not provide a clear indication \"that contact between the [Examiner-identified] *hoop stress expansion member' and the tubular 18 expands the tubular.\" Id. at 12.", + "Moreover, Appellants argue that the Examiner-identified feature would not even be capable of expanding the tubular 18, because \"the upper outer edges of the rollers 38 create[] the *expansion bend' of the tubular 18.\" Id." + ], + "examiner_findings": [ + "The Examiner found that Metcalfe discloses at least one expansion member adapted to expand a tubing by inducing a hoop stress in the tubing. Ans. 3-5.", + "In particular, the Examiner found that the upper, wider end of conical body 36 of first expander section 30 comprises the expansion member adapted to expand a tubing by inducing a hoop stress in the tubing. Id. (citing annotated copy of Figure 1 of Metcalfe on page 5 of the Examiner* s Answer).", + "The Examiner rejected claims 1-3, 6-19, 22, 23, 25, 29-35, 42, 43, 49, 52, 53, 63-65, and 98-100 under 35 U.S.C. & 103(a) as unpatentable over Metcalfe. Ans. 6-7.", + "In the alternative, the Examiner noted that Metcalfe did not \"explicitly state that the expansion device has an expansion member adapted to expand the tubing by inducing a hoop stress in the tubing,\" but the Examiner found that: Metcalfe . . suggests, as seen in figure 1, a hoop stress inducing expansion member is located directly above the compressive yield expansion members (38) since it is clearly shown that the inclined segment of the tubing (18) located at the compressive yield expansion members (38) is further expanded to a straight segment as the tubing is forced over a portion of the expansion device located directly above the compressive yield expansion members (38). Ans. 6.", + "The Examiner concluded that \"it would have been obvious to one having ordinary skill in the art \u00b7 \u00b7 to provide the expansion device with a hoop stress inducing expansion member to further widen the inclined tubing to a desired uniform diameter.\" Id." + ], + "ptab_opinion": [ + "We REVERSE.", + "Appellants persuasively contend that the Examiner' s finding is speculative. App. Br. 11-13.", + "We agree with Appellants that Metcalfe does not disclose sufficient details to support that the upper, wider end of conical body 36 of first expander section 30, as identified by the Examiner, is capable of expanding a tubing by inducing a hoop stress in the tubing. See Hrg. Tr. 6: 22 - 7:3 and 10: 18 - 11:17.", + "Indeed, there appears to be a gap between the Examiner-identified upper, wider end of conical body 36 and tubular 18 because of rollers 38 extending radially outward, thereby supporting Appellants' contention that the Examiner-identified upper, wider end of conical body 36 of first expander section 30 would not be capable of expanding a tubing because of rollers 38 that may be extended radially outwardly.", + "Accordingly, the Examiner': finding that Metcalfe's upper, wider end of conical body 36 of first expander section 30 is capable of expanding a tubing by inducing a hoop stress in the tubing is speculative, and as such, inadequately supported.", + "For the foregoing reasons, we do not sustain the rejection of independent claims 1 and 100, and claims 2, 3, 6-19, 22, 23, 25, 29-35, 42, 43, 49, 52, 53, 63-65, 98, and 99 which depend therefrom, under 35 U.S.C. \u25cf 102(e) as anticipated by Metcalfe.", + "The Examiner'. s rejection of claim 44 is based on the same erroneous finding that Metcalfe's upper, wider end of conical body 36 of first expander section 30 would be capable of performing the intended use or function of expanding a tubing by inducing a hoop stress in the tubing, and the Examiner does not explain how Lauritzen would remedy the deficiency of Metcalfe. Ans. 5-6.", + "Accordingly, we also do not sustain the rejection of claim 44 under 35 U.S.C. 5 103(a) as unpatentable over Metcalfe and Lauritzen.", + "However, the Examiner relied on the same upper, wider end of conical body 36 \"located directly above the compressive yield expansion members (38)* for the claimed hoop stress inducing expansion member as in the anticipation rejection to provide a suggestion for modifying Metcalfe. Id.", + "For the same reasons discussed supra in connection with the anticipation rejection, Appellants have persuaded us that the Examiner' s finding that Metcalfe suggests that its upper, wider end of conical body 36 of first expander section 30 is capable of expanding a tubing by inducing a hoop stress in the tubing is speculative, and thus, inadequately supported.", + "Accordingly, we are persuaded by Appellants' argument that \"it would not have been obvious to a person of ordinary skill in the art\" to modify Metcalfe in the manner suggested by the Examiner as the Examiner has not articulated a reason with a rational underpinning to do so. See Reply Br. 4.", + "For the foregoing reasons, we also do not sustain the rejection of independent claims 1 and 100, and claims 2, 3, 6-19, 22, 23, 25, 29-35, 42, 43, 49, 52, 53, 63-65, 98, and 99 which depend therefrom, under 35 U.S.C. 6 103(a) as unpatentable over Metcalfe." + ] +} \ No newline at end of file diff --git a/opinion_split/2011009154_DECISION.json b/opinion_split/2011009154_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..601470f84fc06fd733f99a9fbc833123395e6997 --- /dev/null +++ b/opinion_split/2011009154_DECISION.json @@ -0,0 +1,77 @@ +{ + "appellant_arguments": [ + "Appellant seeks reversal of these rejections pursuant to 35 U.S.C. 5 134(a).", + "Appellant presents substantially the same set of arguments regarding this rejection for each of the three independent claims (claims 10, 22, and 34) in the '233 application: (1) the prior art does not describe or suggest the use of thixotropic polyvinyl siloxane to form the adhesion elements, (2) the prior art does not describe or suggest the adhesion element density of at least 16,000 elements cm . (3) the prior art does not describe or suggest the claimed dimensions of the adhesion elements, (4) the prior art does not describe or suggest the shape of the stem part provided by the different radii of curvature of the mold cavity boundary walls, and (5) Arzt and Tuma are from non-analogous arts, and the Examiner has not provided an adequate reason to combine their teachings. App. Br. 6-7, 8-9, 11-12.", + "First, Appellant argues that the Examiner has not properly identified a description of the use of thixotropic polyvinyl siloxane in the prior art. App. Br. 6, 9, 11.", + "Rather than attempting to demonstrate that the Examiner's factual finding was erroneous, Appellant's argument is procedural--that the Examiner had not made Jenkins and Hahn part of the rejection and therefore was not entitled to rely upon them. See, e.g., App. Br. 6.", + "Second, Appellant argues that the prior art does not describe a density of at least 16,000 adhesion elements per cm2. App. Br. 6.", + "Third, Appellant argues that the prior art does not describe the claimed dimensions of the adhesion elements. App. Br. 6.", + "Fourth, Appellant argues that curved shape of the stems of the adhesion elements in the *233 application is not disclosed or rendered obvious by cited art. App. Br. 6-7.", + "In reply, Appellant argues that Arzt does not describe the claimed shape. Reply 1-2.", + "Fifth, Appellant argues that Tuma is from a non-analogous art and that the Examiner has not provided an adequate reason for a person of ordinary skill in the art to combine their teachings. See, e.g., App. Br. 7.", + "Appellant bases this argument on the contention that Tuma relates to an adhesive element, while Arzt relates to an adhesion element. Id.", + "Appellant offers this distinction between the terms: an adhesive element is a hook or mushroom head that engages with a corresponding or mating loop, hook, or another mushroom head to cause two surfaces to adhere, while an adhesion element operates through van der Waals forces between a planar surface and the end surfaces of the adhesion elements. Id.", + "Finally, Appellant also argues that claims 10 and 34 may be distinguished from the prior art because these claims require that the head parts of the adhesion elements covered by these claims have specific shapes allegedly not shown in the prior art. Id. at 7 (claim 10 recites essentially flat end surfaces), 12 (claim 34 recites concave end surfaces).", + "Appellant bases this argument on Figure 3 of Tuma, which shows that the top surface of the adhesion elements have a convex shape. Id. at 7, 12.", + "Rather, Appellant reiterates the arguments concerning the combination of Arzt and Tuma that we have previously found unpersuasive. Id.", + "Appellant argues that George does not render these claims obvious because George does not describe the use of polyvinyl siloxane to make the adhesion elements it describes. App. Br. 15-16." + ], + "examiner_findings": [ + "The Examiner finally rejected claims 10, 14, 16, 18, 20-22, 26, 28, 30, 32-34, 38, 40, 42, and 44-51 of Application 10/577,233 as obvious under 35 U.S.C. 5 103(a).'", + "The Examiner finally rejected claims 10, 16, 18, 22, 28, 30, 34, 40, 42, and 46-51 under 35 U.S.C. $ 103(a) as obvious over WIPO Publication WO 03/099951 A2 (\"Arzt,\" Dec. 4, 2003)2 in view of WIPO Publication WO 2002/013647 A2 (\"Tuma,\" Feb. 21, 2002)3.", + "The Examiner finally rejected claims 20, 32, and 44 under 35 U.S.C. 5 103(a) as obvious over Arzt in view of Tuma, further in view of U.S. Patent Application Publication 2003/0208888 A1 (\"Fearing,\" Nov. 13, 2003).", + "The Examiner finally rejected claims 14, 26, and 38 under 35 U.S.C. 5 103(a) as obvious over Arzt in view of Tuma, further in view of U.S. Patent Application Publication 2005/0072509 A1 (\"Full,\" April 7, 2005).", + "The Examiner finally rejected claims 21, 33, and 45 under 35 U.S.C. 5 103(a) as obvious over Arzt in view of Tuma, further in view of U.S. Patent No. 7,018,496 B1 (\"George,\" issued March 28, 2006).", + "The Examiner rejected claims 10, 16, 18, 22, 28, 30, 34, 40, 42, and 46-51 under 35 U.S.C. $ 103(a) as obvious over Arzt in view of Tuma.", + "In response to Appellant's argument, the Examiner took the position that polyvinyl siloxane is inherently thixotropic. Final Office Action 11.", + "To provide evidentiary support, the Examiner cited Jenkins,* 1 [0080], and Hahn,\" col. 7, 1. 64-col. 8, 1. 2.", + "The Examiner found that Arzt described the use of adhesion elements in an array with a density of 106 to 107 cm2 Ans. 12-13 (citing Arzt I [0069D.", + "The Examiner however, cited Arzt as teaching dimensions for its adhesion elements that overlap Appellant's claimed ranges. FOA 5 (citing Arzt 11 [0068], [0070], Fig. 6, Fig. 7); Ans. 5, 13.", + "The Examiner cited Tuma as teaching the claimed shape. Ans. 6-8, 13-14, compare Tuma Fig. 3 with *233 application Figs. 4 and 5.", + "The Examiner found that a person of ordinary skill in the art would have been motivated to adopt Tuma's stem shapes and mold techniques to be able to make the intricate parts in a uniform manner. Ans. 7.", + "As the Examiner found, Arzt shows many different shapes for the head of the adhesion projection. Ans. 5 (citing Arzt Fig. 7).", + "The Examiner rejected claims 20, 32, and 44 as obvious over Arzt in view of Tuma, further in view of Fearing. Ans. 8-9.", + "The Examiner cited Fearing as teaching that a person of ordinary skill in the art of making adhesive microstructures would seek to optimize a number of the microstructure's properties. Id.", + "In view of this teaching, the Examiner found that the particular dimensions recited in these claims were result effective variables that a person of ordinary skill in the art would have optimized. Id.", + "The Examiner rejected claims 14, 26, and 38 as obvious over Arzt in view of Tuma, further in view of Full. Ans. 9.", + "The Examiner cited Full as describing the use of an imprinting roller in order to achieve the desired density of mold cavities. Id.", + "The Examiner rejected claims 21, 33, and 45 as obvious over Arzt in view of Tuma, further in view of George. Ans.10.", + "The Examiner cited George as teaching the incorporation of thermoplastic compositions into a thermosetting composition and subsequent crosslinking to create an adhesion element having high ultimate strength and heat resistance. Id. (citing George col. 13, 11. 8-17)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "For the reasons set forth below, we AFFIRM.", + "We address these arguments in turn.", + "For the reasons set forth below, we do not find any of them to be persuasive.", + "Appellant does not dispute that polyvinyl siloxane is inherently thixotropic.", + "The Examiner's 's finding that polyvinyl siloxane is inherently thixotropic is supported by a preponderance of the uncontested evidence.", + "The Examiner's failure to include Jenkins and Hahn as part of the rejection was harmless because the Final Office Action identified these references, cited the relevant portions of the references, and clearly stated why they were being cited.", + "Appellant's response to the citation of the references shows that Appellant recognized that the Examiner had cited the references and understood how the Examiner was applying that evidence.", + "Appellant had notice and ample opportunity to provide rebuttal evidence to overcome the Examiner's finding regarding polyvinyl siloxane's inherent properties.", + "Moreover, Appellant did not seek any remedy to the Examiner's actions through the petitions process for any perceived procedural problem.", + "In the case before us, Appellant was adequately notified of the reasons for rejection as required by procedural due process and 35 U.S.C. 9 132.", + "Appellant does not attempt to rebut this finding, which is supported by substantial evidence.", + "Appellant did not argue that the claimed dimensions were critical, provided unexpected results, or otherwise attempt to rebut the Examiner's finding.", + "The Examiner's finding that the prior art teaches or suggests these limitaitons is supported by substantial evidence.", + "The Examiner's finding that Tuma describes the claimed curvature is supported by substantial evidence.", + "Furthermore, we do not find Appellant's proposed distinction between adhesive elements and adhesion elements to be convincing.", + "First, we note that Arzt describes its structures as increasing the adhesive power of the modified surfaces, Arzt 1 [001 1], and creating an adhesive connection with the contacted surface, e.g., id. at I [0012].", + "The cited prior art, therefore, does not distinguish between the terms adhesion and adhesive in the manner Appellant proposes.", + "Second, in discussing the prior art, Appellant's specification describes Velero-type fasteners as using adhesion closure parts. Spec. 1-2.", + "Thus, Appellant's proposed distinction seems to be a prosecution- inspired attempt to overcome the prior art, rather than an actual difference in the technical fields of endeavor.", + "Accordingly, the Examiner's finding that Arzt and Tuma are in analogous arts and that a person of ordinary skill in the art would have been motivated to combine the two references is supported by a preponderance of the evidence.", + "These arguments are not successful in overcoming the Examiner's rejections of these claims.", + "Furthermore, we note that Tuma describes adhesion elements with concave heads. See Tuma, col. 4, 1. 64-col. 5, 1. 11.", + "The Examiner's finding is supported by a preponderance of the evidence.", + "The Appeal Brief's s discussion of each of the dependent claims included in this rejection do not amount to separate arguments in support of patentability for each of the claims. See 37 C.F.R. $ 41.37(c)(1)(vii).", + "Accordingly, claims 16, 18, 28, 30, 40, 42, and 46-51 fall with their respective independent claims. Id.", + "Appellant does not seek to rebut the Examiner's finding that the dimensions of the adhesion elements is a result effective variable. App. Br. 13-14.", + "Accordingly, we sustain the Examiner's rejections of claims 20, 32, and 44.", + "Other than incorporating the arguments already addressed in connection with Rejection 1, Appellant does not advance any substantive argument against this rejection. App. Br. 14-15.", + "We have already found the arguments against the combination of Arzt and Tuma to be unpersuasive.", + "Accordingly, we sustain the Examiner's rejections of these claims.", + "Crosslinking of polymer chains to change the properties of plastic materials is notoriously old in the art.", + "Thus, the Examiner's finding that George suggests crosslinking the plastic material used to create the adhesion elements to make the adhesion elements stiffer is supported by substantial evidence.", + "Accordingly, we sustain the rejection of claims 21, 33, and 45." + ] +} \ No newline at end of file diff --git a/opinion_split/2011009211_DECISION.json b/opinion_split/2011009211_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f4990df6703e23f3ab482d576049d6968085adbc --- /dev/null +++ b/opinion_split/2011009211_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellants' invention relates generally to a machine for processing printing material, in particular a printing press or a sheet-processing rotary printing press for lithographic offset printing, having an element for contacting the printing material. (Spec. 1).", + "1. A method of producing an element for contacting printing material, the method comprising the following steps: providing a carrier to be disposed in a printing machine and configured to contact the printing material in the printing machine; producing a micro-structured surface on the carrier by electrolytic oxidizing of aluminum; and coating the micro-structured surface in a sol-gel process.", + "Appellants argue that Sawada does not disclose the printing material required by the claimed invention.", + "Specifically, Appellants argue \"Sawada discloses a method of producing an element for contacting a blanket on a blanket cylinder.", + "Sawada does not disclose a method which includes providing an element to be disposed in a printing machine and configured to contact the printing material in the printing machine. (App.Br. 5)." + ], + "examiner_findings": [ + "This is an appeal under 35 U.S.C. 8 134 from a final rejection of claims 1-8.", + "Appellants (App. Br. 4) request review of the following rejection from the Examiner's final office action: Claims 1-8 are rejected under 35 U.S.C. 8 102(b) as anticipated by Sawada (U.S. Patent Application Publication 2004/0079252, published Apr. 29, 2004).", + "The Examiner found that Sawada describes a method of producing an element for contacting printing material comprising the steps of providing an aluminum plate carrier in a printing machine and configured to contact the printing material. (Ans. 6).", + "The Examiner determined that \"printing material\" may take the form of any element that contacts ink, and thus the blanket cylinder is broadly considered to be \"printing material\" as required by the claimed invention. (Id.)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6.", + "Claim 1 is illustrative of the subject matter on appeal:", + "The dispositive issue on appeal is: Did the Examiner err in determining that Sawada describes a method of producing an element for contacting printing material as required by the subject matter of independent claim 12'", + "After review of the respective positions provided by Appellants and the Examiner, we AFFIRM for the reasons presented by the Examiner and add the following for emphasis.", + "We are unpersuaded by Appellants' arguments and agree with the Examiner's s finding of anticipation.", + "I Appellants have not presented arguments directed to any particular claim on appeal.", + "We select claim 1 as representative of the rejected claims and will limit our discussion to this claim. 37 C.F.R. S 41.37(c)(1)(vii).", + "Appellants have not disputed that Sawada describes a method of producing lithographic printing plates for contacting a blanket cylinder (printing material). (App. Br. 5).", + "Appellants have not directed us to portions of the Specification that provide a specific definition for \"printing material\" that would exclude a blanket cylinder.", + "*[DJuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.\" \" In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).", + "We agree with the Examiner that a printing material may take the form of any element that contacts ink, and thus the Examiner's finding that Sawada's blanket cylinder is a printing material as required by the claimed invention is reasonable.", + "Appellants have not established that **printing material\" excludes printing on a material such as a blanket cylinder that is subsequently transferred to another material such as paper.", + "Accordingly, we affirm the Examiner's finding of anticipation." + ] +} \ No newline at end of file diff --git a/opinion_split/2011009276_DECISION.json b/opinion_split/2011009276_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a1bf61dfb08e2d4d3fbc7563a80c1433862def35 --- /dev/null +++ b/opinion_split/2011009276_DECISION.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "Appellants contend that the Examiner erred in rejecting independent claims 1 and 14 as anticipated because Horiuchi does not disclose the claim limitation emphasized above (App. Br. 6-7).", + "In support of their contention, Appellants argue that \"the operation of choosing shutter speed in Horiuchi is different from adjusting the display-related setting of the electronic device as recited in claim 1\" (id. at 8).", + "Appellants also contend that the Examiner erred in rejecting dependent claims 9 and 22 as obvious because the combination of Horiuchi and Ejima does not teach or suggest the claim limitation emphasized above (App. Br. 11).", + "In support of their contention, Appellants argue that \"there is no disclosure or suggestion that Ejima's central calculation processing portion 10 adjusts the display-related setting to select a TRC according to the image luminance values and the exposure time values\" (id. at 12).", + "Appellants also contend that *one of ordinary skill in the art would not combine Horiuchi and Ejima* (App. Br. 13).", + "In support of their contention, Appellants argue that \"Ejima's 's arrangement does not need to acquire more photos, in contrast to Horiuchi' 's\" (id. at 13-14).", + "Appellants further argue that \"Horiuchi fails to disclose or suggest the gray scale modification characteristic [] and the shutter speed are chosen according to only one photo\" (id. at 14)." + ], + "examiner_findings": [ + "The Examiner found, however, \"that the final exposure time/shutter speed determined and implemented by the camera of Horiuchi, derived using images obtained according to a plurality of different exposure times and the resulting luminance values thereof, fully meets the requirements of the claimed *display-related settings\"\" (Ans. 15).", + "Moreover, the Examiner found that Ejima teaches that \"the camera uses luminance information of a plurality of captured image data segments in order to determine a proper gamma correction curve, corresponding to the claimed tone reproduction curve\" (Ans. 23)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6(b).", + "We affirm.", + "We adopt the Examiner's s factual findings as set forth in the Answer (Ans. 3, et seq.).", + "We agree with the Examiner's finding.", + "Our reviewing Court requires us to give a claim its broadest reasonable meaning consistent with the Specification.", + "That is, the exposure time and luminance values affect the display in Horiuchi.", + "Accordingly, under the broadest reasonable construction consistent with the specification, Horiuchi's disclosure that the image luminance value and exposure time values affect the display qualifies as the adjusting of the display-related settings as recited in independent claims 1 and 14.", + "Thus, we find no error in the Examiner's rejection of claims 1 and 14 as anticipated.", + "As explained supra, however, Horiuchi discloses adjusting the display-related settings according to the image luminance values and the exposure time values.", + "Ejima discloses the selection of a gamma correction curve in accordance with the luminance values: If the difference between the greatest output and the smallest output among them is between the maximum value and the minimum value prestored in the central calculation processing portion 10, it is judged that the difference in quantity of light between the portions of the object to be photographed is of a medium degree, and the switch 24c is closed and the other switches 24b and 24d are opened so that gray scale modification may be done in the second gray scale modification circuit 24f having the characteristic of y2. \u00b7 \u00b7 (Ejima, col. 11, 11. 39-49).", + "Accordingly, we find that the claim limitation of adjusting the tone reproduction curve according to the image luminance values and the exposure time values is a combination of Horiushi's teachings of adjusting the settings of a display according to the image luminance value and the exposure time values and Ejima's teaching of adjusting the gamma correction curve according to the luminance values that yields predictable results.", + "But we agree with the Examiner's finding that one of ordinary skill in the art would have been motivated to combine Ejima's teachings of the gamma curve selection with Horiuchi's device \"because it would enable the device of Horiuchi to select a proper gamma curve for performing gradation correction/adjustment in order to improve the contrast of the captured image signals according to luminance information obtained at the plurality of exposure times\" (Ans. 7).", + "Accordingly, we find no error in the Examiner's rejections of dependent claims 9 and 22.", + "We also find no error in the Examiner' s rejection of the other claims on appeal (i.e., claims 2, 3, 10-13, 15, and 16) because Appellants did not set forth any separate or distinct arguments for those claims (see App. Br. 10 and 14)." + ] +} \ No newline at end of file diff --git a/opinion_split/2011009556_DECISION.json b/opinion_split/2011009556_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1e9c81310d8d0f73b0ee781afcc3ba323867f4bc --- /dev/null +++ b/opinion_split/2011009556_DECISION.json @@ -0,0 +1,77 @@ +{ + "appellant_arguments": [ + "Appellant contends the Examiner misinterpreted the teaching of Wagaman, Appellant's own work.", + "In particular, Appellant argues Wagaman is directed only to aqueous compositions, and never prepared anhydrous compositions.", + "Appellant states the minimum concentration of water in the Wagaman preparations is 15% by weight.", + "In reference to Wagaman's Figures 1 and 2, Appellant admits one skilled in the art \"would recognize that the left axis of the triangle describes mixtures of ammonium nitrate and hydrogen peroxide that are free of water, [i.e.] that they are substantially anhydrous.\"", + "However, Appellant asserts the formation of anhydrous adducts \"was theoretical only\", \"the art is unpredictable\", *there was no certainty that they even existed\", and *if they existed, that they would be stable and useful.\"", + "Appellant also asserts \"[sJubstantial experimental work, product characterization and data analyses were necessary before the adducts could be produced by removing water from an aqueous ammonium nitrate- hydrogen peroxide mixture, and characterized.\"", + "In particular, in order to support the assertion that concentrated solutions of hydrogen peroxide *are extremely unstable and are highly hazardous\", Appellant cites to the Titova and Jeff articles.", + "Finally, Appellant argues that there was no certainty as to the existence of the adduct of anhydrous ammonium nitrate and hydrogen peroxide and if they existed, that they would be safe and useful." + ], + "examiner_findings": [ + "ISSUE AND DISCUSSION The Examiner found W Wagaman teaches compositions comprising ammonium nitrate and hydrogen peroxide.", + "The Examiner acknowledges Wagaman's compositions in general are directed towards aqueous forms of this composition, and Wagaman does not explicitly teach use of anhydrous compositions of ammonium nitrate and hydrogen peroxide.", + "Nonetheless, the Examiner found Wagaman teaches or suggests the existence of at least substantially anhydrous adduct of ammonium nitrate and hydrogen peroxide.", + "In particular, the Examiner found Wagaman's Figures 1 and 2 at least suggests mixtures of ammonium nitrate and hydrogen peroxide that are free of water, such that the substantially anhydrous composition of ammonium nitrate and hydrogen peroxide would have been obvious to one of ordinary skill in the art.", + "The Examiner further found one skilled in the art, *absent any evidence of criticality or unexpected results\". would have been motivated to produce the anhydrous composition since the presence of water decreases the energy content of the composition per unit mass, while adding weight to the composition." + ], + "ptab_opinion": [ + "STATEMENT of THE CASE Appellant appeals under 35 U.S.C. $ 134 from the Examiner's decision finally rejecting claims 1, 2, 5, 6, and 19 under 35 U.S.C. 8 103(a) as unpatentable over Wagaman'.", + "Claims 3, 4, and 15-18 are pending, but have been withdrawn from further consideration following a restriction requirement.", + "Supp. Br. 2.", + "We have jurisdiction over the appeal under 35 U.S.C. 8 6(b).", + "CLAIMED SUBJECT MATTER The invention relates to a substantially anhydrous solid or liquid chemical adduct (peroxidate) comprising hydrogen peroxide and a compound selected from the group consisting of sodium nitrate, potassium nitrate, ammonium nitrate and mixtures thereof.", + "Spec. 4:2-6.", + "The adduct may include a surfactant or a stabilizer.", + "Id. at 4:10-11.", + "The anhydrous adduct may also be synthesized from hydrogen peroxide and another non-peroxidate functional group such as sodium or potassium carbonate or bicarbonate, urea, ammonium dinitramide or other desirable functional groups.", + "Id. at 4:25-31.", + "Claim 1, representative of the claims on appeal, is reproduced below: 1. A substantially anhydrous solid or liquid chemical adduct comprising: hydrogen peroxide; and a compound selected from the group consisting of sodium nitrate, potassium nitrate, ammonium nitrate, ammonium dinitramide and mixtures thereof.", + "Supp. Br., Claims App 'x.", + "Ans. 3.", + "Id.", + "Id., referring to Wagaman, Figures 1 and 2, as well as the description of the drawings, col. 4:20-31.", + "Id. at 4:2-5,", + "Id. at 4:6-12.", + "App. Br. 8.", + "Id. at 10.", + "Id. at 8.", + "Id. at 11:1-4.", + "Id. at 11:19-23.", + "Id. at 11:23-27.", + "Appellant's arguments raise the following issue: Has Appellant shown the Examiner reversibly erred in concluding one skilled in the art would have found anhydrous adduct of ammonium nitrate and hydrogen peroxide obvious in view of Wagaman's response surface diagrams of Figures 1 and 22", + "We answer this question in the negative and affirm the Examiner's decision to reject claims 1, 2, 5, 6, and 19 for the reasons expressed in the Answer.", + "See generally, Ans. 3-7.", + "We note the Examiner has fully addressed Appellant's separate arguments in opposition to the rejection.", + "We add the following discussion of the above-listed issue for completeness.", + "ANALYSIS Appellant does not present separate arguments in support of patentability of the claims.", + "Accordingly, we decide patentability of all claims on the basis of claim 1.", + "37 C.F.R. S 41.37(c)(1)(vii).", + "We begin our analysis by noting Appellant's admission that one of ordinary skill in the art would have recognized that Wagaman's Figures 1 and 2 describe mixtures of ammonium nitrate and hydrogen peroxide that are free of water or are substantially anhydrous.", + "App. Br. 11:1-4.", + "While Wagaman never made mixtures with less than 15% by weight water, this recognition is still prior art.", + "*[A]II disclosures of the prior art, including unpreferred embodiments, must be considered\" in determining obviousness.", + "In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).", + "Indeed, a reference need not even be enabled to qualify as prior art for 8 103 purposes: \"Under 8 103, however, a reference need not be enabled; it qualifies as prior art, regardless, for whatever is disclosed therein.\"", + "Amgen Inc. V. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003).", + "Thus, while Wagaman's anhydrous \"mixtures\" of ammonium nitrate and hydrogen peroxide are theoretical, one of ordinary skill in the art would recognize such are nonetheless described therein.", + "We next turn to Appellant's assertions that the formation of anhydrous adducts \"the art is unpredictable\", \"there was no certainty that they even existed\", and *if they existed, that they would be stable and useful\" (App. Br. at 11:19-23), as well as that **[s]ubstantial experimental work, product characterization and data analyses were necessary before the adducts could be produced by removing water from an aqueous ammonium nitrate- hydrogen peroxide mixture, and characterized\" (id. at 11:23-27).", + "In support of these assertions, Appellant directs our attention to the Declaration of Kerry Wagaman under 37 CFR & 1.132, the FY 2003 Core Proposal of Kerry Wagaman created on September 11, 2002 entitled **Thixotropic and Hybrid Propellants containing New Families of Chemical Adduct Oxidizers and Energetics**, the paper \"Hydrogen Peroxide \u00b7 The Safe Supply and Handling of HTP\" by Dr. Martin Jeff of Solvay Interox, Inc. . and the first page of the article \"Methods for Concentration of Hydrogen Peroxide To Obtain It in Anhydrous Form\" by K. V. Titova, et al.", + "On the contrary, a review of Titova reveals that pure aqueous forms of hydrogen peroxide as well as anhydrous hydrogen peroxide are stable and safe.", + "Titova, column 2, teaches that **microimpurities of many solids, catalysts for decomposition of hydrogen peroxide, favor fast or explosive decomposition of this compound upon heating.\"", + "\" Thus, one would have reasonably expected removal of these microimpurities from hydrogen peroxide solutions would stabilize these solutions.", + "Moreover, Titova, column 2, also teaches \"safe and energy- saving methods for concentrating and obtaining anhydrous hydrogen peroxide\".", + "Jeff, page 4, also teaches **[p]ure concentrated hydrogen peroxide is quite stable. .,7", + "With regard to Appellant's other assertions that the art is unpredictable and that substantial experimental work, product characterization and data analyses were necessary before the adducts could be produced, we find insufficient evidentiary support.", + "Neither Appellant's declaration nor his FY 2003 Core Proposal provide any indication as to the lack of predictability in the art of forming anhydrous ammonium nitrate and hydrogen peroxide.", + "Further, neither of these exhibits provide probative evidence that the experimental work performed was beyond the ordinary routine skill in the art, especially taken with the Titova and Jeff articles teaching the production of anhydrous hydrogen peroxide was known.", + "Appellant's own evidence belies this argument.", + "For example, Appellant's Exhibit A teaches the existence of adducts of hydrogen peroxide and certain organic and inorganic salts was known in the art.", + "Exhibit A, p.1, Background.", + "Further, as the Examiner found, Wagaman teaches the presence of water in mixtures of hydrogen peroxide and ammonium nitrate serves as a penalty both in terms of reduced energy per unit mass, and in terms of storage and transportation mass and weight.", + "Ans. 4.", + "Accordingly, we find a preponderance of the evidence supports the Examiner's prima facie conclusion of obviousness.", + "As such, based on the totality of the record before us, we do not find reversible error in the Examiner's 35 U.S.C. 8 103(a) rejection of the appealed claims as unpatentable over Wagaman." + ] +} \ No newline at end of file diff --git a/opinion_split/2011009650_DECISION.json b/opinion_split/2011009650_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..38fe4e581292187e13f07740902831c93ae049a4 --- /dev/null +++ b/opinion_split/2011009650_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "Appellants contend that the published application of Saadat is not prior art because the rejection of claim 1 cannot be made from the disclosure of the corresponding provisional application. App. Br. 9-11; Reply Br. 1-2.", + "Appellants also contend Saadat does not disclose a media processing module unable to protect digital rights. App. Br. 11-12; Reply Br. 2-3.", + "Appellants find support for the media processing module in Figure 12, element 1210 of Appellants' Specification. App. Br. 3." + ], + "examiner_findings": [ + "Claims 1-6, 11-13, 15, and 16 stand rejected under 35 U.S.C. 8 102(e) as being anticipated by Saadat.", + "Claims 7 and 8 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over Saadat and Evans.", + "Claim 9 stands rejected under 35 U.S.C. 5 103(a) as being unpatentable over Saadat, Evans, and Levin.", + "Claim 10 stands rejected over 35 U.S.C. 103(a) as being unpatentable over Saadat and Blaney.", + "Claim 14 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Saadat and Levin.", + "The Examiner finds that page 5; page 6, sections 1, 3.3, 4; page 7, sections 7, 8, 10, 12.2; page 8, sections 14-16; page 11; and page 18, section 1.6 of the provisional application describe the limitations of claim 1. Ans. 24-30." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We affirm.", + "We find the provisional application describes the disclosed subject matter with sufficient detail to be prior art to claim 1.", + "The scope of *media processing module.\" when read in light of Appellants' Specification, encompasses the secure frame buffer, described in pages 11, 12, and 18 of the provisional application, which receives graphics from a PC and decrypted content from a conditional access module.", + "We sustain the rejection of claim I under 35 U.S.C. 8 102.", + "Appellants do not present arguments for separate patentability of claims 2-16, which fall with claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2011010720_DECISION.json b/opinion_split/2011010720_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..26627f72628886550abff19c6eea0a71b4d1cdc7 --- /dev/null +++ b/opinion_split/2011010720_DECISION.json @@ -0,0 +1,96 @@ +{ + "appellant_arguments": [ + "Patent Owner Tofasco of America, Inc. (\"Tofasco\") urges that the Examiner's decision must be affirmed.\"", + "Tofasco states that the above-noted proceeding was \"closed\" on May 31, 2006. (Reb. Br. 2:9-12.)", + "Atico argues that the pertinent feature in claim 1 of the *304 Patent, i.e., **coupling means for pivotally coupling\" caused the limitation to invoke the provisions of 35 U.S.C. $ 112, sixth paragraph? and thus required consultation of the Specification to determine what structure was covered by the limitation. (Atico's App. Br. pp. 9-11.)", + "Atico argues that the omission of the term \"means\" in connection with the **couplings\" feature of claims 46-48 and 51-53, however, removes the limitation from the purview of 8 112, sixth paragraph and thus those claims are no longer limited to only the structures, and equivalents thereof, that are disclosed in the Specification. (Id. at p. 13.)", + "Atico contends that claims 46-48 and 51-53 therefore enlarge the scope of the claims of the *304 Patent and should be rejected as violating the provisions of 35 U.S.C. S 314. (Id.)", + "Atico contends that Levine and Aycock disclose all the features of claim 25. (Atico's App. Br. 14.)", + "Atico also contends that there is adequate motivation to combine the teachings of those references. (Id. at p. 19)", + "That is also the basis of Tofasco's contention with respect to the obviousness of claim 25. (Tofasco's Resp. Br. 9:8-26.)", + "Atico contends that Levine's folding reclining chair accounts for all the features of Tofasco's claims 25 excepting the particular configuration of back frame joints that incorporate the features in connection with the inclined surfaces of the required intercrossed guiding and inclined holes of each back frame joint. (Atico's App. Br. p. 14.)", + "Atico is of the view that the *sole feature\" missing from Levine's seat joints 240 is the lower inclined surface that supports an upper surface of a back frame leg and is non- perpendicular with respect to a top or bottom plane of the seat joint. (Atico's App. Br. p. 15, 11. 6-13) (emphasis removed).", + "With respect to the requirement in claim 56 of back frame joints including intercrossed guiding and inclined holes, Atico takes the position that while Levine shows a seat back joint incorporating a *vertical aperture,' ~ i.e., one that is not inclined, \"it would have been well within the capability of an ordinarily skilled artisan and a matter of obvious design choice\" to incorporate inclined angles in that aperture so as to form the required inclined surfaces of the back frame joints of claim 56. (Atico's App. Br. 21:13-20.)" + ], + "examiner_findings": [ + "The Examiner declined to adopt any of the rejections proposed by Atico in its Third Party Request for Reexamination.", + "The Examiner permitted entry of Tofasco's 's amendment.", + "In granting entry of Tofasco's amendment and declining to reject the above-noted claims under S 314(a), the Examiner states in reference to the claimed \"means for\" phrase (Ans. p. 5, 11.6-10): [T]he phrase is modified by sufficient structure, including but not limited to the phrase \"a pair of back support coupling\" before the means term.", + "Additional descriptive terms follow the phrase.", + "In this regard, the claim is not seen to be broadened by removing the \"means\" term.", + "Therefore, this section of the proposed rejection under improper broadening has not been adopted.", + "Rather, the Examiner's refusal to adopt Atico's proposed rejection of claim 25 is premised on the position that there is insufficient reason to combine the teachings of Levine and Aycock. (Ans. 6:12-7:9.)", + "The Examiner's refusal to adopt Atico's proposed rejection of claims 46 and 51 based on the teachings of Levine and Aycock is premised on the same reasons discussed above in connection with claim 25.", + "In particular, the Examiner, like Tofasco, contends that there is inadequate reason to combine the teachings of Levine and Aycock. (Ans. p. 7; Tofasco's Resp. Br. p. 9.)" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 56 134(b)-(c) and 315(a)-(b).\"", + "We reverse the Examiner decision not to reject claims 46-48 and 51- 53 as failing to comply with 35 U.S.C. 9 314(a).", + "We reverse the Examiner's decision not to reject claims 25, 46, 51, 55, 58, and 59 over Levine* and Aycock\".", + "We affirm the Examiner's decision not to reject claim 56 based on Levine taken alone.", + "The Examiner, however, does not meaningfully explain how the phrase \"a pair of back support coupling\" appearing before the term \"means\" specifies any sufficiently definite structure of the means which performs the *pivotally coupling\" function.", + "Neither does the Examiner identify what *descriptive terms\" which follow that phrase establish defined structural characteristics of the coupling means.", + "We agree with Atico's assessment beginning on page 11, line 21 of its Appeal Brief and extending to page 12, line 18 that the structures recited in the pertinent limitation of the claims, including the phrase \"a pair of back support\" are not directed to any structure of the coupling means, but instead only describe details of the structures that are so coupled.", + "Furthermore, the term \"coupling\" itself, as used in the claims of the *304 Patent is in the form of an adjective stating simply a function of joining components together and does not set forth any sufficiently definite structure of the **coupling means. \"", + "We therefore conclude that the recitation in claim 1 of the *304 Patent directed to \"a pair of back support coupling means for pivotally coupling two bottom ends of said two back frame legs with two lower portions of two rear side crossed legs of said seat frame respectively, so as to inclinedly support said two back frame legs in position\" is drafted as a means for performing a specified function, i.e., pivotally coupling, and invokes $ 112, sixth paragraph.", + "The record does not establish that the presumption of applicability of 9 112, sixth paragraph created by the use of \"means\" has been rebutted.", + "Thus, the component providing the pivotally coupling function of claim 1 of the *304 Patent was limited to those structures described in the Specification and their equivalents.", + "However, that claim 1 of the *304 Patent was limited in that regard does not end the analysis as to whether the limitation involving \"couplings\" in claims 46-48 and 51-53 establishes the claims as non-compliant with 35 U.S.C. S 314(a).", + "Whether that **couplings** limitation also operates as a means-plus-function limitation thereby invoking S 112, sixth paragraph must form part of the analysis because if \"couplings\" does invoke 5 112, sixth paragraph, then there is no broadening of the claims based on deletion of *means** in the claims.", + "Here, with the term \"means\" stripped from the pertinent **couplings\" limitation of claims 46 and 51, the presumption arises that $ 112, sixth paragraph does not apply to that limitation.", + "Thus, the substitution of **couplings** for **coupling means\" is presumed to exclude the limitation from the ambit of 9 112, sixth paragraph such that it now encompasses more than the structures, and equivalents thereof, that are disclosed in the *304 Patent.", + "Neither the Examiner nor Tofasco takes the position that **couplings\" should be interpreted to invokes 112, sixth paragraph, or argue that this presumption is rebutted or overcome, much less directs us to evidence of record in that regard.", + "Thus, in view of the above, because claims 46-48 and 51-53 encompass coupling structures not previously covered by the *304 Patent, claims 46-48 and 51-53 are broader in scope than the claims of the *304 Patent.", + "Therefore, we reverse the Examiner's s decision not to reject claims 46-48 and 51-53 under 35 U.S.C. 5 314(a).", + "For the reasons set forth above, we enter a rejection of claims 46-48 and 51-53 as failing to comply with that statute.", + "We have reviewed the record and do not observe that either the Examiner or Tofasco dispute that all the features of claim 25 are present in Levine and Aycock.", + "We do not agree with either the Examiner or Tofasco and conclude that claim 25 is obvious in light of the teachings of 100 400 Levine and Aycock.", + "However, we have reviewed the teachings of Levine and the content of the record and are unable to discern how the seat joints 240 of Levine are reasonably viewed as also disclosing an upper inclined surface of the inclined hole which supports a lower surface of a back frame leg.", + "In any event, we agree, with Atico that the deficiencies of Levine in regard to claim 25 are made up by the teachings of Aycock.", + "We are cognizant that the depicted embodiments in Aycock incorporating its inventive cross-member supporter utilize the supporter in the context of a joint or mechanism allowing for the folding of the legs of a chair rather than in inclining those legs with respect to seat portion of the chair.", + "However, as noted above, the operation of the supporter is to transition the leg members between an inclined position and a vertical position.", + "That is a known operation also associated with a back frame joint when moving a back frame legs from a vertical to an inclined position, as is disclosed in Levine.", + "Here, one with ordinary skill in the art, who is also one of ordinary creativity, id. at 421, would have readily appreciated that the benefits provided by Aycock's supporter in evenly distributing forces along the supporter body by incorporating inclined support surfaces would also be desirable in connection with other furniture joints in which an inclined member is supported and which is subjected to force loads, such as the seat joints of Levine's foldable reclining chair.", + "We do not agree that claim 25 is non-obvious over Levine and Aycock.", + "With respect to the first theory noted above, that Levine's joint may be \"functional and operable\" does not end the obviousness inquiry.", + "Neither does the obviousness inquiry mandate that Levine identify a problem in need of solving.", + "Determining obviousness does not require that a prior art reference itself recognize inoperabilities or deficiencies of its own disclosed invention.", + "Rather, the test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art.", + "That each reference consulted in the obviousness analysis may already function adequately without expressly identified problems does not somehow preclude consideration of what the teachings, when combined, would have suggested to a skilled artisan.", + "With respect to the second theory noted above, neither the Examiner nor Tofasco adequately explains why the pertinent connection structures of Levine and Aycock are so \"disparate\" as to preclude their combination.", + "Although their respective functions are not identical, in each case, those connection structures, e.g., Levine's seat joint 240 and Aycock's supporter 20, operate to pivotally transition an elongate, tubular stem member between inclined and vertical positions.", + "That those similar operations are not exactly the same does not mean aspects of those mechanisms which accomplish those operations are \"disparate\" and may not be combined or interchanged.", + "Finally, with respect to the third theory noted above, although Aycock describes articles of foldable furniture which incorporate a connecting means 24 applied to cross-member supporter 20, we do not share the Examiner's view that such a connecting means or pin is a required element of Aycock's inventive supporter.", + "Aycock describes that loading forces are carried by supporter body 21 and that connecting means 24 *is merely for pivotally connecting stems 51, 52 with the supporter body 21.\" (Aycock col. 4, 11. 11- 14.)", + "Aycock further specifies that \"[n]early no stress will be applied to the connecting means 24.\" (Id. at col. 4, 11. 14-15.)", + "Thus, Aycock makes clear that connecting means 24 serves simply a connection function separate from the leg supporting function of the supporter body.", + "The benefit of Aycock's supporter lies in the balanced distribution of forces arising from the manner in which the supporter body carries and supports leg members on inclined surfaces (Aycock col. 3, 1. 66 - col.4, 1. 6).", + "That benefit is not disclosed as being impacted by, or involved with, connecting means 24.", + "Furthermore, we note Atico's observations that Aycock's claim 1 describes the cross-member supporter of its invention and does not recite the presence of a connecting means as part of the claimed invention. (Atico's Reb. Br. 4:1-8.)", + "That a connecting means is not an element of that claim tends to support the contention that such a connecting means is not viewed as a feature that is at all times required of Aycock's invention.", + "Moreover, even if Aycock desires a connecting means as a part of its invention, Aycock makes clear that the connecting means serves simply a connecting function.", + "The operation of Levine's sliding seat joints 240 allows for both pivoting and sliding of back frame members 420 so that they may assume the disclosed inclined and non-inclined positions, and thus does not desire to connect the back frame members 420 to the joint 240 via a connecting means.", + "As discussed above, in Aycock's supporter 20, the force distribution does not arise from the presence of the connecting means 24 but from the structure and operation of the supporter body 21.", + "It is not necessary that the inventions of the references must be physically combined, without any change, to render obvious the invention under review.", + "In light of the teachings of the references, one of ordinary skill and creativity in the art would have realized that the force distribution features of Aycock's supporter body 21, i.e., an intercrossed inclined supporting hole and vertical connecting hole forming inclined support surfaces, may be implemented into Levine's seat joints 240 without requiring the presence of an undesired connecting means.", + "We have reviewed the record before us and conclude that Tofasco's 's claim 25 would have been obvious in light of the combined teachings of Levine and Aycock.", + "We therefore reverse the Examiner's decision not to reject claim 25 under 35 U.S.C. 9 103(a) as unpatentable over Levine and Aycock and enter such a rejection for the reasons set forth above.", + "We agree with Atico that the combined teachings of Levine and Aycock show all the features of the foldable furniture required by claims 46 and 51.", + "We also agree, for essentially the same reasons discussed above in conjunction with claim 25, that there is adequate reason to combine the teachings of Aycock and Levine.", + "Accordingly, we reverse the Examiner's s decision not to reject claims 46 and 51 under 35 U.S.C. 9 103(a) as unpatentable over Levine and Aycock and enter a rejection of claims 46 and 51 on that basis.", + "Based on our review, Aycock discloses a cross-supporter member, such as that of its Figure 2 (reproduced supra), which reasonably suggests to one of ordinary skill in the art that intercrossing of vertical connecting holes 221 or 231 and the inclined supporting holes 222 or 232 produce an opening in supporter body 21 which satisfies the recited limitation.", + "In view of the teachings of Levine and Aycock taken together, we conclude that claim 55 is obvious.", + "We therefore reverse the Examiner's decision not to reject claim 55 under 35 U.S.C. 9 103(a) as unpatentable over Levine and Aycock and enter a rejection of claim 55 on that basis.", + "The limitations added by claims 58 and 59 limitations are similar in nature to those already discussed above in association with claim 25.", + "For essentially the same reasons given with respect to claim 25, we conclude that the record establishes that claims 58 and 59 are obvious in light of the teachings of Levine and Aycock.", + "We therefore reverse the Examiner's decision not to reject claims 58 and 59 under 35 U.S.C. 5 103(a) as unpatentable over Levine and Aycock and enter a rejection of claim 55 on that ground.", + "The issue before us is whether the Examiner incorrectly declined to adopt Atico's proposed rejection of claim 56 under 35 U.S.C. $ 103(a) of Levine taken alone.", + "We do not agree with Atico's position.", + "Atico does not meaningfully explain why, based simply on the teachings of Levine, it would have been a *matter of design choice\" for a person of ordinary skill in the art to modify non-inclined components of Levine's seat back joints so as to be inclined.", + "Atico's statement in that regard is conclusory and does not constitute the articulated reasoning with rational underpinnings that is necessary to support a conclusion of obviousness.", + "Atico also belatedly attempts to propose a new ground of rejection of claim 56 over Levine and Aycock. (Atico's App. Br. p. 21, fn. 6.)", + "Atico had adequate opportunity during inter partes reexamination of the *304 patent to propose rejections to claim 56.", + "It is too late in an appeal brief to propose a new rejection.", + "For the foregoing reasons, we affirm the Examiner's decision not to adopt Atico's proposed rejection of claim 56 as unpatentable over Levine taken alone." + ] +} \ No newline at end of file diff --git a/opinion_split/2011010788_DECISION.json b/opinion_split/2011010788_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c72d2a7875f0668869f7fe6cf7f7f551e3836a50 --- /dev/null +++ b/opinion_split/2011010788_DECISION.json @@ -0,0 +1,66 @@ +{ + "appellant_arguments": [ + "Appellants' Declaration Under 37 C.F.R. 5 1.131 As a preliminary matter, Appellants argue that neither Hikita nor Nishijima are prior art against the claimed invention based on the Declaration Under 37 C.F.R. S 1.131 filed April 27, 2009.2", + "In response, Appellants contend \"[the Declaration identifies features of a transistor, which correlate to the features of the transistor as recited in the claims.\"", + "Specifically, Appellants note the Declaration describes Exhibit A as *a plot of drain current as a function of drain-to-source voltage for several transistors having gate-to-source voltage of -3 Volts, where the data represented by solid triangles corresponds to a transistor as correlated to the claims.\"", + "Moreover, Appellants note the Declaration states that this data was collected prior to Hikita's earliest effective date.", + "Appellants argue that these measurements could not have been taken without reduction to practice of the transistor.", + "Appellants state the experimental data was collected prior to August 1, 2005, for a transistor having source, gate and drain electrodes formed over a gallium nitride material region with a source field plate comprising a conductive material electrically connected to the source electrode.", + "Appellants argue Hikita fails to disclose a source field plate comprising a conductive material and being electrically connected to the source electrode.", + "Appellants note Hikita describes *electric flux lines from the drain stream toward the field plate electrode above the gate electrode and toward the conductive substrate below the gate electrode, thereby reducing electric field concentration on the gate electrode edge. \"", + "Appellants also argue Hikita does not disclose the source field plate 110 \"as described in the present application and required by the claims.\"", + "Appellants assert the present application describes the source field plate 29 as extending laterally in the direction of the gate electrode 18 and connected to source electrode 14 via a vertically conductive pathway.", + "Appellants argue Nishijima fails to disclose a source field plate because the source lead 24 is *an interconnect between source electrode 17 and conductive film 27,\" wherein the interconnect is electrically isolated from a carrier supplying layer 14.", + "Appellants note, in order to isolate the interconnect, a dielectric film 20 covers the source and drain electrodes as well as the top and side surfaces and upper corners of the gallium nitride semiconductor layer 15.", + "App. Br. 8, *Nishijijima discloses source lead 24, which is an interconnect between source electrode 17 and conductive film 27,", + "Id. at 8-9, referring to Nishijima, [0050] and Fig. 1B." + ], + "examiner_findings": [ + "THE ISSUES The Examiner maintains, and Appellants appeal from, the following rejections:", + "1) Claims 1-8, 10-15, and 19 under 35 U.S.C. 5 102(e) as anticipated by Hikita' (Ans. 3-5);", + "2) Claims 1, 2 and 6-9 under 35 U.S.C. 8 102(e) as anticipated by Nishijima* (id. at 5-6);", + "3) Claim 16 under 35 U.S.C. S 103(a) as unpatentable over Hikita in view of Sheppards and Budes (id. at 6-7);", + "4) Claims 20 and 21 under 35 U.S.C. . 103(a) as unpatentable over Hikita in view of Parikh? (id. at 7-8); and", + "5) Claims 22 and 23 under 35 U.S.C. . 103(a) as unpatentable over Hikita in view of Paidis (id. at 8).", + "The Examiner nonetheless concludes the Declaration, in character and weight, is insufficient to establish a reduction to practice prior to August 1, 2005, the earliest effective filing date of Hikita and Nishijima.", + "In particular, the Examiner finds the Declaration fails to provide any exhibit or document dated prior to August 1, 2005.", + "The Examiner presumes Exhibit A was produced after this effective date, since Appellants do not state it was produced prior to this date.", + "In addition, the Examiner finds the Exhibit *merely shows measurements of a certain transistor but does not provide sufficient information as to what structural elements are included in that transistor.\"", + "The prior art rejections based on Hikita The Examiner finds Hikita discloses a transistor comprising a gallium nitride material region, a source electrode, a gate electrode, a drain electrode, and a \"source field plate comprising a conductive material and being electrically connected to the source electrode.\"", + "In particular, the Examiner finds that Hikita expressly refers to second source electrode 110 as a \"field plate electrode\" (Hikita, I 0042); discloses that source electrode 106 is *electrically connected\" to this field plate electrode (id., [0049]); and is made of conducting materials (id., [0057]).", + "The prior art rejections based on Nishijima The Examiner finds Nishijima discloses a transistor comprising a gallium nitride material region, a source electrode, a gate electrode, a drain electrode, and \"a source field plate comprising a conductive material and being electrically connected to the source electrode. \"", + "The Examiner further finds Nishijima's source lead 24 is made of the same material and has the same structure as the claimed source field plate." + ], + "ptab_opinion": [ + "In accordance with 37 CFR 6 41.37(c)(iv)(2010), we select claim I to decide the appeal as to each of the grounds of rejection.", + "Dependent claims 2-16 and 19-23 stand or fall with claim 1.", + "In the principal Brief, Appellants merely assert that the Declaration establishes that Hikita and Nishijima do not constitute prior art without directing our attention to any section of the Declaration supporting this assertion.", + "In addition, Appellants fail to substantively argue the merits of the Declaration.", + "Thus, the issue before us with regard to Appellants\" Rule 131 Declaration is whether the Examiner erred in determining the Declaration deficient as proof of reduction to practice of the claimed invention prior to the earliest effective date of Hikita and Nishijima.", + "We answer this question in the negative and likewise conclude Appellants' Rule 131 Declaration is insufficient as proof of reduction to practice prior to Hikita and Nishijima.", + "However, it is Appellants' burden to decipher Rule 131 declaration evidence and explain its content.", + "Here, Appellants have failed to present proof that the transistor described and tested therein actually existed prior to the effective date of Hikita.", + "However, Appellants fail to provide any original documentation supporting this statement or attempt to explain the absence of such evidentiary proof.", + "Without such documentation, Appellants' statement, even taken with Exhibit A, amounts to a mere assertion that the claimed invention existed and was tested prior to August 1, 2005.", + "As such, we agree with the Examiner that the character and weight of the showing in the Declaration is insufficient to establish reduction to practice prior to August 1, 2005.", + "limitations, here the single exhibit directly shows none of the claimed features.", + "Accordingly, for the reasons given above, we hold the Declaration to be insufficient as a matter of law to establish actual reduction to practice of the claimed invention prior to the effective date of Hikita and Nishijima.", + "Appellants' arguments are not persuasive of reversible error in the Examiner's findings as to Hikita.", + "Initially, Appellants' arguments are not based on limitations appearing in the claims.", + "As to the source field plate, claim 1 merely requires this plate comprise a conductive material and be electrically connected to the source electrode.", + "The Examiner's finding that Hikita has a source field plate comprising a conductive material and being electrically connected to the source electrode is in as complete detail as claim 1 requires.", + "We decline to read additional limitations from Appellants' disclosure into the claims.", + "Moreover, although Appellants direct our attention to Hikita's description of reducing electric field concentration on the gate electrode edge as an indication that Hikita's 's source field plate does not read on claim 1's source field plate (App. Br. 7), we note this disclosure merely demonstrates Hikita' 's source field plate provides the same enhanced breakdown voltage as Appellants' source field plate.", + "Therefore we will sustain the Examiner's rejection of claims 1-8, 10- 15, and 19 under 35 U.S.C. 8 102(e) as being anticipated by Hikita.", + "Appellants' arguments fail to persuade us of reversible error in the Examiner's s findings regarding Nishijima.", + "Initially, we note Appellants' arguments again are not based on limitations appearing in claim 1.", + "Claim 1 requires \"a source field plate comprising a conductive material and being electrically connected to the source electrode.\"", + "\" Further, Appellants\" argument concedes Nishijima's source lead 24 is electrically connected to the source electrode, just as the Examiner finds.", + "Though Appellants point to Nishijima's disclosure that the source lead is electrically isolated from other components, Appellants fail to direct our attention to any limitation of claim 1 which excludes Nishijima's source lead.", + "In fact, the Examiner's finding that Nishijima has a source field plate comprising a conductive material and being electrically connected to the source electrode is in as complete detail as claim 1 requires.", + "We decline to read additional limitations from Appellants\" disclosure into the claims.", + "It follows therefore, we will sustain the Examiner's rejection of claims 1-2 and 6-9 under 35 U.S.C. $ 102(e) as being anticipated by Nishijima.", + "The remaining obviousness rejections based on a combination of Hikita and Sheppard, Bude, Parikh, and Paidi Appellants do not direct us to any error in the Examiner's findings of fact or conclusions of law and therefore our decision as to the Examiner's 's findings and anticipation rejection as to Hikita apply with equal force here.", + "Accordingly, we will sustain the Examiner's rejections of claims 16, and 20-23 under 35 U.S.C. 8 103(a) as unpatentable over Hikita in combination with Sheppard, Bude, Parikh, and Paidi for the reasons set forth in the Examiner's Answer." + ] +} \ No newline at end of file diff --git a/opinion_split/2011012346_DECISION.json b/opinion_split/2011012346_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f835219dd25b5a9d12bfc2013e801eba7db0a18d --- /dev/null +++ b/opinion_split/2011012346_DECISION.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "The Examiner finds that Aigner teaches all of the limitations of independent claim 17, including selecting a set of queues for the queue network from a larger set of pre-programmed queues and instantiating the queue network by creating flow paths between the queues (ID 0036-0037; Guided procedure templates, which are pre- programmed, may be employed to create a new workflow in a process modeling tool.", + "The templates include pre-configured work procedures that reflect best practices of achieving a work objective.", + "An example of reusing a template is given in CIO 0098).", + "The Examiner finds that Aigner does not disclose deploying the queue network to individual ones of a plurality of processing nodes comprising a processing unit and coupled data storage, and connected to a first computing appliance by a digital network, and does not **explicitly specify\" that the queues comprise programmed processes for moving defined work objects sequentially from queue input to queue output, and that the flow paths comprise software mechanisms for moving defined work objects from an output of one queue to an input of another queue.", + "The Examiner finds, however, that Notani teaches designing an inter-enterprise workflow comprising various activities 70-77, the outputs from the activities being fed as input via flow paths to other activities.", + "The Examiner also finds that MacKinnon discloses the concept of flows that are the result of a decomposition of a complex or monolithic data processing problem, with the flows being distributable across a network cluster of commodity computers.", + "The Examiner concludes that, at the time the invention was made, it would have been obvious to one of ordinary skill in the art to modify Aigner's method by integrating Notani's s design of inter-enterprise workflows to facilitate enterprise-to-enterprise collaboration \"to facilitate enterprise-to-enterprise (E2E) collaboration\" (Ans. 4), and to integrate MacKinnon's concept of the distribution of flows, to facilitate scaling and enable fault-tolerant computing \"to facilitate scaling and enable fault- tolerant computing\" (Id. at 5).", + "The Examiner finds that paragraphs [0036] and [0037] of Aigner teach the creation of new business and ad hoc collaborative workflows.", + "Guided procedure templates m[aly include pre- configured work procedures that reflect best practices of achieving a work objective that is part of a larger cross- functional application scenario.", + "Such work procedures may include contributions from several people, creation of multiple work deliverables, and milestones/phases.", + "The Examiner further finds that paragraph [0098] of Aigner discloses re-using a pre-programmed guided procedure templates including pre- configured work procedures that reflect best practices of achieving a work objective." + ], + "ptab_opinion": [ + "Wayne Bevan (Appellant) appeals under 35 U.S.C. \u25cf 134 from the Examiner's s decision finally rejecting claims 17, 18, and 26-31.", + "We have jurisdiction under 35 U.S.C. .5 6(b).", + "We REVERSE.", + "Claim 17, the sole pending independent claim, represents the subject matter on appeal and is reproduced below.", + "17. A method for configuring and deploying a pre- defined queue network comprising the acts of: (a) using an object modeling tool executing from a non- transitory machine-readable medium on a first computing appliance, selecting a set of queues for the queue network from a larger set of pre-programmed queues and instantiating the queue network by creating flow paths between the queues, the queues comprising programmed processes for moving defined work objects sequentially from queue input to queue output, and the flow paths comprising software mechanisms for moving defined work objects from queue output of one queue to queue input of another; (b) deploying the queue network defined in step (a) to individual ones of a plurality of processing nodes, each processing node comprising a processing unit and coupled data storage, the processor nodes connected to the first computing appliance by a digital network.", + "Claims 17, 18 and 26-31 stand rejected under 35 U.S.C. .5 103(a) as unpatentable over Aigner (US 2007/0033088 A1; pub. Feb. 8, 2007), Notani (US 6,442,528 B1; iss. Aug. 27, 2002), and MacKinnon (US 2006/0282474 A1; pub. Dec. 14, 2006).", + "Ans. 3.", + "Ans. 3-4.", + "Ans. 4.", + "Id. (citing Notani, col. 13, 11. 21- 39; and Fig. 10).", + "Id. at 4-5 (citing MacKinnon, para. [0036]).", + "Ans. 9.", + "Id. at 3-4.", + "We are not persuaded that Aigner teaches \"selecting a set of queues for the queue network from a larger set of pre-programmed queues\" as recited in claim 17.", + "Aigner's s paragraph [0036] teaches linking objects and workflow together, and using an object modeling tool to build the components of applications to implement new enterprise management functions.", + "Aigner's s paragraph [0037] teaches a process modeling tool including guided procedure templates with pre-configured work procedures reflecting best practices of achieving a work objective that is part of a larger cross-functional application scenario.", + "Aigner's s paragraph [0098] teaches that a template can describe a specific workflow, with a pattern having certain functions to be undertaken.", + "Nowhere does the Examiner explain how Aigner* s creation of a new business and ad hoc collaborative workflow teaches the claimed \"selecting a set of queues for the queue network from a larger set of pre-programmed queues.\"", + "~ The Examiner therefore has not established prima facie obviousness of claim 17 and we do not sustain the rejection of claims 17, 18, and 26-31." + ] +} \ No newline at end of file diff --git a/opinion_split/2011012476_DECISION.json b/opinion_split/2011012476_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..92f29e9c15d6f009db72cd5b71dfdfd124f89f89 --- /dev/null +++ b/opinion_split/2011012476_DECISION.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [ + "Appellant concedes that the Hatch reference discloses two of three \"means\" set forth in claim 1 that distinguish the claimed subject matter from the prior art.", + "Specifically, Appellant concedes that Hatch discloses: (i) means for adjusting the rate of main liquid flow through said upper tube; and, (ii) means for adjusting the inflow rate of refill liquid into said chemical dispensing chamber. Brief at page 17, lines 3 through 21.", + "Appellant challenges the Examiner's determination that element (iii) would have been obvious from the disclosure of Hatch.", + "Finally, Appellant argues in his Reply Brief at pages 5 and 6 that because Appellant's device requires control of both the incoming water into the chemical dispensing chamber and control of the outflow from the chemical dispensing chamber into the upper tube and main liquid flow the use in Appellant's claim of means for adjusting both the inflow and outflow is not as the Examiner has argued \"redundant.\"" + ], + "examiner_findings": [ + "Claims 1 through 5 and 7 through 18 stand rejected as being unpatentable under 35 U.S.C. 5 103(a) as the claimed subject matter would have been obvious at the time Appellant made his invention from the disclosure of Brandreth, considered with Hatch.", + "The Examiner relies on the disclosure in Hatch of rotatable end caps 42 that can be rotated to cover a number of apertures 26 in upstream (lower) end cap 24 as a means for controlling the inflow water into the containment chamber 20 of Hatch and directs our attention to column 7, lines 32 through 63 and Figs. 8 through 10 and 14 of Hatch in support of these findings.", + "Additionally, the Examiner relies on the disclosure in Hatch of an adjustable ring 34 that may be rotated to cover or uncover metering slots 30 which allow water to bypass the chemical 22 in containment chamber 20.", + "The Examiner directs us to column 4, lines 3 through 23; column 6, lines 29 through 47 and Figs. 5 through 7 and 11 of Hatch in support of these findings.", + "The Examiner observes that the rotatable end caps and ring are independently controllable from each other.", + "The Examiner concludes that while Hatch does not teach that a rotatable end cap may be located on both the downstream (upper) and upstream (lower) end caps it would have been obvious to do so for \"the purpose of providing structure to adjust the flow rate into and out of the chemical dispensing chamber and the flow rate through bypass to optimize the rate of dispensing the chemical.\" Answer at page 7.", + "The Examiner also agrees with Appellant that including rotatable end caps on both ends of the containment vessel of Hatch would be redundant but argues that they would also be redundant in the apparatus of Brandreth and therefore amount to \"the mere duplication of parts\" that would not produce any new or \"unexpected\" results.", + "The Examiner has conceded that Appellant's claimed means-plus-function apparatus limitation (iii) is neither shown nor suggested by Hatch." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6.", + "We REVERSE.", + "The issue before us is a question of law, specifically, whether the subject matter claimed by Appellant in Claim 1' would have been obvious to a person of ordinary skill in the art at the time Appellant made his invention.", + "The ultimate legal conclusion of obviousness is based on the underlying facts in each specific case including the scope and content of the prior art, the differences between the claimed invention and the prior art and the level of ordinary skill in the relevant art.", + "Accordingly, the narrow question before us to decide is whether Hatch teaches or suggests Appellant's claimed element (iii), that is, means for adjusting the outflow rate of said saturated chemical solution into said upper tube and said main liquid flow, in an adjustable chemical dispensing device as claimed or equivalents thereof.", + "By choosing to use \"means-plus-function\" limitations in his claims invoking 35 U.S.C. $112, 962, Appellant has chosen to limit the claimed \"means-plus-function\" limitations to the disclosed structure in the specification and equivalents thereof. In re Donaldson Co., 16 F.3d 1189, (Fed. Cir. 1994)(en banc).", + "We find the Examiner's stated rationale and conclusion evidences a misunderstanding of the law with respect to \"means-plus-function\" limitations.", + "The Examiner carries the initial burden of proof for showing that the prior art structure is the same as or equivalent to the structure described in the specification that has been identified as corresponding to the claimed means-plus-function.", + "Thus, it was incumbent on the Examiner to show the structure from Hatch on which he relied was equivalent to the structure described in the specification identified as corresponding to the claimed means-plus- function.", + "This the Examiner has not done.", + "The Examiner' s burden to make out a prima facie case of obviousness was not to explain why it would have been obvious to modify the apparatus of Hatch so the means disclosed therein as proposed to be modified would meet the means claimed by Appellant in claim 1.", + "Rather, the Examiner's burden was to establish equivalence between the means disclosed in Hatch and the means in claim 1.", + "In order to show the structure in Hatch on which the Examiner has relied is the \"equivalent\" of the means-plus-function\" element claimed by Appellant the Examiner had to establish by reference to factual findings in the record, for example, that: the element 42 from Hatch performs the same function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification; or, the hypothetical person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in Appellant's specification; or there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification.", + "Thus, the means 42 on which the Examiner relies in Hatch does not perform the same function as that specified in claim 1 in substantially the same way, and does not produce substantially the same result as the corresponding element disclosed in the specification.", + "Neither has the Examiner shown that element 42 disclosed in Hatch would have been recognized by the hypothetical person of ordinary skill in the art as being interchangeable with element (iii) in claim 1 and disclosed in Appellant's s specification nor has the Examiner provided evidence which establishes there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification.", + "~ We agree to the extent we consider Appellant's s argument establishes that the Examiner has failed to make out a case of equivalence between the claimed means in claim 1 and the rotatable end caps 42 in Hatch.", + "For all the above reasons we find the Examiner has failed to make out a prima facie case of obviousness with respect to the subject matter claimed by Appellant in claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2011012788_DECISION.json b/opinion_split/2011012788_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ccfad45ddbe6ffa38f31908a31305778dbd9d136 --- /dev/null +++ b/opinion_split/2011012788_DECISION.json @@ -0,0 +1,56 @@ +{ + "appellant_arguments": [ + "\"Wang modified by Smith does not teach or suggest a codebook having a nested property.\" App. Br. 11-13.", + "\"The Examiner neglected the feature that the claimed codebook comprises the first and the second precoding matrices when determining the relationship between the first and the second precoding matrices.\" App. Br. 13-14.", + "\"Modification of Wang by Smith is not predictable to one of ordinary skill in the art.\" App. Br. 14-15.", + "Appellants argue \"the two individual precoding matrixes cited from different prior art, Wang and Smith, that have no relationship with each other and are independent of each other, cannot be construed to teach or suggest the codebook of independent claims 45, 51, 53 and 59 having the nested property.\" App. Br. 12-13." + ], + "examiner_findings": [ + "Claims 45-50 and 53-58 stand rejected under 35 U.S.C. S 103(a) as being unpatentable over Wang and Smith. Ans. 4-7.", + "Claims 51, 52, 59, and 60 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Wang, Smith, and Kadous. Ans. 7-8.", + "The Examiner responds by detailing the construction of the resultant precoding matrices Uki and Uk2 and explaining *matrices Uki and Uk2 correspond to the first and second precoding matrices with multiplexing rates 2 and 4 respectively. Ans. 9-10.", + "The first and fourth column of the second precoding matrix UK2 contains all column vectors of the first precoding matrix Ukl. ~ Id. at 10.", + "Therefore the respective precoding matrices of Wang and Smith exhibit the relationship required by the disputed limitation. See id.", + "As found by the Examiner, Wang discloses a DFT matrix dimension Mt X L where Mt is the number of transmit antennas and L is the multiplexing rate. Ans. 5, 12; citing Wang, I 0046.", + "Thus, the dimensionality of the matrix is dictated by the number of antennas and the multiplexing rate used by the system.", + "Wang further provides an example teaching a 4 X 2 DFT matrix producing a 4 X 2 precoding matrix i.e., 4 antennas with a multiplexing rate of 2. Ans. 5, 9; citing Wang, I 0047.", + "Smith also teaches by way of example a 4 X 4 DFT matrix producing a 4 X 4 precoding matrix, i.e., 4 antennas with a multiplexing rate of 4. Ans. 6, 10; citing Smith col. 15, 11. 19-40." + ], + "ptab_opinion": [ + "We have jurisdiction over the pending claims under 35 U.S.C. S 6(b).", + "We affirm.", + "Therefore, based on Appellants\" arguments, we decide the appeal of claims 45-60 based on claim 45 alone.", + "We have reviewed the Examiner's 's rejections in light of Appellants? arguments that the Examiner has erred.", + "We disagree with Appellants' contentions.", + "We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 4-8) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 8-12) and concur with the conclusions reached by the Examiner,", + "We highlight the following for emphasis.", + "We agree with the Examiner and find Appellants' arguments in support of contention 1 unpersuasive of Examiner error.", + "In particular, Appellants? argument that the combination of Wang and Smith \"cannot be construed to teach or suggest the codebook of independent claims 45, 51, 53 and 59 having the nested property stated above\" is not commensurate in scope with claim 45, which make no mention of a nested property. App. Br. 13.", + "Claim 45 only requires a codebook including (at least, but not limited to) first and second precoding matrices, the columns of the first being a subset of the second precoding matrix, i.e., the first is a submatrix of the second.", + "Further, claim 45's second precoding matrix must also have a multiplexing rate greater than a multiplexing rate of the first which in effect means the second precoding matrix has more columns than the first precoding matrix.", + "Stated another way, according to claim 45, the first precoding matrix is composed of some, but not all, of the columns of the second precoding matrix.", + "However, we note there is no requirement for a plurality of first and second precoding matrices and, because the disputed limitation of claim 45 is open ended, there is no requirement for the codebook to include only precoding matrices having the argued nested property.", + "Effectively all that claim 45 requires is for a first precoding matrix to be a submatrix of a precoding second matrix, including at least one but not all columns of the second precoding matrix.", + "Wang's 4 X 2 precoding matrix satisfies the disputed **nested property\" with respect to Smith's 4 X 4 precoding matrix.", + "That is, Wang's 4 X 2 precoding matrix for a first multiplexing rate of 2 and Smith's 4 X 4 precoding matrix for a second multiplexing rate of 4, satisfy the condition that all column vectors of the Wang's precoding matrix are included as a part of column vectors of Smith's precoding matrix, with Smith's 's multiplexing rate of 4 being greater than Wang's multiplexing rate of 2.", + "Therefore, because the combination of Wang and Smith teaches DFT matrices producing precoding matrices having the disputed relationship, we agree with the Examiner the combination of Wang and Smith teaches or suggests the disputed limitation of claim 45.", + "Furthermore, while we agree with the Examiner for the reasons supra, we note in passing, Smith's 4 X 4 DFT matrix is comprised of multiple 4 X n (0 < n < 4) submatrices, thereby teaching or suggesting first and second precoding matrices formed by those submatrices that also satisfy the disputed limitation of claim 45.", + "We are not persuaded of error by Appellants' argument *that there is no teaching, suggestion or motivation in Wang and Smith such that the precoding matrix of Smith can be incorporated with the precoding matrix of Wang to form the codebook of independent claims 45, 51, 53 and 59.\" App. Br. 13.", + "We find the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness.", + "We further find the Examiner's conclusions of obviousness are clearly articulated and are based on detailed factual findings that are supported by the references of record.", + "In contrast, Appellants fail to provide sufficient evidence or argument that the combination yields anything other than predictable results.", + "We are also not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner was \"uniquely challenging or difficult for one of ordinary skill in the art\" (see Leapfrog Enters., Inc. 12 Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).", + "Therefore, we find the Examiner's proffered combination of familiar prior art elements according to their established functions would have conveyed a reasonable expectation of success to a person of ordinary skill at the time of the invention.", + "We are also not persuaded of error by Appellants' contention 2 arguing the combination of Wand and Smith fails to teach or suggest a codebook including both first and second precoding matrices. App. Br. 13- 14.", + "Instead, we agree with the Examiner Wang describes a codebook storing a plurality of unitary matrices such that the combination of Wang and Smith teaches or suggests the disputed limitation.", + "Furthermore, we note Appellants' Specification discloses *The pre-coding matrix may be stored in the form of a so-called codebook (or some equivalent type of precoding scheme, etc.) within a memory (or other type of storage device) of the transmitting side and the receiving side.\" Spec. 14, 11. 1-3.", + "Therefore, giving the term \"codebook\" its broadest reasonable interpretation consistent with the Specification\", a codebook comprising first and second precoding matrices is reasonably interpreted to include a memory storing those matrices.", + "Therefore, we further find storing the matrices of Wang and Smith in a memory such as, for example, Wang's memory 708, 932 or 972 or Smith's memory device (Smith, col. 17, I. 54) also teaches or suggests a codebook including first and second matrices.", + "Finally, we are not persuaded of error by Appellants' contention 3 arguing *it is not predictable to find the appropriate DFT matrix among various possible DFT matrices to satisfy the nested property with a predetermined DFT matrix, and to incorporate the found DFT matrix into the codebook having the predetermined DFT matrix, as claimed in the present application.\" App. Br. 15.", + "As explained supra, the dimensionality of the precoding matrix is dictated by the number of antennas and the multiplexing rate used by the system.", + "In contrast, Appellants provide insufficient evidence or argument to persuade us using Wang's 4 X 2 precoding matrix and Smith's 4 X 4 precoding matrix for respective multiplexing rates would yield unpredictable results or that the combination would not have a reasonable expectation of success.", + "Therefore, for the reasons supra, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the rejections of independent claim 45 and, for the same reasons, independent claim 53 under 35 U.S.C. & 103(a) over Wang and Smith together with the rejections of dependent claims 46-50 and 54-58 not separately argued.", + "For the same reasons, we further sustain the rejection of independent claims 51 and 59 under 35 U.S.C. S 103(a) over Wang, Smith, and Kadous together with the rejection of dependent claims 52 and 60 not separately argued." + ] +} \ No newline at end of file diff --git a/opinion_split/2011013544_DECISION.json b/opinion_split/2011013544_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..82e81aeee05648e54f026e663b539bf43a42a643 --- /dev/null +++ b/opinion_split/2011013544_DECISION.json @@ -0,0 +1,22 @@ +{ + "appellant_arguments": [ + "Appellants argue that Sheldon fails to teach \"creating\" a plurality of single touch buttons, as called for by each of independent claims 1, 11, and 16. App. Br. 12.", + "Rather, according to Appellants, Sheldon teaches \"the display of pre[-]existing information as a result of a user selecting an e- mail.' \" Reply Br. 2." + ], + "examiner_findings": [ + "The Examiner found that, \"[The claims do not specifically define the limitation \u00b7 \u00b7 \u00b7 *creating a plurality of single touch buttons. \", Ans. 11.", + "Thus, according to the Examiner, \"a user selecting emails to view and selecting specific operations to be performed on that email can be read on the claim limitation 'receiving selections from a user for e-mail management preferences. \" Id.", + "Thus, the Examiner found that because a plurality of buttons appear when a user in the e-mail management system of Sheldon chooses a particular e-mail from the inbox, Sheldon teaches creating a plurality of single touch buttons, as called for by independent claims 1, 11, and 16. Ans. 11-12 (citing to Sheldon, paras. [0034], [0035], [0072], [0073], and [0102] and figs. 7, 14, and 15).", + "Specifically, the Examiner notes the appearance of buttons \"reply,\" *reply to all\" and \"forward\" after the user has selected a particular e-mail message for viewing. See Ans. 11; Compare Figures 7a, 7b with Figures 14a, 14b of Sheldon." + ], + "ptab_opinion": [ + "At the outset, we agree with Appellants that \"the claims do specifically define the limitation of *creating a plurality of single touch buttons. \" Reply Br. 2.", + "Furthermore, an ordinary and customary meaning of the term **create** is *to make or bring into existence something new.'', Merriam Webster's 's Collegiate Dictionary (10\" Ed. 1997).", + "Such an interpretation is consistent with Appellants' Specification where a user selects e-mail management settings (preferences) from a quick-settings menu 404, 700 and new single-touch buttons 504, 506 for storing the chosen settings are generated. Spec. 16, para [0072]; Spec. 19, para. [0086]; and figs. 5, 7, and 11.", + "In contrast, when a user in the e-mail management system of Sheldon chooses a particular e-mail from the inbox, the plurality of buttons that appear are not created by the user, as the Examiner proposes, but rather are merely displayed as part of a previously programmed GUI.", + "In other words, when the user selects an e-mail from Sheldon's inbox, the buttons displayed in response to the user's selection are part of a *pre- existing GUL\" Reply Br. 2 (emphasis added).", + "We thus agree with Appellants that Sheldon teaches *the display of a pre-defined button in response to a user selecting another pre-defined button.\" \" Id. at 4.", + "As such, for the foregoing reasons, Sheldon fails to teach \"creating\" a plurality of single touch buttons, as called for by each of independent claims 1, 11, and 16.", + "We thus do not sustain the rejection of findependent claims 1, 11, and 16 and their respective dependent claims 2, 5-10, 12, 15, 17, and 20 under 35 U.S.C. 8 102(b) as anticipated by Sheldon." + ] +} \ No newline at end of file diff --git a/opinion_split/2011013577_DECISION.json b/opinion_split/2011013577_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1333359a4d21a2343cc241b2bfc1aedce015f2f4 --- /dev/null +++ b/opinion_split/2011013577_DECISION.json @@ -0,0 +1,43 @@ +{ + "appellant_arguments": [ + "Appellants' invention relates to identifying and recovering from resource leaks on compute nodes of a parallel computing system.", + "Information about system resources available on a compute node in a clean state is stored in a resource monitor that compares the current resource availability to the clean state. See generally Abstract.", + "Upon finding a resource leak, the resource monitor contacts a global resource manager to remove the resource leak. Id.", + "1. A method for correcting resource leaks that occur on a parallel computing system having a plurality of compute nodes, comprising: determining a first resource availability level of a first compute node, of the plurality of compute nodes, in a clean state characterized by an absence of resource leaks on the first compute node; executing one or more computing tasks on the first compute node; determining a second resource availability level of the first compute node; comparing the first resource availability level to the second resource availability level to determine whether a resource leak has occurred on the first compute node; upon determining that a resource leak has occurred: removing the first compute node from a pool of compute nodes available to perform computing tasks, and invoking a corrective action to restore the resource availability level of the first compute node to the clean state; and after the clean state is restored on the first compute node, returning the first compute node to the pool of available compute nodes.", + "Appellants initially contend, with respect to the Examiner's s 35 U.S.C. \u25cf 103(a) rejection of representative independent claim 1, that the Examiner erred in interpreting Sridharan as teaching or suggesting the claimed limitation of \"determining a first resource availability level of a first compute node, of the plurality of compute nodes, in a clean state characterized by an absence of resource leaks on the first compute node. ++1 I", + "According to Appellants, while Sridharan teaches firing a leak trigger in response to resource levels that exceed a threshold amount of resources, there is no teaching that equates the threshold to a \"clean state\" as claimed. App. Br. 13 (citing Sridharan, I [0023]).", + "In Appellants' view, Sridharan may teach using memory amount thresholds in detecting resource leaks, but there is no teaching or suggestion \"of measuring a clean state of resource availability on a compute node where no resource leaks are present.\" Id.", + "According to Appellants, while Anerousis teaches monitoring of the health of various instances of an application server, Anerousis discloses that a compute node and an application server are separate and distinct elements, i.e., a compute node is a hardware element that executes the application server software. App. Br. 14.", + "Appellants have provided no separate arguments for the patentability of these claims but instead rely on arguments asserted with respect to representative independent claim 1, which arguments we found unpersuasive as discussed supra." + ], + "examiner_findings": [ + "Anerousis US 2006/0048017 A1 Mar. 2, 2006", + "Findeisen US 2006/0173877 A1 Aug. 3, 2006", + "Sridharan US 2007/0271418 A1 Nov. 22, 2007", + "Claims 1, 3-5, 7, 8, 10-12, 14, 15, 17-19, and 21-24 stand rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over Sridharan in view of Anerousis.", + "Claims 2, 6, 9, 13, 16, and 20 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Sridharan in view of Anerousis and Findeisen.", + "The Examiner's Answer relies on the following prior art references:", + "As explained by the Examiner, Sridharan teaches determining if a resource leak has occurred on a compute node by comparing available resource levels to a threshold level of resource availability. Ans. 13-14 (citing Sridharan, II [0022-0024]).", + "As pointed out by the Examiner, however, Anerousis teaches monitoring the health of all nodes in an administrative domain and, further, that a health condition can be an erroneous state in hardware or software indicative of a present or anticipated malfunction. Ans. 15 (citing Anerousis, II [0033]-[0034])." + ], + "ptab_opinion": [ + "Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed Feb. 28, 201 1) and the Answer (mailed May 12, 2011) for the respective details.", + "We have considered in this decision only those arguments Appellants actually raised in the Brief.", + "Any other arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived.", + "See 37 C.F.R. 5 41.37(c)(1)(vii).", + "Representative claim 1 is reproduced as follows:", + "Appellants' arguments are directed to the limitations appearing in independent claim 1.", + "Appellants do not provide separate arguments with particularity for rejected claims 3-5, 7, 8, 10-12, 14, 15, 17-19, and 21-24. See App. Br. 11-16.", + "Accordingly, we select claim 1 as representative. See 37 C.F.R. \u25cf 41.37(c)(1)(vii).", + "We find Appellants' arguments unpersuasive of error in the Examiner'. s stated position. Ans. 4-5.", + "We agree with the Examiner that, as a result of the comparison operation in Sridharan, if no resource (memory) leak is detected, the compute node is in a \"clean\" state which is defined in the claim as the \"absence of resource leaks.\" Id. at 13.", + "We also find unpersuasive Appellants' contention that Anerousis does not overcome what the Examiner has identified as the deficiency in Sridharan, i.e., inter alia, a teaching of restoring the resource availability level of a compute node to a clean state upon determining that a resource leak has occurred.", + "Accordingly, we agree with the Examiner's determination that Anerousis's teaching of monitoring both hardware and software supports the conclusion that Anerousis teaches resource management of an application server node, not just application software instances running on that node. Id.", + "We further find unpersuasive Appellants' contention that Anerousis's teaching of restarting an application server instance does not remove a compute node from the compute node pool as claimed because Anerousis indicates that other instances of the restarted application server are executing on the compute node. App. Br. 15-16.", + "We agree with the Examiner that Anerousis's is teaching of corrective actions involving restarting of an application server node would suggest to the ordinarily skilled artisan that the application server node in question would be removed from the application server environment to perform the corrective action. Ans. 15 (citing Anerousis, I [0003]).", + "We also find no error in the Examiner': s determination that Anerousis's teachings would suggest that the application server node upon restart would be restored to the application server environment as claimed. Ans. 16 (citing Anerousis, II [0045], [0051] and [0052]).", + "The Supreme Court has held that in analyzing an obviousness rationale, a court need not find specific teachings, but rather may consider \"the background knowledge possessed by a person having ordinary skill in the art\" and \"the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007).", + "In view of the above discussion, we sustain the Examiner's obviousness rejection of independent claim 1, as well as the rejection of claims 3-5, 7, 8, 10-12, 14, 15, 17-19, and 21-24 not separately argued by Appellants.", + "We also sustain the Examiner's obviousness rejection of dependent claims 2, 6, 9, 13, 16, and 20 in which Findeisen was applied to the Sridharan/Anerousis combination to address the resource allocation features of the rejected claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2011013656_DECISION.json b/opinion_split/2011013656_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..31c38f1a9a5b1823593605a5360df57cf16037c4 --- /dev/null +++ b/opinion_split/2011013656_DECISION.json @@ -0,0 +1,61 @@ +{ + "appellant_arguments": [ + "First, Appellants contend that modifying Whalen as proposed by the Examiner would remove an intended feature from Whalen--avoiding snap. App. Br. 4.", + "Appellants assert that \"[ilf one were to substitute the alleged locking tab found in Huang, then the desired articulation 86 would be removed from the Whalen, et al. reference\" and **articulation 86 is required to avoid *snap. \" Id.; see also Reply Br. 1-2.", + "Second, Appellants contend that the \"principle of operation of Whalen, et al. would be changed if the proposed modification were made\" because the modification would \"change the way in which Whalen, et al. achieves locking.\" App. Br. 5.", + "In particular, Appellants assert that, as combined, the \"locking would have to occur as the cover is placed on the cassette according to the modifications rather than being able to occur after the cover is in the position shown in Figure 8\" and thus \"it would be impossible to lock after fully seating the cover as desired by Whalen, et al.\" Id.; see also Reply Br. 1-2 (discussing the allegedly different locking directions of Whalen and Huang's mechanisms as a reason why Whalen's principle of operation would be changed).", + "Third, Appellants assert that the Examiner oversimplifies the proposed modifications to Whalen because they would require *an entire redesign of the latch arm and locking configuration . . . and therefore cannot be considered a 'mere substitution. +-2 App. Br. 5; Reply Br. 2-3.", + "Rather, Appellants contend that Whalen \"teaches against the proposed modifications by teaching the desire to avoid *snap. \". App. Br. 5.", + "Fourth, Appellants assert that one of ordinary skill in the art \"would not even look to the teachings of Huang to provide a more secure connection in Whalen, et al., which is directed to a disk carrier or container used to house and protect computer components such as magnetic disks or wafer disks during a manufacturing or transportation process.\" App. Br. 4 n.1.", + "Fifth, Appellants contend that the Examiner has not provided a sufficient reason to modify Whalen because there is no indication in Whalen \"that the connection provided is not secure and the Examiner does not identify how or in what way the modified Whalen, et al. configuration would provide an improved snap fit connection that provides a secure connection.\" App. Br. 6.", + "Thus, Appellants assert that there \"would be no benefit to making the suggested modifications\" to Whalen. Id.", + "First, Appellants contend that Hachtmann does not cure the deficiencies of Whalen and Huang as argued in the context of Rejection 1. App. Br. 6.", + "Second, Appellants assert that combining Hachtmann* 's handles \"would not provide any benefit to the Whalen, et al. and Huang configuration because Whalen, et al. is designed to inwardly lock by manipulating the articulation 86 over nub 90.\" Id. at 7.", + "Appellants explain that \"[i]n other words, the handling of the cover of Whalen, et al. would occur at the articulation 86, which is easily accessible by a user. Adding handles to the top of the cover of Whalen, et al. would be completely unnecessary for at least this reason.\" Id.", + "In their Reply Brief, Appellants assert that Hachtmann does not teach using handles 66 to open the device and/or separate the flap from the cover; rather, \"the pair of handles 66 are included on each end portion to assist in handling the top cover 114 during locking and in handling the entire container when the cover is latched to the base.\" Reply Br. 3." + ], + "examiner_findings": [ + "The Examiner relies upon the following prior art references: Huang US 6,131,760 Oct. 17, 2000 Whalen US 2003/0029772 A1 Feb. 13, 2003 Hachtmann US 2003/0205501 A1 Nov. 6, 2003", + "I. Claims 1-4, 7, 8, 10, and 18-25 are rejected under 35 U.S.C. \u25cf 103(a) as unpatentable over Whalen and Huang; and", + "II. Claims 6 and 11 are rejected under 35 U.S.C. 5 103(a) as unpatentable over Whalen, Huang, and Hachtmann.", + "OPINION Rejection I The Examiner concluded that the combination of Whalen and Huang would have rendered the subject matter of claims 1-4, 7, 8, 10, and 18-25 obvious to one of ordinary skill in the art at the time of invention. Ans. 4-9.", + "The Examiner found that Whalen discloses the elements of the claims **except for a disk holding device comprising a locking tab near an end of the latch arm extending in a direction facing away from an interior of the disk holding device, wherein the latch arm includes a lifting ledge extending in substantially the same direction as the locking tab.\" Id. at 4.", + "The Examiner, however, found that Huang discloses these elements of the claims. Id.", + "The Examiner concluded that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the lower portion of the latch arm and base of Whalen by incorporating a locking tab and lifting ledge on the lower portion of the latch arm, where the latch arm extends through a groove on the base in order to provide a snap-fit mechanism that releasably joins the cover to the base with the cassette portion in between thus providing a secure connection, as taught by Huang. Id. at 4-5 (citing Huang, col. 2, 11. 58-61).", + "As recognized by the Examiner, Whalen discloses that the connection \"may be made in numerous ways such as a catch, latch, or cooperating tab and slot. \" Whalen, para. [0031]; see Ans. 12.", + "The Examiner provided a reason with a rational underpinning for the proposed combination. See Ans. 4-5 (to provide a secure connection), 14 (to enhance the connection).", + "Rejection II The Examiner concluded that the combination of Whalen, Huang, and Hachtmann would have rendered the subject matter of claims 6 and 11 obvious to one of ordinary skill in the art at the time of invention. Ans. 9-10.", + "The Examiner found that the combination of Whalen and Huang discloses the elements of the claims except a latch arm including \"at least one finger grip extending transverse to the latch arm in substantially the same direction as the locking tab.\" Id. at 10.", + "The Examiner, however, found that Hachtmann discloses this element of the claims. Id.", + "The Examiner concluded that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the combination of Whalen in view of Huang by incorporating a finger grip extending transverse to the latch arm in substantially the same direction as the locking tab in order to assist in handling the cover during locking and in handling the di[s]k holding container when the cover is connected to the base, as taught by Hachtmann. Id. (citing Hachtmann, para. [0051]).", + "The Examiner responds to Appellants' argument by noting that \"even if the nub-slot connection was responsible for locking the device, Whelan is silent as to whether or not the connection was used to open the device or separate the flap from the cover.\" Ans. 14.", + "Thus, \"[the handle of Hachtmann can be used to open the device and one of ordinary skill in the art would find it obvious to incorporate a handle into the flap of Whelan as suggested by Hachtmann in order to separate the flap from the cover.\" Id." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Clifton C. Haggard et al. (\"Appellants\") appeal under 35 U.S.C. \u25cf 134 from the Examiner's decision rejecting claims 1-4, 6-8, 10, 11, and 18-25.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "Claimed Subject Matter Claims 1, 7, and 18 are the independent claims on appeal.", + "Claim 1 is illustrative of the claimed subject matter and is reproduced below.", + "1. A disk holding device, comprising: a latch arm for locking the disk holding device having a locking tab near an end of the latch arm extending in a direction facing away from an interior of the disk holding device, wherein the latch arm includes a lilting ledge extending in substantially the same direction as the locking tab, and the interior includes a plurality of slots that selectively receive disks. App. Br. 8, Claims App'x.", + "Rejections Appellants seek review of the following rejections:", + "SUMMARY OF DECISION We AFFIRM.", + "Appellants raise several arguments in response to this rejection.'", + "We address each.", + "In Ex parte Haggard, No. 2011-009518, 2013 WL 4761529 (PTAB Aug. 30, 2013), we addressed Appellants' appeal of rejections applied to then-pending claims of U.S. Patent Application No. 11/868,569 (the **569 Application\"), which is a continuation-in-part of the application before us. See *569 Application, Spec. 1 (\"This application is a continuation-in-part of co-pending U.S. Patent Application No. 11/355,813, filed February 16, 2006.\").", + "In that appeal, we addressed the same three arguments' raised by Appellants and determined that they did not persuade us of error in the Examiner's s rejection. See Ex parte Haggard, 2013 WL 4761529, at *2-*4.", + "Our reasoning therein is equally applicable to the present appeal and Appellants have not explained why we should reach a different result in the context of the claims before us. See also Ans. 10-14 (explaining that the Examiner* s proposed modification does not remove the articulations of Whelan, but rather maintains them, positioning them such that they would not interfere with the connection of the flap to cover the cassette).", + "Accordingly, for the reasons explained in Ex parte Haggard and because the Examiner's s proposed modification of Whalen does not remove Whalen's articulations, Appellants' first, second, and third arguments are not persuasive.", + "Further, we agree with the Examiner that \"an inventor considering a latch mechanism for disk carriers would naturally look to references employing other latch mechanisms, which may come from other areas such as a storage box.\" Ans. 12.", + "Accordingly, Appellants' fourth argument is not persuasive.", + "Further, as discussed above, Whalen explicitly teaches that the connection may be made in numerous ways.", + "Such a statement would encourage, not discourage, one of ordinary skill in the art to seek out other types of connections, such as that of Huang, for use with Whalen's device. See Ans. 14 (Whalen discloses that other connections may be used); see also KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 416 (2007) (\"when a patent claims a structure already known in the prior art that is altered by the mere substation of one element for another known in the field, the combination must do more than yield a predictable result\").", + "Thus, Appellants' fifth argument is not persuasive.", + "Accordingly, we sustain Rejection 1.", + "Appellants raise two arguments in response to this rejection.", + "For the reasons we explained above, Appellants' arguments are not persuasive.", + "Regardless of whether Hachtmann discloses using the handles to open the device by separating the flap from the cover, we agree with the Examiner that it would have been obvious to include Hachtmann's handles for this purpose.", + "That Hachtmann discloses the use of the handles to assist in handling the top cover and in handling the entire container does not detract from or otherwise suggest that the handles could not also be used, as one of ordinary skill in the art using common sense would understand, to assist in opening the device. See KSR, 550 U.S. at 420-21 (\"Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes \u00b7 \u00b7 \u00b7 \u00b7 A person of ordinary skill is also a person of ordinary creativity, not an automaton. \").", + "Thus, Appellants' arguments are not persuasive.", + "Accordingly, we sustain Rejection II." + ] +} \ No newline at end of file diff --git a/opinion_split/2012000670_DECISION.json b/opinion_split/2012000670_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f635a46177338f0de4c7d0f29dc40ff7591ac82a --- /dev/null +++ b/opinion_split/2012000670_DECISION.json @@ -0,0 +1,67 @@ +{ + "appellant_arguments": [ + "Appellants contend: \"no prior art of record, whether considered individually or in any permissible combination with each other, teaches program modules switching between background execution and foreground execution.\" \" (App. Br. 15).", + "However, Appellants contend: Douceur et al. \u00b7 \u00b7 \u00b7 does not teach an actual task switching from background to foreground.", + "Douceur et al. teaches that the background tasks can be suspended or \"backed off\" so that the CPU can dedicate more processing cycles to foreground engine tasks, but the background tasks still remain in the background.", + "No task ever changes from a background engine execution to a foreground engine execution.", + "There is simply no teaching anywhere in Douceur et al. that teaches or even suggests the possibility of tasks in the \"groveler\" being executed by a different task engine \u00b7 namely the foreground task engine. (Reply Br. 7).", + "Appellants further contend: [t]here is no permissible combination of a reference that primarily teaches checking the validity of multiple identical programs operating across different platforms (Sinha et al.) with a reference that teaches how background tasks can be managed to not interfere with primary CPU tasks wholly within a single platform (Douceur et al.). (App. Br. 16).", + "Appellants support their contention that Sinha \"teaches away\" from the combination by noting Sinha is silent with respect to background and foreground execution. (App. Br. 14).", + "Regarding apparatus claim 4, Appellants contend: there is simply no disclosure anywhere in Sinha et al. or in Douceur et al. that can be construed to teach exploiting a table of correspondence, each correspondence being associated with an identifier of the involved program.", + "The Examiner has simply not addressed the concept of a table of correspondence. (App. Br. 19-20)", + "Appellants repeat their contentions that the combination of Sinha and Douceur is improper for the same reasons previously advanced regarding claim I (App. Br. 20-21).", + "Regarding claim 18, Appellants repeat their contentions that the combination of Sinha and Douceur is improper for the same reasons previously advanced regarding claim 1. (App. Br. 24-23).", + "Appellants urge that dependent claims 2-3, 5, and 19-24 are allowable by virtue of their dependence from purportedly allowable independent claims 1, 4, and 18 (App. Br. 17, 21, 25)." + ], + "examiner_findings": [ + "The Examiner relies on Sinha for teaching or suggesting calculating a signature of a program module's instruction lines *on each task change . \u00b7 \u00b7 \u00b7 of the CPU\" (Ans. 10; see also Ans. 4).", + "The Examiner found *Sinha does not explicitly teach switching from foreground to background and switching from background to foreground\" (Ans. 11).", + "The Examiner relied upon Douceur for this teaching (Ans. 11, 8- 9).", + "The Examiner's 's proffered reason for the combination is \"to provide a method and system for limiting the interference of a background process with a foreground process which improves the performance of the system (See Douceur 0008).\" \" (Ans. 9, repeated in Ans. 11, 12, 16).", + "The Examiner cites Sinha as teaching an *integrity signature\" or \"execution-identifying signature\" that represents multiple execution instances of a program module (See Ans. 13 citing to Sinha col. 7, 1. 67 through col. 8, 1. 3 and col. 14, 11. 18-24 and claims 1-2).", + "The Examiner further points to Sinha for teaching exploiting a table of correspondence. (Id.)" + ], + "ptab_opinion": [ + "Based on Appellants\" arguments (App. Br. 13-25), we decide the appeal of the 9 103 rejection on the basis of findependent claims 1, 4, and 18, each argued separately.", + "We disagree with the Appellants' contentions, and in particular find Appellants have mischaracterized the Examiner's reliance upon Sinha.", + "Thus, the Examiner's broader reading of the claim limitation \"task change\" as being the time of program execution on a CPU is supported by Appellants\" disclosure.", + "We find Sinha would have taught or suggested *calculating \u00b7 , \u00b7 a signature\" (claim 1) (i.e., integrity signature) \"[w]hen the set of instructions are executed.\"", + "Therefore, we are not persuaded of error regarding the Examiner's reading of the claim limitation *task change\" on Sinha's execution instances on a CPU. (Ans. 4, 10).", + "We disagree with Appellants? contentions.", + "On this record, we are not persuaded the Examiner's claim interpretation is overly broad, unreasonable, or inconsistent with the Specification.", + "We turn to Appellants' Specification for context.", + "We find Douceur's teaching of a process executing for a specific time interval, between other suspended processes, would have taught or suggested a task change between background (idle, suspended, backed-off) and foreground (executing its instruction on a CPU), within the meaning of claim 1.", + "Given this evidence (id.), we agree with the Examiner's finding that Douceur, when combined with Sinha, would have taught or suggested a \"task\" switching from a foreground state of being executed on a CPU, to a background state, within the meaning of claim 1. (See Ans. 5).", + "We also note claim 1 broadly recites: **calculating, on each task change between a first program module switching from foreground to background and a second program module switching from background to foreground\" (emphasis added).", + "Claim 1 does not require changing tasks or program modules *from a background engine execution to a foreground engine execution,\\' \" as contended by Appellants. (Reply Br. 7, emphasis added).", + "For the aforementioned reasons, we disagree with Appellants' contention that *no prior art of record, whether considered individually or in any permissible combination with each other, teaches program modules switching between background execution and foreground execution. ~ (App. Br. 15).", + "We disagree with Appellants* contention.", + "We note the Examiner's rejection is based on the combined teachings and suggestions of Sinha and Douceur.", + "The Examiner has provided articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. (Ans. 5).", + "While we are fully aware that hindsight bias often plagues determinations of obviousness, Graham V. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that the \"combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.\" KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 401 (2007).", + "Appellants do not support the argued incompatibility of the combination by citing to specific evidence in the prior art. (App. Br. 6).", + "Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides \"operates as a beneficial check on hindsight.\" Cheese Systems, Inc. V. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341,1352 (Fed. Cir. 2013).", + "Therefore, on this record, we find the preponderance of evidence supports the Examiner's proffered motivation for the combination.", + "We disagree with Appellants? assertion that \"checking signatures of tasks switching from background execution to foreground execution makes irrelevant any impact simultaneously executing tasks may have on each other.\" (App. Br. 16).", + "Appellants do not point to any specific teaching in the references that suggests checking security signatures of programs or tasks has an impact on the interaction between simultaneously executing tasks such as competition for a disk or resource locks.", + "We see no reason why using a security signature that detects malicious code changes would interfere with the normal operation of programs operating on a multitasking operating system.", + "Here, we are not persuaded by Appellants' contentions because Appellants do not cite to any evidence in Sinha which discredits or discourages using a program with a security feature executing on a CPU (as taught by Sinha) in combination with background and foreground execution in a multitasking environment, as taught by Douceur.", + "For these reasons, on this record, we are not persuaded the Examiner erred.", + "We sustain the Examiner's 8 103 rejection of independent claim 1.", + "We disagree with Appellants? contention.", + "As an initial matter of claim construction, the contested functional limitation of of*exploiting a table of correspondence\" does not further limit the claimed \"processor\" to a particular structure within the scope of apparatus claim 4. (Emphasis added).4", + "Moreover, the function of \"exploiting\" is intended to occur when the *involved program\" is executed. (Claim 4).", + "Thus, we conclude the contested function of \"exploiting\" is a statement of intended use.", + "5 Therefore, a question arises as to how much patentable weight, if any, should be given to the contested \"exploiting\" clause functional limitations. (Claim 4).", + "Should our reviewing court find reason to give the \"exploiting\" functional limitations patentable weight, we note the Examiner cites to Sinha for teaching or suggesting the **exploiting\" limitation.", + "Given these underlying factual findings, we are not persuaded the Examiner erred in reaching the legal conclusion of obviousness regarding the contested **exploiting\" functional limitation of claim 4.", + "For the reasons discussed above regarding claim 1, we disagree with the Appellants' contentions that Sinha \"teaches away\" from the combination and we are not persuaded of impermissible hindsight in the Examiner's combination.", + "For these reasons, on this record, we are not persuaded the Examiner erred.", + "We sustain the Examiner's S 103 rejection of independent claim 4.", + "We disagree with Appellants* arguments that Sinha \"teaches away\" from the combination and that Douceur fails to teach tasks that switch between foreground and background at a CPU, and we find no impermissible hindsight in the Examiner's combination, for the reasons discussed above regarding claim 1.", + "Therefore, on this record, we are not persuaded the Examiner erred.", + "We sustain the Examiner's S 103 rejection of independent claim 18.", + "We find no deficiencies regarding the Examiner's s rejection of the independent claims for the reasons discussed above.", + "Therefore, we sustain the Examiner's rejection of dependent claims 2-3, 5, and 19-24 for the same reasons discussed supra regarding independent claims 1, 4, and 18." + ] +} \ No newline at end of file diff --git a/opinion_split/2012001031_DECISION.json b/opinion_split/2012001031_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3e095b05edf1adba06a8a825be6b85f7513adc3e --- /dev/null +++ b/opinion_split/2012001031_DECISION.json @@ -0,0 +1,16 @@ +{ + "appellant_arguments": [ + "As argued by Appellants, the Examiner errs in maintaining each of the stated rejections by improperly interpreting the claim term \"online\" as employed in connection with the redundant switching power supply required by the rejected appealed claims as not being limited to the definition furnished for this term in the Subject Specification (App. Br. 12-14, 21, and 22; Reply Br. 2-3; Spec., I 0014)." + ], + "examiner_findings": [ + "The Examiner maintains the following grounds of rejection: Claims 1-3, 5-10, and 15-17 stand rejected under 35 U.S.C. 6 102(b) as being anticipated by Wagner.", + "Claims 1, 4, 13-15, and 18-20 stand rejected under 35 U.S.C. 8 102(a) as being anticipated by Randall.", + "Claims 11 and 12 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Randall in view of Wagner.", + "However, the Examiner premises the rejections of the appealed claims based on a broad interpretation of \"online\" without giving appropriate effect to the Specification's definition of online (Ans. 9, 13, 14, 16, 17, 21)." + ], + "ptab_opinion": [ + "We reverse the stated rejections.", + "Because the applied prior art is not applied to the claimed subject matter as properly construed in light of the Specification, including any definitions for claim terms therein, as it would be construed by one of ordinary skill in the art, we are constrained to reverse the stated rejections on this appeal record.", + "In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (\"It would be unreasonable for the PTO to ignore any interpretive guidance afforded by the applicant's written description. \")." + ] +} \ No newline at end of file diff --git a/opinion_split/2012001195_DECISION.json b/opinion_split/2012001195_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..500a5a55c46a4fc7715910dee898e07bff046ada --- /dev/null +++ b/opinion_split/2012001195_DECISION.json @@ -0,0 +1,22 @@ +{ + "appellant_arguments": [ + "Appellant contends that \"while claim 10 of the *298 patent does specify *delivering an anchor mechanism coupled to a distal end of a tether to an epicardial surface,' the claim does not recite inserting the anchor mechanism through the myocardium, nor does it specify inserting the anchor to an operating position adjacent an outer surface of the heart\" (App. Br. 4)." + ], + "examiner_findings": [ + "The Examiner rejected claims 1-20 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 10-18 of Shiroff* (Ans. 4).", + "The Examiner finds that \"[allthough the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the patent anticipate the current claims since they contain all of the limitations of the current claims\" (Ans. 4).", + "The Examiner finds that \"claim 10 recites that the tether is coupled to the distal end of a tether as it is delivered to the epicardial surface, which is the outer surface of the heart.", + "Furthermore, claim 10 recites that the lead body and fixation mechanism are advanced over the tether toward the anchor through the myocardium\" (Ans. 4-5).", + "The Examiner finds that `[cllearly, if the tether was attached to the anchor prior to insertion, and the tether extends through the myocardium, the anchor also would necessarily, or at least obviously, have had to been inserted through the myocardium to reach the epicardial surface\" (Ans. 5).", + "The Examiner finds that *[f]urthermore, the anchor is considered to be in an *operating position' since 'operations' are done with the anchor after it has been placed against the epicardial surface, as stated in claim 10 of the patent.", + "The epicardium is the outer surface of the heart\" (Ans. 5)." + ], + "ptab_opinion": [ + "We find that the Examiner has the better position.", + "Claim 10 of Shiroff teaches \"delivering an anchor mechanism coupled to a distal end of a tether to an epicardial surface. \"", + "\" This limitation clearly requires that the anchor is implanted, with a tether attached, in a manner which results in a final position anchor at an outer surface (\"epicardial surface\") of the heart, thereby satisfying the instant claim 1 requirement of placing the anchor in \"an operating position adjacent an outer surface of the heart. \"", + "We also agree with the Examiner's s more subtle point, that when Claim 10 of Shiroff teaches \"advancing the lead body and fixation mechanism over the tether toward the anchor and through the myocardium\", the tether itself, and consequently the anchor coupled to the tether, must necessarily have also been implanted through the myocardium, or else there would be no path \"through the myocardium\" over which the lead body and fixation mechanism could advance to the anchor.", + "Thus, claim 10 of Shiroff necessarily teaches the instant claim 1 requirement for \"inserting an anchor coupled to a tension element through the myocardium.", + "The evidence of record supports the Examiner's conclusion that claims 10-18 of Shiroff render claim 1 obvious for obviousness-type double patenting." + ] +} \ No newline at end of file diff --git a/opinion_split/2012001480_DECISION.json b/opinion_split/2012001480_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a25569fb95e4937082eca4a4d4f7a8d106a8292c --- /dev/null +++ b/opinion_split/2012001480_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellant admits that \"[pllants of the 'Meibderos' variety are understood to have been first placed in the hands of the public in France . during September 1999\" (Page 4 of the Oct. 14, 2003 Response in parent Application No. 14,445)." + ], + "examiner_findings": [ + "Claim 1 stands rejected under 35 U.S.C. & 102(b) as anticipated by French Breeder's Right Application No. 0171375 and EC Breeder's Right Application No. 1990287 in view of Appellant's admission that \"Meibderos\"* was publically available in France as early as September 1999 (Ans. 4).", + "Moreover, the Examiner finds, and Appellant does not dispute, that possession of the plant would enable one of ordinary skill in the art to reproduce the claimed plant without undue experimentation (Ans. 6)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Claim 1 is pending and on appeal (App. Br. 2).", + "Claim 1 reads as follows: 1.", + "A new and distinct variety of Hybrid Tea rose plant characterized by the following combination of characteristics: (a) exhibits semi-erect growth habit, (b) abundantly forms on a continuous basis attractive double yellow suffused with red blossoms having a very strong fragrance, (c) forms very dense dark green foliage having a glossy aspect that contrasts well with the blossom coloration, and (d) is particularly well suited for growing as attractive ornamentation in parks and gardens; substantially as herein shown and described.", + "FINDINGS OF FACT 1.", + "The present application claims the benefit of an application filed April 3, 2002 (Spec. 1).", + "The present application describes a plant variety that \"has been named the 'Meibderos' variety\" (id. at 3).", + "It is undisputed that both French Breeder' is Right Application No. 0171375 and EC Breeder's s Right Application No. 1990287 are prior art under 35 U.S.C. \u25cf 102(b) (Ans. 4; App. Br. 3).", + "It is also undisputed that each of these applications discloses, but does not enable, Meibderos (Ans. 4; App. Br. 4).", + "PRINCIPLES OF LAW As with utility patents, **only an 'enabling' publication is effective as a bar [under 35 U.S.C. & 102(b)] to a subsequent [plant] patent.\" In re LeGrice, 301 F.2d 929, 1138 (CCPA 1962).", + "However, **evidence of [a] foreign sale of a claimed reproducible plant variety may enable an otherwise non-enabled printed publication disclosing that plant, thereby creating a \u25cf 102(b) bar.\" In re Elsner, 381 F.3d 1125, 1128 (Fed. Cir. 2004).", + "In particular, [w]hen a publication identifies the plant that is invented or discovered and a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, which, based on the level of ordinary skill in the art, permits asexual reproduction without undue experimentation, that combination of facts and events so directly conveys the essential knowledge of the invention that the sale combines with the publication to erect a statutory bar. Id. at 1129.", + "\"[T]he precise focus of the analysis is not whether the foreign sales are themselves 5 102(b) prior art, but whether the publication has placed the claimed invention in the possession of the public before the critical date. Id. at 1129-30.", + "In this regard, the Elsner court explained that \"[the foreign sale must not be an obscure, solitary occurrence that would go unnoticed by those skilled in the art.", + "Its availability must have been known in the art, just as a printed publication must be publicly available.\" Id. at 1131.", + "In addition, the Elsner court explained that, \"even if the interested public would readily know of the foreign sales, those sales [must] enable[ ] one of ordinary skill in the art to reproduce the claimed plants without undue experimentation.\" Id.", + "ANALYSIS The French and EC Applications, which were each published more than a year before the effective filing date of the present application, each disclose the plant recited in claim 1 (Findings of Fact (FF) 1-4).", + "In addition, this plant was publically available (in France) more than a year before the effective filing date of the present application (FF 5).", + "Thus, in view of In re Elsner, we agree that the Examiner has set forth a prima facie case that the French and EC Applications each anticipate claim 1.", + "In addition, Appellant's s arguments do not persuade us otherwise.", + "With regard to In re LeGrice, we do not agree that the Elsner court overlooked this precedent (App. Br. 5).", + "On the contrary, the Elsner court specifically discussed LeGrice, noting that the LeGrice court recognized that \"there are inherent differences between plants and manufactured articles.' \" In re Elsner, 381 F.3d at 1129 (quoting In re LeGrice, 301 F.2d at 935).", + "In addition, as stated in Elsner: LeGrice decided only the narrow issue whether a printed publication of a plant patent that is not enabled is a statutory bar.", + "That decision did not address the manner in which a publication may be enabled, and it did not decide whether other evidence such as the availability of an invention through foreign sales may be considered in determining whether a printed publication enables a skilled artisan to reproduce a claimed plant. In re Elsner, 381 F.3d at 1130.", + "Thus, we agree with the Examiner that Elsner is controlling." + ] +} \ No newline at end of file diff --git a/opinion_split/2012001774_DECISION.json b/opinion_split/2012001774_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8815e941de48a4e1ebebc5b1bb2ce387181b4be8 --- /dev/null +++ b/opinion_split/2012001774_DECISION.json @@ -0,0 +1,70 @@ +{ + "appellant_arguments": [ + "The *514 application describes an improved planar inverted F antenna (\"PIFA\").", + "Such antennas can be used in a variety of wireless devices, including cellular telephones.", + "Appellants' alleged improvement comprises the addition of an auxiliary plate between a ground surface and an antenna body in a PIFA.", + "Claim 1 is representative of the '514 application's claims and is reproduced below with the disputed limitation italicized: 1. A planar inverted F antenna comprising: a ground surface having a finite plane and formed of a conductive material; an antenna body at a certain distance from the ground surface and transmitting and receiving radio waves; a feed line for electrically connecting the ground surface and the antenna body; a ground pin for grounding the antenna body to the ground surface; and at least one auxiliary plate disposed between the antenna body and the ground surface, wherein a distance between the least one auxiliary plate and the antenna body is constant. (App. Br. Claims App'x A1 (emphasis added).)", + "Appellants divide their claims into three groups, each consisting of an independent claim and the claims that depend from it.", + "Appellants argue that the rejection of these claims should be reversed because \"the cited references fail to teach or suggest all the claim elements of independent Claim 1.\" (App. Br. 13.)", + "Appellants argue that a person of ordinary skill in the art would not modify Rahola to incorporate Wang's fixed auxiliary plate because doing so would (1) change Rahola's principle of operation (App. Br. 13 (citing In re Ratti, 270 F.2d 810 (CCPA 1959))) and (2) render the resulting antenna unsatisfactory for its intended purpose (id. at 14 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984))).", + "Second, Appellants argue that Rahola does not describe an antenna having \"a distance between the at least one auxiliary plate and the antenna body [that remains] constant\" because Rahola describes shifting the position of the auxiliary plate to change the resonant frequency of the antenna assembly. (App. Br. 13-14.)", + "Appellants argue for reversal of the rejection of these claims as a group based upon the limitations in claim 9.", + "Appellants present two arguments for reversal of this rejection.", + "Appellants argue that the obviousness rejection should be reversed because the cited prior art neither describes nor suggests an auxiliary plate \"disposed between the antenna body [and the ground surface] and the at least one auxiliary plate to be inclined with respect to the ground surface. \"", + "Appellants also argue that the rejection of claims 9-16 should be reversed because the combination of Rahola and Wang do not describe or suggest an antenna assembly \"wherein a distance between the at least one auxiliary plate and the antenna body is constant.\" (App. Br. 15-17.)", + "Appellants also argue that the rejection of claims 17- 20 should be reversed because the combination of Rahola and Wang do not describe or suggest an antenna assembly \"wherein a distance between the at least one auxiliary plate and the antenna body is constant.\" (App. Br. 17- 20.)" + ], + "examiner_findings": [ + "On appeal, the Examiner maintains the following rejection: Claims 1-20 are rejected under 35 U.S.C. & 103(a) as obvious over the combination of Rahola\" and Wang.\" 4 (Ans. 4.)", + "In rejecting claim 1, the Examiner relies upon Rahola.", + "The Examiner found that Rahola describes every limitation in claim 1 except for the limitation requiring that a distance between the auxiliary plate and the antenna body remains constant. (Ans. 4-5 (citing Rahola Fig. 8c).)", + "Indeed, the Examiner states that \"Rahola does not explicitly disclose a state where the distance between the auxiliary plate and the antenna body is constant.' \" (Ans. 5.)", + "To fill this supposed gap in Rahola's description, the Examiner relies upon Wang as describing a PIFA with a fixed auxiliary plate and, thus, a constant distance between the antenna body and the auxiliary plate. (Id.)", + "As the Examiner explains, Rahola describes antenna assemblies in which the auxiliary plate maintains at least one constant distance between the auxiliary plate and the antenna element after the antenna is tuned to a particular set of frequencies. (Ans. 10.)", + "The Examiner relies upon Figure 3 of Rahola as describing an auxiliary plate that is inclined with respect to the ground surface. (Ans. 6-7.)" + ], + "ptab_opinion": [ + "We address each of these groups below.", + "We, therefore, only address the rejection of claim 1.", + "The remaining claims in this group stand or fall with claim 1. 37 C.F.R. & 41.37(c)(1)(vii).", + "Rahola describes antennas for use in mobile communication devices that can be tuned to be operable in a variety of frequency bands. Rahola I 0001.", + "We are not persuaded by Appellants' arguments for the following reasons:", + "First, contrary to the Examiner's statement, Rahola does describe multiple embodiments of a PIFA in which a distance between the auxiliary plate and the antenna body is constant.", + "For example, Rahola's Figure 8c is reproduced below: 20 62 22 92 FIG. 8c Figure 8c is a schematic representation of a PIFA in which the antenna element is electromagnetically coupled to a vertical strip which can be bent by a mechanical device. Rahola I 0022.", + "As shown above, the antenna comprises antenna element 10, ground plane 92, feed line 20, grounding pin 22, and a vertical strip whose shape and position can be adjusted by actuator 62. Id. at I 0060.", + "In operation, the antenna shown in Figure 8c can be used in at least 3 states: As shown in FIG. Sa, part of the actuator is located below the antenna element 10 when the actuator 62 is in [state 1].", + "In [state 2], the actuator is bent outward away from the antenna element 10.", + "In [state 3], the actuator is bent inward so that a larger part of the actuator is located beneath the antenna element. Id.", + "As can be seen in Figure 8c, the vertical distance between actuator 62 and antenna element 10 does not change as the resonant frequency of the antenna is adjusted by changing the shape of actuator 62.", + "Rahola also describes another embodiment which meets the disputed claim limitation.", + "Rahola's Figure 6 is reproduced below: 20 52 92 FIG. 6 Figure 6 is a schematic representation of a tunable inverted-L antenna electromagnetically coupled to conductive plate 52 which can be shifted in a lateral direction by a mechanical device. Rahola I 0018.", + "As can be seen, the vertical separation between antenna element 10 and conductive plate 52 remains constant in this embodiment.", + "Although Figure 6 shows an inverted- L antenna, Rahola states that \"[the antenna element 10 can be part of a planar antenna with or without a grounding pin 22. \u00b7 \u00b7 \u00b7 With the grounding pin 22, the antenna element 10 is part of an inverted-F antenna (IFA), as shown in FIG. 8c.\" Id. at I 0061.", + "Although this description is directed to the structures shown in Figures 8a-8c, it also applies to the antenna shown in Figure 6.", + "This argument seems to assume that the claim language in question requires the auxiliary plate to have a fixed position.", + "Such an assumption is incorrect.", + "We agree with the Examiner that this description is sufficient to describe or suggest the disputed claim limitation.", + "In view of the foregoing, the combination of Rahola and Wang would have rendered the subject matter of claim 1 obvious to one of ordinary skill in the art.", + "We, therefore, affirm the Examiner's rejection of claims 1-8 of the *514 application.", + "Claims 10-16, therefore, stand or fall with claim 9. 37 C.F.R. 5 41.37(c)(1)(vii).", + "For the reasons set forth below, we affirm the Examiner' s rejection of these claims as obvious over the combination of Rahola and Wang.", + "We also enter an additional rejection of claims 9-16 under 35 U.S.C. .5 112, I 2.", + "We begin by noting that claim 9 is indefinite.", + "We reproduce claim 9 below, with the claim language in question emphasized: 9. A planar inverted F antenna comprising: a ground surface having a finite plane and formed of a conductive material; an antenna body at a certain distance from the ground surface and transmitting and receiving radio waves; a feed line for electrically connecting the ground surface and the antenna body; a ground pin for grounding the antenna body to the ground surface; and at least one auxiliary plate disposed between the antenna body and the at least one auxiliary plate to be inclined with respect to the ground surface, wherein a distance between the least one auxiliary plate and the antenna body is constant. (App. Br. Claims App'x A-3 (emphasis added).)", + "The emphasized limitation is indefinite because it does not identify the elements between which the auxiliary plate is located.", + "We therefore reject claims 9-16 under 35 U.S.C. & 112, I 2 as indefinite.", + "For the purpose of the appeal of the obviousness rejection, we shall assume that Appellants intended to specify that the auxiliary plate is between the antenna body and the ground surface.", + "We agree with Appellants that the Examiner erred in finding that end section 12 of antenna body 10 depicted in Rahola' s Figure 3 is an auxiliary plate.", + "Based upon Figure 3 and Rahola's description, we find that end section 12 is part of antenna body 10. See Rahola I 0055.", + "Notwithstanding this error, the combination of Rahola and W Wang would have suggested an auxiliary plate that is inclined with respect to the ground surface to a person of ordinary skill in the art.", + "Rahola describes embodiments in which the auxiliary plate is parallel to the ground surface, e.g., Fig. 6, I 0059, and perpendicular to the ground surface, Figs. 8a-8c; I 0060.", + "Rahola also describes two embodiments which vary the angle between an auxiliary plate and the ground surface by bending the auxiliary plate. See Rahola Figs. 5a, 5b; I 0058.", + "Finally, Rahola describes several embodiments that change the angle between at a portion of the antenna element and the ground surface. Rahola Figs. 2-4; II 0054-0057.", + "Furthermore, Wang teaches that the resonant frequency of an antenna assembly depends upon its geometry. Wang I 0002-0003.", + "Thus, a person of ordinary skill in the art would understand that the auxiliary plate can be inclined with respect to the ground surface.", + "We have already explained why we are not persuaded by this argument. Supra.", + "In sum, we affirm the rejection of claims 9-16 as obvious over the combination of Rahola and Wang.", + "We also have newly rejected these claims under 35 U.S.C. \u25cf 112, I 2 as indefinite.", + "We have already explained why we are not persuaded by this argument. Supra." + ] +} \ No newline at end of file diff --git a/opinion_split/2012001796_DECISION.json b/opinion_split/2012001796_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c747f3f944f63930761416f0262ed7afb50db4c4 --- /dev/null +++ b/opinion_split/2012001796_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "Claims 17-29, 31-38, 44-46, and 48-50 stand rejected under 35 U.S.C. $ 103(a) as unpatentable over Benthin (US Pub. No. 2002/0035568 A1, pub. Mar. 21, 2002) in view of Langseth (US Pat. No. 6,694,316 B1, iss. Feb. 17, 2004).", + "The Examiner cites step 928 of Langseth for disclosing the channels recited in independent claim 17 (Exam'r's Ans. 5-6, 9)." + ], + "ptab_opinion": [ + "This is an appeal from the final rejection of claims 17-29, 31-38, 44- 46, and 48-50.", + "We have jurisdiction to review the case under 35 U.S.C. ** 134 and 6 (2002).", + "The invention is directed to a system for managing and distributing offers (Spec. 1:10).", + "Claim 17, reproduced below. is further illustrative of the claimed subject matter (some bracketed labeling has been added).", + "17. a computer implemented method for managing and distributing offers, the method comprising: producing a plurality of marketing campaigns each comprising a plurality of offers selected from a set of offers to send to multiple targeted individuals; selecting by one or more computers the offers to send for each of the plurality of marketing campaigns according to a determined channel allocation of offers specified by offer data processing rules, executed by the one or more computers, from which one or more of the offers are identified for targeting specific individuals; and delivering the offers over channels to specific, targeted individuals of the multiple targeted individuals, with the channels and time of delivery of the offers based on execution of offer data processing rules and the allocation of the offers to the channels based on the determined allocations in each of the marketing campaigns with the channels being one of a plurality of different types of delivery channels.", + "We REVERSE.", + "Offer management system 100 supports delivery of offers to customers 110 through a wide variety of channels 140.", + "In the discussion below, a number of these channels are specifically identified, but it should be understood that the invention is applicable to many more types of channels, some of which may not yet be commonly used.", + "The channels include both traditional channels, such as direct postal mailings and solicitations by sales agents, as well as electronic channels, such as email and Web delivery, and could include channels such as personalized location- based delivery of advertising to handheld devices.", + "In general, offers can be delivered to any particular customer 110 through multiple of these channels (para. [0026].", + "Langseth discloses a system and method for providing a plurality of channels of personal intelligence content to enable subscribers to more specifically choose the content they desire to receives.", + "The database system may then provide a plurality of \"channels\" wherein each channel may comprise information and transactional data about a particular field of interest, such as business, weather, sports, news, investments, traffic, radio content, television content, and others.", + "Subscribers may then sign up to receive output from one or more services from one or more of the channels of information.", + "A service should be understood to be formatted content (col. 3, II. 11-22).", + "Langseth discloses that with the proliferation of new means of communication like alphanumeric pages, alphanumeric phones, fax machines and email, communications with people anywhere at anytime have been enhanced.", + "Langseth uses these communication mediums to enable people to make the right decisions, be delivering the information right into their hands through the use of a plurality of subject-based channel of information to which individuals may subscribe (col. 7, 11. 3-12).", + "In step 928, affiliate advertisements may be included in the service outputs.", + "The advertisement selected may be personalized based on predetermined criteria including the subscriber information, the type of service or channel being run, the time of day, the time of year, and the like (Fig. 9: col. 27, II. 45-58).", + "We are persuaded the Examiner erred in asserting that a combination of Benthin and Langseth renders obvious independent claim 17' (App. Br. 9- 13; Reply Br. 1-3).", + "Independent claim 17 recites \"delivering the offers over channels to specific, targeted individuals of the multiple targeted individuals, with the channels and time of delivery of the offers based on execution of offer data processing rules and the allocation of the offers to the channels based on the determined allocations in each of the marketing campaigns with the channels being one of a plurality of different types of delivery channels. \"", + "Both the recitation of \"delivery channels\" in independent claim 17, as well as paragraph [0026] of Specification, makes clear that the recited \"channel\" refers to ways/systems/techniques/modes for delivering content (FF1).", + "However, the channels referred to in step 928 of Langseth refer to subject-based content channels (FF2, FF4), and not the ways/systems/techniques for delivering content channels set forth in independent claim 17.", + "Indeed, Langseth specifically delineates between means for communication and subject-based channels (FF3), and only references the subject-based channels in step 928 (FF4).", + "Accordingly, we will not sustain the rejections of independent claims 17, 31, and 33, and their respective dependent claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2012002104_DECISION.json b/opinion_split/2012002104_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..26c09d7e18aba8184ac3f77202bc2a6626da5c23 --- /dev/null +++ b/opinion_split/2012002104_DECISION.json @@ -0,0 +1,71 @@ +{ + "appellant_arguments": [ + "Appellant responds directing attention to two paragraphs from the original Specification disclosing an IV pole having \"a diameter of about one inch\" and that for the components of the associated pole bracket 26 to function, the bracket's opening \"should be somewhat more than one inch.\" App. Br. 11.", + "Appellant does not make such change but instead contends that \"[eJach of these claims further limits the *attachment mechanism\" by structural features more narrow than the limitations in claim 1.\" App. Br. 12.", + "Appellant contends that \"Ugent fails to show the removable electrical cord manager as cited\" and that the Examiner is **putting a meaning on the term 'removable' that is unreasonably broad.\" App. Br. 13; Reply Br. 7.", + "For example, Appellant contends that \"the outlets of Ugent are as likely to be soldered to the pole as any other method of attachment.\" \" App. Br. 13; Reply Br. 7.", + "Appellant further contends that \"[There is no method of attachment specifically shown by Ugent.\" App. Br. 13; Reply Br. 7.", + "Appellant argues claims 1, 2, and 21 together. App. Br. 14.", + "Appellant does not address the removable nature of Smith's illustrated attachment mechanisms but instead contends that the extension cord of \"Smith has a fixed dimension to the housing\" and that \"Smith has only a single power output cord\" such that *that structure could not be combined with Ugent where multiple power outlets are provided.\" App. Br. 14.", + "In Appellant's Reply Brief, Appellant contends that \"Gummelt does not overcome the deficiencies of the combination of references cited against claim 2.\" Reply Br. 4.", + "Appellant does not dispute Chang's teaching but instead contends that \"Chang does not overcome the failures of the combined disclosures of Ugent in view of Smith\" and further that \"[Chang] shows that both the power outlet cord and the power inlet cord are extendable.\" App. Br. 14.", + "Appellant contends that *[t]he addition of the disclosure of Burrell to Ugent does not overcome the deficiency of Ugent with respect to at least the limitations of claims 21 and 22 from which these claims (24-27) depend. \" App. Br. 14.", + "Appellant also contends that Burrell's mounting bracket does not overcome the deficiencies of Ugent *with respect to the removable attachment of a power manager to an IV pole as recited in claims 21 and 22.\" App. Br. 15.", + "In Appellant's Reply Brief, Appellant contends that \"Miller does not overcome the deficiencies of the Ugent reference cited against claims from which claims 28-30 depend.\" Reply Br. 4." + ], + "examiner_findings": [ + "Claims 28 and 30 are rejected under 35 U.S.C. 8 112, first paragraph, as failing to comply with the written description requirement. Ans. 5.", + "Claims 28 and 29 are rejected under 35 U.S.C. $ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Ans. 5", + "Claim I is rejected under 35 U.S.C. 8 102(e) as being anticipated by Ugent. Ans. 5.", + "Claims 1, 2, and 21 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over Ugent and Smith. Ans. 6.", + "Claims 3 and 31 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over Ugent, Smith, and Gummelt. Ans. 7.", + "Claims 1, 2, 21, and 22 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over Ugent, Smith, and Chang. Ans. 8.", + "Claims 23-27 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over Ugent and Burrell. Ans. 9.", + "Claims 28-30 are rejected under 35 U.S.C. S 103(a) as being unpatentable over Ugent and Miller. Ans. 9.", + "*, The Examiner finds that this limitation directed to \"one-inch\" and *on top of the housing\" lacks support in \"the originally filed disclosure.' \" Ans. 5.", + "As above, the Examiner finds that this limitation *is not supported by the originally filed disclosure.' \" Ans. 5.", + "Here, the Examiner addresses \"the expression *an attachment mechanism\" ~ found in both of these claims and finds that this term \"is indefinite as being a double inclusion, i.e. the same element being defined twice.\" Ans. 5.", + "The Examiner states that \"It]o correct the problem, what Appellant needs to do [is] change *an attachment mechanism' in claims 28 and 29 to simply - the attachment mechanism -- Ans. 11.", + "The focus here is the term \"removably\" and the Examiner finds that \"the attachment can be removed with the use of a right tool or equipment\" and further that *whatever fastening means is used to secure or to mount it, the same can always be unsecured or unmounted - which is readable as being fremovable. - Ans. 6, 12.", + "The Examiner \"consider[s] various attachment mechanisms shown in Figs. 9, 11, 12 of Smith\" as more specifically addressing \"the instant claimed pole attachment mechanism being configured to be removable, as recited in instant claim 1.\" Ans. 7.", + "The Examiner notes this lack of argument and provides no further comment other than to reiterate the rejection of these claims as previously established. Ans. 3-4.", + "The Examiner additionally relies on Chang for specifically disclosing the relationship between electrical outlets, the cord, the plug and the retraction mechanism. Ans. 8.", + "The Examiner relies on Ugent as previously indicated and further relies on Burrell for disclosing \"mounting bracket 18 shown in Figure 4.\" Ans. 9.", + "The Examiner finds that Burrell's mounting bracket has structure that corresponds to the limitations of claims 23-26. Ans. 9.", + "Regarding claim 27, the Examiner directs attention to \"Fig. 6 of Ugent, and note[s] that Ugent, as modified, would include an attachment mechanism in the form of a mounting bracket similar to that of Burrell mounted to a lower part above the base of Ugent.\" Ans. 9." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "While such paragraphs may provide support for the *one-inch** portion of the above limitation, these paragraphs are silent as to the \"top of the housing\" portion of this limitation.", + "Appellant has not pointed to where the Specification provides written description for the \"top of the housing\" orientation recited in claim 28.", + "Accordingly, we sustain the Examiner's 's rejection of claim 28 as failing to comply with the written description requirement.", + "Here, Appellant also relies on the same two paragraphs as referenced earlier with respect to claim 28. App. Br. 11 (i.e., Spec. 8:21 to 9:2 and 10:3-7), Appellant does not indicate how these two paragraphs discuss the limitation of \"a second pole extending from the IV pole at a top end of the IV pole** when these two paragraphs are silent on that topic.", + "Furthermore, Appellant does not otherwise indicate where support for this limitation can be found.", + "Hence, as Appellant does not respond to this rejection by the Examiner, we are not persuaded of error and accordingly, we sustain the rejection of claim 30 as failing to comply with the written description requirement.", + "Appellant does not adequately address the Examiner' 's express reason for the rejection of these claims and as such, does not persuade us of Examiner error in making this rejection.", + "We sustain the Examiner's rejection of claims 28 and 29 as being indefinite.", + "There is basis for these contentions by Appellant in that the Examiner can only identify where Ugent discloses where Ugent's receptacle *may be mounted to the pole\" and further where Ugent teaches that the receptacle is *preferably 'secured' to the pole.'\" Ans. 12, referencing Ugent 4:9-10 and 6:9-10.", + "In other words, there is no clear showing in Ugent of the removable nature of the claimed attachment.", + "As the Examiner does not indicate where this limitation is expressly or inherently described in Ugent, we do not sustain the Examiner's rejection of claim 1 as being anticipated by Ugent.", + "We select claim 1 for review with claims 2 and 21 standing or falling with claim 1. See 37 C.F.R. S 41.37(c)(1)(vii) (2011).", + "Appellant does not address the Examiner's stated reason for the additional reliance on Smith, i.e., for disclosing an *attachment mechanism being configured to be removable.\" Ans. 7.", + "Accordingly, Appellant does not explain how such reliance on Smith by the Examiner is in error.", + "We sustain the Examiner's rejection of claims 1. 2, and 21.", + "The rejection of claims 3 and 31 as being unpatentable over Ugent, Smith, and Gummelt Appellant does not address this rejection in the Appeal Brief.", + "Such argument by Appellant is not persuasive that the Examiner erred in additionally relying on Gummelt for the rejection of claims 3 and 31.", + "Accordingly, we sustain the Examiner's rejection of claims 3 and 31.", + "Appellant's contentions are not persuasive that the Examiner's reliance on Chang for showing certain relationships is in error.", + "We sustain the rejection of claims 1, 2, 21, and 22.", + "Appellant's arguments with respect to this rejection are imprecise.", + "However, claim 23 (not addressed in Appellant's argument above) is an independent claim and claims 24-26 depend from claim 23, not claims 21 or 22 as Appellant contends. See Claims App'x. 18-19.", + "Further, claim 27 depends from claim 1, again, not claims 21 or 22 as Appellant contends. See Claims App'x. 20.", + "Hence, Appellant's contention that Burrell does not overcome the deficiency of Ugent is not persuasive.", + "Even disregarding the incorrect claim dependency previously discussed, Figure 4 of Burrell (referenced by the Examiner supra) depicts a removable C-clamp not unlike that disclosed in Figure 4 of Appellant's original disclosure and claimed here.", + "We are not persuaded that the similar removable structure disclosed in Burrell fails to overcome the deficiency of Ugent.", + "We sustain the Examiner's rejection of claims 23-27.", + "The rejection of claims 28-30 as being unpatentable over Ugent and Miller Appellant does not address this rejection in the Appeal Brief.", + "Such argument by Appellant is not persuasive the Examiner erred in additionally relying on Miller for the rejection of claims 28-30.", + "Accordingly, we sustain the Examiner's rejection of claims 28-30." + ] +} \ No newline at end of file diff --git a/opinion_split/2012002833_DECISION.json b/opinion_split/2012002833_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..562946a58752af2a8c01db4074ec25f895f3e74e --- /dev/null +++ b/opinion_split/2012002833_DECISION.json @@ -0,0 +1,51 @@ +{ + "appellant_arguments": [ + "Appellants argue that it would not have been obvious to combine the teachings of Reich and Hartermann to arrive at the claimed invention, since Reich is directed to a gasification reactor in which the syngas exits from the bottom of the reaction chamber whereas Hartermann's 's syngas exits from the top of the reaction chamber. Br. 5.", + "Appellants note Reich's \"syngas passes downward through a first contacting zone which has a film of cooling liquid on its inner surface to cool the syngas.\" Id.", + "Appellants further note Reich's **syngas then passes through an expanded second contacting zone and then through a body of aqueous cooling liquid in a third contacting zone. \" Id.", + "As such, Appellants contend the cooling chamber of Reich would not be readily adaptable to Hartermann's gasification reactor with syngas exiting from the top of the reaction chamber. Id.", + "Appellants additionally argue that *if it were obvious to utilize an injecting means for injecting a liquid mist into the annular space, why was that not disclosed in the Hartermann reference since Reich predates Hartermann by over ten years?\" Br. 5." + ], + "examiner_findings": [ + "1) Claims 1,3, and 4 as unpatentable over Hartermann? in view of Reich* and Doering*;", + "2) Claim 2 as unpatentable over Hartermann in view of Reich and Doering, further in view of Muller*;", + "3) Claims 5, 6, 8, and 9 as unpatentable over Hartermann in view of Reich, Doering, and Patton and", + "4) Claims 7 and 10 as unpatentable over Hartermann in view of Reich, Doering, and Patton, further in view of Fong\"", + "The Examiner finds Hartermann discloses a gasification reactor as set forth in claim 1. except for injecting means in the annular space to inject a liquid in the form of a mist. Ans. 4-6.", + "The Examiner finds Doering teaches fouling of downstream heat transfer surfaces caused by deposition of particles entrained in the hot effluent of gasification reactors was known problem in the art. Id. at 6.", + "Further, the Examiner finds Reich discloses mist spraying a cooling liquid (water) into the hot effluent in an annular space surrounding the quench zone of a gasification reactor *in order to remove particulates from the effluent gas and minimize deposition of solid particles on downstream processes.\" Id.", + "The Examiner concludes \"it would have been obvious to one of ordinary skill in the art to provide a water spray in the annular space surrounding the quench zone of Hartermann's 's gasification reactor as Reich teaches in order to remove entrained particulates from the hot effluent and prevent downstream fouling of heat transfer surfaces, a problem known to exist in the gasification reactor art as evidenced by Doering. Id. at 6-7." + ], + "ptab_opinion": [ + "Appellants' appeal under 35 U.S.C. 8 134 from the Examiner's s decision finally rejecting claims 1-10.", + "We have jurisdiction over the appeal under 35 U.S.C. 6 6(b).", + "We AFFIRM.", + "The invention relates to *an improved gasification reactor and systems for preparing a mixture of carbon monoxide and hydrogen from a carbonaceous stream using an oxygen containing stream.\" Spec. 1:9-12,", + "Claim 1, representative of the invention, is reproduced below:", + "1. A gasification reactor comprising: - a pressure shell for maintaining a pressure higher than atmospheric pressure; - a slag bath located in a lower part of the pressure shell; - a gasifier wall arranged inside the pressure shell defining a gasification chamber wherein during operation the synthesis gas can be formed, a lower open part of the gasifier wall which is in fluid communication with the slag bath and an open upper end of the gasifier wall which is in fluid communication with a quench zone; - the quench zone comprising a tubular formed part positioned within the pressure shell, open at its lower and upper end and having a smaller diameter than the pressure shell thereby defining an annular space around the tubular part, wherein the lower open end of the tubular formed part is fluidly connected to the upper end of the gasifier wall and the upper open end of the tubular formed part is in fluid communication with the annular space; wherein at the lower end of the tubular part injecting means are present for injecting a liquid or gaseous cooling medium and wherein in the annular space injecting means are present to inject a liquid in the form of a mist and wherein an outlet for synthesis gas is present in the wall of the pressure shell fluidly connected to said annular space. Br. 8, Claims App'x.", + "The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. . 103(a):", + "With regard to rejection (1) above, Appellants do not separately argue the claims.", + "Thus, with regard to our disposition of this rejection, claims 3 and 4 stand or fall with independent claim 1. 37 C.F.R. 6 41.37(c)(1)(vii).", + "Moreover, with regard to rejections (2), (3) and (4) above, Appellants rely on the same arguments as advanced against rejection (1).", + "Accordingly, our decision with regard to claim 1 disposes of all issues raised in this appeal.", + "The Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "\"[R]ejections 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.' In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007).", + "After careful consideration of the respective positions of the Examiner and Appellants, we find a preponderance of the evidence supports the Examiner's obviousness conclusion.", + "We will sustain each of the Examiner's Section 103(a) rejections for the reasons expressed in the Answer with the comments below added for emphasis.", + "We disagree.", + "Initially, we note Reich's cooling chamber need not be physically incorporated into Hartermann's in order to arrive at the claimed invention.", + "The fact that two prior art devices could not physically be combined does not mean that those skilled in the art would have found that combining features of the two devices would be nonobvious. Orthopedic Equip. Co., Inc. V. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (*Claims may be obvious in view ofa a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference. \")", + "In this case, Hartermann and Reich teach analogous gasification reactors although Hartermann's 's syngas exits at the top, and Reich's syngas exits at the bottom, of the reaction chamber.", + "However, both Hartermann and Reich inject a cooling liquid into the exiting syngas entering the quench zone. Compare Hartermann, 4:2-4 (\"A quenching medium is supplied in the connection region between the reactor 3 and the quench pipe 7 via conduits 8.\") with Reich, 7:11-14 (\"Quench ring 24 includes outlet nozzles 25 which may be in the form of a series of holes or nozzles around the periphery of quench ring 24 - positioned immediately adjacent to the inner surface of dip tube 21.\")", + "Both Hartermann and Reich have a quench zone extending away from the reaction chamber. Hartermann, Fig. 1, quench pipe 7; Reich, Fig. 3, dip tube 21.", + "Both Hartermann and Reich provide an annular space surrounding the quench zone. Hartermann, Fig. 1, space between quench pipe 7 and cooling wall 11; Reich, Fig. 3, space between dip tube 21 and quench chamber 19.", + "Reich provides a spray injecting means 33 in the annular space to remove entrained particulate, while Hartermann provides heat transfer cylinders 13.", + "Given these significant structural and functional similarities between Hartermann's and Reich's gasification reactors, and Doering's 's recognition of the problem of entrained particles fouling heat transfer surfaces, we have no trouble concluding it would have been prima facie obvious to one of ordinary skill in the art to provide a spray injecting means in Hartermann's 's annular space to remove entrained particles and prevent fouling of downstream heat transfer surfaces.", + "However, \"[the mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.\" In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).", + "Appellants fail to direct our attention to any evidence indicating that the art tried and failed to solve a problem that their mist injecting means solves, nor do we find any.", + "Recently, our reviewing court again considered the issue of the age of the prior art references and the length of time to recognize and solve a problem as an indicia of non-obviousness. See Leo Pharmaceuticals Products, Ltd. V. Rea, 107 USPQ2d 1943, 1948 (Fed. Cir. 2013).", + "Therein, the court found the inventors recognized and solved a problem not recognized or solved for over a decade from the date of the latest pertinent prior art.", + "Unlike the facts before the Leo court, but similarly to the facts before the Wright court, here the prior art recognized the problem as evidenced by Doering and the prior art solved the problem as evidenced by Reich.", + "Accordingly, guided by these precedents, we are satisfied that one of ordinary skill in the art would have recognized Reich's spray injecting means in the annular space surrounding the quench zone would solve the known problem of entrained particles in the hot effluent of Hartermann's gasification reactor." + ] +} \ No newline at end of file diff --git a/opinion_split/2012003009_DECISION.json b/opinion_split/2012003009_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..22b32c5e77deb1cc84de586e430ff27ef820202f --- /dev/null +++ b/opinion_split/2012003009_DECISION.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "Appellant provides no separate arguments for dependent claims 2-8. Br. 13-16; see also id. at 12 (stating that \"[a]s to [the rejection of the claims as unpatentable over Poppe and Mikkelsen], claims 1-8 stand or fall together\")." + ], + "examiner_findings": [ + "The Examiner rejects the claims as follows*: Claims 1, 2, and 4-8 are rejected under 35 U.S.C. S 103(a) as unpatentable over Poppe (US 4, 4,194,255, iss. Mar. 25, 1980) in view of Mikkelsen (US 2006/0288491 A1, pub. Dec. 28, 2006); and claim 3 is rejected under 35 U.S.C. . 103(a) as unpatentable over Poppe in view of Mikkelsen, and further in view of Landvik (US 2005/0084667 A1, pub. Apr. 21, 2005).", + "In the rejection of claim 1, the Examiner relies on Poppe to teach the claim limitation of \"the foam spring having a tubular resilient body made of foam with holes extending inwardly from an outside surface to an inside surface\" (Ans. 5).", + "The Examiner also relies on Mikkelsen to teach the claim limitations directed to \"at least two \u00b7 . foam elements made of foam materials of differing material compositions having differing physical spring characteristics and affixed in axial end abutment to one another to form respective foam layers\" (Id. at 5-6), although the foam layers in Mikkelsen are not tubular, but instead are rectangular.", + "The Examiner states it would have been obvious to modify the tubular foam spring of Poppe, which is a single foam layer, to be multiple foam layers in view of the teaching of Mikkelsen (Ans. 6).", + "In this case, the Examiner relies on Mikkelsen's teaching that a rectangular foam support may be made of multiple layers chosen for their different, desired support and heat transferring characteristics (Ans. 6), citing Mikkelsen, para. [0106]), to modify Poppe's tubular foam spring to have multiple layers." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We AFFIRM.", + "Despite Appellant' s arguments to the contrary, we agree with the Examiner.", + "The Supreme Court has stated that in considering obviousness \"the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\" KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 418 (2007).", + "The Court emphasized \"the need for caution in granting a patent based on the combination of elements found in the prior art,\" and has affirmed that \"[the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.\" Id. at 415-16.", + "This would predictably result in a tubular foam spring made of multiple foam layers providing desired support and heat transferring characteristics.", + "Based on the foregoing, we are not persuaded by Appellant's argument that the combination of Poppe and Mikkelsen is based on impermissible hindsight (Br. 13).", + "We also do not agree with Appellant that the teachings of Poppe and Mikkelsen are mutually exclusive (Id. at 14-15).", + "We note that the use of multiple foam layers, as taught by Mikkelsen, may be incorporated into the tubular foam spring of Poppe, with the resulting combination providing similar advantages as is provided by Mikkelsen; i.e., providing desired support and heat transferring characteristics for the foam spring.", + "With respect to Appellant's s argument that Poppe and Mikkelsen teach away from each other (Id. at 15), we note that Appellant does not point to anything in Poppe stating, for example, that the foam spring must be a single layer, or to anything in Mikkelsen stating, for example, that only a rectangular support can include multiple layers.", + "Thus, neither of the references *criticize[s], discredit[s], or otherwise discourage[s] the solution claimed in the . . . application.\" In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "With respect to Appellant's s argument that the combination of Poppe and Mikkelsen would not produce the claimed invention (Id. at 15-16), we disagree for the reasons discussed above.", + "In particular, we reiterate it would have been obvious to modify the single layer of foam taught by Poppe to be multiple layers, in view of the teachings of Mikkelsen.", + "We also note that Mikkelsen recognizes that the different foam layers have different degrees of resilience and support, and that these layers are chosen to provide a desired overall characteristic (para. [0106]), thereby meeting the claim limitations directed to foam layers having \"different spring characteristics selected in relation to one another to achieve in combination a predetermined overall spring performance\" as required by claim 1.", + "For the above reasons, we sustain the rejection of independent claim 1, as well as the rejections of claims 2-8 that depend from claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2012003039_DECISION.json b/opinion_split/2012003039_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..33d0c867f235a3f7de34cc957e9121e504d8f5ba --- /dev/null +++ b/opinion_split/2012003039_DECISION.json @@ -0,0 +1,66 @@ +{ + "appellant_arguments": [ + "The Appellants argue that the Examiner* s rationale \"is to add nanoparticle[s] to the reactor water (in the piping) before it is pumped into the reactor vessel\" but \"Hannink sole[1]y teaches injecting nanofluids into a flooded reactor cavity to cool the reactor vessel outer surface during a severe accident\" and *Johnson teaches that \u00b7 . . low head pump 74 draws water from refueling water storage tank 96 and provides it to headers 104 located at the top of the containment building 34.\" Reply Br. 2 (emphasis omitted, citing Ans. 17, Hannink, II 3, 4, and 7, and Johnson, col. 9, 11. 6-12).", + "The Appellants thus argue that \"the nanofluids in Hannink and the additives in Johnson are used for two very distinct purposes . , neither of which would have motivated one of skill in the art \\\"to add nanoparticle[s] to the reactor water (in the piping) before it is pumped into the reactor vessel**, because\" \"[nJeither reference teaches pumping nanofluids, \\\"into the reactor vessel. .. Id. at 3.", + "The Appellants argue that \"Puthawala fails to teach \u00b7 \u00b7 . \\\"the controller actuating the motor-driven valve to maintain a nanoparticle concentration throughout a course of a severe accident*** because the cited portion of Puthawala does not teach \"maintaining a nanoparticle concentration throughout a course of a severe accident.\" App. Br. 10.", + "The Appellants reply that \"there is absolutely no indication in any of the references that controller 52 would be inherently capable of maintaining *a nanoparticle concentration throughout a course of a severe accident\"\" because the \"additives [of Johnson] are merely released constantly . . . and not controlled to maintain any concentration \u00b7 \u00b7 \u00b7 and the teaching of Puthawala of merely including control valve 42 in a hydrogen admission line 36 would not have motivated one of skill in the art to have modified spray additive tank 106 in such a manner.' \" Reply Br. 4-5.", + "The Appellants further reply that the nanofluids in Hannink and the additives in Johnson are used for two very distinct purposes (cooling the outer surface of a reactor vessel during a severe accident versus regulating pressure in a containment building), neither of which would have motivated one of skill in the art to modify Johnson to include \"a nanoparticle supply supplying nanoparticle to the emergency core cooling system\" as claimed and \"[nJeither reference teaches supplying nanoparticle, \\\"to the emergency core cooling system\\\" as claimed\" because \"[the nanofluids in Hannink never pass through the reactor vessel core or cool the reactor vessel core, they merely pass over the outer surface of the reactor vessel.\" Reply Br. 4.", + "The Appellants also argue that \"there is no reason or motivation to combine the teachings of Johnson and Hannink with Puthawala.\" App. Br. 10.", + "In particular, the Appellants argue that *one of skill in the art would not look to combine both Johnson and Hannink which are related to protective systems of the nuclear reactor during severe accidents and Puthawala which is only concerned with admitting hydrogen into the primary coolant.\" Id.", + "The Appellants also argue that \"the additives in spray additive tank 106 are sprayed into the containment building 34\" and thus, \"the Examiner's s reasoning for modifying Johnson in view of Hannink to include the *nanoparticle supply' of claim 19 is unsupported by the references and is clearly an improper hindsight reconstruction done solely to meet the language of claim 19.\" Reply Br. 4.", + "The Appellants argue that \"the exact location of the three nanoparticle supplies is based on hindsight and the teachings of the present invention.\" App. Br. 11.", + "The Appellants also argue that \"[the Examiner'. s reasoning for such a modification is completely conclusory and amounts to an impermissible hindsight reconstruction.\" Id." + ], + "examiner_findings": [ + "The Examiner finds that Johnson substantially teaches the subject matter of independent claim 9 but fails to teach a nanoparticle supply. Ans. 5-6.", + "The Examiner finds that Johnson teaches, inter alia, *an emergency core cooling system . \u00b7 including a water source 96 [and] a pump 74.\" Id. at 5.", + "The Examiner finds that Hannink teaches a nanoparticle supply. Id. at 6 (citing Hannink, p. 1, col. 1, I 4, 1. 2).", + "The Examiner concludes that it would have been obvious to connect a nanoparticle supply outlet to the system between the pump and the water source (e.g. replace the fluid in the additive tank of Johnson with the nanoparticle fluid taught in Hannink et a1.) with the motivation of adding the nanoparticles to the water (from the storage tank) before it is pumped into the reactor coolant system. Id.", + "The Examiner determines that it would have been obvious \"to connect a nanoparticle supply outlet \u00b7 \u00b7 with the motivation of adding the nanoparticles to the water (from the storage tank) before it is pumped into the reactor coolant system.\" Ans. 6; see also id. at 17 (stating \"the motivation for replacing the fluid additives in the spray additive tank of Johnson with a nanoparticle solution is to add nanoparticles to the reactor water (in the piping) before it is pumped into the reactor vessel\").", + "The Examiner finds that Johnson substantially teaches the subject matter of claim 19 but *fails to teach a nanoparticle supply supplying nanoparticles to the emergency core cooling system, the nanoparticle supply including a motor-driven valve and a controller controlling the motor valve.' Ans. 9.", + "The Examiner finds that \"Hannink \u00b7 \u00b7 . teaches a nanoparticle supply supplying nanoparticles to the emergency core cooling system through a manual valve.\" Id. at 9-10.", + "The Examiner further finds that \"Johnson and Hannink \u00b7 . fail to teach a valve, a motor driving the valve, and a controller controlling the motor valve, the controller actuating the motor-driven valve to maintain a nanoparticle concentration through a course of a severe accident.\" Id. at 10.", + "The Examiner finds that \"Puthawala \u00b7 \u00b7 teaches a valve 42, a motor driving the valve, and a controller 52 controlling the motor valve 42, the controller 52 actuating the motor-driven valve 42 to maintain a nanoparticle concentration through a course of a severe accident.\" Id. (citing Puthawala, col. 4, 11. 25-32 and fig. 1).", + "The Examiner states that a \"motivation for including a motor-driven valve and a controller in a nanoparticle supply is to provide a valve that can be operated without manual actuation and control\" and concludes that \"it would have been obvious \u00b7 . to include a motor-driven valve and a controller in the nanoparticle supply as described above.\" Id.", + "The Examiner responds that \"the limitation \u00b7 . \u00b7 is a recitation of intended use\" and that the \"motor-driven valve, disclosed in Puthawala, is capable of maintaining a nanoparticle concentration throughout a course of a severe accident.\" Ans. 20, 21.", + "The Examiner responds that \"Johnson, Hannink, and Puthawala are in the field of applicant's endeavor and are reasonably pertinent to the particular problem with which Applicant was concerned.\" Ans. 21.", + "The Examiner finds that Johnson substantially teaches the subject matter of independent claim 25 but **fails to teach a first nanoparticle supply \u00b7 \u00b7 \u00b7 , a second nanoparticle supply \u00b7 \u00b7 \u00b7 , and a third nanoparticle supply . \u00b7 ++ Ans. 11.", + "The Examiner finds that \"Hannink \u00b7 \u00b7 \u00b7 teaches the injection of nanofluids from multiple small tanks \u00b7 \u00b7 \u25a0 but fails to teach the exact injection locations.\" Id. (citing Hannink, col. 2, para. 3, 11. 5-7).", + "The Examiner further finds \"Gerlowski teaches a nitrogen supply, which is capable of containing a nanoparticle fluid, having a supply outlet exiting into an accumulator 105\" and \"Hannink \u00b7 \u00b7 teaches that nanoparticle tanks can be attached to the accumulators.\" Id. at 11-12 (citing Gerlowski, col. 5, 11. 59- 62 and fig. 2 and Hannink, col. 2, para. 5, 11. 10-11).", + "The Examiner concludes that it would have been obvious \"to connect a first nanoparticle supply outlet to an accumulator in order to inject nanoparticles into the system while overpressurizing the accumulators to drive the injection.\" Id. at 12.", + "The Examiner finds that \"Gerlowski also teaches a nitrogen supply and boron supply, which are each capable of containing nanoparticle fluid, having a supply outlet between a high pressure pump 115 and a first water source (water from hot leg 15; figure 1, column 1, lines 63-65)\" and concludes that [i]t would have been obvious to one of ordinary skill in the art to connect the second nanoparticle supply outlet to the system between the high pressure pump and the first water source with the motivation of adding the nanoparticles to the water before it is pumped into the reactor coolant system. Ans. 12.", + "The Examiner further finds that \"Johnson teaches \u00b7 \u00b7 \u00b7 an additive tank 106, which is capable of containing a nanoparticle fluid, having a supply outlet between the low pressure pump 74 and the refueling water storage tank 96 through valves 108 and 110 (figure 5; column 9, lines 18-21)\" and concludes that \"lilt would have been obvious to one of ordinary skill in the art to connect the third nanoparticle supply outlet to the system between the pump and the refueling water storage tank with the motivation of adding the nanoparticles to the water before it is pumped into the reactor coolant system.\" Ans. 12-13." + ], + "ptab_opinion": [ + "We AFFIRM-IN-PART.", + "The Appellants' argument is persuasive.", + "Therefore, the Examiner'. s articulated reasoning lacks rational underpinning because neither Hannink nor Johnson discloses by a preponderance of the evidence that water from refueling water storage tank 96 is pumped into the reactor coolant system or into the reactor vessel.", + "Accordingly, we cannot sustain the Examiner's s rejection of claims 9- 16 and 28-30 under 35 U.S.C. .5 103(a) as unpatentable over Johnson and Hannink.", + "The Appellants' argument is not persuasive.", + "The characteristic alleged to be inherent in the prior art must be necessarily present.", + "However, where the alleged inherent characteristic is a function or intended use of the device, the Appellants, and not the Examiner, are in the best position to establish the existence or non-existence of this characteristic.", + "Thus, the Examiner may shift the burden to the Appellants to prove that the prior art does not possess the characteristic alleged by the Examiner to be inherent.", + "Nevertheless, the Examiner must provide sufficient evidence or scientific reasoning to establish the reasonableness of the Examiner's belief that the functional limitation is an inherent characteristic of the prior art.", + "The Examiner reasonably found that the structural similarities between valve 42 of Puthawala and the claimed invention provided a sufficient basis to conclude that Puthawala's motor-driven valve 42 and associated controller could perform all the recited functions and uses.", + "The Appellants' argument that the additives of Johnson are released constantly and that Puthawala teaches including valve 42 in a hydrogen admission line does not show why valve 42 and its controller are not capable of maintaining a nanoparticle concentration throughout a course of a severe accident, as required by claim 19.", + "The Appellants' arguments are not persuasive.", + "The Appellants cite no definition for *emergency core cooling, \" nor can we find one, in their Specification that would preclude the emergency core cooling disclosed by Johnson and Hannink.", + "Also, the Appellants' Figure 1 shows emergency core cooling 50 that includes nanoparticle supply 220 that supplies a pump 110 which pumps \"To Containment Spray System.\" See also Spec., para. [0036].", + "The Appellants' arguments are not persuasive.", + "Although the Appellants argue that Puthawala is not related to Johnson and Hannink, the Appellants do not explain why Puthawala is not reasonably pertinent to the problem with which the inventor was concerned or because of the subject matter with which it deals, would not have logically commended itself to an inventor's attention in considering the problem. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) and In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).", + "The Appellants' arguments are not persuasive.", + "Hannink articulates a reason and a suggestion to make the proposed combination, and thus, there is no basis to conclude that the Examiner improperly relied upon hindsight.", + "Therefore, Hannink provides a reason and motivation to make the Examiner* s proposed combination.", + "Accordingly, we sustain the Examiner': s rejection of claim 19 under 35 U.S.C. & 103(a) as unpatentable over Johnson, Hannink, and Puthawala.", + "The Appellants' arguments are persuasive.", + "Furthermore, none of the cited references teach storing nanoparticles into a nitrogen or boron supply, such as Gerlowski's.", + "Thus, none of the references teaches putting nanoparticle supplies with an outlet exiting into an accumulator or between a pump and a water source, as required by claim 25.", + "Accordingly, we do not sustain the Examiner's s rejection of claims 25 and 26 under 35 U.S.C. 5 103(a) as unpatentable over Johnson, Hannink, and Gerlowski.", + "The Examiner does not cite Kim for any teaching that cures the deficiency discussed supra regarding the proposed combination of Johnson, Hannink, and Gerlowski. See Ans. 14.", + "Therefore, we do not sustain the Examiner's s rejection of claim 27 under 35 U.S.C. & 103(a) as unpatentable over Johnson, Hannink, Gerlowski, and Kim.", + "The Examiner does not cite Buongiorno for any teaching that cures the deficiency discussed supra regarding the proposed combination of Johnson and Hannink. See Ans. 14-15.", + "Therefore, we do not sustain the Examiner'. rejection of claims 31 and 45 under 35 U.S.C. .5 103(a) as unpatentable over Johnson, Hannink, and Buongiorno.", + "The Examiner does not cite Buongiorno for any teaching that cures the deficiency discussed supra regarding the proposed combination of Johnson and Hannink. See Ans. 16.", + "Therefore, we do not sustain the Examiner's rejection of claims 38 and 46 under 35 U.S.C. .5 103(a) as unpatentable over Johnson, Hannink, Gerlowski, and Buongiorno." + ] +} \ No newline at end of file diff --git a/opinion_split/2012003340_DECISION.json b/opinion_split/2012003340_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4e3427771a629e8489d3b4da4b72e4fe333d7fbb --- /dev/null +++ b/opinion_split/2012003340_DECISION.json @@ -0,0 +1,54 @@ +{ + "appellant_arguments": [ + "Appellant disputes that the Examiner provides a *reason based on a rational underpinning\" for combining Racovolis and Redlich. (App. Br. 15- 19.)", + "Specifically, Appellant argues that the Examiner's sole basis for combining the references, \"so that access is granular,\" \" does not qualify as a reason for making the combination but is an unsupported conclusion that simply notes what might result if the combination is made. (Id. at 17.)", + "Appellant argues, therefore, that the Examiner engaged in hindsight analysis \"based on the Appellant's own teachings, not the prior art.\" (Id. at 17-18.)", + "Appellant contends that the Examiner ignores the fact the Racovolis already expressly teaches a **multiple-tier system for \"providing a finer level of granularlity of access' and, thus, [one] would not look to Redlich for providing access that is granular.\" (App. Br. 17.)", + "Appellant argues that there is no reason for modifying Racovolis so that the \"connection is monitored\" as Redlich teaches. (App. Br. 17.)", + "II. The Patentability of Claims 2. 3, 6. 9, 12, 13, 15, and 18 Over the Cited Combinations With respect to claims 2, 3, 6, 9, 12, 13, 15, and 18, Appellant argues that the Examiner failed to establish that each and every limitation is taught by the recited combinations.", + "With respect to claims 2, 3, 6, 12, and 18, Appellant's arguments are based on specific language in the Specification that allegedly distinguishes the claimed invention from the teachings of the references cited by the Examiner. (See App. Br. 20-26.)", + "With respect to other claims, such as claim 13, Appellant merely restates the disputed limitation and contends that it is not disclosed. (See App. Br. 21-22.)" + ], + "examiner_findings": [ + "Examiner's 's Rejections Claims 1-7, 10-13, and 16-21 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over Racovolis and Redlich. (Ans. 4-13.)", + "Claims 8. 9, 14 and 15 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Racovolis, Redlich, and Murotani. (Ans. 4, 14.)", + "ANALYSIS I. The Combination of Racovolis and Redlich The Examiner finds independent claims 1, 6, 12, 13, 18, 19, and 21 unpatentable over the combination of Racovolis and Redlich.\" (Ans. 4.)", + "Specifically, the Examiner finds that Racovolis teaches \"[d]esignating a portion of content as redacted,' \" **[u]pon electronically saving the content, encrypting the redacted portion,\" \" *[i]dentifying a user,\" and \"li]f the user attempting to interact with the content matches one of the established various users able to access the redacted portion, decrypting the encrypted redacted portion, otherwise preventing access \u00b7 \u00b7 \" (Id. at 5 (citing Racovolis 11 59-60, 71, 73).)", + "The Examiner finds that Racovolis does not teach \"designating user roles instead of users,\" \" but that Redlich teaches this limitation. (Id. (citing Redlich, I 387) (emphasis added).)", + "The Examiner concludes that it would have been obvious to modify the users of Racovolis to include the user roles of Redlich. (Id.)", + "The Examiner finds that Racovolis does not expressly disclose this limitation, but that Redlich teaches it by \"enabling access to [redacted content] to defined parties at defined times within defined threat modes.\" (Ans. 12 (citing Redlich I 59).)" + ], + "ptab_opinion": [ + "We are unpersuaded by Appellant's argument.", + "To be sure, to support a conclusion of obviousness relying on multiple references, there must be *some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct.\" In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).", + "One way to support a conclusion of obviousness is to show some suggestion in the prior art to combine known elements to achieve the claimed invention. DyStar Textilfarben GmbH & Co. Deutschland KG V. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); see also KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398 (2007) (\"Ilt can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. .", + "Here, the Examiner provided reasons to support the conclusion of obviousness based on showing explicit suggestions in the prior art for combining the teachings of Racovolis and Redlich.", + "Appellant does not dispute the finding that the difference between claim 1 and Racovolis is that the claim requires role-based access to redacted portions of a document. (See App. Br. 15-19.)", + "However, Redlich teaches providing granular access based on different factors including user and role. (Ans. 15 (citing Redlich I 387 (\"[Alccess is granular by role, user, and other discriminators.\" )", + "Moreover, as the Examiner notes, (Ans. 15), Redlich teaches how roles are used to protect confidential records:", + "For example, patient records have stringent requirements on releasability, yet multiple individuals have needs to access and update information.", + "Similarly, universities require confidentiality of student records, and grades, again with many access roles defined.", + "In the commercial world, inter-corporate collaboration can be significantly enhanced through the use of shared documents that limit information exposure Redlich, I 37 (emphasis added).", + "It is worth noting that this is the same example Appellant describes in his own Specification for using role-based access. (Spec. 4 (\"The document might contain a patient 's medical information. \u00b7 \u00b7 \u00b7 The invention provides mechanisms whereby users with different rights can unlock and see just the portions of a document they are entitled to see based on their role \u00b7 \u00b7 \u00b7 .\") (emphasis added).)", + "Contrary to Appellant's argument, the Examiner concludes that the combined teachings of Racovolis and Redlich suggest making the substitution of role-based access in Redlich for the user-based access in Racovolis. (Ans. 15.)", + "However, this argument ignores Redlich's explicit teaching that role-based access can be used for access to hospital or student records--the very same reason that Appellant's Specification describes for using role-based access.", + "This explicit teaching of both a problem and the solution, which closely matches Appellant's own, is sufficient to support a claim of obviousness. See KSR, 550 U.S. at 419-20 (\"One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims. \").", + "Accordingly, we find that the Examiner has found actual teachings in the prior art and has provided a sufficient rationale for the combination.", + "We find Appellant's argument unpersuasive.", + "Appellant does not dispute that Redlich's teaching suggests a monitored connection. (App. Br. 17.)", + "As for the reason for modifying Racovolis to include the monitored connection, the sentence quoted by the Examiner provides the reason, controlling access for defined parties at defined times. See Redlich 1 59.", + "The same paragraph explains that this provides \"flexibility\" and \"the ability to share the document \u00b7 . while still maintaining security over the most important and critical content of the document.\" Redlich I 59.", + "Thus, a monitored connection provides more granular security because it can control access, not just for certain roles, but at certain defined times as well.", + "We find that the Examiner has provided a sufficient rationale to support the conclusion of obviousness as to claim 19 (and claim 4).", + "Because we are not persuaded that the combination of Racovolis and Redlich is improper, we sustain the rejection of independent claims 1, 19, and 21 and dependent claim 4 under 35 U.S.C. 8 103(a).", + "With respect to dependent claims 5, 7, 8, 10, 11, 14, 16, 17, and 20, Appellant makes no separate patentability arguments.'", + "Therefore, we sustain the rejections of these claims as well.", + "We sustain the Examiner's s rejections based on the findings and conclusions expressed by the Examiner in the Final Action and Answer with the following comments added for emphasis.", + "However, while the Specification can be examined for proper context, limitations from the Specification will not be imported into the claims. See CollegeNet, Inc. V. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed Cir. 2005).", + "We agree with the Examiner that \"the features upon which appellant relies \u00b7 \u00b7 . are not recited in the rejected claim(s),\" and, therefore, do not accord the claims patentable weight. (Ans. 16-17.)", + "Accordingly, we find Appellant's arguments are not commensurate with the scope of these claims and, as such, are not persuasive.", + "We do not consider these as separate arguments for patentability. See 37 C.F.R. 8 41.37(c)(1)( vii) (201 1) (\"A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.\" ); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).", + "With respect to these and other limitations of 9. 12, and 15 that Appellant contends are not taught by the references, we agree with the Examiner's finding and conclusions as they are supported by a preponderance of the evidence.", + "Accordingly, we sustain the rejection of claims 2, 3, 6, 9, 12, 13, 15, and 18 under 35 U.S.C. $ 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2012003399_DECISION.json b/opinion_split/2012003399_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..02a9b7842042930cdd2f573669b41f02b0b0b165 --- /dev/null +++ b/opinion_split/2012003399_DECISION.json @@ -0,0 +1,39 @@ +{ + "appellant_arguments": [ + "SUMMARY OF INVENTION Appellants claim a method for billing an ad-hoc network node (e.g., an airplane computer) for intermittent Internet access, a computer readable medium for storing computer code for performing the claimed method, and a system and apparatus for executing such code to perform the claimed method. (App. Br. 6-9, Claims App*x.)", + "ISSUES ON APPEAL Appellants argue the Examiner has failed to state a prima facie case that claims 1, 2, 4, 5, 7, 8 and 10-23 are obvious under 35 U.S.C. & 103(a) in view of Bernard, Bowcutt and Kalavade. (App. Br. 10.)", + "In particular, Appellants argue that the Examiner's rejection of the claims is flawed because (1) Kalavade is non-analogous art and therefore cannot be properly combined with Bernard, and (2) even if Kalavade is analogous art the combination of Bernard, Bowcutt and Kalavade does not disclose (a) \"determining an adjusted duration of travel by subtracting from the duration of travel any time when Internet access was not available,\" (b) \"generating a billing statement based on the adjusted duration of travel and the geographical area where Internet access is provided.\" and (c) \"wherein the billing statement includes a summary of the duration of travel and also highlights areas where Internet access was not available.\" (Id. App. Br. 11 and 12.)", + "A. COMBINATION OF REFERENCES Appellants argue that it is improper to combine Kalavade with Bernard because Kalavade is non-analogous art. (App. Br. 19.)", + "Appellants argue that Kalavade is not reasonably pertinent to the problem solved by Appellants, because it is directed toward integrating local and wide area networks to obtain the benefit of having continuous network access, rather than toward efficiently monitoring ad-hoc network nodes. (App. Br. 24 and 25.)", + "B. DETERMINING AN ADJUSTED DURATION OF TRA VEL BY SUBTRACTING FROM THE DURATION OF TRAVEL ANY TIME WHEN INTERNET ACCESS WAS NOT AVAILABLE Appellants next argue that even if Kalavade is analogous art, the combination of Bernard, Bowcutt and Kalavade, considered as a whole, fails to disclose determining an adjusted duration of travel by subtracting from the duration of travel any time when Internet access was not available. (App. Br. 17.)", + "C. GENERATING A BILLING STATEMENT BASED ON THE ADJUSTED DURATION OF TRA VEL AND GEOGRAPHICAL AREA WHERE INTERNET ACCESS IS PROVIDED Appellants next argue that the combination of Bernard, Bowcutt and Kalavade, considered as a whole, fails to disclose \"generating a billing statement based on the adjusted duration of travel and geographical area where Internet access is provided.\" (App. Br. 13.)", + "Appellants counter that the accumulated statistics disclosed in Bernard are not fairly equivalent to either \"geographic area\" or \"duration of travel.\" (App. Br. 14)", + "D. WHEREIN THE BILLING STATEMENT INCLUDES A SUMMARY OF THE DURATION OF TRA VEL AND ALSO HIGHLIGHTS AREAS WHERE THE INTERNET ACCESS WAS NOT AVAILABLE Lastly, Appellants argue that the Examiner failed to show that Bernard, Bowcutt or Kalavade teaches \"the billing statement includes a summary of the duration of travel and also highlights areas where the Internet access was not available.\" (App. Br. 15.)" + ], + "examiner_findings": [ + "The Examiner replies that Kalavade is pertinent and analogous art because both Kalavade and the Appellants invention are directed toward billing ad-hoc network nodes for network / Internet access. (Ans. 23 and 24.)", + "The Examiner replies that Bernard discloses determining the percentage of time an aircraft is connected to the Internet, and that this percentage of time is equivalent to Appellants \"adjusted duration\" of travel. (Ans. 19 and 20.)", + "Although Bernard does not explicitly disclose determining the adjusted duration of travel by subtracting from the duration of travel any time when Internet access was not available, the Examiner concludes that those of skill in the art would have considered it obvious to have done so in view of Bowcutt. (Ans. 20.)", + "The Examiner replies that Bernard does so by disclosing generating a billing statement based on computed statistics such as the percentage of time that an aircraft was connected to the Internet, where the computed statistics are based on the aircraft route data. (Ans. 18, 19.)", + "The Examiner finds that Kalavade, which discloses generating an itemized bill for a user of 802.11 networks, and in particular for locations where 802.11 network access is available and unavailable, provides such information. (Ans. 21.)" + ], + "ptab_opinion": [ + "We AFFIRM.", + "We agree with the Examiner.", + "In other words, like Appellants claim 1, Kalavade is directed to efficiently monitory and billing ad-hoc network nodes for intermittent network access.", + "We therefore affirm the Examiner's conclusion that Kalavade constitutes art analogous to the other cited prior art and Appellants' claims.", + "We agree with the Examiner.", + "It is axiomatic that in order to determine the percentage of time it is connected to the Internet, the aircraft must subtract from some total time the amount of time it is not connected to the Internet, and divide this difference by the total time.", + "While Bernard does not disclose what total time the aircraft uses in determining the percentage of time it is connected to the Internet, we find that a person of ordinary skill in the art would have found it obvious to use the aircraft's s total flight time or duration of travel.", + "Thus, by disclosing determining the percentage of time an aircraft is connected to the Internet, we find Bernard discloses to a person of ordinary skill in the art determining an adjusted duration of travel by subtracting from the duration of travel the time that Internet access was not available.", + "We disagree.", + "We addressed above Appellants' argument that Bernard'. s disclosure of billing based on a percentage of time connected to the Internet does not fairly disclose billing based on an adjusted duration of travel, and found it unconvincing.", + "We similarly find unconvincing Appellants' argument that Bernard's s disclosure of billing based on statistics that are accumulated based on aircraft location and route data, such as network availability statistics, fails to fairly disclose billing based on geographic area where Internet access is provided. (Bernard, 16:4-7, 16:24-26)", + "In reaching this conclusion, we note that Appellants' real argument does not appear to be with what is literally disclosed in Bernard, but with whether that disclosure fairly reads on a proper construction of \"generating a billing statement based on the adjusted duration of travel and geographic area where Internet access is provided.\" (App. Br. 11, 12, 14, 15)", + "We review claims with their broadest reasonable interpretation consistent with the Specification. See, In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983.)", + "In view of these disclosures, we construe \"generating a billing statement based on the adjusted duration of travel and geographical area where Internet access is provided\" to mean generating a billing statement based on the total duration of travel, less the duration of travel through any geographical area where Internet access was not available.", + "We find that Bernard discloses this limitation.", + "We agree with the Examiner.", + "Accordingly, those of skill in the art would have considered it obvious from Kalavade to include a summary of the duration of travel and areas where the Internet access was not available in a method of billing for Internet access in an ad-hoc network as claimed." + ] +} \ No newline at end of file diff --git a/opinion_split/2012003771_DECISION.json b/opinion_split/2012003771_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8dd5f6a6f1ddb0c6b4e3c412fde44691e2e25d49 --- /dev/null +++ b/opinion_split/2012003771_DECISION.json @@ -0,0 +1,43 @@ +{ + "appellant_arguments": [ + "Appellants seek our review under 35 U.S.C. 5 134 of the Examiner's final decision rejecting claims 1-18.", + "Appellants' invention is directed to a method and system for providing a financial analysis of an enhanced wireless communications service (Spec. 1).", + "Claim 1 is illustrative: 1. An analytic system comprising: a processor; a data storage device adapted to receive and store customer and revenue data; a data manipulation module associated with the data storage device, comprising processing instructions that when executed by the processor derive calculated values from data stored in the data storage device; and an interface device, controlled by the processor, that interacts with a user and displays data including the calculated values from data stored in the data storage device, and displays a diagnostic tree representing an enterprise's revenue stream decomposed into a plurality of contributory revenue components and a calculated value associated with revenue generated from one of the contributory revenue components, wherein the data manipulation module calculates the calculated value from the one of the contributory revenue components of the decomposition of the enterprise's revenue stream based on the user interaction.", + "Appellants appeal the following rejections:", + "Appellants rely on the arguments made in response to the rejection of claims 1 and 10 in responding to the rejection of the above-referenced claims.", + "Appellants rely on the arguments made in response to the rejection of claim 1 in responding to the rejection of the above-referenced claims." + ], + "examiner_findings": [ + "The Examiner relies on the following prior art references as evidence of unpatentability: Lokken US 6,167,396 Dec. 26, 2000 Suresh US 6,208,990 B1 Mar. 27, 2001 Eskandari US 2004/0039593 A1 Feb. 26, 2004 Hao US 2005/0177598 A1 Aug. 11, 2005 Adduci WO 01/93158 A1 Dec. 6, 2001 Kornel Terplan, OSS Essentials: Support System Solutions for Service Providers, 7601010 Advance course in network based automation (Dec. 2003) (\"Terplan\").", + "Claims 1, 3, 8, 10, and 17 are rejected under 35 U.S.C. & 103(a) as being unpatentable over Eskandari in view of Adduci.", + "Claims 2 and 14 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over Adduci in view of Suresh.", + "Claim 4 is rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over Eskandari in view of Adduci and further in view of Hao.", + "Claims 5, 6, 15, 16, and 18 are rejected under 35 U.S.C. & 103(a) as being unpatentable over Eskandari in view of Adduci in view of Hao and further in view of Lokken.", + "Claims 7 and 11-13 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over Eskandari in view of Adduci and further in view of Lokken.", + "Claim 9 is rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over Eskandari in view of Adduci in view of Lokken and further in view of Terplan." + ], + "ptab_opinion": [ + "We have jurisdiction over the appeal under 35 U.S.C. \u25cf 6(b).", + "We AFFIRM.", + "Does Adduci in combination with Eskandari teach, suggest, or disclose (1) a data manipulation model comprising processing instructions that when executed calculates values from one of the contributory revenue components of the decomposition of the enterprise's revenue stream?", + "(2) an interface device that displays a diagnostic tree representing an enterprise's revenue stream decomposed into a plurality of contributory revenue components based on customer use of the products or services?", + "and (3) a manipulation model that calculates a decomposition of an enterprise's 's revenue stream based on a user interaction as required by claim 1?", + "Does Adduci disclose allowing the user to select portions of the diagnostic tree to be displayed as is recited in claim 10?", + "We adopt the Examiner's s findings on pages 5-8 and pages 10-12 of the Answer as our own.", + "We are not persuaded of error on the part of the Examiner by Appellants' argument that Adduci in combination with Eskandari does not teach, suggest, or disclose a data manipulation model comprising processing instructions that calculates the calculated value from the one of the contributory revenue components of the decomposition of the enterprise's revenue stream.", + "We agree with the Examiner' s response to this argument found on page 27-28 of the Answer.", + "In this regard, we agree that the depiction in Figure 15 of revenue streams per customer category is a disclosure of calculated values from one of the contributory revenue components of a decomposition of revenue streams.", + "We are also not persuaded of error on the part of the Examiner by Appellants' argument that the combination of Adduci and Eskandari does not disclose displaying a diagnostic tree representing an enterprise's revenue stream decomposed into a plurality of contributory revenue components based on customer use of the products or services.", + "We agree with the Examiner'. s response to this argument found on pages 30-31 of the Answer that Figure 9 of Adduci discloses this subject matter.", + "In this regard, Figure 9 is a graph that depicts revenue from different market segments, i.e., adults, youth, large businesses, medium businesses and small businesses and as such depicts revenue streams decomposed into a plurality of contributory revenue components based on customary usage as broadly claimed.", + "We are not persuaded of error on the part of the Examiner by Appellants' argument that the prior art does not disclose a manipulation model that calculates a decomposition of an enterprises revenue stream based on a user interaction.", + "We agree with the Examiner' s response to this argument found on pages 31-32 of the Answer that this subject matter is taught in Eskandari.", + "In addition, we find that the teaching in Adduci at pages 16-17 that values are calculated based on user-specific input data meets this limitation of the claim.", + "In view of the foregoing, we will sustain the Examiner* s rejection of claim 1.", + "We will also sustain the rejection as it is directed to claims 3, 8, and 17 because the Appellants have not argued the separate patentability of these claims.", + "We are not persuaded of error on the part of the Examiner by Appellants' argument that the prior does not disclose allowing a user to select portions of the diagnostic tree to be displayed as recited in claim 10.", + "We agree with the Examiner that the teaching in Adduci that a user can choose which wireless application to evaluate and which wireless application to display a graphical depiction of a financial analysis thereof is a teaching of allowing a user to select portions of a diagnostic tree to be displayed (p. 16, 1. 24 - p. 17, 1. 22; Fig. 4).", + "In view of the foregoing, we will sustain the Examiner* s rejection of claim 10.", + "We do not find the arguments persuasive as to these claims for the same reasons given above." + ] +} \ No newline at end of file diff --git a/opinion_split/2012003772_DECISION.json b/opinion_split/2012003772_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5f42f80292ab8753215e3548feb4d915e4e91023 --- /dev/null +++ b/opinion_split/2012003772_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "The claimed subject matter relates to \"a [c]urvilinear spa \u00b7 \u00b7 \u00b7 that can hold water and includes support for spa users while experiencing the benefits of hydrotherapy.\" Spec. para. 21; figs. 1, 6, 7.", + "Claims 12 and 15, the independent claims, are illustrative of the claimed subject matter and recite: 12. A method of providing an audibly pleasing sound in a spa, the method comprising: providing a spa shell; disposing a ridge at an interior area of the spa shell; providing water to the ridge; flowing water over a top of the ridge and down a slope descending from the top of the ridge to a level below the top of the ridge, the slope having a patterned top surface configured to interact with water; and interacting water with the patterned top surface to produce an audibly pleasing sound to a spa user.", + "15. A spa comprising: a spa shell defining a main spa area and defining a spa wall; a ridge disposed at an interior area of the spa with respect to the spa wall and integrated to the spa shell; and a slope descending from the ridge to the interior arca of the spa, the slope further including a patterned surface configured to interact with water flowing over the ridge and down the slope producing an audibly pleasing sound to a spa user." + ], + "examiner_findings": [ + "'2 Victor Lee Walker and Timothy P. Pflueger (Appellants) appeal under 35 U.S.C. , 134(a) from the Examiner's decision to reject under 35 U.S.C. 6 102(b) claims 12, 13, 15 and 17-20 as anticipated by Frank (US 6,450,122 B1; iss. Sept. 17, 2002).", + "The rejection of independent claims 12 and 15 is based on the Examiner's interpretation of the term *spa* as broadly encompassing the basin of Frank. See Ans. 4-6." + ], + "ptab_opinion": [ + "Claim 16 has been cancelled.", + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We REVERSE.", + "We construe the relevant claim language at the outset to serve as a basis for our review of the rejection.", + "We recognize that claims are to be interpreted in light of the Specification, and although Appellants' Specification does not explicitly define the term *spa,* we note that Appellants' Specification appears to treat the term \"spa\" as a term of art that means a structure **that can hold water and includes support for spa users while experiencing the benefits of hydrotherapy. See Spec. para. 21.", + "Appellants' Specification describes that [t]ypical linear spas are very plain looking, especially when the cover is on and they are not in use.", + "Linear spas are not architecturally pleasing and are usually not a focal point for the customers' landscape architecture.", + "Accordingly, many spa owners hide their spas with landscaping or put them inside structures such as gazebos. Id. at para. 3.", + "The Specification further describes that [s]pas rarely have internal steps because they sacrifice too much seating area.", + "Coupled with the awkward seat configurations found in most linear spas, ingress and egress for a user of a typical spa is difficult.", + "Yet another limitation in typical spa designs is the placement and functionality of the filter bucket.", + "Most filter buckets occupy a *dead area,' i.e., an area of the spa that cannot be utilized for hydrotherapy or other uses. Id. at para. 5.", + "It would be clear to one of ordinary skill in the art, reading Appellants\" Specification, that the term \"spa\" refers to a structure that holds water and includes support for spa users while experiencing the benefits of hydrotherapy. See Spec. para. 21.", + "As such, the Examiner's interpretation of the basin of Frank as satisfying the \"spa\" limitation of the claims is inconsistent with the understanding that one of ordinary skill in the art would have of the claim language when read in light of the Specification.", + "See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) C (*Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. \").", + "The Examiner's determination of anticipation of independent claims 12 and 15 by Frank is based on an unreasonably broad interpretation of a *spa** as encompassing a basin as disclosed by Frank. See Ans. 4-6.", + "Accordingly, we do not sustain the Examiner' s rejection of independent claims 12 and 15, and their respective dependent claims 13 and 17-20, as anticipated by Frank." + ] +} \ No newline at end of file diff --git a/opinion_split/2012004469_DECISION.json b/opinion_split/2012004469_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..80693a73ad74ec352b2b9db4112fb2f2272ed644 --- /dev/null +++ b/opinion_split/2012004469_DECISION.json @@ -0,0 +1,112 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "Claims 1-12 and 18-21 stand rejected under 35 U.S.C. 5 102(b) as anticipated by Bonabeau.", + "Claim 13 stands rejected under 35 U.S.C. $ 103(a) as unpatentable over Bonabeau and Hintermeister.", + "Claim 14 stands rejected under 35 U.S.C. 8 103(a) as unpatentable over Bonabeau, Johnson, and Talekar.", + "Third, as the Examiner found the VP which includes values or utility of the goods or services (see pg. 11, [0118] which describes the Quality of service as a VP building block) and financial results which includes pricing strategies, marketing strategy and costs, etc. as related to cost and pricing are in fact a non-functional or quality attribute in that they describe or gauge the performance of goods and services of the system from a customer or cost perspective Ans. 17- 18.", + "Fourth, as the Examiner found, [t]he term of \"their relative priorities\" is a very broad term and under broadest reasonable interpretation can be construed as referring to the prioritization or ranking of the business models, where the models are built using the VP, OA, and/or RM building blocks.", + "In essence, the applied building blocks describe the business model, so if a given model is ranked highly, the specific quality or non-functional attributes of a particular block used is effectively ranked in the same manner. Ans. 18." + ], + "ptab_opinion": [ + "Marin Litoiu, Karl Pierre Weckworth, and Alexei Lapouchnian (Appellants) seek review under 35 U.S.C. 5 134 of a final rejection of claims I 1-14 and 18-21, the only claims pending in the application on appeal.", + "We have jurisdiction over the appeal pursuant to 35 U.S.C. 8 6(b).2", + "The Appellants invented a way of using business models for business process adaptation using goal modeling and analysis (Specification para 1).", + "An understanding of the invention can be derived from a reading of exemplary claim 1. which is reproduced below [bracketed matter and some paragraphing added].", + "1. A computer-implemented business process (BP) adaptation system for a requirements-driven and preferences-driven configuration of business processes, comprising: [0.a] at least one memory; [0.b] at least one processor configured to: [1] elicit a high-variability goal model (HVGM) for a business process (BP) by a business analyst or a requirements engineer, wherein the HVGM captures and refines goals of the BP while modeling alternative options in which goals can be attained, wherein the HVGM captures non-functional or quality attributes used in an evaluation of a performance of the BP and an estimation ofhow the alternative options affect the quality attributes; [2] generate a workflow-level high-variability executable model (HVEM) of the BP from the HVGM; [3] deploy an instance of the HVEM; [4] execute the BP using the instance of the HVEM; [5] monitor the execution of the BP by a business process monitoring infrastructure; [6] update preferences with respect to the BP by stakeholders; [7] select alternative options based on monitoring results and updated preferences; and [8] reconfigure the instance of the HVEM based on the selected alternative options.", + "The Examiner relies upon the following prior art:", + "Bonabeau US 2001/0053991 A1 Dec. 20, 2001", + "Hintermeister US 2006/0085790 A1 Apr. 20, 2006", + "Johnson US 2007/0233536 A1 Oct. 4. 2007", + "Talekar, Amit T. et al.; Model, Publish, and Review: Integrating WebSphere Business Modeler 6. O. 1 and WebSphere Business Modeler Publishing Server 6. O. 1; 18, Oct 2006; IBM; pgs. 1-14", + "The issues of obviousness turn primarily on the breadth of claim 10.", + "The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence.", + "Bonabeau is directed to generating new business models in an environment, or ecosystem, of existing business models and customers, and more particularly, to describing existing businesses with corresponding business models, simulating the business models to determine their performances, selecting those business models having optimal performance values, and transforming the selected business models to create new businesses. Bonabeau para 2.", + "Bonabeau describes initial business models that solve the business problem and then optimizing one or more of these models to find improved and effective solutions to the business problem.", + "These models are described in a modular fashion including, each model having a value module, which describes possible goods, services, or other values produced by a business along with their target customers, an operational module, which describes the business inputs and the technology and transformations needed to obtain business outputs, and a revenue module, which describes pricing and cost models, how revenue from operations is obtained, and generally consideration exchanged.", + "These descriptions of these components are amenable to computer-simulation by being described in language appropriate to the business problem at hand, and at least by being described in a regular syntax with determined meanings. Bonabeau para 8.", + "Bonabeau describes optimization methods operating on the business-model modules.", + "To find improved models from the initial models, models are transformed by altering a module, or by adding a new module, or by removing a module, or so forth.", + "The module description language, or regular syntax, facilitates this interchangeability of the modules.", + "These alterations and changes are guided by those modules and combinations that have proved successful in prior optimization cycles.", + "The modular description of business models in terms of modules selected for usefulness to the business problem at hand constrains the potential combinatorial complexity of exploring all business models.", + "In other words, the business heuristics represented by module selection constrains the search without limiting the breadth of possible solutions. Bonabeau para 9.", + "Bonabeau describes interchangeable modules, also called building blocks, that each describe an elementary aspect of businesses directed to the business problem at hand.", + "Building blocks may be classified into several classes, at least value proposition building blocks, operational arrangement building blocks, and revenue model building blocks.", + "Value proposition building blocks describe a particular output produced by a business, its quality or constraints, its likely customers and the value (utility) of the output to the customers, and so forth.", + "Operational arrangement building blocks describe individual business operations, for example, the technology and infrastructure needed to produce a good or service, inputs to a business for producing the good or service, the transformation of inputs used by the business to produce the good or service, labor and capital required for the transformation. and so forth.", + "Revenue model building blocks describe a business pricing scheme for a good or service, the actual price used in the scheme, costs expended in producing the good or service of the specified quality, the expected revenue, and so forth. Bonabeau para 10.", + "Bonabeau describes how business models are constructed from combinations of the interchangeable building blocks, and a space of business models, in which business solutions to the business problem are found, by being defined by all meaningful combinations of the building blocks.", + "Business models have associated performance models, which specify how well the modeled businesses solve the business problem according to a range of metrics.", + "Certain metrics may include financial parameters, such as profit, revenue, and so forth; other metrics may include market parameters, such as market share, market capitalization and so forth.", + "Business models are transformed and optimized by operations on the building blocks. Bonabeau para 11.", + "Bonabeau describes how businesses described by business models are considered together as a business \"ecosystem,\" in which the business models may interact with each other by exchanging goods, services, and consideration among themselves.", + "A business ecosystem also includes customer models, which may select a business model and patronize that model in order to obtain sought-after values (utilities or goods or services).", + "As business models strive to satisfy customers, niche or mass markets may be observed.", + "By including business models with business to business awareness or interaction, an ecosystem may provide information on joint business activities.", + "Vertical supply chains, horizontal agreements, and other business alliances and strategic behavior may be observed.", + "Market segmentation and share and strategic relationships (and other business behaviors) may be represented in the building blocks. Bonabeau para 12.", + "Bonabeau describes how preferred optimization methods are based on evolutionary or genetic principles.", + "Evolutionary methods generally progress through a number of generations, where a succeeding generation is the product of genetic operators applied to the fittest business models in the immediately preceding generation.", + "Business model fitness is determined by ecosystem simulation, and represents in a single parameter an overall assessment of the model performance.", + "In alternatives, fitness may depend on only a single important performance metric, or may depend on a combination of performance metrics.", + "The applied genetic operators typically model actions occurring among biological organisms, and preferably act on the building blocks, mutating a single building block or exchanging building blocks between business models.", + "Repeated selection and transformation of the fittest models leads to business models of improved performance for solving the business problem at hand as the generations pass. Bonabeau para 13.", + "Bonabeau describes generating business models for solving a selected business problem by describing computer-simulateable building blocks.", + "The building blocks include descriptions of business elements of the business problem.", + "Business elements include descriptions of an input to a business, or a value output from a business, or a transformation employed by a business, or a consideration received by a business for an output value.", + "Bonabeau describes determining the operational performance ofa business described by a business model.", + "A business model includes building blocks and an associated operational performance model that describe operation of a business for solving the business problem.", + "Operational performance is determined by simulating the business model, and generating a final business model of improved performance by performing an optimization method.", + "The optimization method (i) uses a fitness dependent on the operational business-model performances, and (ii) substitutes or alters one or more building blocks of the business model. Bonabeau para 27.", + "Bonabeau describes computer-simulateable value proposition (VP) building blocks which describe output values provided by businesses; computer-simulateable operational approach (OA) building blocks which describe inputs to businesses and transformations of inputs to output values by businesses; and computer-simulateable revenue mechanism (RM) building blocks which describe pricing and cost models by which businesses acquire revenues. Bonabeau para 30.", + "Bonabeau describes a range, or space, of business models any of which may solve the business problem at hand.", + "The final business models output by these methods are highly-ranked business models found in this described space.", + "A range, or space, of business models is described in a modular and combinatorial fashion by providing alternative building-blocks, which can be interchangeably joined and linked to describe a business model.", + "Generally, building blocks are packages of one or more of the related business elements (or for one or more groups of elements) that may be part of a business model description.", + "Building blocks are interchangeable in a business model when one building block may be substituted for another related building block with little or no disturbance to other building blocks present in the model. Bonabeau para 51.", + "Bonabeau describes how building blocks, which may be interchangeably combined to describe business models, are similar to programming objects, which may be interchangeably combined to create programs, and the elements packaged in the building blocks are similar to the methods and data packaged in program objects.", + "Also, as program objects are advantageously standardized for constructing particular types of programs, building blocks are advantageously standardized for describing business models generally, as well as for describing aspects of particular business problems. Bonabeau para 52.", + "Bonabeau describes how a VP describes the values provided by certain goods and services from the customer's perspective.", + "A VP may include parameters describing various aspects of those goods and services. Bonabeau para 63,", + "Examples of such parameters include types of the goods or services, that is outputs; their quality; constraints; values or utility; possible customers. Bonabeau para 64-68.", + "Bonabeau describes how an OA describes the mechanisms and requirements for providing or delivering particular goods and services.", + "An OA may include parameters describing various aspects of those mechanisms and requirements. Bonabeau para 69.", + "Examples of such parameters include capital required; labor required; other infrastructure and technology required; raw materials required; suppliers. Bonabeau para 70-74,", + "Bonabeau describes how a RM describes financial results of offering the VP to customers, or alternatively, the consideration received from customers.", + "A RM may include parameters describing various aspects of those results. Bonabeau para 75.", + "Examples of such parameters include pricing model; price actually charged; pricing strategies; marketing strategy and costs; acceptable and target margins. Bonabeau para 76-80,", + "Bonabeau describes how, having provided a description of a preferably combinatorial space of business models directed to the business problem at hand, it next explores this space seeking final business models that rank highly according to selected performance criteria. Bonabeau para 89.", + "See similar descriptions in para 46, 51, and 54.", + "Bonabeau describes how the ecosystem simulation includes simulating the businesses of each of the business models in the ecosystem according to their building-block descriptions, as well as simulating customer (and, optionally, also supplier) behaviors.", + "As the business of each model is simulated, its associated performance model is updated with the results of its transactions.", + "After a certain simulated period of ecosystem economic activity, the performance models of the simulated business models are examined.", + "From the ranked models, the best are selected to be input to the next generation of the evolution method.", + "Poorly performing business models gradually lose out and are replaced with mutated models and with crossed-over combinations of previous models that are highly ranked.", + "After a number of generations, increasingly successful and highly ranked instances of business models emerge in the ecosystem. Bonabeau para 102- 104.", + "Bonabeau describes how possible building blocks for describing a business-model space may include Quality of Service. Bonabeau para 110 and 118.", + "All of the claims are argued on the basis of the patentability of nominal claim 1.", + "The version of claim I Appellants rely on in their arguments, that shown in the Amended Claims Appendix, was not entered by the Examiner, as the amendment was proposed after the Final Rejection.", + "The arguments indicate that the proposed amended claim 1 is a restatement of claim 10 as entered.", + "Accordingly we will take the arguments as supporting claim 10 as entered.", + "Claim 10 depends from claims 1, 8 and 9.", + "Claims 8-10 are as follows.", + "8. The system of claim 1, wherein the system further comprises a runtime infrastructure where each deployed BP instance reflects a configuration selected for that instance in a corresponding portion of the HVGM.", + "9. The system of claim 8, wherein the runtime infrastructure configures the deployed HVEM based on the selected configuration in a corresponding portion of the HVGM.", + "10. The system of claim 9. wherein the selected configuration is specified in terms of a desired satisfaction levels of quality attributes and their relative priorities.", + "We are not persuaded by the Appellants' argument that Bonabeau fails to describe the selected configuration being specified in terms of desired satisfaction level for non-functional or quality attributes for the BP and their relative priorities.", + "First, claim 10 recites only *desired satisfaction levels of quality attributes* and does not include non-functional attributes in the desired satisfaction levels phrase.", + "Second, the limitation under contention is \"the selected configuration is specified in terms of a desired satisfaction levels of \u00b7\u00b7\u00b7 M which does not specify or narrow the manner or degree of specification other than somehow being based on desired satisfaction levels.", + "That is, the configuration is not specified in terms of quality attributes and their relative priorities, but rather in terms of the desired satisfaction level.", + "The claim does not specify that the quality attributes and their relative priorities be explicitly entered into such satisfaction levels.", + "The claim does not even specify the manner in which such satisfaction levels are conveyed, and may be implicit in the inputs.", + "See also FF 11-17 and 20.", + "See also FF 11-17 and 20.", + "Finally, claim 10 is a structural claim.", + "Claim 10 introduces an input to the runtime infrastructure of claim 9, which again specifies an input to configuring an HVEM, which is a model.", + "The issue is whether the art's structure is capable of inputs to its model to configure its runtime operation, which Bonabeau's parameters do.", + "How the parameters are specified has little or nothing to do with the structure that runs the model.", + "See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional language does not confer patentability if prior art structure has capability of functioning in the same manner).", + "No other claims are separately argued, and the remaining claims are argued on the basis of claim 1 as proposed to be amended, and so are unpersuasive." + ] +} \ No newline at end of file diff --git a/opinion_split/2012004828_DECISION.json b/opinion_split/2012004828_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..dcac662ca7ed3b44c66856ba6b8744d93be8a0cf --- /dev/null +++ b/opinion_split/2012004828_DECISION.json @@ -0,0 +1,75 @@ +{ + "appellant_arguments": [ + "Appellants contend that \"the claimed preparation comprises a plurality of shaped bodies which consist of a W/O emulsion.", + "This language clearly excludes shaped bodies which merely comprise a W/O emulsion, i.e., consist of a W/O emulsion and one or more other components and/or constituents. (App. Br. 9.)", + "Appellants contend that the microcapsules of Biatry \"would not consist of a W/O emulsion because they additionally comprise a polymeric and/or waxy envelope\" (id.).", + "Appellants contend that the Examiner's interpretation of the claim is in error, as the claim \"language clearly excludes shaped bodies which merely comprise a W/O emulsion, i.e., consist of a W/O emulsion and one or more other components and/or constituents.' (App. Br. 9.)", + "In this case, Appellants challenge the Examiner's interpretation of the phrase \"comprises a plurality of shaped bodies which consist of a W/O emulsion\" as recited in claim 19, arguing that the \"the water-in-oil primary emulsion produced in step (b) of the process of BIATRY Y is not identical with the microcapsules or the (aqueous) core of the microcapsules taught therein but merely is an intermediate of the (preferred) process of BIATRY for the production of the microcapsules.\" (App. Br. 11.)", + "Appellants contend that the shaped bodies of claim 19, excludes other components such as an envelope (see App. Br. 19).", + "Appellants contend that the shaped bodies of claim 19, excludes other components such as an envelope (see App. Br. 29).", + "Appellants do not request review of the non-statutory obviousness type double patenting rejection over the copending Application 10/569,382 in view of Le Joliff." + ], + "examiner_findings": [ + "The Examiner has rejected the claims as follows: I. claims 19, 20, 22, 23, 26, 28, 34, and 35 under 35 U.S.C. \u25cf 102(b) as being anticipated by Biatry\"; II. claims 19, 20, 22, 23, 26, and 28-35 under 35 U.S.C. \u25cf 102(b) as anticipated by Le Joliff\"; III. claims 19, 20, 22, 23, and 25-36 under 35 U.S.C. \u25cf 103(a) as unpatentable over Le Joliff; and IV.", + "claims 19, 20, 22, 23, and 25-36 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as allegedly being unpatentable over claims 83-127 of copending Application No. 10/569,382 in view of Le Joliff.", + "The Examiner takes the position that: Biatry teaches microcapsules with an aqueous core containing at least one water-soluble cosmetic or dermatological active principle \u00b7 \u00b7 \u00b7 Said water-in-oil emulsion is stabilized creating microcapsules which have a polymeric and/or waxy envelope consisting of at least one polymer and/or at least one wax .", + "\u00b7 Biatry teaches that the waxes utilized are solid (i.e. shape stable) at 25, and undergo reversible solid/liquid reversible change of state at about 40. (Ans. 4-5.)", + "The Examiner finds that \"the claims are not limited to only the W/O emulsion.' (Ans. 16.)", + "Specifically, the claims directly recite that the shaped bodies which *consist of a W/O emulsion *comprise at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer\" (see claim 19, emphasis added).", + "Therefore, while Appellant appears to believe that the phrase \"a plurality of shaped bodies which consist of closes the language of the *shaped bodies\", in view of the phrase *and comprises at least one \u00b7\u00b7\u00b7 , the language is not deemed as being closed, but rather as open. (Id. at 15.)", + "The Examiner takes the position that \"Le Joliff teaches an article comprised of capsules containing topical compositions.", + "Said topical composition, which is within said capsules, can be semipasty (semi-solid) or in freezing (solid) form . \u00b7 \u00b7 \u00b7 Said composition is taught as being a topical make-up composition, which is an encapsulation which comprises beeswax\" (Ans. 6).", + "The Examiner concludes that Le Joliff meets the limitations of claim 19.", + "The Examiner takes the position that \"Le Joliff teaches an article comprised of capsules containing topical compositions\" (Ans. 8).", + "The Examiner acknowledges that Le Joliff fails to provide the \"exact instant amount of the capsule size.", + "Le Joliff further fails to directly teach that the capsules have a volume of from 0.1ml to 20ml.", + "Le Joliff further fails to directly teach that the composition comprises an additional shaped body which is different from the first.\" (Id. at 9.)", + "The Examiner, nevertheless, concludes that it would have been obvious for the ordinary artisan to arrive at the size and volume of the capsules (see id.)." + ], + "ptab_opinion": [ + "We reverse the anticipation and obviousness rejections, and affirm the obviousness-type double patenting rejection.", + "The issue is: Does the evidence of record support the Examiner* s finding that Biatry anticipates claim 19?", + "Claim interpretation is at the heart of patent examination because before a claim is properly interpreted, its scope cannot be compared to the prior art.", + "During prosecution, claim terms are given their broadest reasonable interpretation as they would be understood by persons of ordinary skill in the art in the light of the Specification.", + "Therefore, we first turn to the Specification to determine whether the meaning of the phrase \"comprises a plurality of shaped bodies which consist of a W/O emulsion, are at least one of solid, semisolid and dimensionally stable up to a temperature of at least 35 and comprise at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer\" can be discerned. (Claim 19.)", + "The Specification points to lip care sticks as an example of compositions that are \"made of W/O emulsions which are solid at room temperature \u00b7 \u00b7 \u00b7 [acknowledging that they] do not become liquid upon distribution or rubbing on the skin, the emulsion is merely rubbed off onto the area of application, particularly the lips.\" (Spec. 5, 11. 9-13.)", + "The Specification further teaches that \"the preparation consists of a dimensionally stable lipid/emulsifier mixture which comprises dispersed water with a droplet size below 50 micrometers.\" (Spec. 9. 11. 27-28 (emphasis added).)", + "For water to be dispersed\" in the solid means \"It]o distribute (particles) evenly throughout a medium. \"", + "\"The entire sphere can thus make an active, caring contribution in the cosmetic and dermatological preparation.' (Spec. 6, 11. 25-28.)", + "Claim 19 recites \"a plurality of shaped bodies which consist of a W/O emulsion, are at least one of a solid, semisolid and dimensionally stable up to a temperature of at least 35C\" the grammatical reading of this phrase is that the shaped bodies are made of only the W/O emulsion and that the consistency of the body is solid or semisolid.", + "This interpretation is consistent with the Specification that teaches the shaped body will have the same consistency throughout, because the lipid/emulsifier mixture comprises dispersed water droplets (see Spec. 9. 11. 27-28), in other words the water droplets are evenly distributed throughout the medium.", + "The use of the term emulsion in the Specification is also consistent with the ordinary meaning of an emulsion\" which is \"[a] suspension of small globules of one liquid in a 4 The Free Dictionary, happ//www.theficadianary.com)lligened, last accessed Nov. 19, 2013.", + "5 The Free Dictionary, happ/wwwww.beficodietionaryconston. last second liquid with which the first will not mix. *, Here the closed language \"consist of is in reference to the shaped body that in this case is made up of the W/O emulsion.", + "Thus, from the claim language we know that the shaped body is solid or semisolid at temperatures below 35 and is made up of a W/O emulsion.", + "The claim also provides that the W/O emulsion can \"comprise at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer.\"", + "We do not agree with the Examiner': s position that the language \"comprise at least one of a wax \u00b7 \u00b7 \u00b7 , opens the entire claim to include compositions that comprise W/O emulsions.", + "Here, the open language is in reference to the W/O mixture and the components of the mixture.", + "Thus, consistent with the Specification, we interpret the claim to consist of solid or semisolid W/O emulsion that can hold its shape up to a temperature of 35, however, the W/O emulsion itself is made up of at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer in addition to other components.", + "We agree with the Appellants' position that Biatry does not disclose the solid or semisolid W/O emulsions as claimed.", + "In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently.", + "\"[Albsence from the reference of any claimed element negates anticipation.\"", + "Biatry is directed to producing \"microcapsules with an aqueous core\" (Biatry Abstract).", + "Biatry produces microcapsules with an aqueous core by mixing accessed Nov. 19, 2013.", + "the active agent in the aqueous phase, emulsifying the aqueous phase with the lipid phase to form water-in-oil emulsion, followed by evaporating the organic solvent leaving the microcapsules in an aqueous suspension (Biatry II 62-67).", + "We agree with the Appellants' position that once the solvent is evaporated and the shaped bodies of Biatry are formed, the emulsion will have separated into the solid lipid phase and the aqueous phase (see App. Br. 10-11).", + "Accordingly, Biatry does not disclose a shaped body made up of a W/O emulsion.", + "The preponderance of evidence on this record fails to support Examiner* s finding that Biatry teaches Appellants' claimed invention.", + "The rejection of claims 19, 20, 22, 23, 26, 28, 34, and 35 under 35 U.S.C. IS 102(b) as being anticipated by Biatry is reversed.", + "We agree with Appellants' position.", + "The transitional phrase \"consisting of' excludes any element, step, or ingredient not specified in the claim.", + "When the phrase \"consists of' appears in a clause of the body of a claim, rather than immediately following the preamble, it limits only the element set forth in that clause; other elements are not excluded from the claim as a whole.", + "As discussed above, we interpret claim 19 to consist of solid or semisolid W/O emulsion that can hold its shape up to a temperature of 35, the W/O emulsion itself is made up of at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer in addition to other components.", + "Here, the claim uses the closed \"consist of claim language to describe that the shaped bodies are made up of only a W/O emulsion.", + "Le Joliff discloses that \"Ithe topical composition present usually in liquid, pasty, semi-pasty form or of freezing.\" (Le Joliff p. 2.)", + "Le Joliff furthermore discloses that capsules containing the topical compositing contain an envelope, wherein the preferred envelope is made of gelatin (see id.).", + "We find no evidence in Le Joliff, and the Examiner has not directed us to such a teaching, that discloses capsules made of pasty or semi-pasty material that do not contain an envelope.", + "Accordingly, we reverse the rejections of claims 19, 20, 22, 23, 26, and 28-35 as being anticipated by Le Joliff, because the reference does not disclose the \"shaped body which consists of W/O emulsion\" as required by claim 19.", + "For the reasons discussed above II, we agree with Appellants' position that Le Joliff does not render obvious the composition of claim 19.", + "What is missing from the Examiner': analysis is evidence that an artisan would have a reason to remove the envelope from the capsule in order to arrive at the composition of claim 19, which is made up of only W/O shaped bodies.", + "See KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (obviousness rejections require \"some articulated reasoning with some rational underpinning\").", + "Accordingly, we reverse the rejection of claims 19, 20, 22, 23, and 25- 36 as being obvious over Le Joliff.", + "We therefore summarily affirm this rejection.", + "See MANUAL OF PATENT EXAMINING Procedure & 1205.02 (\"If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board. \").", + "The failure to appeal is a waiver under Ex parte Frye, 2010 WL 889747 *4 (BPAI 2010) (precedential) (\"If an appellant fails to present arguments on a particular issue---or, more broadly, on a particular rejection--the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection\")." + ] +} \ No newline at end of file diff --git a/opinion_split/2012005870_DECISION.json b/opinion_split/2012005870_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0393dae30e696f78807bc04f70292cf7637d9fbb --- /dev/null +++ b/opinion_split/2012005870_DECISION.json @@ -0,0 +1,47 @@ +{ + "appellant_arguments": [ + "Appellants present the following principal argument: [T]he security system in Jerger controls if content downloaded from the Internet executes on a user's machine and if so, controls how the downloaded content accesses the client computer's resources.", + "Jerger does not control the interaction of various portions of content within a webpage.", + "And since Jerger does not disclose the recited execution invocation requests, Jerger cannot disclose each and every step of claim 8. as the steps rely on the execution invocation requests. Br. 8.", + "Appellants present the following principal arguments: (i) *Jerger does not disclose the recited execution invocation, where one portion of web content on a web page seeks to interact with another portion of content on the page.", + "O'Connell fails to cure this deficiency.\" App. Br. 11.", + "(ii) The Office appears to admit that the combination of references does not disclose saving and reporting metrics regarding execution invocation requests, e.g., a request by one portion of content to interact with another portion, as the combination instead merely discloses a web script reporting its own errors. App. Br. 12." + ], + "examiner_findings": [ + "The Examiner finds Jerger describes all limitations of claim 8. Ans. 5- 6.", + "The Examiner relies on Jerger's active content performing protected operations on the client computer for teaching the recited web script content issuing an execution invocation to interact with other portions of the online content. Ans. 5 (citing Jerger, col. 3, 11. 29-35, col. 15, 11. 20-36).", + "In response, the Examiner explains [t]he portions [of the online content with which the web script interacts and the recited web script itself] can both reside in the same web script.", + "As such, when the script executes it calls a class or procedure which is then evaluated and checked against security guidelines.", + "Jerger clearly meets this claim limitation.", + "Jerger teaches online web pages may include active content (col. 10, lines 41-49D].", + "They may be downloaded from an online server and run on the user's computer (col. 10, lines 50- 53), This meets the requirement of online content including web script.", + "Thus when a document is received with active content and that active content wishes to perform protected operations (col. 3, lines 35-40), the system intercepts that operation to make sure the active content is permitted to execute that request (col. 5, lines 40-50). Ans. 16-17 (emphasis added).", + "The Examiner finds Jerger and O'Connell teach all limitations of claim 1. Ans. 10-12.", + "The Examiner relies on Jerger for all limitations except for the recited storing metrics representing a quality of service based on the dynamic resolution, for which the Examine relies on O'Connell's error reporting. Ans. 12 (citing O'Connell, 11 46, 52-54).", + "The Examiner reasons \"[o]ne of ordinary skill in the art can combine known methods which produce predictable results.", + "The script feedback of O'Connell could have obviously augmented the secure system of Jerger.", + "The claim is obvious because the combination yields a predictable result. \" Ans. 12.", + "In response, the Examiner explains O'Connell teaches error reporting (a measure of quality), and the combination of Jerger and O'Connell renders obvious the limitations of claim 1. Ans. 19.", + "The Examiner relies on the combination of references to teach the subject matter in claim 1." + ], + "ptab_opinion": [ + "Appellants' invention relates to *ensuring security of online content on a client device.\" Abstract.", + "Claim 8 is illustrative and reproduced below: 8. A method for ensuring security of online content on a client device, said method comprising: rendering online content on a display on the client device, said online content including web script content and non-web script content, wherein the client device stores one or more web script execution policies received from a remote server, each of the one or more stored web script execution policies defining an execution boundary of a web script content, said execution boundary defining resource access of the web script content for execution on the remote server, said web script content issuing an execution invocation to interact with other portions of the online content without receiving an explicit instruction from a user granting such interaction between the at least one portion of web script content of the content holder and the other portions of the online content; intercepting, at the client device, the issued execution invocation from the web script content in the online content to interact with the other portions of web script content; identifying, at the client device, parameters included in the intercepted execution invocation, said identified parameters requesting resources via a web browser application executing on the client device for interacting with the other portions of the online content; evaluating, at the client device, the identified parameters included in the intercepted execution invocation against the execution boundary of each of the policies stored by the client device and the other portions of the online content; and providing, at the client device, a dynamic resolution to the web script content in response to the evaluating, said dynamic resolution including requesting a user input from the user for granting or denying the intercepted execution invocation.", + "We agree with the Examiner, and are not persuaded of any error in the Examiner's findings.", + "Jerger (col. 3, 11. 30-41) describes when a document is received at the client computer the browser determines if the document wishes to perform any protected operations on the client computer.", + "If the document requires access to a protected operation, the browser determines a security setting corresponding to the zone from which the document was retrieved.", + "Depending on the configuration of the protected operation within the security zone, the browser may perform the protected operation, prevent the performance of the protected operation, or query a user whether to perform the protected operation and selectively perform the protected operation based on the user response.", + "Jerger (col. 10, 11. 43-48) (emphasis added) describes \"[w]eb documents also contain, or provide links to, *active content' that may provide some functionality either within the Web document, separately as a mini-application ('applet'), as a function library or class, or even as a full- scale computer program.", + "Thus, Jerger describes the recited web script content (a first portion of Jerger's active content within a web document) issuing an execution invocation to interact (Jerger's s active content attempting to perform a protected operation) with other portions of the online content (a result of the protected operation interacts with a second portion of Jerger's active content within the web document).", + "Regarding Appellants' argument that Jerger does not control the interaction of various portions of content within a webpage, we find this argument unavailing because we agree with the Examiner that the portions of the online content with which the web script interacts can reside in the web script. See Ans. 16-17.", + "We, therefore, sustain the Examiner's rejection of claim 8, as well as claims 9, 10, 12-16, and 20, which are not separately argued with particularity.", + "Appellants did not file a reply brief.", + "We agree with the Examiner, and are not persuaded of error.", + "Regarding Appellants' argument (), we find this argument unpersuasive for reasons discussed above when addressing claim 8.", + "Regarding Appellants' argument (ii), we find this argument unpersuasive.", + "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.", + "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981)(citations omitted).", + "The Examiner reasonably explained (See Ans. 12, 19) why the combined teachings of Jerger and O'Connell render claim I obvious, and Appellants' argument does not convince us of any error in the Examiner's reasoning.", + "We, therefore, sustain the Examiner's rejection of claim 1, as well as claims 2, 3, 5-7, 11, 17, and 18, which are not separately argued with particularity." + ] +} \ No newline at end of file diff --git a/opinion_split/2012006306_DECISION.json b/opinion_split/2012006306_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..eb1541c27c649bc8fa22d104d7c863d66203595a --- /dev/null +++ b/opinion_split/2012006306_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "Appellant contends Muret (US 6,792,458 B1) fails to teach **maximiz(ing] an event attribution function*' because matching a visitor to a website hit is not equivalent to maximizing.", + "Appellant contends Muret (US 6,792,458 B1) fails to teach a **nearest-neighbor event is at least one of (a) nearest in time to the anonymous network event and (b) nearest in distance to the anonymous network event in said filtered event list\" because matching an event with a visitor within a time range is not equivalent to a \\'nearest-neighbor\" in time or distance. App. Br. 22-23." + ], + "examiner_findings": [ + "The Examiner finds Muret (US 6,792,458 B1) teaches matching an event with a first user with an ID and timestamp in range, which the Examiner maps to \"maximizes an event attribution function.\" \" Ans. 6 and 19-20.", + "The Examiner finds Muret (US 6,792,458 B1) teaches matching an event with a first user with an ID and timestamp in range and if the timestamp is out of range, the search continues, which the Examiner maps to **nearest-neighbor event is at least one of (a) nearest in time to the anonymous network event and (b) nearest in distance to the anonymous network event in said filtered event list.\" Ans. 8-9 and 20-21." + ], + "ptab_opinion": [ + "We agree with Appellant.", + "The cited portions of Muret (US 6,792,458 B1) relied upon by the Examiner teach matching an event with a first user with an ID and timestamp in range. See Muret (US 6,792,458 B1), col. 10, 11. 40-50; Ans. 6 and 19-20.", + "However, the Examiner has not persuasively explained how a matching algorithm taught in column 10, lines 40-50 of Muret (US 6,792,458 B1) teaches **maximiz[ing] an event attribution function.\" App. Br. 19-20.", + "Put another way, matching is not an equivalent to maximizing.", + "Accordingly, for the reasons stated supra, we do not sustain the Examiner's rejection of independent claims 1, 20, 23, and 25, and their corresponding dependent claims 2-4, 6, 7, 10, 21, and 22.", + "We agree with Appellant.", + "The cited portions of Muret (US 6,792,458 B1) relied upon by the Examiner teach matching an event with a first user with an ID and timestamp in range and if the timestamp is out of range, the search continues. See Muret (US 6,792,458 B1), col. 10, 11. 40-50, And. 8-9 and 20-21.", + "However, the Examiner has not persuasively explained how a matching algorithm taught in column 10, lines 40-50 of Muret (US 6,792,458 B1) teaches a **nearest-neighbor event is at least one of (a) nearest in time to the anonymous network event and (b) nearest in distance to the anonymous network event in said filtered event list\" (emphasis added). App. Br. 22-23.", + "Moreover, Muret (US 6,792,458 B1) is merely matching a user with a timestamp in range. Id.", + "Put another way, Muret (US 6,792,458 B1) merely teaches a *neighbor event\" instead of a *nearest- neighbor event\" (emphasis added).", + "Accordingly, for the reasons stated supra, we do not sustain the Examiner's rejection of independent claims 11 and 24, and their corresponding dependent claims 12-19." + ] +} \ No newline at end of file diff --git a/opinion_split/2012007231_DECISION.json b/opinion_split/2012007231_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f76454d7082419d954d6e16b6da6c727e64b6203 --- /dev/null +++ b/opinion_split/2012007231_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellants are appealing the final rejection of claims 1-21 under 35 U.S.C. 6 134(a). Appeal Brief2.", + "Introduction *The present invention relates to methods and apparatus for commissioning wireless lighting nodes in a building, and in particular to assigning each of a plurality of lighting nodes or luminaires to respective switching control nodes.\" Specification 1.", + "Representative Claim (disputed limitations emphasized) 1. A method for determining the relative locations of a plurality of nodes within a building, the nodes including a plurality of wirelessly- controllable service device nodes and a plurality of switching control nodes, at least some of the service device nodes being located in different rooms of the building with respect to each other, the method comprising: establishing wireless communication between the nodes to determine relative spatial positions of the nodes using received signal strength indication (RSSI) values each indicative of a distance of separation between two of the nodes; grouping the service device nodes into at least two groups, including a first group of the service device nodes located in a first one of said different rooms, and a second group of the service device nodes located in a second one of said different rooms, based on a spatial distribution of the nodes as indicated by the RSSI values; and allocating the service device nodes of the first group to have a switching operation thereof controlled by a first of the switching control nodes, and allocating the service device nodes of the second group to have a switching operation thereof controlled by a second of the switching control nodes.", + "Appellants contend that Perkins fails to disclose a method wherein service device nodes are allocated to have switching operations controlled by switching control nodes as required by claim 1. Appeal Brief 7.", + "Appellants contend independent claim 14 discloses an apparatus that requires a microprocessor for grouping the service nodes into different groups based upon spatial distribution using received signal strength indication (RSSI). Appeal Brief 12.", + "Appellants further contend the rejection fails to cite anything in Perkins that either discloses or suggests the combinations of features recited in claim 14. Appeal Brief 12." + ], + "examiner_findings": [ + "Claims 1, 5 and 7-11 stand rejected under 35 U.S.C. $102(b) as being anticipated by Perkins (US Patent Application Publication Number 2002/0089722 A1; published July 11, 2002).", + "Answer 4-10, Claims 2. 4 and 15 stand rejected under 35 U.S.C. $103(a) as being unpatentable over Perkins and Sid (US Patent Application Publication Number 2004/0196140 Al; published October 7, 2004).", + "Answer 10-14.", + "Claims 3, 12, 13 and 16 stand rejected under 35 U.S.C. 8103(a) as being unpatentable over Perkins and Jednacz (US Patent Number 5, 5,726,644; issued March 10, 1998).", + "Answer 14-17, Claims 6. 14 and 17-21 stand rejected under 35 U.S.C. $103(a) as being unpatentable over Perkins.", + "Answer 17-27.", + "The Examiner finds Perkins' paragraph 34 discloses a receiver that moves throughout a building wherein \"the illumination elements 1 of the room in which the receiver 3 is located is allocated to perform location determination of the receiver.\" Answer 6.", + "The Examiner further finds, *This location determination is interpreted as a switching operation, because as the receiver moves to a different room \u00b7 \u00b7 \u00b7 the location determination is switched from a set of illumination elements 1 to another set of illumination elements.\" Answer 6.", + "The Examiner finds Perkins discloses a receiver that includes a microprocessor. Answer 30 (citing Perkins I 40)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b) (2012).", + "We reverse.", + "Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed November 7, 201 1), the Answer (mailed February 13, 2012), and the Reply Brief (filed April 3, 2012) for the respective details.", + "We have considered in this decision only those arguments Appellants actually raised in the Briefs.", + "We find Appellants' contention persuasive because the plain language of claim I requires \"the operation that is being controlled by the switching control node in [sic is] an operation of the service device nodes [] not an operation of a switching control node itself. . Appeal Brief 8.", + "Thus, we agree with Appellants that Perkin 's optical receiver switches between determining the location of one light bulb and determining the location of a different light bulb but does not control any operation (switching or otherwise) of the light bulb itself. Appeal Brief 8.", + "Therefore, we reverse the Examiner's anticipation rejection on independent claim 1, as well as, dependent claims 5 and 7-11 for the reasons articulated above.", + "We note claim 14 merely requires a microprocessor for the intended use of grouping the service device to perform the intended function.\"", + "We find Appellants' arguments to be persuasive because the Examiner cites to paragraph 40 of Perkins as disclosing the claimed microprocessor, however there is no mention in paragraph 40 of a microprocessor, capable or not of grouping the nodes based on spatial distribution. See Answer 20.", + "That is, Perkins fails to disclose a microprocessor as asserted by the Examiner.", + "Therefore, we reverse the obviousness rejections of both independent claim 14, as well as, independent claim 21 commensurate in scope, for the reasons articulated above.", + "We also reverse the obviousness rejections of claims 2-4, 6, 12, 13 and 15-20 dependent upon claims 1 and 14." + ] +} \ No newline at end of file diff --git a/opinion_split/2012007470_DECISION.json b/opinion_split/2012007470_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..47bcb1155a13d7bd3365b7b05dfdfbc53ef4bf56 --- /dev/null +++ b/opinion_split/2012007470_DECISION.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "Appellants argue the subject matter common to claims 9-13.", + "Appellants do not dispute the Examiner' s finding that Tolstov discloses a valve of a converter in a high-voltage direct-current transmission system, comprising a plurality of valve sections each having a plurality of thyristors electrically connected in series, wherein no voltage limiting control capacitors are provided in the valve.", + "Nor do Appellants dispute that Tolstov *`configure[s] a single surge arrestor [i.e., the surge arrester element 8 in Figures I and 2] in parallel with the entire string of diodes and thyristors.\"", + "Appellants contend that the Examiner's rejection is flawed because Tolstov's s avalanche diodes 4a-4n and 5a-5n, wherein each valve has a respective one of the diodes electrically connected in parallel therewith, are not a plurality of surge arresters as required by claim 9.", + "Appellants acknowledge Tolstov's diodes connected in parallel (*[elach pair of opposition series avalanche diodes is arranged in parallel to a thyristor.\" \" App. Br. 7) but argue that the diodes do not constitute the claimed surge arresters because \"there is a big difference between the avalanche diodes taught by Tolstov et al. and the surge arrestors defined in claim 9.", + "The avalanche diodes cannot conduct high currents.", + "Therefore, a surge arrestor is needed, which is arranged in parallel with the diodes and with all of the thyristors.\" App. Br. 8 (emphasis in original).", + "In the Reply Brief, Appellants argue that *one of ordinary skill in this art would not consider an avalanche diode to be a surge arrestor\" (Reply Br. 2, emphasis original) and that the IEEE Dictionary constitutes a new reference relied upon by the Examiner for the rejection (id. at 3).", + "Appellants do not dispute the Eggendorfer reference.", + "Second, Appellants argue that Tolstov's system does not anticipate the claim because Tolstov discloses a further surge arresting element (e.g., element 8) that is allegedly not necessary in the claimed invention:", + "It is an object of the present invention to eliminate the need for such a surge arrestor connected in parallel with all of the thyristors.", + "According to the invention, the voltage is limited by surge arrestors, which can also withstand high currents.", + "Thus, a surge arrestor connected across all of the thyristors is not needed.", + "Appellants do not separately argue the Section 103 rejection over the combination of ofTolstov and Book." + ], + "examiner_findings": [ + "Eggendorfer teaches that it was known in the art to use avalanche diodes as surge arresters.", + "Id. (citing Eggendorfer 1:29-34 \"Surge or lightning arrestors may employ a number of devices including . \u00b7 silicon avalanche diodes\").", + "The Examiner also reasonably finds that IEEE Dictionary suggests that surge arresters are known in the art as \"a protective device for limiting surge voltages by discharging or bypassing surge current\" and that withstanding high current is not required." + ], + "ptab_opinion": [ + "Appellants' invention is said to be directed to \"a valve of a converter of a high-voltage direct-current transmission system having a plurality of valve sections\" (Spec. 1).", + "Claim 9 is illustrative (key limitations in dispute italicized): 9. A valve of a converter in a high-voltage direct-current transmission system, comprising: a plurality of valve sections each having a plurality of thyristors electrically connected in series; and a plurality of surge arresters; each valve of said valve sections having a respective one of said plurality of surge arresters electrically connected in parallel therewith; wherein no voltage limiting control capacitors are provided in the valve.", + "App. Br. 11 (Claims App'x).", + "Appellants appeal the rejection of claims 9, 11, and 12 under 35 U.S.C. 6 102(b) as anticipated by Tolstov (US 3,943,427, issued Mar. 9, 1976) and the rejection of claims 10, and 13 under 35 U.S.C. 8 103(a) as unpatentable over Tolstov in view of Book (US 4,679,113, issued July 7, 1987).", + "App. Br. 5-9.", + "We select independent claim 9 as representative of the claims on appeal.", + "Claims 10-13 will stand or fall with our analysis of claim 9.", + "37 C.F.R. . 41.37(c)(1)(vii).", + "ISSUE Did the Examiner reversibly err in determining that Tolstov's avalanche diodes electrically connected in parallel to each valve section including a thyristor anticipate Appellants' claimed surge arresters?", + "We decide this issue in the negative.", + "The preponderance of evidence supports the Examiner's conclusion that claim 9 is anticipated by Tolstov.", + "Ans. 5; App. Br. 5-9.", + "App. Br. 6; Ans. 5.", + "App. Br. 8; see Ans. 5.", + "Appellants' arguments are not persuasive.", + "First, Appellants argument that the claimed surge arrester must withstand high currents is not persuasive because it is unsupported in the record.", + "Appellants have not directed us to any evidence in the Specification or elsewhere to establish that one of ordinary skill in the art at the time of the invention would understand that the claimed surge arresters require the capacity to conduct high currents.", + "It is well settled that arguments of counsel cannot take the place of factually supported objective evidence.", + "See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984),", + "We find the Examiner's interpretation of the term surge arrestor as encompassing diodes that are capable of conducting overload currents (Ans. 7) reasonable because it is supported by The Authoritative Dictionary of IEEE Standards Terms (*IEEE Dictionary\") and Eggendorfer cited in response to Appellants' contention (id. at 8).", + "Id.", + "See generally Reply Br.", + "We do not find Appellants' arguments in reply persuasive because Eggendorfer directly contradicts the proposition that avalanche diodes would not have been considered a surge arrestor by one of ordinary skill in the art at the time of the invention.", + "The Examiner, therefore, reasonably concludes that Tolstov's avalanche diodes 4a-4n and 5a-5n act as surge arresters.", + "Id. at 5.", + "Tolstov discloses that \"[T]he circuit 3 of avalanche diodes starts conducting overload current with an amplitude and duration thereof depending on the electric parameters of the converter and the type of fault.", + "This current may attain a value of scores and even hundreds of amperes.\" \" Tolstov, 5: 41-46.", + "App. Br. 8.", + "Appellants' argument is not persuasive because claim 9 does not preclude the presence of another surge arrestor connected parallel to all of the thyristors.", + "The recitation in claim 9 that *no voltage limiting control capacitors are provided in the valve\" explicitly states \"provided in the valve\" and, therefore, does not preclude a surge arrestor parallel to all of the thyristors.", + "App. Br. 9.", + "Accordingly, on this record, we affirm all of the Examiner's rejections." + ] +} \ No newline at end of file diff --git a/opinion_split/2012007643_DECISION.json b/opinion_split/2012007643_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..2f50a34313edf1388a584a5abfc37e6ffb6cd79f --- /dev/null +++ b/opinion_split/2012007643_DECISION.json @@ -0,0 +1,22 @@ +{ + "appellant_arguments": [], + "examiner_findings": [], + "ptab_opinion": [ + "OPINION A. Introduction This is the second time most of the appealed claims to processes of making manganese oxide particles have appeared before us, rejected over the same prior art for the same reasons.", + "6 We refer the reader to our earlier Opinion for further details of the invention and the application.", + "In the first appeal, we affirmed the rejection of claims 2-4, 6, and 7 as obvious in view of the same prior art references on which the Examiner relies in this appeal.", + "Claim 4, which depends from independent claim 6, has been amended to correct a word-processing error; independent claim 8 and claim 9, which depends from claim 8. are newly presented.", + "Claim 8 is narrower than claim 6, in that certain characteristics of the starting material and the product are recited, and the temperature range is somewhat narrower, and the oxygen concentrations of the two stages of the claimed process are recited.", + "The Specification has not been amended, and no new evidence has been presented.", + "The arguments presented are essentially the same as those presented in the first appeal.\"", + "As in that appeal, we find that Kajiya has not presented substantive arguments for the separate patentability of any claims in accordance with the regulations governing appeals to the Board.", + "The only new text describes the subject matter of claim 8. (Br. 3, 1st full para.; and 4, para. bridging Br. 4-5.)", + "Merely describing a claim, however, is not an argument for separate patentability.", + "The paragraph bridging pages 5-6 is an argument for unexpected results that is substantively the same as the argument presented under the heading for unexpected results (Br. para. bridging 8-9).", + "The latter argument is identical, but for an added sentence, to the corresponding argument in the Brief filed in the previous appeal.", + "Kajiya's added argument that \"there is no disclosure of a lower temperature [i.e., less than 650 being used during the heat treatment (Br. 6. 11. 4-5), and that Table I of the 046 Specification shows that \"the temperature of 650 is completely unsuitable for the present invention\" (id. at 9, 11. 10-11), focuses solely on the working examples presented in Yoshio.", + "Kajiya has not explained why a person having ordinary skill in the art would have overlooked their earlier disclosure that the range of 400.0 600 was suitable for the heat treatment.", + "It is well-settled that the disclosure of a prior art reference is not limited to the working examples.", + "Under these circumstances, in which we do not find any significant reasoning or newly cited evidence explaining why the position of the PTO as set out by the Examiner and the Board is harmfully erroneous, we consider that Kajiya has waived further arguments, and we affirm for the reasons of record." + ] +} \ No newline at end of file diff --git a/opinion_split/2012007800_DECISION.json b/opinion_split/2012007800_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..60fef46f01db34f358b8e216493bbbeaa77327a0 --- /dev/null +++ b/opinion_split/2012007800_DECISION.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "Appellants respond that \"Examiner still only applies the now demoted machine or transformation test \u00b7 \u00b7 . \" (Appeal Br. 9.)", + "Appellants respond that \"claim 9 expressly requires the selection of an instance of an external ad-hoc communication, the creation of a task node for the selected instance, the association of the instance and \u00b7 \u00b7 with task meta data in the task node and the insertion of the task node under an associated task in \u00b7 \u00b7 \u00b7 a project plan.\" (Reply 4.)", + "Appellants respond that a prima facie case of indefiniteness has not been established and not being able to determine \"the statutory class of a claim is not a legally permissible basis for asserting a rejection under 35 U.S.C. $ 112, second paragraph.\" (Appeal Br. 11-12.)", + "Moreover, Appellants assert, the \"Examiner has set forth no evidentiary basis for how one of skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.\" (Reply 6.)", + "Appellants argue that this rejection should be withdrawn because claim 12 *expressly recites *an instance of an externally produced relationship requests. \"\" (Appeal Br. 12.)", + "Appellants present their argument using claim 9 as exemplary. (Id.)", + "Appellants summarize their argument as (Reply 9-10): Examiner only refers generally to a hierarchy of nodes representative of a workflow (Ohsaki) and the teachings of Figures 2 and 7 of Mitchell which only provide in the case of Figure 2 for the association of a message with existing contacts/leads and in the case of Figure 7 for creating data associated with a message.", + "Absent from Mitchell is any teaching of (1) creating an association between task meta data and a message and the (2) insertion of the task meta data in a task node (3) under an associated task in a hierarchy of task nodes that represents a project plan." + ], + "examiner_findings": [ + "Claims 1-14 are rejected under 35 U.S.C. 5 101 as being directed to ineligible subject matter.", + "Claims 1-8, 14, and 20 are rejected under 35 U.S.C. I 112, second paragraph, as being indefinite.", + "Claims 1, 2, 4-12, 14-18, and 20 are rejected under 35 U.S.C. 6 103(a) as being unpatentable over Mitchell (US 2006/0088144 A1, pub. Apr. 27, 2006) and Ohsaki (US 2003/0004767 A1, pub. Jan. 2, 2003).", + "Claims 3. 13, and 19 are rejected under 35 U.S.C. , 103(a) as being unpatentable over Mitchell, Ohsaki, and Claggett (US 2003/0182172 AI, pub. Sep. 25, 2003).", + "With regard to claim 1-8, the Examiner argues that the *claims are interpreted as computer code per-se and are not statutory.", + "\u00b7 \u00b7 [T]he claims should positively recite the structure of the system.\" (Answer 5.)", + "With regard to claim 9-14, the Examiner argues that that the claims are directed to an abstract idea. (Answer 5.)", + "The Examiner reaches this conclusion, in part, *because the steps are not tied to a machine in a significant manner.' (Id. at 6.)", + "The Examiner rejects claim 1 and claims 2-8, which depend directly or indirectly from claim 1, under 35 U.S.C. 8 112, second paragraph, because the claims were *amended to include the limitation of *an activity-centric project management tool executing in memory of a computer\" and \"li]t is unclear what statutory class Applicant intends for these claims.\" \" (Answer 6.)", + "In other words, the Examiner explains, there is more than one way to interpret this amended claim term.", + "\"[O]ne interpretation of this limitation is software.", + "With this interpretation, the software is described as executing in a memory of a computer.", + "A second interpretation of this limitation is a method step of executing software.", + "In light of the at least two interpretations of this limitation, the scope of Claim I and its dependent claims is unclear. \" (Id. at 17.)", + "The Examiner rejects claim 14 and 20 because \"[t]hese claims include the limitation of *the instance of an externally produced relationship requests for approval ofa a change, , There is insufficient antecedent basis for this limitation and it appears that 'relationship' was intended to be canceled from this limitation \u00b7 \u00b7 \u25a0 \" (Answer 6.)", + "As the Examiner explains in the chart on page 18 of the Answer, Mitchell discloses that external messages are received, stored and associated with existing CRM contacts and leads.", + "Additionally, Ohsaki discloses that workflow is represented by a plurality of nodes with a person and contents to be processed assigned to each node. (Answer 18 and Ohsaki I 37.)", + "The Examiner asserts (Answer 8) that [i]t would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to incorporate Ohsaki's workflow system with Mitchell's method and apparatus for associating messages with data elements.", + "One of ordinary skill in the art would have been motivated to incorporate this feature for the purpose of adding messages to an electronic project management program whenever the message relates to a project." + ], + "ptab_opinion": [ + "Although Appellants argue claims 1-14 together with respect to the rejection under 8 101 (Appeal Br. 5-10), the Examiner presents separate arguments in rejecting claims 1-8 and claims 9-14.", + "We consider the Examiner's s arguments separately.", + "The Examiner does not assert that claims 1-8 are directed to an abstract idea.", + "Instead, the rejection is based on software being per se unpatentable under S 101.", + "With regard to the rejection of claims 1-8 under a 101, the proper analysis was not undertaken and the Examiner has not established that the claims are directed to software per se.", + "Even if we consider claim 9 to be directed to a patent ineligible concept, claim 9 requires e.g., creating a task node for the external communication and inserting the created task node under the \"associated task in a hierarchy of task nodes representative of a project plan.\" (See Claim 9.)", + "We conclude that this is sufficient to transform the concept into patent-eligible subject matter.", + "Therefore, we reverse the Examiner' rejection of claims 1-8 and claims 9-14 under 35 U.S.C. S 101.", + "In this case, the Examiner presents a well-grounded rejection identifying why the language in the added limitation is ambiguous in this context.", + "Appellants' arguments do not overcome the rejection.", + "Appellants are incorrect.", + "The term \"relationship\" does not appear in claim 12 and we agree with the Examiner that its appearance in claim 14 lacks sufficient antecedent basis.", + "Appellants present no argument with regard to the rejection of claim 20.", + "Therefore, we affirm the Examiner's rejection of claims 1-8 and claims 14 and 20 under 35 U.S.C. S 112, second paragraph.", + "Appellants do not separately argue claims 1-20. (Appeal Br. 13-17).", + "The Examiner presented separate arguments in rejecting each claim.", + "We consider claims 1-8 together and claims 9-20 together.", + "Although Mitchell discloses associating incoming messages with a CRM system, it is not clear that a task node is created.", + "Regardless, even assuming it would have been obvious to do so, we agree with Appellants that the Examiner has not shown that the combination of references would have made it obvious to *insert[] the task node under an associated task in a hierarchy of task nodes representative of a project plan. \"", + "Claim 1, however, does not require creation of a task node for a selected external ad-hoc communication.", + "Appellants argue with respect to the limitations of claim 9 and do not rebut the Examiner's prima facie case as to claim 1.", + "Therefore, we affirm the Examiner's rejection of claims 1-8 and reverse the rejection of claims 9- 20 under 35 U.S.C. S 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2012008049_DECISION.json b/opinion_split/2012008049_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3bb04040aa368206bd9b5c1565032bd62049701a --- /dev/null +++ b/opinion_split/2012008049_DECISION.json @@ -0,0 +1,51 @@ +{ + "appellant_arguments": [ + "While Appellant admits that \"claim 1 does not satisfy the machine-or- transformation test,\" Appellant argues that claim 1 *reads on a practical application of an abstract idea in a manner that does not preempt the abstract idea.\" App. Br. 10; Reply Br. 2.", + "In support of this argument, Appellant notes that \"[the method accomplishes a practical application, i.e., the method produces a *useful, concrete and tangible result' which can be tested: The student may be given an examination to determine whether the new words have in fact been learned.\" App. Br. 10.", + "Appellant further admits that \"Itleaching is an abstract idea;\" but, then argues that the \"method is patentable subject matter because the patent claim is to a practical application of the abstract idea.\" App. Br. 11; see also Reply Br. 2.", + "Appellant further argues that \"[w]hile no article or physical object is transformed into a different state, the claimed method produces a useful, concrete and tangible result.\" App. Br. 11." + ], + "examiner_findings": [ + "The Examiner determines that \"[n]one of the steps [of independent claim 1] are performed by a machine, but rather are performed by a human being.\" Ans. 6.", + "The Examiner notes that \"the fact that no particular machine is required to perform the claimed method steps, nor do the steps result in any transformation of a particular article [sic], are indicators that applicant is attempting to patent an abstract idea.\" Id.", + "The Examiner concludes that \"Claim 1 is ineligible subject matter because the claimed limitations include no recitation or insufficient recitation of a machine or transformation, [is] not directed to a proper application of a law of nature, and is just a mere statement of a general concept.\" Id." + ], + "ptab_opinion": [ + "Claim 1, reproduced below, is directed to a method for increasing a student's vocabulary.", + "1. An educational method for increasing a student's s vocabulary comprising the steps of: identifying a first expression consisting of a commonly known person, place, thing, event, title, phrase, or quote consisting of one or more words in tangible form; obscuring said words by substituting one or more of said words with lesser known words to form a second expression; presenting the second expression to a student in tangible form to decipher using his vocabulary knowledge of said lesser known words; providing said student with one or more definitions in tangible form of the lesser known words which definitions serve as clues for deciphering the second expression back into the first expression: and, scoring the student based on the number of the definitions in tangible form used to decipher the second expression back into the first expression whereby said student learns the lesser known words and adds them to his vocabulary by actively using said definitions of the lesser known words in deciphering the second expression back into the first expression.", + "The Supreme Court has set forth \"a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.\" Alice Corp. Pty. Ltd. V. CLS Bank Int'l., 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. V. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012).", + "According to the Supreme Court's framework, we must first determine whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). Id.", + "If so, we must secondly \"consider the elements of each claim both individually and *as an ordered combination' to determine whether the additional elements *transform the nature of the claim' into a patent-eligible application.\" Id.", + "The Supreme Court characterizes the second step of the analysis as \"a search for an *inventive concept - i.e., an element or combination of elements that is *sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.*** ~ Id.", + "Claim 1 includes five steps for increasing a student's vocabulary.", + "These steps include: (1) identifying an expression consisting of commonly known words, (2) substituting one or more words with lesser known words, (3) presenting the expression with the substituted words to a student, (4) providing the student with definitions of the lesser known words, and (5) scoring the student.", + "See App. Br. 12, Clms, App'x.", + "Like the claim at issue in Ultramercial, \"It]his ordered combination of steps recites an abstraction\" as it has no particular concrete or tangible form.", + "Ultramercial, Inc. and Ultramercial LLC V. Hulu, , LLC and Wildtangent, Inc., 2014 WL 5904902, 4 (Fed. Cir. 2014).", + "Although, the step of scoring the student \"add[s] a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea\" of increasing the student's vocabulary.", + "Id.", + "Thus, the Examiner correctly determined that the steps of claim 1 are not sperformed by a machine, but rather are performed by a human being.\" Ans. 6.", + "This determination supports the Examiner* s conclusion that claim 1 is directed to patent-ineligible subject matter.", + "Our reviewing court, relying on Supreme Court precedent, has \"consistently 'refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter[,] even when a practical application was claimed. .", + "CyberSource Corp. V. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (quoting In re Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009)).", + "\"Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under 5 101.\" Id. at 1373.", + "Thus, in accordance with the first step in the Alice analysis we determine that claim 1 is directed to an abstract idea.", + "\"The second step in the [Alice] analysis requires us to determine whether the claims do significantly more than simply describe that abstract method.\" Ultramercial at 5 (citing Mayo at 1297).", + "Our reviewing court instructs us that \"[w]e must examine the limitations of the claims to determine whether the claims contain an 'inventive concept to 'transform' the claimed abstract idea into patent-eligible subject matter.", + "Alice at 2357 (quoting Mayo at 1298).", + "The transformation of an abstract idea into patent- eligible subject matter \"requires *more than simply statling] the [abstract idea] while adding the words *apply it. ** Id. (quoting Mayo at 1294).", + "Those \"additional features\" must be more than *well-understood, routine, conventional activity.\" Mayo at 1298.", + "The limitations of claim 1 do not transform the abstract idea of increasing a student's vocabulary because the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity, such as by using paper and pencil.", + "None of the five recited steps viewed \"both individually and *as an ordered combination, .. transform the nature of the claim into patent-eligible subject matter.", + "See Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1297, 1298).", + "Appellant's contention that \"the method [of claim 1] produces a *useful, concrete and tangible result\" because \"the students [can] be given an exam[]* (App. Br. 10) is not well taken.", + "Claim 1 makes no reference to any sort of testing including an exam.", + "Moreover, even if an exam were administered, such \"post solution\" activity would be insufficient to transform the claimed abstract idea into patent-eligible subject matter.", + "Additionally, although not dispositive, the Examiner correctly determined that claim 1 includes \"no recitation or insufficient recitation of a machine or transformation.\" Ans. 6.", + "Appellant does not contest this determination. App. Br. 10.", + "According to Supreme Court precedents, \"the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under .5 101, but \"is not the sole test for deciding whether an invention is a patent-eligible 'process. \" Bilski V. Kappos, 130 S. Ct. 3218, 3227 (2010).", + "Claim 1 does not recite any machine, and, as discussed supra, merely recites steps for increasing a student's vocabulary.", + "Thus, claim 1 does not require any machine implementing a process or a particular transformation of matter.", + "For these reasons, we sustain the Examiner*. decision rejecting claim 1 under 35 U.S.C. & 101 as being directed to patent ineligible subject matter." + ] +} \ No newline at end of file diff --git a/opinion_split/2012008151_DECISION.json b/opinion_split/2012008151_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0c785255320da63c4224d352201baf61084ddda4 --- /dev/null +++ b/opinion_split/2012008151_DECISION.json @@ -0,0 +1,41 @@ +{ + "appellant_arguments": [ + "Appellants do not argue the claims individually, but rather rely on the arguments presented with respect to claim 1 for all claims (id. at 10-15)." + ], + "examiner_findings": [ + "The Examiner rejected claims 1-25 under 35 U.S.C. 8 102(e) as anticipated by Michelson2, z Michelson, US 7,534,254 B1, issued May 19, 2009, filed June 7, 1995.", + "The Examiner finds that Michelson discloses an intramedullary nail capable of being inserted into a medullary canal, comprising a plurality of transverse boreholes, each having a hole axis and defining a virtual borehole cylinder (Ans. 4-5).", + "The Examiner states \"each aperture can have a screw inserted into it and can be positioned towards the opposite side of the body in any other aperture to create the virtual borehole\" (id. at 5).", + "In fact, as noted by the Examiner, Appellants' drawings contemplate that the nail may be hollow, demonstrating that a cylindrical hollow portion with *an intermediate section does not seem to be required for a borehole\" (Ans. 10)." + ], + "ptab_opinion": [ + "Claims 1-25 are on appeal.", + "Claim 1 is representative and reads: 1. An intramedullary nail comprising: a nail body configured and dimensioned for insertion into a medullary space of a bone, the nail body having a proximal end, a distal end and a central longitudinal axis, wherein the distal end of the nail body has a diameter D; and a plurality of transverse boreholes, each having a hole axis and defining a virtual borehole cylinder having a cylinder axis corresponding to the hole axis of the defining transverse borehole, the cylinder axes of first and second ones of the transverse boreholes lying in first and second planes, respectively, that transversely intersect the central longitudinal axis, the first and second planes being parallel to one another, and wherein the borehole cylinders of the first and second transverse boreholes mutually penetrate one another and the cylinder axes of the two mutually penetrating borehole cylinders appear to intersect at a point that does not lie on the central longitudinal axis of the nail when viewed orthogonal to the central longitudinal axis. (App. Br. 17 (emphasis added)).", + "Independent claims 3, 20, 22, and 24 contain limitations similar to those emphasized above (id. at 18, 20-22).", + "The issue is: Does the evidence of record support the Examiner's finding that Michelson anticipates claim 12", + "*FIG. 2 is an alternative embodiment of the spinal fusion implant of the present invention having a frusto-conical body with an external thread radius and thread height that are not constant.", + "FIG. 3 is as cross sectional view along line 3-3 of the implant of FIG. 2\" (Michelson at col. 4, II. 1-6).", + "\"A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.\" Perricone V. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005).", + "Upon consideration of the evidence and each of Appellants' contentions, we find that the preponderance of evidence on this record supports the Examiner's finding that claim 1 is anticipated by Michelson.", + "Accordingly, we sustain the Examiner's rejection for the reasons set forth in the Answer (Ans. 4-10), which we incorporate herein by reference.", + "For emphasis only, we provide the following: The claims at issue do not recite any limitations directed to \"fastening.\"", + "Appellants' argument that the Michelson implant *is not capable of fastening two broken ends of bone together\" is, therefore, inapposite (App. Br. 8-9: Reply Br. 4).", + "Likewise, Appellants\" claims do not recite any limitations directed to *loading* of the device.", + "Those arguments are similarly inapposite (Reply Br. 6-7).", + "Similarly, Appellants' argument that the Michelson device is not inserted into the medullary space of bone is misguided (App. Br. 7-8; Reply Br. 4-6).", + "The claims require a device \"configured and dimensioned for insertion into a medullary space of a bone,' \" which recites an intended use of the device.", + "If a prior art structure is capable of performing the intended use, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).", + "Here, the Michelson device--designed as a spinal implant--is configured and dimensioned such that it is capable of being inserted into a medullary space of a large bone (FFI; see Ans. 8).", + "Additionally, the Michelson device includes a tapered distal end, similar to that disclosed by Appellants, which would assist in inserting such a device into medullary space (FF1; see Ans. 8-9),", + "Finally, contrary to Appellants' suggestion, the larger threading radius provided by Michelson does not preclude insertion into a medullary space but, rather, may help gain purchase during insertion (App. Br. 10; see Ans. 9).", + "With respect to Appellants' argument that Michelson fails to disclose a plurality of transverse boreholes, we find that the broadest reasonable interpretation of this limitation requires a hole with some depth.", + "Michelson provides as much.", + "The claims do not require, as Appellants' argue, a cylindrical hollow portion with an intermediate section extending from one end of the nail to the other (App. Br. 14-15).", + "Furthermore, that the claims require a *virtual\" borehole cylinder provides additional evidence that an *actual* cylindrical portion is not required.", + "Such a limitation will not be read into the claims.", + "\"Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using *words or expressions of manifest exclusion or restriction\" \" Liebel-Flarsheim Co. 12 Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citation omitted).", + "Finally, we are not persuaded by Appellants' argument that \"[t]o utilize the openings 140, 142 for any other purpose (such as receiving a transverse bone fixation implant) teaches away from the disclosure of Michelson\" (App. Br. 14-15).", + "As discussed above, the claims do not recite any kind of *fixation implant.\"", + "More importantly, **the question whether a reference fteaches away' from the invention is inapplicable to an anticipation analysis.\" Celeritas Tech., Ltd. V. Rockwell Int 7 Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)." + ] +} \ No newline at end of file diff --git a/opinion_split/2012008362_DECISION.json b/opinion_split/2012008362_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1c7af3542c92145b1530982d35b9a5eb7b74f43f --- /dev/null +++ b/opinion_split/2012008362_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Here, Appellants contend that \"it is not necessary for the Specification to explicitly use the word *syntax* (App. Br. 15).", + "Appellants further contend that in viewing paragraphs 21-22 \"[o]ne of ordinary skill in the art readily understands that the illustrated 'document. writeIn (BIRTHDAY_QUESTION); statement writes a line. where the content of that line is determined by the value of the statement's BIRTHDAY_QUESTION variable\" (id. at 17), which illustrates that a value is to be substituted upon rendering.", + "Appellants also contend that Figs. 1 and 2 and paragraph 21 of \"their Specification sufficiently explains the embedding of statements into a scripting language portion of a Web page\" (id. at 18-19).", + "Appellants contend that \"[w]hile Zhu does state the word 'include' in the cited text from col. 15, lines 18-29, Appellants respectfully submit that this is not referring to an include statement, but rather is simply using the word *includes' as a common English term that is a synonym for *contains'\" (App. Br. 24).", + "Appellants further contend that \"[w]hile the cited text in Zhu's col. 9, lines 12-22 discusses adding URLs to a hash table, \u00b7 . \u00b7 This has nothing to do with generating an include statement\" (id. at 25).", + "Appellants further contend \"that neither IBM nor Thomas remedies the above-demonstrated deficiencies of Zhu\" (App. Br. 29).", + "Appellants further contend that in IBM *this single SQL statement retrieves (i.e., selects) 5 values \u00b7 \u00b7 In sharp contrast, Appellants' claim language recites that the national language resource file specifies *a* that is, a single national-language-specific version of values\" (App. Br. 31).", + "Also, Appellants contend that *the assertion that a combination of Zhu with IBM would let users feasily select the language\" for displaying [something unstated in the Office Action] is a mere assertion that is unsupported by any evidence\" (App. Br. 34).", + "Appellants contend that there is \"no teaching, or suggestion, of variable definitions in the cited text of IBM\" (App. Br. 39)." + ], + "examiner_findings": [ + "Claims 15, 19, 21, 23, 28, 29, 35, 37, and 39 are rejected under 35 U.S.C. & 112, first paragraph; R2.", + "Claims 15, 19, 21, 23, 26-40 are rejected under 35 U.S.C. 6 103(a) as being unpatentable over Zhu (US 7,308,643 B1, Dec. 11, 2007), Thomas (US 7,523,191 B1, Apr. 21, 2009), and IBM (Implementing National Language Support (NLS) in WebSphere Portal 4.1, 1-6, (2002), and The refreshData() method), 1-2, available at \ub300\ud55c\ubbfc\uad6d\uc815\ubd80\uc640\uce60\ub808\uacf5\ud654\uad6d\uc815\ubd80\uac04\uc758\uc790\uc720\ubb34\uc5ed\ud611\uc815\uc758 bernal2/bernal.htm); R3.", + "Claim 25 is rejected under 35 U.S.C. & 103(a) as being unpatentable over Zhu, Thomas, and Horn (US 2002/0156688 AI, Oct. 24, 2002).", + "The Examiner finds that several amended limitations have no support in the original disclosure (see Non-Final Act. 5).", + "The Examiner notes that it was *pointed out in the Office action that Zhu et al. does not explicitly disclose generation of an include statement.", + "For this, [the] Examiner relied upon Thomas et al.\" (Ans. 22-23).", + "The Examiner also finds that \"Zhu et al. disclose the include statement equivalent [by] containing the URL within a web document. . \u00b7 Since different URL's may be included, said URL included becomes variable\" (Ans. 25).", + "In response, the Examiner finds that the IBM reference discloses \"a language code and a country code\" (Ans. 8), and \"it is abundantly clear that only one natural language value is retrieved into the mylanguage variable \ubcf4 \u00b7 \u00b7 [U]sing an *if, then, else[-]if construct\" (id. at 26).", + "The Examiner finds that it would have been obvious to one of ordinary skill in the art at the time of the invention to combine IBM with Zhu *in order to let users easily select the language in which they want to be displayed\" (Ans. 10).", + "The Examiner finds that \"It is also abundantly clear that the variable 'request.get Local e0' exists and is used to retrieve variable data to populate the aforementioned *mylanguage' variable\" (Ans. 28)." + ], + "ptab_opinion": [ + "Claim Groupings Based on Appellants\" arguments in the Appeal Brief, we will decide the appeal on the basis of claims 15 and 29, as set forth below.", + "Although we agree with the Examiner that the Specification does not verbatim disclose the disputed claim limitations, we believe, however, that the portions of the Specification identified by Appellants (see App. Br. 17- 19), as well as other portions of the Specification reasonably convey, implicitly, to one of ordinary skill in the art that Appellants had possession of the concept.", + "Accordingly, the rejection of claims 15, 19, 21, 23, 28, 29, 35, 37, and 39 under 35 U.S.C. 8 112, first paragraph, as failing to comply with the written description requirement is reversed.", + "We agree with the Examiner.", + "Specifically, as pointed out by the Examiner (see Non-Final Act. 11; Ans. 10-11), Thomas teaches that \"[the most straight forward solution to inserting the instrumentation into each page seems to be [a] server side include statement[.] server module side includes are supported by nearly all commercial web servers.", + "They allow a reference to a document to be embedded in other documents\" (col. 85, II. 40-61).", + "In this case, Appellants' arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is, therefore, ineffective to rebut the Examiner's prima facie case of obviousness.", + "This reasoning is applicable here, as Appellants focus their arguments on Zhu's adding of URLs to documents and how this is distinguishable from generating an *include statements, *, however, Appellants fail to rebut the Examiner's specific findings regarding Thomas' disclosure of *include statements. \"", + "We agree with the Examiner.", + "In IBM's 's refreshData() method, the variable \"mylanguage\" is populated using an *if, then, elseif\" construct (see pages 1-2), which suggests that once a construct is satisfied, the appropriate language is selected.", + "Just because various different languages can be selected, does not take away from the fact that IBM selects a single language upon satisfaction of a construct.", + "We agree with the Examiner.", + "Here, the Examiner has found actual teachings in the prior art and has provided a sufficient rationale for the combination.", + "Further, the teachings suggest that both IBM and Zhu target an end user's needs (see Zhu, col. 1, II. 45-50 and IBM, Set I. page I, Introduction).", + "Accordingly, we find that the Examiner has provided a motivation for modifying Zhu with the teachings of IBM (and Thomas).", + "In view of the above discussion, because Appellants have not demonstrated that the Examiner erred in finding the argued limitations in the combined disclosures of Zhu, Thomas, and IBM, the Examiner's 35 U.S.C. $ 103(a) rejection of representative independent claim 15, as well as claims 19, 21, 23, 25-28, and 30-40 not separately argued by Appellants, is sustained.", + "We agree with the Examiner.", + "For example, IBM's The refreshData() method illustrates the use of *request.get Local e0,\" \" which the Examiner has identified as a variable definition given that it is assigned to mylanguage and follows the format for tag definitions (see page 2 of 6).", + "The recited *variable definitions\" is strikingly similar (at least conceptually) to IBM's teachings of tag definitions and the Examiner's s reliance on this illustration is, therefore, persuasive.", + "For these reasons, we are not persuaded the Examiner erred in finding IBM discloses the argued limitation as recited in claim 29.", + "Therefore, the Examiner did not err in rejecting claim 29 under 35 U.S.C. 5 103(a) as being obvious." + ] +} \ No newline at end of file diff --git a/opinion_split/2012008402_DECISION.json b/opinion_split/2012008402_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..07d99d7b809f4f8e0132e2e3701249021f04f0fb --- /dev/null +++ b/opinion_split/2012008402_DECISION.json @@ -0,0 +1,47 @@ +{ + "appellant_arguments": [ + "According to Appellants, the claims are directed to an architecture for a multi-port cache memory and particularly, to a way-prediction in an N- way set associative cache memory. Spec. 1:1-2; Abstract.", + "Claim 1, reproduced below, is representative of the claimed subject matter:", + "1. A multi-port cache memory comprising: a plurality of input ports for inputting a plurality of addresses, wherein each address of the plurality of addresses comprises a tag part and an index part, the index part indexing a plurality of ways; a plurality of output ports for outputting data associated with each of said plurality of addresses; a plurality of memory blocks for storing said plurality of ways, each memory block of said plurality of memory blocks comprising a single input port; a predictor for predicting which plurality of ways will be indexed by the index part of each of said plurality of addresses; means for indexing said plurality of ways based on the predicted ways, wherein the indexing means comprises a plurality of multiplexers coupled to receive the index part of the plurality of addresses from the plurality of input ports, and wherein the predictor is further configured to control each multiplexer to output at least one of the index parts to at least one of the plurality of memory blocks; and means for selecting one of said plurality of ways such that data of said selected way is output on an associated output port of said cache memory.", + "Appellants assert their invention is not obvious over Hironaka and Tran. App. Br. 5-11.", + "Appellants argue the Examiner's characterization of the term \"port\" to allow multiple pins or leads is misplaced. Reply Br. 4.", + "Appellants point to Hironaka's teaching that port number conversion circuits 18 convert N, ports into one port. Id. at 5 (citing Hironaka, 11 94-95).", + "Appellants further contend that based on these explicit teachings, Hironaka teaches each bank unit has multiple input ports. App. Br. 8-9; Reply Br. 5.", + "Therefore, according to Appellants, Hironaka does not teach the bank unit 16a-f has only a single input port. App. Br. 9: Reply Br. 5.", + "Appellants additionally argue the cited portion of Tran does not teach indexing ways based on predicted ways and indeed--that Tran provides no correlation between indexing ways and predicted ways. App. Br. 11." + ], + "examiner_findings": [ + "The prior art relied upon by the Examiner in rejecting the claims on appeal is:", + "Tran et a1. US 5,764,946 June 9. 1998", + "Dean et al. US 6,604,174 B1 Aug. 5, 2003", + "Desai et al. US 2003/0014457 A1 Jan. 16, 2003", + "Hironaka et al. US 2004/0088489 A1 May 6, 2004", + "Claims 1. 4, 5, 13, and 14 stand rejected under 35 U.S.C. $103(a) as being unpatentable over Hironaka and Tran. Ans. 5-10.", + "Claims 2, 3, and 15 stand rejected under 35 U.S.C. $103(a) as being unpatentable over Hironaka, Tran, and Dean. Ans. 10-12.", + "Claims 6-12 stand rejected under 35 U.S.C. 8103(a) as being unpatentable over Hironaka, Tran, and Desai. Ans. 12-16.", + "The Examiner has determined the term \"port\" may be construed as having multiple pins or leads. Ans. 16.", + "Specifically, the Examiner is relying on Tran as teaching use of prediction addresses, a predicted way, and target selection control bits and Hironaka as teaching indexing means. Id. at 6-8, 18-19." + ], + "ptab_opinion": [ + "Appellants appeal under 35 U.S.C. 8 134 from a final rejection of claims 1-15.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "We have only considered those arguments that Appellants actually raised in the Briefs.", + "Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. , 41.37(c)(1)(vii) (2011).", + "35 U.S.C. f 103(a): Claims 1-15", + "The issues presented by these arguments are:", + "Issue 1: Has the Examiner erred in finding the combination of Hironaka and Tran teaches or suggests \"a plurality of memory blocks for storing said plurality of ways, each memory block of said plurality of memory blocks comprising a single input port, as recited in claim 12", + "Issue 2: Has the Examiner erred in finding the combination of Hironaka and Tran teaches or at least suggests \"means for indexing said plurality of ways based on the predicted ways,\" as recited in claim 12", + "We are not persuaded by Appellants' arguments.", + "Appellants have not proffered sufficient evidence or argument to show error in the Examiner's interpretation.", + "We further note the term \"port\" is defined as \"[i]n a circuit, device, or system, a point at which energy or signals can be introduced or extracted in a particular manner.\" See The Illustrated Dictionary of Electronics 544 (Stan Gibilisco, ed., McGraw Hill, 8th ed., 2001).", + "We further note that Hironaka teaches multiple ports may be converted into one port. Hironaka I 95.", + "In light of this interpretation, we agree with the Examiner that Hironaka teaches \"a plurality of memory blocks for storing said plurality of ways, each memory block of said plurality of memory blocks comprising a single input port\" for the reasons set forth by the Examiner. Ans. 6-8, 16- 17.", + "We are not persuaded by Appellants' arguments.", + "We agree with the Examiner's findings. Ans. 18-20.", + "Appellants have not proffered sufficient evidence or argument to persuade us of error in the Examiner's findings.", + "Thus, we are not persuaded of error in the Examiner's finding that the combination of Hironaka and Tran teaches or suggests the recited indexing means.", + "Accordingly, we sustain the rejection of claims 1, 4, 5, 13, and 14 under 35 U.S.C. $ 103(a) for obviousness over Hironaka and Tran.", + "Claims 2, 3, 6-12, and 15 were not separately argued, and thus fall with their respective independent claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2012008523_DECISION.json b/opinion_split/2012008523_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c45eb40a49235094b48dfd0c85aeb1849064594e --- /dev/null +++ b/opinion_split/2012008523_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Paillard urges the Examiner erred harmfully by failing to come forward with evidence that it would have been obvious to lower the pH of the waste-stream treated by D' Amaddio in order to dissolve the contaminants recited in claim 15. (Br. 5-6.)", + "D' Amaddio, in Paillard's view, adjusts the pH in order to precipitate contaminants (id., citing D' Amaddio column 2 [sic: col. 3], lines 8-18), not to dissolve them." + ], + "examiner_findings": [ + "The Examiner has maintained the following ground of rejection: Claims 15-19 and 27-30 stand rejected under 35 U.S.C. 5 103(a) in view of the teachings of D' Amaddio. 6", + "The Examiner finds that pH of the effluent is a result-effective variable, the optimization of which would have been within the ordinary skill in the art. (Ans. 6, 1st full para.)", + "The Examiner finds further that \"when *adjusting to precipitate 'certain solids' other *certain solids' may dissolve or remain dissolved in solution.' \" (Id. at 12, 3d full para.)", + "The Examiner also finds that the routineer \"would have very well understood that if pH adjustment can be used to precipitate solids for the filtration system then the pH can be adjusted to dissolve particles or keep them dissolved.", + "This would all be optimized to protect the RO [reverse osmosis] membrane. \" (Id. at 13, 1st full para.)" + ], + "ptab_opinion": [ + "OPINION A. Introduction\" The subject matter on appeal relates to a method for treating the purging or cleaning effluent from a steam generating circuit.", + "In the claimed process, the effluent contains suspended solids, organic acids, metals, and nitrogen-containing compounds at a pH of 7.0 or above.", + "According to the 225 Specification, \"the circuits may be secondary circuits in a nuclear power station, or primary circuits in a fossil fuel power station, or indeed steam circuits fitted to any other type of industrial unit.\" \" (Spec. 1, 11. 11-14.)", + "The claimed process comprises acidifying the effluent to dissolve the organic acids, metals, and nitrogen-containing compounds, filtering out the solids, and concentrating the effluent by reverse osmosis and evaporation to remove at least 98% of the contaminants.", + "Claim 15 is representative and reads: A method for treating a steam generator circuit purging or cleaning effluent, the method comprising: providing effluent from a purging or cleaning operation of the steam generator circuit, wherein the effluent has a pH of 7.0 or above and wherein the effluent contains suspended solids, organic acids, metals, and nitrogen-containing compounds; lowering the pH of the effluent to between approximately 5 and approximately 6.5 such that the organic acids, the nitrogen-containing compounds, and metals are dissolved within the effluent; removing suspended solids from the effluent; concentrating the effluent in a reverse osmosis unit and in an evaporator concentrator so as to produce a treated effluent; and wherein concentrating the effluent removes at least 98% of the organic acids, metals, and nitrogen-containing compounds contained in the steam generator circuit purging or cleaning effluent. (Claims App., Br. 14, some paragraphing, indentation, and emphasis added.)", + "Claim 27, the other independent claim, is similar in the disputed limitations.", + "B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record.", + "The difficulty with the Examiner' rejection is the absence of cited evidence that the routineer, implementing the teachings of D' Amaddio, would have selected a pH in the range of about 5 to about 6.5 in order to accomplish any particular goal, especially to dissolve the organic acids, nitrogen-containing compounds, and metals recited in the claims.", + "As the Examiner finds, D' Amaddio does not provide that explicit teaching.", + "Absent evidence that a pH regime between about 5 and about 6.5 would have been regarded by the routineer as useful in the process disclosed by D' Amaddio, the rejection is best characterized as being based on hindsight.", + "This is especially so because D' Amaddio seeks to precipitate the unspecified dissolved contaminants, not to insure that they are in solution.", + "Thus, D' Amaddio states that \"[i]n addition, the chemicals can be selected to cause a chemical reaction with the dissolved solids in the liquid waste influent to cause solid precipitation.\" (D' Amaddio, col. 3, 11. 9-1 1; emphasis added.)", + "The Examiner appears to consider the claims to be so broad that any amount of contaminant dissolved in the water upon lowering the pH into the recited range would result in the \"dissolved\" condition being met.", + "Such a broad reading is contrary to the ordinary use of the term \"dissolved.", + "Moreover, the Examiner has not directed our attention to any credible evidence in the original disclosure indicating that Paillard intended an idiosyncratic, broader meaning of that term.", + "Nor has the Examiner provided any evidence or analysis indicating that the 98% removal condition would have been met.", + "The Examiner's s attempt to shift the burden of proof regarding the obviousness of these limitations to Paillard fails for lack of the required evidentiary foundation.\" 7", + "It is not enough to establish that a person having ordinary skill in the art would have considered the claimed invention chemically and physically reasonable: few inventions are not.", + "Moreover, while the claimed process does not necessarily require that the recited steps occur in the order recited--there are no phrases that necessarily link one step to another---the potential breadth of the claims does not constitute evidence that the claimed process would have been obvious." + ] +} \ No newline at end of file diff --git a/opinion_split/2012008792_DECISION.json b/opinion_split/2012008792_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..e428cf6ef85812ff63aed7384e5b7af81e67be17 --- /dev/null +++ b/opinion_split/2012008792_DECISION.json @@ -0,0 +1,18 @@ +{ + "appellant_arguments": [ + "Appellants point out this aspect of their claimed invention on page 4 of their Appeal Brief and on pages 3-4 of the Reply Brief." + ], + "examiner_findings": [ + "THE REJECTIONS 1. Claims 1, 3-6 and 12 are rejected under 35 U.S.C. $102(b) as being anticipated by Matsumoto '270 (the English equivalent to Matsumoto '100).", + "2. Claims 7-10 are rejected under 35 U.S.C. $103(a) as being unpatentable over Matsumoto in view of Korte.", + "It is the Examiner's position that Matusmoto '270 teaches adjusting means that is equivalent to Appellants' claimed adjusting means.", + "The Examiner finds that Matsumoto '270's adjusting means is regulators 13 controlled by control unit 70. Ans. 5." + ], + "ptab_opinion": [ + "We answer this question in the affirmative and REVERSE.", + "When the claim terms are written in \"means-plus-function\" format, they must be interpreted as limited to the corresponding structures described in the Specification or equivalents thereof consistent with 35 U.S.C. .8 112, sixth paragraph.", + "However, the Examiner has failed to establish that the regulators in Matsumoto 270 are equivalent to Appellants' pressure sensors 41 and 43. Ans. 5.", + "As such, we reverse Rejection 1.", + "Because Korte does not cure this stated deficiency in Matsumoto '270, we also reverse Rejection 2." + ] +} \ No newline at end of file diff --git a/opinion_split/2012009365_DECISION.json b/opinion_split/2012009365_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3a00b289d1816c63325083cce2d1fd74f9cf32a6 --- /dev/null +++ b/opinion_split/2012009365_DECISION.json @@ -0,0 +1,72 @@ +{ + "appellant_arguments": [ + "Claims 19 and 27 Appellant contends that the Examiner erred in finding that Mayaud discloses the following limitation of claims 19 and 27: receiving, from a computer system \"associated with at least one pharmacy, servicing activity information associated with filling a plurality of prescriptions for a plurality of customers by the at least one pharmacy.\" Appeal Br. 8, Claims App.", + "In particular, Appellant acknowledges that Mayaud discloses the transfer of several types of prescription-related information from a prescriber (e.g., a doctor) to a pharmacy in order to enable a pharmacy to fill a prescription without undue difficulty. Appeal Br. 9.", + "Appellant, however, argues that this type of prescription-related information, which is provided to a pharmacy before a prescription is filled, does not constitute \"servicing activity information\" of the type required by claims 19 and 27. See id.", + "Appellant also argues that Mayaud discloses the transfer of prescription-related information \"one way from a prescriber to a pharmacy,\" and not *from a computer system that is associated with at least one pharmacy\" as required by the claims. Appeal Br., Claims App. (emphasis added); Appeal Br. 9.", + "Appellant also contends that the Examiner erred in finding that the cited prior art discloses analyzing \"the servicing activity information with at least one benchmark\" to generate *an analysis report comprising analysis information based on at least part of the servicing activity information analyzed with the at least one benchmark, as required by claims 19 and 27. Appeal Br. 11.", + "Instead, Appellant repeats the argument that the prescription- related information of Mayaud is not \"servicing activity information\" because it is generated by prescribers, and not pharmacies. See Reply 12.", + "Appellant spends much of the Reply Brief arguing that the Examiner has failed to articulate a sufficient rationale for combining the cited prior art references. See Reply Br. 5-19.", + "Appellant argues that this language specifies functional claim limitations that must be given patentable weight. Appeal Br. 12.", + "Appellant argues that the Examiner erred in rejecting dependent claims 21 and 29 because the prior art cited in the rejection of corresponding independent claims 19 and 27 does not teach or suggest servicing activity information, or the use of a benchmark to analyze servicing activity information. Appeal Br. 14.", + "Appellant also argues that the Examiner erred in determining that the following language of dependent claims 21 and 29 is non-functional descriptive material that is not entitled to patentable weight: wherein the analysis information comprises an average cost price for the plurality of prescriptions, an average cost for the prescriptions associated with each of the at least one entity paying on the prescription, a total cost for the plurality of prescriptions, an average selling price for the plurality of prescriptions, an average selling price for the prescriptions associated with each entity, a total sale for the plurality of prescriptions, an average profit margin for the plurality of prescriptions, an average profit margin for the prescriptions associated with each entity, a percentage of utilization for each classification of prescription, and a percentage of utilization for each entity for at least one classification of prescription. Appeal Br. 13-15, see also Ans. 16-17.", + "Appellant argues that the Examiner erred in rejecting dependent claims 22-26 and 30-33 because the prior art cited by the Examiner does not teach or suggest \"the inventive concepts set forth in claims 19 and 27.\" Appeal Br. 16.", + "Appellant also argues that the Examiner erred in finding that Vonk teaches or suggests the following limitation of claims 22 and 30: analyzing the servicing activity information with at least one benchmark indicative of a predetermined servicing activity level for the at least one pharmacy, and including information within the analysis report based the analysis of the servicing information with the at least one benchmark indicative of the predetermined servicing activity level use of a benchmark Appeal Br. 16." + ], + "examiner_findings": [ + "Claims 19, 20, 27, 28, and 34 36 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Mayaud and Denny. Ans. 4.", + "Claims 21 and 29 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Mayaud, Denny, and Field. Ans. 7.", + "Claims 22-26 and 30-33 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Mayaud, Denny, and Vonk. Ans. 10.", + "As the Examiner notes in the Answer, Mayaud discloses that prescription-related information *may be reviewed by others,\" e.g., by \"drug benefits companies\" in order to analyze **formulary compliance and respond by encouraging better compliance.\" See Ans. 16; Mayaud 13:53-60.", + "The Examiner finds that the above-quoted claim language is non-functional descriptive material that is not entitled to patentable weight. Ans. 6.", + "Here, the Examiner has found the servicing information of claim 28 *has no structural effect or does not manipulate the system.\" See Ans. 6 (citing Spec. 93, which describes the servicing information as descriptive).", + "Moreover, as discussed above, the Examiner finds that drug formularies are a benchmark of the type required by claims 19 and 27." + ], + "ptab_opinion": [ + "We are unpersuaded by the Appellant's argument that the Examiner erred in rejecting claims 19-36 under 35 U.S.C. & 103.", + "We adopt as our own (1) the findings and conclusions regarding this rejection set forth by the Examiner in the Office Action from which this appeal is taken, and (2) the reasoning regarding this rejection set forth by the Examiner in the Examiner's Answer.", + "We highlight and discuss Appellant's argument below only for emphasis.", + "Appellant's arguments are unpersuasive.", + "The claim term *servicing activity information\" does not appear to have any ordinary and customary meaning.", + "However, Appellant's Specification describes *servicing information\" as follows: \"In general, the servicing information 46 is data that is associated with or identifies at least one prescription filled or serviced by the pharmacy.\" Spec. 9 13.", + "This description from the Specification is consistent with the usage of the term *servicing activity information\" in Appellant's claims.", + "Thus, under the broadest reasonable construction standard applicable here, we construe the claim term \"servicing activity information\" as encompassing information that identifies or is associated with at least one prescription filled or serviced by a pharmacy.", + "Appellant does not dispute that the prescription-related information of Mayaud identifies a prescription to be filled by a pharmacy.", + "And although Appellant is correct in noting that the prescription-related information of Mayaud is transmitted from a prescriber to a pharmacy, the claims do not require that servicing activity information be generated by a pharmacy, or preclude servicing activity information from being generated by a prescriber.", + "Thus, we are not persuaded that the Examiner erred in finding that Mayaud discloses servicing activity information of the type required by claims 19 and 27.", + "The plain and ordinary meaning of \"benchmark\" is a criterion, reference point, or standard that is used to measure something. 2", + "Appellant's Specification uses the term \"benchmark\" in a manner that is consistent with this plain and ordinary meaning. See, e.g., Spec. 11 20-24 (describing various types of numeric standards that are used to assess the performance of pharmacies as being benchmarks).", + "Thus, we construe the claim term \"analyzing the servicing activity information with at least one benchmark\" to require that the servicing activity information be measured against a criterion, reference point, or standard.", + "Appellant's Reply does not dispute the Examiner's finding that a drug benefit company's formulary is a benchmark of the type required by claims 19 and 27.", + "This argument is unpersuasive for the reasons set forth above.", + "Thus, we are not persuaded that the Examiner erred in finding that the prior art of record discloses analyzing \"servicing activity information with at least one benchmark\" to generate *an analysis report comprising analysis information based on at least part of the servicing activity information analyzed with the at least one benchmark, \" as required by claims 19 and 27.", + "However, our rules require that Appellant include in the Appeal Brief \"the contentions of appellant with respect to each ground of rejection presented for review \u00b7 \u00b7 \u00b7 and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on.\" 37 C.F.R. $ 41.37(c)(1)(vii) (2011).", + "Appellant's Appeal Brief does not contain a substantive argument regarding alleged shortcomings in the Examiner's rationale for combining the prior art references cited by the Examiner. See Appeal Br. 8-11.", + "Appellant has also failed to set forth any reason why it could not have raised the arguments earlier regarding the Examiner's rationale for combining prior art references in the Appeal Brief.", + "Thus, it is improper for Appellant to raise these arguments for the first time in the Reply Brief. See, e.g., Kaufman Co. V. Lantech, Inc., 807 F.2d 970, 973 n* (Fed. Cir. 1986) (\"IT is inappropriate for appellants to discuss in their reply brief matters not raised in \u25a0 \u00b7 \u00b7 the principal brief[ 1. Reply briefs are to be used to reply to matter[s] raised in the brief of the appellee. \").", + "We, therefore, do not consider Appellant's untimely argument regarding the Examiner's s rationale for combining prior art references.", + "For the foregoing reasons, we are not persuaded by Appellant's arguments that the Examiner erred in rejecting claims 19 and 27.", + "We, therefore, we sustain the Examiner's rejection of claims 19 and 27.", + "Appellant's argument is unpersuasive.", + "Printed matter or stored information is not entitled to weight in the patentability analysis unless there is a new and unobvious functional relationship between the printed matter or stored information and the underlying system or method.", + "See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (\"Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. \" (citation omitted); see also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994),", + "Against these findings, Appellant has failed to set forth any persuasive evidence or technical reasoning that there is a new and unobvious functional relationship between the types of \"servicing information\" specified by claim 28 and the system of claim 27,", + "We, therefore, sustain the Examiner's rejection of claim 28.", + "Appellant does not make any separate substantive patentability arguments regarding dependent claims 20 and 34-36, but instead relies on its arguments with respect to independent claims 19 and 27.", + "These arguments are unpersuasive for the reasons set forth above.", + "Thus, we also sustain the Examiner's rejection of claims 20 and 34-36.", + "These arguments are unpersuasive for the reasons discussed above.", + "Appellant's argument is unpersuasive.", + "As discussed above, printed matter or stored information is not entitled to weight in the patentability analysis unless there is a new and unobvious functional relationship between the printed matter or information, and the underlying system or method.", + "Appellant has failed to set forth any persuasive evidence or technical reasoning that there is a new and unobvious functional relationship between the types of analysis information specified in dependent claims 21 and 29, and the method of claim 19 or the system of claim 27.", + "Thus, we sustain the Examiner's is rejection of claims 21 and 29.", + "This argument is unpersuasive for the reasons set forth above.", + "Appellant's argument is unpersuasive.", + "Although Appellant provides a general description of the Vonk reference, Appellant does not identify which specific portions of the above- quoted claim limitation are allegedly not taught or disclosed by Vonk. See Appeal Br. 16.", + "Appellant does not provide any persuasive evidence or technical reasoning that a drug formulary is not a type of benchmark that is indicative of a predetermined servicing activity level.", + "Thus, Appellant's argument is unpersuasive as to error in the Examiner's s rejection of claims 22 and 30.", + "We, therefore, sustain the Examiner's s rejection of claims 22 and 30.", + "Appellant does not make any separate substantive patentability arguments regarding claims 23-26 and 31-33.", + "Thus, we also sustain the Examiner's rejection of claims 23-26 and 31-33." + ] +} \ No newline at end of file diff --git a/opinion_split/2012009420_DECISION.json b/opinion_split/2012009420_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8d6aba4b9aeb0b508a6fbae3b75b8e7667b1379b --- /dev/null +++ b/opinion_split/2012009420_DECISION.json @@ -0,0 +1,66 @@ +{ + "appellant_arguments": [ + "Appellants request review of the Examiner's rejection of claims 1-3 under 35 U.S.C. 8 103(a) as unpatentable over Suzuki, in view of Okubo\" and in view Mertens.\" (Br. 3.)", + "Appellants contend that Suzuki never introduces the ISF label at the R' position and to do so would require a \"complete[] change [in] the reaction conditions\" disclosed in Suzuki. (Br. 4.)", + "According to Appellants, Suzuki *is silent as to why one of ordinary skill in the art would have had some *apparent reason to combine the known elements in the fashion claimed. *** (Br. 4.)", + "Appellants contend that \"Okubo does not disclose or otherwise contemplate the incorporation of radioactive labels into any of his compounds.\" (Br. 5.)", + "According to Appellants, \"the only way one would choose compound 7-072 as a synthetic intermediate would be by the use of impermissible hindsight.\" (Br. 6.)", + "Appellants contend that \"there is no apparent reason, and the Patent Office has not provided one, why one of ordinary skill in the art would substitute azide for ISF, as presently claimed, even though the two are admittedly nucleophiles.\" (Br. 7.)", + "Appellants contend that \"the claimed method generates an 18F- labeled compound.", + "Thus, by pure logic, a reaction scheme which takes hours or overnight to complete destroys the purpose of the claimed invention.\" \" (Br. 8.)" + ], + "examiner_findings": [ + "4. The Examiner finds that Suzuki \"teaches the isolation of F18\" molecules and using solid phase methods (example 2), and effective amounts of fluorine and a method to incorporate a hot fluorine atom by nucleophilic substitution (example 2).\" (Ans. 6; see also Suzuki 11 21-22.)", + "5. The Examiner finds that Suzuki *fails to teach an intermediate that could be converted to the fluorine containing molecule in one step, or F18-.\" (Ans. 6.)", + "6. The Examiner finds Okubo suggests an SN2 reaction (nucleophilic reaction) for substituting chloride with an azide in peripheral benzodiazepine receptor (PBR) ligand molecule.", + "7. The Examiner finds that \"substitution for the radiolabel \u00b7 [in] a single step would reduce radiochemical waste and radiochemical decay-thus reducing the cost of the process-- [sic][and provide] motivation to use a single step.\" (Ans. 12.)", + "8. The Examiner finds that Mertens *teaches that 18F- can act as a nucleophile in [a] SN2 substitution reaction to provide agents for positron emission studies.\" (Ans. 8.)", + "The Examiner concludes that knowing *18F- can act as a nucleophile in SN2 substitution reaction\" it would have been obvious to use this radiolabel with the reaction scheme disclosed in Okubo in order \"to provide agents for positron emission studies\" as suggested by both Mertens and Suzuki.", + "As recognized by the Examiner, Suzuki does not provide a compound that can incorporate a radioactive component in a single step reaction and looks to Okubo for teaching such a reaction scheme. (FF 5.)", + "The Examiner's position is that Okubo teaches a *one step process, and an intermediate than can be reacted with a nucleophile through a nucleophilic substitution reaction,\" providing the expectation that any nucleophile could be used in this reaction. (Ans. 7-8.)", + "The Examiner explains that \"[o]ne skilled in the art would have been motivated to \u00b7 \u00b7 \u25a0 (use a single step reaction process] in order to incorporate the radioactive isotope late in the synthesis due to the short half]-Jlife of fluorine-] 8\" and in order to *reduce chemical waste.\" (Ans. 8-9, see also 12.)", + "As explained by the Examiner, **Appellant does not claim any time or temperature [for the one step reaction].", + ", \u00b7 [S]ince radiochemical decay is a half-life, even if many half-lifes [sic] pass, there would still be at least one molecule of the radiochemical compound present.\" (Ans. 13.)" + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Claims 1-3 are on appeal, and can be found in the Claims Appendix of the Appeal Brief.", + "The Issue Does the preponderance of evidence of record support the Examiner's conclusion that the combination of references renders the method of preparing the fluorinated compound in a single step obvious?", + "Findings of Fact 1. Suzuki suggests a need for labeled peripheral benzodiazepine receptor (PBR) ligand compounds for the diagnosis of glioma and Alzheimer's s disease.", + "Specifically, Suzuki suggests that \"there is a demand for the development of a PBR ligand being able to obtain a high signal [in positron emission tomography (PET)] and, since N-(2,5- Intistration: \u00b7 , , has a strong affinity and a high selectivity, it has been known to be suitable for such an object.\" (Suzuki 93 (emphasis added); see Ans. 6.)", + "2. Suzuki suggests compounds represented by the general formula (1): or2 R' - CH X or* x", + "The general formula above is directed to compounds that are \"phenyloxyaniline derivative[s] useful as \u00b7 \u00b7 \u00b7 ligand[s] for peripheral benzodiazepine receptor [PBR] having a strong affinity and a high selectivity.\" (Suzuki, Abstract; see Ans. 5 and 11.)", + "3. Suzuki suggests adding radioisotopes to compounds encompassing general formula (1).", + "[T]he atom(s) contained in , \u00b7 \u00b7 formula (1) [shown above (FF 2)] is/are substituted with radioisotope(s).", + "Thus, at least one atom of carbon atoms and halogen atoms in the alkyl group defined by X', x, R'. R2 and R3 is substituted with a radioisotope and that which is substituted with \"C, 18F, 1231 or the like may be exemplified. (Suzuki 1 14; see Ans. 6.)", + "MeO MeO N o N O X CH2N3 CHiCI o o , 7-072 7-075 (See Ans. 6-7 and 12; see Okubo, 426 (Results and discussion).)", + "Principle ofLaw \"In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.", + "What matters is the objective reach of the claim.", + "If the claim extends to what is obvious, it is invalid under 8 103.\" KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398, 419 (2007).", + "Analysis We adopt the Examiner\" s findings of fact and reasoning regarding the scope and content of the prior art (Ans. 4-9; see also FF 1-8) and based on those findings we agree that claim 1 is obvious over Suzuki, Okubo, and Mertens.", + "We address Appellants' arguments below.", + "We are not persuaded.", + "The prior art cited by the Examiner adequately provides a reasonable expectation of success that the combination of Suzuki and Okubo would arrive at a radiolabeled PBR ligand.", + "See O'Farrell, 853 F.3d at 903-04 (\"[o]bviousness does not require absolute predictability of success \u00b7\u00b7\u00b7 all that is required is a reasonable expectation of success. .\" see also Hoffmann-La Roche Inc. V. Apotex Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014) (\"Conclusive proof of efficacy is not necessary to show obviousness.\").", + "Suzuki explains the need for the production of radioactive ligands in order to study the distribution of PBR in a living brain using a positron emission tomograph (PET). (FF 1.)", + "Suzuki disclosed compounds that are PBR ligands (FF 2) and instructs the addition of a \"C, ISF, or 1231 radiolabel to various positions within the compound (FF 3).", + "Okubo disclosed a compound, falling within the bounds of general formula (I) as claimed, that can be modified using a single step nucleophilic substitution reaction (SN2). (FF 6, see also FF 2.)", + "Adding a radiolabeled using a single step reaction has the benefit of reducing radioactive waste. (FF 7.)", + "(See FF 8 (\"I 8F- can act as a nucleophile in SN2 substitution reaction to provide agents for positron emission studies\").)", + "We are not persuaded.", + "The \"combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. \" KSR, 550 U.S. at 416.", + "Here, Suzuki instructs the production of peripheral benzodiazepine receptor ligand compounds that includes adding the 18p radiolabel at the claimed positions. (FF 2 and 3.)", + "Okubo provides a compound that can undergo a single step SN2 reaction to convert a chloride to an azide. (FF 6; see also Ans. 6.)", + "Given that \"1 8F- can act as a nucleophile in SN2 substitution\" reaction (see FF 8) and that I8F radiolabeled ligands are useful in PET studies (see FF I and 8), we find no error with the Examiner's rationale that it would be obvious to radiolabel the PBR ligand disclosed in Okubo in using the single step reaction scheme in order to produce a ligand useful for PET studies (See Ans. 12).", + "We are not persuaded.", + "It is well settled that it is obvious for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as the prior art teaches that the selection will result in the disclosed effect.", + "See Merck & Co., v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), Okubo, just like Suzuki, discloses the production of peripheral benzodiazepine receptor ligands. (FF 1-3, 6.)", + "Suzuki explains that such PBR ligands are valuable tools for \"diagnosis of glioma in the brain and Alzheimer's disease\" and discloses the incorporation of a radioisotope into these compounds. (Suzuki I 3; see also FF 1 and 3.)", + "See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (\"[T]he motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness. \").", + "We are not persuaded.", + "We find no error with the Examiner's interpretation.", + "It is well established that limitations not appearing in the claims cannot be relied upon for patentability.", + "In re Self, 671 F.2d 1344, 1348 (CCPA 1982).", + "We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 1, and Appellants have not provided sufficient evidence of secondary considerations that outweighs the evidence supporting the prima facie case.", + "As Appellants do not argue the claims separately, claims 2 and 3 fall with claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2012009900_DECISION.json b/opinion_split/2012009900_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3998e9289cd0974a572d682062aacbb24413dee1 --- /dev/null +++ b/opinion_split/2012009900_DECISION.json @@ -0,0 +1,197 @@ +{ + "appellant_arguments": [ + "As an initial matter, Appellant seeks our review of the Examiner's restriction of claim 39. Appeal Br. 11-16.", + "Appellant relies on In re Haas in support of our addressing this issue. See Appeal Br. 11.", + "Appellant argues that Hoegen Dijkhof fails to disclose the required mast arm sleeve--contending that the Examiner ignores the requirement that the mast arm sleeve be \"slidingly engaged.\" Appeal Br. 17.", + "Appellant disputes the Examiner's interpretation of Hoegen Dijkhof. Reply Br. 2.", + "Appellant argues that, in the embodiment depicted in Figures 5-9 of Hoegen Dijkhof, the spray beam 4 does not rotate about suspension axis 3. Id.", + "Apparently, Appellant bases this assertion on his interpretation that the threaded spindle 22 and geared motor 23 of Hoegen Dijkhof prevents the free rotation of the crop spraying apparatus. Id.", + "Appellant further argues that suspension axis 3 is not an actual structure, but rather an imaginary axis, such that it does not correspond to the recited mast arm. Appeal Br. 17-18 (\"[Hoegen] Dijkhof never states that element 3 is a mast arm \u00b7 \u00b7 \u00b7 It is unclear to Appellant how anything can be slidingly engaged, as required by claim 1, with a suspension axis. \"); Reply Br. 1.", + "As to dependent claims 2-4, which depend from claim 1, Appellant repeats his argument that the embodiment of Figures 5-9 of Hoegen Dijkhof does not allow the spray beam 4 to rotate about the suspension axis 3. Reply Br. 2.", + "Appellant repeats the argument that, given the operation of the embodiment of Figures 5-9 of Hoegen Dijkhof, the spray beam 4 and the suspension axis 3 are not the recited mast arm and mast arm sleeve. Reply Br. 3.", + "Appellant further disputes the Examiner's contention that \"suspension arm 3 'completely' passes through the *sleeve around arm 3,\" \"because [the] Examiner did not cite to any disclosure of [Hoegen] Dijkhof to support this statement.\" Id. at 4.", + "Appellant argues that the Examiner's interpretation of the term *single pendulum\" to include more than one pendulum arm is not reasonable. Reply Br. 4.", + "Appellant repeats his arguments as to claim 1 here. Appeal Br. 23; Reply Br. 5.", + "Appellant further argues that Hoegen Dijkhof fails to disclose that the mast arm (suspension axis 3) is \"fixedly connected.\" Appeal Br. 23.", + "Appellant also argues that the Examiner's characterization of the suspension axis 3 as a \"pin/shaft\" in the rejection of claim 1 implies that the structure is removably connected to the mast sleeve. Reply Br. 5.", + "Appellant contends that the Examiner's s application of the same structure to claim 7- which requires the structure to be fixedly connected--is inconsistent and constitutes error. Id.", + "Appellant argues that \"Dilf *mast arm 3' is fixedly connected to *mast sleeve 12,' then it is not clear how *mast arm 3' would be received by an opening of *the sleeve around arm 3.\" Reply Br. 6.", + "As to dependent claim 10, which depends from claim 7, Appellant repeats his argument that the embodiment of Figures 5-9 of Hoegen Dijkhof does not allow the spray beam 4 to rotate about the suspension axis 3 and, as such, does not have one or more pendulum arms. Reply Br. 6.", + "Appellant argues that \"[Hoegen] Dijkhof states that element 18 is a central control arm, which allows the movement of trim weights 10 and 11.\" \" Reply Br. 7 (citing Hoegen Dijkhof, col. 3, II. 34-51).", + "As to dependent claims 12 and 13, which depend indirectly from claim 7, Appellant repeats his argument that the embodiment of Figures 5-9 of Hoegen Dijkhof does not allow the spray beam 4 to rotate about the suspension axis 3. Reply Br. 2.", + "Appellant repeats arguments made in connection with independent claim 7 with respect to Hoegen Dijkhof's 's disclosure of a mast arm fixedly attached to a mast sleeve. See Appeal Br. 29; Reply Br. 9.", + "Appellant further argues that Hoegen Dijkhof fails to disclose a mast sleeve that is slidingly engaged with the first mast and that the Examiner fails to identify the element of Hoegen Dijkhof corresponding to the mast sleeve.", + "Appellant argues that *[Hoegen] Dijkhof never discloses that elements 10 and 11 are containers.\" Appeal Br. 31.", + "Appellant replies that the Examiner has interpreted the term \"container\" unreasonably. Reply Br. 10.", + "Specifically, Appellant argues that the Examiner's interpretation is inconsistent with Appellant's Specification, which discloses weights that contain flowable material. See id.", + "Appellant replies that \"[Hoegen] Dijkhof never discloses that the weights of elements 10 and 11 are adjustable,\" arguing that the Examiner has unreasonably interpreted the term **adjustable.\" Reply Br. 10.", + "Appellant argues that \"[Hoegen] Dijkhof discloses that the threaded spindle 22 and geared motor 23 control the lateral movement of suspension arm 21, and that spraying beam 4 is coupled to suspension arm 21 through center of gravity 5.\" Reply Br. 11.", + "Appellant asserts, therefore, that \"[Hoegen] Dijkhof does not disclose a single mast arm is positioned at a centerline of the vehicle, as required by claim 21.\" Id.", + "Appellant argues that the Examiner presents inconsistent positions with regard to the mast arm (suspension axis 3). Id.", + "Appellant argues that, in rejecting certain claims, the Examiner finds that the mast arm is fixedly connected to the mast sleeve, but, in rejecting claim 24, the Examiner finds that the mast arm may be removed. Id.", + "As to claim 26, Appellant repeats his argument, first made with respect to claim 7, that Hoegen Dijkhof fails to disclose that the mast arm is fixedly connected to the mast sleeve. Reply Br. 12-13.", + "As to claim 27, Appellant repeats his argument, first made with respect to claim 1, that Hoegen Dijkhof fails to disclose that that the suspension axis is a structural member corresponding to a mast arm. Reply Br. 14.", + "As to claim 28, Appellant \"maintains\" his arguments as to each of the previous claims. Reply Br. 14.", + "Appellant argues that \"[Hoegen] Dijkhof does not disclose that a cylinder is connected between the suspension piece 12 (allegedly the mast sleeve) and central portion 34, as required by claim 29,\" basing this argument on Appellant's allegation that \"[Hoegen] Dijkhof discloses that the threaded spindle 22 and geared motor 23 control the lateral movement of suspension arm 21.\" Reply Br. 14.", + "Appellant also argues that in rejecting other claims, \"the Examiner identified element 21 as being the pendulum arm\" and the Examiner identifying the same element as the recited cylinder is inconsistent. Reply Br. 15.", + "Appellant repeats the arguments made for claim 29.", + "Appellant argues that Hoegen Dijkhof fails to disclose the recited subject matter *because suspension axis 3 does not correspond to the mast arm of claim 1, and the cylindrical element surrounding suspension axis 3 of FIGS, 4 and 8 does not correspond to the mast arm sleeve of claim 1.\" Reply Br. 16.", + "Appellant further argues that \"it is not clear that suspension arm 21 is rotatably [sic] about suspension axis 3. It appears that spraying beam 4 rolls about center of gravity 5.\" Id.", + "With respect to claim 32, Appellant repeats the argument, first made in connection with claim 1. that the *cylindrical element surrounding suspension axis 3 of Figs. 4 and 8 is not the mast arm sleeve of the Appellant's claims.\" Reply Br. 16.", + "Appellant also repeats the argument, first made in connection with claim 8, that \"lilf *mast arm 3' is fixedly connected to *mast sleeve 12,' then it is not clear how *mast arm 3' would be received by an opening of '\\'the sleeve around arm 3. .\" Id.", + "As to claim 38, Appellant repeats the argument, first made in connection with claim 1, that the cylinder around suspension axis 3 as disclosed in Hoegen Dijkhof is not **slidingly engaged.\" Appeal Br. 41.", + "Appellant also repeats the argument, first made in connection with claim 7, that the mast arm is not fixedly connected to the mast arm sleeve. Id.", + "Appellant also repeats the argument made in connection with claim 31 that \"it is not clear that suspension arm 21 is rotatably [sic] about suspension axis 3. It appears that spraying beam 4 rolls about center of gravity 5.\" Reply Br. 17.", + "Appellant argues that the *ball and socket bearing 10 of Ballu does not restrict and allow the transverse and longitudinal rotation, respectively, of a crop spraying apparatus.\" Appeal Br. 47.", + "Appellant argues that the Examiner provides no evidence to support the reasons to combine Hoegen Dijkhof and Monti. Appeal Br. 73.", + "Appellant further argues that the Examiner's proposed modification would change the principle of operation of Hoegen Dijkhof. Appeal Br. 73, Reply Br. 31.", + "Appellant argues that the Examiner has not adequately supported his conclusion that it would be obvious to modify the vehicle of Hoegen Dijkhof to add pumps and conduit. Appeal Br. 74,", + "Appellant repeats the argument, made with respect to claim 22, that the Examiner's proposed modification would change the principle of operation of Hoegen Dijkhof." + ], + "examiner_findings": [ + "Claims 1-8, 10-14, 19-21, 24-32, 38, 43-45 stand rejected under 35 U.S.C. 5 102(b) as being anticipated by Hoegen Dijkhof. Ans. 4.", + "Claims 1-3, 6, 7, 10-14, 21, 24-31, 38, 43-45 stand rejected under 35 U.S.C. 8 102(b) as being anticipated by Ballu. Id. at 10.", + "Claims 19 and 20 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Ballu and Hoegen Dijkhof. Id. at 24.", + "Claims 22, 33-37, and 40-42 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Hoegen Dijkhof and Monti, Id. at 24.", + "See Ans. 26 (\"The mast arm sleeve is slidingly engaged with the mast arm because the spray beam 4 pivots about suspension axis 3.\").", + "The Examiner finds that Hoegen Dijkhof discloses the subject matter of claim 6, indicating that the suspension arm 21 of Hoegen Dijkhof corresponds to the claimed *single pendulum arm.\" Ans. 5.", + "The Examiner further states that \"Claim 6 does not preclude a second single pendulum arm.\" \" Id. at 27.", + "In response, the Examiner finds that \"li]f the single mast arm 3 is not fixedly connected to the mast sleeve 12, it would fall out and render Hoegen Dijkhof inoperable.\" Ans. 28.", + "The Examiner finds that \"Hoegen Dijkhof further discloses a locking mechanism 18, which locks the rotation of the mast arm sleeve (sleeve around arm 3) to the mast arm 3.\" Ans. 6.", + "The Examiner responds that, by adjusting the crop spraying apparatus to maintain its orientation parallel to the ground, the crop spraying apparatus is locked. Ans. 28.", + "The Examiner finds that Hoegen Dijkhof's trimming weights 10, 11 satisfy the claimed subject matter.", + "The Examiner responds that each weight is a container. Ans. 30.", + "The Examiner finds that Hoegen Dijkhof's trimming weights 10, 11 satisfy the claimed subject matter. Ans. 7.", + "The Examiner finds that \"Hoegen Dijkhof discloses, in column 3, lines 45-51, that weights 10 and 11 are adjustable to bring back the spray beam 4 to mid position.\" Id. at 30.", + "The Examiner finds that the \"single mast arm 3 is positioned at a centerline 6 of the vehicle.\" Ans. 7.", + "The Examiner finds that Hoegen Dijkhof discloses the recited subject matter, identifying the suspension arm 21 of Hoegen Dijkhof as the recited cylinder. Ans. 8.", + "The Examiner states that \"t]he cylinder 21 is connected to mast sleeve 12 via mast arm 3 and connectled] to the center support section 34 via the pin at center of gravity 5.\" Ans. 33.", + "The Examiner finds that the forward and rear suspension arms 21 disclosed in Hoegen Dijkhof satisfy the recited \"pair of cylinders.\" Ans. 8 (citing Fig. 9 of Hoegen Dijkhof).", + "The Examiner finds that the center support section 34 is coupled to the mast sleeve 12 through a single roll axis (longitudinal axis of mast arm 3; see figures 1-3), wherein the single roll axis (longitudinal axis of mast arm 3) extends through the mast arm 3.\" Ans. 8.", + "The Examiner finds that item 21 of Hoegen Dijkhof constitutes the **single pendulum arm.\" \" Ans. 9.", + "The Examiner further finds that \"Claim 43 recites the open ended transitional phrase 'comprising,' and therefore, does not preclude a second single pendulum arm.\" Id. at 35.", + "Under the *first interpretation of appellant's claimed invention,\" the Examiner finds that \"transverse rotation (rotation about the vertical axis of the vehicle) of the crop spraying apparatus 6a, 6b is restricted by the engagement combination of the: ball and socket 11, 10; rollers 12a, 12b; and roller 16.\" Ans. 11.", + "Under a *second interpretation,\" the Examiner finds that \"[the engagement of the ball and socket 11, 10 positions frame 5 such that the transverse rotation of the crop spraying apparatus 6a, 6b is restricted by rollers 12a, 12b and roller 16.\" Id. at 17.", + "In both interpretations, the Examiner relies on the rollers 12a, 12b, and roller 16 to restrict transverse rotation of the crop spraying apparatus (and, similarly, transverse rotation of the mast arm sleeve relative to the mast arm).", + "The Examiner responds that The ball and socket 11, 10, rollers 12a, 12b and roller 16 define contact points between mast arm 4, 11 and the mast arm sleeve 5, 10, P, pl. These contact points define the engagement between the mast arm 4, 11 and the mast arm sleeve 5, 10, P, pl. Contacts at 10 and 16 define the vertical axis of rotation and the contacts at 12a, 12b prevent rotation about the vertical axis. Ans. 37 (emphasis added).", + "The Examiner rejects claims 19 and 20 under 35 U.S.C. 8 103(a) as being unpatentable over Ballu and Hoegen Dijkhof. Ans. 24.", + "The Examiner relies on Ballu for disclosing the claim elements of independent claim 14. See Ans. 24,", + "The Examiner finds that \"Hoegen Dijkhof discloses the limitations of the claimed invention with the exception the trim weight having a container which contains a trimweight material. Ans. 24.", + "The Examiner further finds that \"Monti discloses a weight container 26 and a weight material therein.\" Id.", + "The Examiner concludes that \"[i]t would have been obvious to a person having ordinary skill in the art at the time of the invention to have replaced the weights of Hoegen Dijkhof with trim weight containers and trim weight material as taught by Monti.\" Id.", + "The Examiner reasons that one of ordinary skill would make this modification to achieve **adjustability of weight.\" Id.", + "In response, the Examiner further finds that Hoegen Dijkhof recognizes and teaches that heavy weights are required when the trim weight is in the center section and lighter weights can be used when positioned on the outer spray beams. The amount of weight required is affected by the amount the weight can be displaced. Farther positioning of the weights outboard requires lighter trim weights. Therefore, if the trim weights are not adjustable in weight, different weights must be used depending on the positions the trim weights can adopt. Monti teaches a weight container 26 where the effective weight may be selected by varying the quantity of flowable material within the container (column 1, lines 13-16; column 2, lines 9-11, 21-25, and 42-46). By replacing the trim weight 10, 11 of Hoegen Dijkhof with the weight container 26 of Monti, the same weight container can be used whether the weight is placed on the center section or the outboard beam section. Only the amount of fluid in container 26 needs to be adjusted. Monti provides the motivation of adjustability (Monti, column 1, lines 13- 16) and reduction of injury (Monti, column 1, lines 16-19), Ans. 52.", + "The Examiner finds that \"[plumps and fluid conduits are both well known devices.\" Ans. 25.", + "The Examiner concludes that \"Ot would have been obvious to a person having ordinary skill in the art at the time of the invention to have used pumps and fluid conduits to add or remove water from the device of Hoegen Dijkhof in view of Monti for ease of operation.\" Id.", + "In response, the Examiner contends that it is *common sense\" that containers of fluid would be filled using conduits and pumps. Ans. 53.", + "The Examiner finds that Hoegen Dijkhof discloses the recited configuration. Ans. 25." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We affirm-in-part.", + "As such, this issue is not appealable to the Board. See In re Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (\"[T]he kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims. \").", + "This reliance is misplaced.", + "In Haas, the Examiner found that a single claim contained multiple, independent inventions--that is, claims 1 and 2 each included Markush groups that included separate and distinct inventions. See In re Haas, 486 F.2d. 1053, 1056 (CCPA 1973), The court found that such a restriction amounted to a rejection of claims I and 2 because the claim, as drafted, could not be found patentable. Id.", + "In contrast, the Examiner did not find that claim 39 itself includes multiple and distinct inventions. Final Act. 2.", + "Accordingly, we do not address the Examiner's s restriction of claim 39.", + "We find this argument unpersuasive.", + "The Examiner does consider the claim language that recites that the mast arm sleeve is slidingly engaged with the mast arm.", + "This interpretation of Hoegen Dijkhof is not consistent with the actual teaching of the reference.", + "As Hoegen Dijkhof discloses, the threaded spindle 22 and geared motor 23 operate to move the crop spraying apparatus laterally relative to the central mast. Hoegen Dijkhof, col. 4, II. 32-36.", + "This movement changes the position of the center of mass 5 of the apparatus, which allows the apparatus to be level with the ground when the crop spraying vehicle is on an incline, pivoting about the suspension axis 3. Id. at col.4, II. 15-24,", + "The mechanism replaces the weight and pulley system of the embodiment of Figures 1-3. Id. at col.4, 11. 15-19.", + "We find this argument unpersuasive.", + "As the Examiner correctly finds, Figures 4 and 9 of Hoegen Dijkhof depict the suspension axis 3 as an actual structure. See Ans. 4, 26.", + "For the reasons above, we sustain the Examiner's rejection of claim 1 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above, we find this argument unpersuasive and we sustain the Examiner's rejection of claims 2-4 under 35 U.S.C. 5 102(b) as being anticipated by Hoegen Dijkhof.", + "We find this argument unpersuasive.", + "The Examiner correctly states that Figure 9 of Hoegen Dijkhof provides this disclosure. See Ans. 27; see also Hoegen Dijkhof, Fig. 9; In re Meng, 492 F.2d 843, 847 (CCPA 1974) (*[A] drawing is available as a reference for all that it teaches a person of ordinary skill in the art.\").", + "For this reason, and the reasons discussed above in connection with the analysis of claim 1 as anticipated by Hoegen Dijkhof, we sustain the Examiner's rejection of claim 5 under 35 U.S.C. 5 102(b) as being anticipated by Hoegen Dijkhof.", + "We find Appellant's argument persuasive.", + "The plain language of the claim forecloses the Examiner's interpretation.", + "Although the Examiner is correct that the transitional phrase \"comprising\" means that the named elements are essential but other, unrecited elements fall within the scope of claim, Appellant drafted claim 6 to expressly limit the claim to a single pendulum arm.", + "Thus, the Examiner's interpretation of that phrase, which allows for multiple pendulum arms, directly contradicts the express claim language, and is unreasonable.", + "For this reason, we do not sustain the Examiner's rejection of claim 6 under 35 U.S.C. 5 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with the analysis of claim 1 as anticipated by Hoegen Dijkhof, we find these arguments unpersuasive.", + "Appellant fails to rebut this finding.", + "We find this argument unpersuasive.", + "Appellant provides no support for his assertion that characterizing the suspension axis 3 as a pin or shaft implies that the shaft is removable from the mast sleeve.", + "For the reasons above, we sustain the Examiner's rejection of claim 7 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "We find this argument unpersuasive.", + "For example, the mast arm 3 would include one end that is not fixedly connected to the mast sleeve 12 and the mast arm sleeve could receive that end of the mast arm.", + "For the reasons above, we sustain the Examiner's rejection of claim 8 under 35 U.S.C. 6 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with the analysis of claim 1, we find this argument unpersuasive and we sustain the Examiner's rejection of claim 10 under 35 U.S.C. S 102(b) as being anticipated by Hoegen Dijkhof.", + "We agree with Appellant's argument.", + "Hoegen Dijkhof expressly discloses that the central contact arm 18 is contacted by contacts 19 and 20 to indicate when the spray arm 4 has rotated such that it is no longer at a right angle to the upright axis 6 of the vehicle, with this contact triggering moving weights 10 and 11. Hoegen Dijkhof, col. 3, II. 34-51.", + "The Examiner's s interpretation of the term \"locked\" is unreasonably broad, as it encompasses a structure that permits the crop spraying apparatus to rotate back into a right angle orientation with the upright axis of the vehicle.", + "For this reason, we do not sustain the Examiner's rejection of claim 11 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with claims I and 7, we find this argument unpersuasive and we sustain the Examiner's rejection of claims 12 and 13 under 35 U.S.C. 6 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with the analysis of claim 7 as anticipated by Hoegen Dijkhof, we find these arguments unpersuasive.", + "We find Appellant's argument unpersuasive.", + "First, the Examiner identifies suspension piece 12 as corresponding to the recited mast sleeve in the Final Action. See Final Act. 5.", + "Second, the Examiner correctly finds that the suspension piece 12 is slidingly engaged with the mast 2. See Ans. 29.", + "For the reasons above and the reasons discussed above in connection with claims 1 and 7, we sustain the Examiner's rejection of claim 14 under 35 U.S.C. , 102(b) as being anticipated by Hoegen Dijkhof.", + "*[C]laims under examination before the [U.S. Patent and Trademark Office] are given their broadest reasonable interpretation consistent with the specification.\" In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (citation omitted).", + "Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).", + "Absent any definition of \"container\" in the Specification, Appellant's argument improperly reads the \"container\" disclosed in the Specification into claim 19.", + "The Examiner properly interprets the claim term \"container\" to encompass the Hoegen Dijkhof's 's trimming weights 10, 11, which are weight-containing structures. See Ans. 30.", + "For the reasons above, we sustain the Examiner's s rejection of claim 19 under 35 U.S.C. S 102(b) as being anticipated by Hoegen Dijkhof.", + "We find Appellant's argument persuasive.", + "Claim 20 requires that the weight of the trim weight containers be adjustable, not the position of the trim weights.", + "Moving the trim weights would not change their weights.", + "For the reasons above, we do not sustain the Examiner's rejection of claim 20 under 35 U.S.C. 6 102(b) as being anticipated by Hoegen Dijkhof.", + "We find this argument unpersuasive.", + "As seen in Figures 5-7 of Hoegen Dijkhof, even when the spray beam 4 is driven off center, the mast arm 3 remains centered with the vehicle, which is attached to mast 2.", + "For the reasons above, we sustain the Examiner's rejection of claim 21 under 35 U.S.C. $ 102(b) as being anticipated by Hoegen Dijkhof.", + "We find Appellant's argument persuasive.", + "The Examiner's position that \"[t]he mast arm sleeve (sleeve around arm 3) is repeatably moveable between positions toward and away from the mast sleeve 12 because the mast arm sleeve (sleeve around arm 3) can be removed from mast sleeve 12 by removing mast arm 3\" is inconsistent with the finding that the mast arm is fixedly attached to the mast arm sleeve. See Ans. 31.", + "For the reasons above, we do not sustain the Examiner's rejection of claim 24 under 35 U.S.C. \u25cf 102(b) as being anticipated by Hoegen Dijkhof.", + "For the same reason we do not sustain the Examiner's rejection of claim 24, we do not sustain the Examiner's rejection of claim 25 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with claim 7, we find this argument unpersuasive and we sustain the Examiner's rejection of claim 26 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with claim 1, we find this argument unpersuasive and we sustain the Examiner's rejection of claim 27 under 35 U.S.C. $ 102(b) as being anticipated by Hoegen Dijkhof.", + "Such an argument does not inform us of any specific Examiner error.", + "Accordingly, we sustain the Examiner* s rejection of claim 28 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "That is, the Examiner interprets the term \"connected\" to encompass an indirect connection.", + "We are not persuaded of Examiner error.", + "Appellant provides an argument that does not address the Examiner's position or the language of claim 29,", + "We find this argument unpersuasive.", + "The Examiner correctly finds that Hoegen Dijkhof s suspension arm 21 satisfies the cylinder recitation of claim 29 and the suspension arm 21 is not used to satisfy another claim element of claim 29.", + "For the reasons above, we sustain the Examiner's rejection of claim 29 under 35 U.S.C. S 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with claim 29, we find the arguments unpersuasive and we sustain the Examiner's rejection of claim 30 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "As discussed above in connection with our analysis of claim 1, we find this argument unpersuasive.", + "We find this argument unpersuasive.", + "As is evident in Hoegen Dijkhof\" s figures, such as Figures 5-7, rotation of the booms are about suspension axis 3. See Hoegen Dijkhof, Figs. 5-7.", + "Center of gravity 5 is a point that shifts as the motor 23 drives the spray apparatus sideways when the vehicle travels on a hill. See id. at col. 4, 1. 25-col. 5, 1. 10.", + "For the reasons above, we sustain the Examiner's rejection of claim 31 under 35 U.S.C. S 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with claims 1 and 8, we find these arguments unpersuasive and we sustain the Examiner's rejection of claim 32 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "For the reasons discussed above in connection with claims 1, 7, and 31, we find these arguments unpersuasive and we sustain the Examiner's rejection of claim 38 under 35 U.S.C. I 102(b) as being anticipated by Hoegen Dijkhof.", + "As discussed above in connection with our analysis of claim 6, this interpretation of the term *single pendulum arm\" is unreasonable.", + "For this reason, we do not sustain the Examiner's rejection of claim 43 under 35 U.S.C. 8 102(b) as being anticipated by Hoegen Dijkhof.", + "We also do not sustain the Examiner's rejection of claims 44 and 45, which depend from claim 43, under 35 U.S.C. 6 102(b) as being anticipated by Hoegen Dijkhof.", + "That is, the Examiner determines that the contact at roller 12a and roller 12b prevents transverse rotation of the crop spraying apparatus.", + "We find Appellant's argument persuasive.", + "The subject claims on appeal require the engagement between the mast arm and mast arm sleeve to restrict the transverse rotation.", + "The Examiner's interpretation that this engagement extends to rollers contacting the frame at a lower portion of the apparatus is unreasonable.", + "Assuming, arguendo, that the Examiner's characterization of Ballu's structures that correspond to the mast arm and mast arm sleeve are appropriate, the Examiner does not identify any aspect of the mast arm sleeve (items 5,10, P, pl) that restricts the transverse rotation--the Examiner states that the contact at 12a and 12b restrict this rotation. See id.", + "For the reasons above, we do not sustain the Examiner's s rejection of independent claims 1, 7, 14, and 38 under 35 U.S.C. 102(b) as being anticipated by Ballu.", + "Further, we do not sustain the rejection of claims 2, 3, 6, 10-13, 21, 24-31, and 43-45, which depend, directly or indirectly, from claims 1, 7, 14, and 38 under 35 U.S.C. 8 102(b) as being anticipated by Ballu.", + "As discussed above in connection with our analysis of the anticipation of claim 14 by Ballu, we find that Ballu does not disclose each and every claim element of independent claim 14.", + "Accordingly, we do not sustain the Examiner's rejection of claims 19 and 20 under 35 U.S.C. $ 103(a) as being unpatentable over Ballu and Hoegen Dijkhof for the reasons provided above in connection with our analysis of the anticipation rejection by Ballu.", + "We recognize that \"Irjejections 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.\" KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).", + "Here, the Examiner's articulated reasoning is sufficiently supported by a rational underpinning.", + "Appellant does not inform us of error in this reasoning.", + "We find this argument unpersuasive.", + "As the Examiner explains, the trim weights, as modified, would still be used to move on the crop spray apparatus of Hoegen Dijkhof. Ans. 52.", + "For the reasons above, we sustain the Examiner's rejection of claim 22 under 35 U.S.C. S 103(a) as being unpatentable over Hoegen Dijkhof and Monti.", + "We find Appellant's argument persuasive.", + "The Examiner's reason lacks rational underpinning.", + "As the Examiner acknowledges, the proposed modification would not change the principle of operation of Hoegen Dijkhof. See Ans. 52.", + "Accordingly, to balance the crop spraying apparatus of Hoegen Dijkhof when the vehicle is on uneven terrain, pulleys move the trim weights sideways along the crop spraying apparatus boom.", + "This movement alters the fulcrum length and effectively changes the weight of the trim weights with respect to the center of gravity of the apparatus during operation of the sprayer. See Hoegen Dijkhof, col. 2, 1. 65-col. 3, 1. 8.", + "There would be no need to adjust the weights of the trim weight during operation by adding or removing fluid, such that the vehicle would require pumps and conduit in fluid communication with the trim weights as part of the vehicle.", + "Although we agree with the Examiner's reason as to claim 22-- that at some point in time, it may be desirable to adjust the weight of the trim weights---we do not agree that it would be obvious to include pumps and conduit in fluid communication with the trim weights as part of the vehicle.", + "As the Examiner recognizes, the trim weights may be adjusted (while not in operation) by pouring water into the containers. See Ans. 53.", + "For the reasons above, we do not sustain the Examiner's rejection of claims 33-36 and 40-42 under 35 U.S.C. 8 103(a) as being unpatentable over Hoegen Dijkhof and Monti.", + "For the reasons discussed above in connection with claim 22 and the obviousness rejection over Hoegen Dijkhof and Monti, we find this argument unpersuasive and we sustain the Examiner's rejection of claim 37 under 35 U.S.C. 8 103(a) as being unpatentable over Hoegen Dijkhof and Monti." + ] +} \ No newline at end of file diff --git a/opinion_split/2012010305_DECISION.json b/opinion_split/2012010305_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5c3a60d42e505404dc698d1bbb37136b073c1941 --- /dev/null +++ b/opinion_split/2012010305_DECISION.json @@ -0,0 +1,52 @@ +{ + "appellant_arguments": [ + "According to Appellant, the real party in interest is International Business Machines Corporation. App. Br. 2.", + "Appellant argues that use of the word *storage* to modify \"medium\" within the phrase *computer usable storage medium\" indicates that the claim covers only non-transitory embodiments and excludes signals. Appeal Br. 5-6.", + "Appellant also argues that the Specification distinguishes between a storage medium and a \"mere\" medium. ld. at 7.", + "Appellant concludes that a \"mere\" medium does not store anything such that the inclusion of the word storage implies a non-transitory structure.", + "Appellant argues that this rejection should be reversed based on limitations common to each of the independent claims 1, 8, and 14. App. Br. 9.", + "Appellant argues, inter alia, that the proposed combination of references does not teach or suggest rearrangement of portlets in the portal page in the computer based on the identified context as required by the independent claims. App. Br. 9-10.", + "More specifically, Appellant argues that *in Guido the system generate[s] and/or format[s] a portal page based on [a] user selected data item, but does not rearrange the portlets in the portal page based on any identified event.\" Reply Br. 6." + ], + "examiner_findings": [ + "The Examiner maintains that claims 14-20 are unpatentable under 35 U.S.C. S 101 as being directed to non-statutory subject matter.", + "The Examiner maintains that claims 1-20 are unpatentable under 35 U.S.C. 6 103(a) over Guido\" in view of Auerbach.", + "The Examiner maintains that claims 14-20 are directed to non- statutory subject matter because they are only directed to a \"computer program product\" comprising a *computer usable storage medium.\" \" Ans. 5.", + "The Examiner indicates that such language is broad enough to cover signals per se because *a non-statutory medium, such as a carrier wave, *stores\\' the program code while in transit. Id. at 5-6.", + "The Examiner also notes that the Specification provides only an *open-ended definition\" of a computer usable medium. ld. at 5.", + "The Examiner finds that Guido discloses a method of displaying a portal page including portlets for a user in a computer, identifying a context based on an activity of the user with the portal page, and rearranging portlets in the portal page in the computer based upon the identified context, as required by claim 1. Ans. 7-8,", + "The Examiner acknowledges that Guido does not expressly teach that the identified context is based on an activity of the user in a co-executing application, and the Examiner relies on Auerbach for this concept. ld. at 8-9.", + "Based on these disclosures, the Examiner indicates that Guido discloses rearranging portlets as required by the claim.", + "Specifically, the Examiner lists the claim limitation at issue and provides the following description of Guido: Guido teaches that the selected data item 50A can be used to generate a set of selected portlets for inclusion in portal page.", + "For example, selection system 32 can select one or more portlets from [a] set of available portlets 46 based on data item 50A.", + "Generation system 34 can automatically generate portal page 44 using the selected portlets provided by selection system 32.", + "To this extent generation system can automatically configure a layout of portal page 44.", + "In addition, Guido teaches that the user can request another data item that will cause another portal page 44 to be automatically generated, etc.; Col. 1. Line 64 - Col. 2, Line 1, Col. 2, Lines: 55-58, Col. 5, Lines: 28-38, 50-58 > layout of portal page is based on data item, device properties Ans. 7-8 (additionally citing Guido Fig. 3; col. 4, 1. 65-col. 5, 1. 58; col. 6. II. 8-24)." + ], + "ptab_opinion": [ + "Background *The present invention relates to the field of portal page distribution and more particularly to portlet arrangement in a portal page.\" Spec. I 1.", + "The Claims Claims 1-20 are on appeal.", + "Claim 1 is representative and reads as follows.", + "1. A method of context driven arrangement of portlets in a portal page, the method comprising: displaying a portal page including portlets for a user in a computer; identifying a context based on an activity of the user in an application co-executing with the portal page in the computer; and, rearranging portlets in the portal page in the computer based upon the identified context. App. Br. 15 (emphasis added).", + "However, *those of ordinary skill in the art would understand the claim term *machine-readable storage medium\\' would include signals per se.\" Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).", + "The Mewherter panel explained, *a signal with embedded data [is a storage medium], for data can be copied and held by a transitory recording medium, albeit temporarily, for future recovery of the embedded data.\" Id.", + "Here, we find that the claimed *computer usable storage medium\" would include signals per se for the same reasons identified by the Mewherter panel.", + "Further, the Specification only provides examples of computer usable mediums without providing a limiting definition. See Spec. 9 26.", + "Thus, we are not persuaded that one of ordinary skill in the art would interpret the claimed **computer usable storage medium\" to be limited to non-transitory devices based on the portions of the Specification cited by Appellant.", + "For the above reasons, we affirm the rejection of claims 14-20 under 35 U.S.C. & 101.", + "The analysis below is equally applicable to each of these claims.", + "In order to establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the combination of prior art references or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).", + "Further, during prosecution, an application's claims are given their broadest reasonable scope consistent with the specification. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).", + "For the reasons set forth below, we find the Examiner failed to establish a showing that the proposed combination of art teaches or suggests rearranging portlets in a portal page based upon an identified context.", + "Guido discloses a method for generating a portal page in which *a user can select a data item \u00b7 \u00b7 \u00b7 that is used to select one or more portlets. The portlets can be used to generate a portal page, which can be displayed to the user.\" Guido col. 1, II. 57-62.", + "Guido discloses that *one or more attributes of the user and/or a user device can be used to select a portlet, prioritize portlets, and/or format the portal page.\" Id. at col. 2, II. 55-58,", + "Thus, Guido discloses methods by which a selected data item and other attributes are used to select portlets and automatically configure the layout of a portal page. See id. at col. 4, 1. 65-col. 5, 1. 58.", + "Finally, Guido discloses that after a portal page has been created, the page and portlets can be used to acquire additional data \"that will cause another portal page \u00b7 \u00b7 \u00b7 to be generated. \" Id. at col. 6. 11. 21-24.", + "We disagree.", + "We determine that the Examiner has failed to tie the descriptions in Guido to the claim requirement.", + "Thus, while the Examiner explains that Guido teaches automatically configuring the layout of a portal page and automatically generating another portal page, the Examiner fails to explain how Guido teaches or suggests rearranging portlets in a portal page.", + "Further, we find that the broadest reasonable interpretation of the claims requires that a portal page is displayed and then, based on an identified event, the layout of the portal page is changed such that the portlets on that page are rearranged.", + "Guido's description of configuring a portal page and then creating another portal page based on an event in the first page does not explicitly disclose these claim requirements, and the Examiner has failed to establish how Guido, or the proposed combination with Auerbach, suggests that the claimed rearrangement of portlets would have been obvious to one of ordinary skill in the art.", + "Accordingly, we determine that the Examiner failed to establish a prima facie showing of obviousness with respect to independent claims 1. 8. and 14, and thus, we reverse this rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2012010424_DECISION.json b/opinion_split/2012010424_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..6654b2c3d26c2084dfa2943cdcf4eaff71441c45 --- /dev/null +++ b/opinion_split/2012010424_DECISION.json @@ -0,0 +1,70 @@ +{ + "appellant_arguments": [ + "Appellant further relies on a Rebuttal Brief (\"Reb. Br.\") and The Beck Declaration 12 in support of patentability.", + "Patent Owner contends that the phrase **supply of water\" \"refers to a point at which water is supplied to the water supply conduit\" and that the skilled artisan would \"readily discern the point referred to by the phrase. ~ PO App. Br. 40.", + "Patent Owner identifies that the '820 Patent refers to a **supply of water\" in several locations and cites col. 8, 11. 38-40, which discusses that a valve 50V is \"for regulating the supply of water to the filter 52.\" Id.", + "Patent Owner contends that \"a person having ordinary skill in the art would understand that the term *upper,* appearing in the phrase *upper portion of the refrigerating compartment,' refers to a portion of the refrigerating compartment that is at least above the midpoint of the refrigerating compartment when the refrigerator is oriented in a normal operating orientation.' PO App. Br. 40-41.", + "Patent Owner presents separate argument for claim 3 (PO App. Br. 24-28), claims 6 and 16 as a group (id. at 28-32), claims 26, 26, 46, 48, 66, and 68 as a group (id. at 32- 38), and claims 34, 35, 54, 55, 74, and 75 as a group (id. at 38-39).", + "Patent Owner does not dispute this finding. See generally PO App. Br.", + "Patent Owner does not dispute the findings of the Examiner with respect to the dispenser tube configuration on appeal. See generally PO App. Br.", + "Patent Owner does not dispute the findings of the Examiner with respect to the dispenser tube configuration on appeal. See generally PO App. Br.", + "Patent Owner contends that the Examiner* s conclusion is erroneous because Oh and Taylor only disclose puncture of a freezing compartment, and the Examiner has not provided evidence of a water supply conduit puncturing an ice compartment or a refrigerating compartment. PO App. Br. 10-13.", + "Patent Owner further contends that, in placing an icemaker in a refrigeration compartment as disclosed by Cur, the skilled artisan only would have adopted the disclosed water supply configuration of Cur in doing so, namely *from a conduit 62 which includes a significant length positioned within the fresh food compartment so that the water dispensed [to the icemaker] is already chilled.\" PO App. Br. 16-20.", + "Patent Owner argues that there are different challenges to supplying water to an ice maker located in a freezer than located in a refrigerating compartment and that Cur describes a benefit of the water being chilled by the refrigerating compartment. Id. at 18.", + "Patent Owner cites paragraphs 22-25 of the Beck Declaration in support of these arguments." + ], + "examiner_findings": [ + "Regarding claims 22, 33-35, 42, 53-55, 62, 73, 74, and 75, the Examiner found that \"it is not clear whether *water supply* is referring to a branch point or valve within the refrigerator, an external water source, or some point in between\" and determined that the phrases \"a supply of water to the water supply conduit\" and \"a supply of water to the dispenser tube\" are indefinite. RAN 5.", + "Regarding claims 36, 56, and 76, the Examiner determined that a water tank in a position corresponding to *an upper portion of the refrigerating compartment\" is indefinite because \"upper\" is a relative term and the Specification does not provide a standard for ascertaining its degree and scope. RAN 5.", + "The Examiner finds that Figure 3 of Kim discloses the *water supply conduit puncturing a surface of an uppermost wall of at least one of the refrigerating compartment and the ice compartment.\" RAN 37.", + "The Examiner relies on Park for disclosing the dispenser tube configuration recited in claim 1. RAN 65.", + "The Examiner relies on Jung for disclosing the dispenser tube configuration recited in claim 1. RAN 81.", + "The Examiner finds that **Taylor discloses a water supply conduit (19, 20) puncturing a surface of an uppermost wall of at least one of the refrigerating compartment and an ice compartment.' RAN 7.", + "The Requester proposed, and the Examiner determined, that it would have been obvious to one of ordinary skill in the art to have placed an ice compartment in the refrigerating compartment as taught by Cur to take advantage of lower energy consumption and to position the ice compartment at a desirable location in either top or bottom mount combination refrigerator-freezer appliances. RAN 7 and 99-100; Req. Res. Br. 6.", + "Given such placement, the Examiner determined that: it would have been obvious to one of ordinary skill in the art to use a water supply conduit which punctures the upper wall of either the refrigerating compartment or the ice compartment to yield the predictable result of arranging the water supply conduit to take up less space in the refrigerator. RAN 7-8.", + "The Examiner reasons that since Oh discloses that the water supply conduit punctures the uppermost wall of the compartment of the refrigerator in which the ice compartment is located, once the ice compartment is moved to the refrigerating compartment, it would have been obvious to place the water supply conduit in such a manner that it punctures the uppermost wall of the compartment of the refrigerating compartment in which the ice compartment is located. RAN 100.", + "The Examiner relies on Taylor as further evidence that a water supply puncturing the uppermost wall of the compartment in which the icemaker is located was known in the art, as taught by Oh. RAN 7-8 and 100.", + "As in the prior discussed rejection, the Requester proposed, and the Examiner determined, that it would have been obvious to one of ordinary skill in the art to have placed an ice compartment in the refrigerating compartment as taught by Cur to take advantage of lower energy consumption and to position the ice compartment at a desirable location in either top or bottom mount combination refrigerator-freezer appliances. RAN 21-22 and 99-100; Req. Res. Br. 6." + ], + "ptab_opinion": [ + "We note that Dr. Beck has extensive experience in refrigerated dispensers and commercial refrigeration and freezer systems (Beck Decl. \" 1-5).", + "However, Dr. Beck does not indicate any particular knowledge of icemakers or the configurations of water to refrigerator or freezer systems for making ice or dispensing water.", + "Accordingly, we find Dr. Beck qualified to testify only to refrigerator and freezer systems in general and not to specifics of icemakers or water supplied thereto.", + "II 3 and 10. Accordingly, we find Dr. Karvelis qualified to testify as to consumer refrigerators and commercial ice makers.", + "Read in context of the claim language, the phrases at issue refer to particular locations along the water supply conduit (or dispenser tube for alternative claims) and not to the water actually provided therein.", + "Accordingly, we agree with the Patent Owner that the phrases *from a supply of water to the water supply conduit [i.e., icemaker tube]\" and *from a supply of water to the dispenser tube\" have a definite meaning to the skilled artisan based on the use of the terms in the Specification.", + "The location in the icemaker tube where a supply of water is provided to the icemaker tube is the proximal or beginning end of the tube that supplies water to an icemaker.", + "The location in the dispenser tube where a supply of water is provided to the dispenser tube is the proximal or beginning end of the tube that supplies water to a dispenser.", + "It is clear from the discussion in the *820 Patent that the \"dispenser tube\" and the *water supply conduit\" may include valves and, thus, such valves themselves are not considered to be proximal ends of the relevant tubes.", + "The claims do not require the presence of a filter, water tank, or branching to delineate the proximal end of either a *water supply conduit* or a \"dispenser tube. \"", + "To the extent that such features are present, it is instructive that they characterize proximal ends of the various tubes, in light of the description in the *820 Patent.", + "However, in their absence, the skilled artisan can understand that the supply of water must be provided to \"water supply conduit\" and the \"dispenser tube\" at some identifiable proximal location.", + "We agree with Patent Owner that the phrase *upper portion of a refrigerator compartment\" describes the claimed positioning of the water tank with a reasonable degree of precision and particularity and would reasonably apprise those skilled in the art of the scope of the invention.", + "We agree with the Patent Owner that the skilled artisan would have understood that an **upper* portion is \"at least above the midpoint of the refrigerating compartment when the refrigerator is oriented in a normal operating orientation\" in light of the Figures of the '820 Patent.", + "As such, claim 36 would not read on the embodiment described in Figure 6 of the *820 Patent, while the claim would read on the embodiment illustrated in Figure 7 of the *820 Patent.", + "Accordingly, we reverse the Examiner's s rejections of claims 22, 33- 37, 39, 42, 53-55, 57-59, 62, 73-75, and 77-79 as failing to comply with 35 U.S.C. S 112, second paragraph.", + "However, neither the Figures nor the Specification unambiguously explain how the ice maker of Cur's invention is disposed within the refrigerator compartment of these embodiments.", + "Gould is silent as to how the phantom versus solid lines depict the relationship of discharge spout 62 to the various exterior walls of cooling space 22. See generally Gould.", + "The issue with respect to each of the obviousness rejections on appeal is the same with respect to claim 1: Did the Examiner err in determining that the evidence shows that one of ordinary skill in the art would have provided a water supply conduit (ice maker tube) that punctures a surface of an uppermost wall of at least one of a refrigerating compartment and an ice compartment, in a refrigerator having an ice compartment located within the refrigerating compartment?", + "The testimony of Dr. Karvelis supports the finding in Cur that placing an icemaker adjacent an uppermost wall of a bottom-mount refrigerator provides ice dispensing at a height convenient to a user standing at the refrigerator. Karvelis Decl. I 38.", + "We cannot agree with the Patent Owner's 's position, since it attacks the individual references as lacking a claimed feature which the Examiner determined would have been obvious based on a combination of teachings in the art.", + "Here the Examiner determined that Cur suggests the placement of an icemaker in the refrigerator and that Oh and Taylor suggest supplying water thereto via an uppermost wall of the compartment that contains the icemaker.", + "It is the combined teachings that would have rendered the claimed invention obvious.", + "We are not persuaded by Patent Owner's argument that the skilled artisan would only adopt the water supply of Cur, having a *significant length positioned within the fresh food compartment.'", + "Initially, we note that Cur does not disclose a particular location along the walls of the refrigerating compartment where an inlet water conduit 62 enters.", + "While Figure 3 illustrates how water is recirculated in the icemaker, it does not describe where a fresh water conduit enters the refrigerator compartment for the icemaker. See generally Cur, Figures 2 and 3.", + "In the absence of such a teaching and since Cur discloses the icemaker positioned adjacent the uppermost surface of the refrigerator compartment, we find Oh and Taylor to be instructive of how a skilled artisan would provide an inlet water supply to a refrigerator compartment for supplying water to an icemaker positioned adjacent an upper surface of a compartment, i.e., through the adjacent uppermost surface.", + "Such a configuration would be no more than a predictable use of a water supply configuration to supply water to an icemaker disposed adjacent an upper surface of a compartment.", + "Even if the water supply conduit has a significant length within the refrigerator compartment to chill the water, the mere length thereof does not preclude the inlet water supply conduit from nonetheless entering the refrigerator compartment by puncturing an uppermost surface thereof.", + "We further note that Cur states that the water supplied *can come from a conduit 62\" which is chilled in the refrigerator compartment. Cur, col. 4, 11. 20-23 (emphasis added).", + "Accordingly, it is reasonable to read this statement as being an optional embodiment of a water supply conduit.", + "Patent Owner has not explained sufficiently why chilled water would be necessary for an icemaker positioned within a refrigerating compartment, as taught by Cur.", + "Thus, while chilled water may be more desirable, a teaching that would result in an inferior or less desirable product would not render the apparatus non-obvious without evidence that the product would not function as intended.", + "We are also not persuaded by the mostly opinion testimony offered by Dr. Beck.", + "Dr. Beck provides opinion statement without explaining the underlying reasoning thereof.", + "For example, Dr. Beck testifies that the teachings of Oh and Taylor are not applicable to an ice compartment located in a refrigerating compartment (Beck Decl. TI 12 and 19), but does not explain the distinctions between the two compartments that would lead him to such a conclusion.", + "Similarly, Dr. Beck \"believes\" conduit 62 of Cur does not puncture a surface of an uppermost wall of at least one refrigerating compartment and an ice maker (Beck Decl. I 23), but, considering Cur is silent as to where the water supply enters the refrigerating compartment, Dr. Beck does not explain the basis for his belief.", + "Accordingly, we do not find the unsupported opinion statements made in the Beck Declaration to be sufficient to outweigh evidence that it was known in the art to configure an icemaker water supply line to enter from an uppermost surface of the compartment containing an icemaker positioned adjacent thereto, as provided by Oh and Taylor.", + "Further, Patent Owner has not presented any meaningful evidence that the Examiner's reasoning for the skilled artisan to apply the configurations of Oh and Taylor, namely efficiency of piping, would be untenable." + ] +} \ No newline at end of file diff --git a/opinion_split/2012010908_DECISION.json b/opinion_split/2012010908_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0b323b40e98a4d00a3a3c80e7d4eabe7a3029820 --- /dev/null +++ b/opinion_split/2012010908_DECISION.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "ISSUES Appellants present multiple arguments as to why the Examiner has erred.", + "Appellants argue the Examiner erred in rejecting claim 1 because Wang fails to teach the disputed limitations of claim 1. App. Br. 4-7.", + "Appellants also argue Wang fails to disclose the elements of dependent claim 2, in particular because Wang \"discloses a technique 0 for assessing the reliability of an entire power network.\" \" App. Br. 10.", + "Moreover, although Appellants allege dependent claims 3 and 6 recite further distinguishing features, Appellants merely reiterate what the disputed claim limitations recite and make general allegations as to the teachings of Wang. See App. Br. 9-10." + ], + "examiner_findings": [ + "REJECTION The Examiner rejected claims 1-3, 5, and 6 under 35 U.S.C. 8 102(b) as anticipated by Wang (US 2004/0167731 A1; pub. Aug. 26, 2004) (Ans. 2-12)." + ], + "ptab_opinion": [ + "We focus our discussion below on the following dispositive issues: Did the Examiner err in finding that Wang discloses the disputed limitations of: A method for determining an individual failure rate for at least one individual technical operating equipment \u00b7 \u00b7 receiving statistical data and characteristic data which are specific for a type of technical operating equipment, \u00b7 . calculating individual failure rates for each of a group of operating equipments; and calculating an overall failure rate for a technical installation which contains the group of operating equipments based on the individual failure rates as recited in claim 12", + "Did the Examiner err in finding that Wang discloses the limitations of dependent claims 2, 3, and 6?", + "ANALYSIS We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Final Rejection and Answer. Ans. 2-33.", + "Rather than repeat each of the arguments in the Briefs and the responses in the Answer, our discussions here will be limited to the following points of emphasis.", + "We are not persuaded by Appellants' arguments that Wang does not disclose a *method for determining an individual failure rate for at least one individual technical operating equipment \u00b7 \u00b7 \u00b7 \" or \"receiving statistical data and characteristic data which are specific for a type of technical operating equipment, because, as the Examiner finds, Wang describes \"Ithe failure rate of a particular component may be obtained according to its real conditions,' which discloses these disputed limitations of claim 1. See Ans. 20-22, citing Wang, Abstract.", + "We disagree with Appellants' argument that Wang analyzes the **entirety of the components employed in the power network, not the reliability of an individual component,\" App. Br. 6.", + "Rather, we agree with the Examiner's findings that Wang describes \"[the failure rate of a particular component.\" Wang, Abstract, emphasis added, I 9 (\"a failure rate of a power network component.\"", + "Although Appellants argue \"Wang is directed to a more statistical approach,\" and Wang is \"based on representative evaluations of a number of power network components of the same not exclusively belonging to the power network in question but in operation anywhere, \" these arguments do not distinguish Wang's disclosures from the recitations of claim 1.", + "Moreover, we agree with the Examiner's finding that Wang describes the system may assess the reliability of any power network component, the reliability of an entire power network, or a portion of the power network, which the Examiner finds teaches calculating individual failure rates for each of a group of operating equipments, as recited in claim 1. Ans. 26, citing Wang, I 61.", + "We are unpersuaded by Appellants' arguments.", + "We agree with the Examiner's findings that Wang discloses determining an individual failure rate when Wang describes determining information representative of a failure rate of a power network component. See Ans. 30, citing Wang, \" 9, 11, 13.", + "Additionally, we agree with the Examiner's findings that I 13 of Wang describes the information representative of a failure rate of a power network component may be received from a data store containing failure rates of a plurality of power network components, the failure rates being based on a population of power network components of the same type as each power network component, which teaches determining a type-specific average failure rate based on the statistical data specific for the operating equipment type, as recited in claim 2. Ans. 30 (emphasis added).", + "Merely reciting the language of the claims and asserting that the cited prior art reference does not teach or suggest each claim limitation is insufficient. See 37 C.F.R. & 41.37(c)(iv) (\"A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. \"); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (\"[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. \")", + "Thus, in the absence of sufficient evidence or line of technical reasoning to the contrary, the Examiner's findings are reasonable and we find no reversible error.", + "Accordingly, we find the evidence of record supports the Examiner's rejection of claims 1-3, 5, and 6.", + "Because Appellants have not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of the claims discussed above, we also sustain the rejections of the remaining pending claims. See 37 C.F.R. & 41.37(c)(1)(iv)." + ] +} \ No newline at end of file diff --git a/opinion_split/2012010968_DECISION.json b/opinion_split/2012010968_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..e463e6310010c6b96932a67b46a904f5db374d90 --- /dev/null +++ b/opinion_split/2012010968_DECISION.json @@ -0,0 +1,102 @@ +{ + "appellant_arguments": [ + "Appellant asserts that the Examiner cites Lin for slots or holes, whereas claim 7 does not recite slots or holes. Appeal Br. 6.", + "Appellant further asserts that the technical problems associated with suspended doors (such as disclosed in Lin) are completely different from the problems associated with rail-guided doors because the suspended door is not fixed to a rail. Appeal Br. 6-7.", + "Additionally, Appellant asserts that the structure in Lin is different from that recited in claim 7 inasmuch as Lin does not disclose upper and lower brackets connected as recited in claim 7, but *an upper bracket, a middle bracket, and a lower bracket, best seen in figure 2.\" \" Appeal Br. 6.", + "Appellant argues that the brackets in Lin do not match the recited configuration, stating \"[the middle bracket features slots 35 in the correct direction for enabling horizontal offset. But this bracket does not engage [the] door as the claim requires. It engages a lower bracket. . Appeal Br. 6.", + "Appellant also argues that a person of ordinary skill in the art would not have replaced a circular hole in Beauchot with a slot because *one of ordinary skill in the art would have realized that a slot, rather than a circular hole, would undermine the hole's ability to secure the shaft. *, Reply Br. 6.", + "Appellant further argues, \"one of ordinary skill in the art would have realized that if a slot were used, instead of a circular hole, rotation may be accompanied by a shifting of the shaft along the long axis of the slot.' \" Reply Br. 6.", + "Appellant states, \"[t]he examiner has not specifically identified where this limitation is disclosed. However, Applicant speculates that the examiner may be thinking of the vertical slots 33 and 330 in the middle bracket 30 of Lin. \" Appeal Br. 9.", + "Appellant argues, \"[a]s an initial matter, the vertical slots 33 and 330 are in a middle bracket that engages a lower bracket, and not a rail guided door as the claim requires.\" Appeal Br. 9.", + "Appellant also asserts that the Examiner has not set forth any rationale for a combination of Beauchot and Lin in rejecting claim 11.", + "Appellant states, \"\"Ithe final office action does not make any attempt to explain where the limitations of claim 20 are disclosed in the combination of references.\" Reply Br. 9.", + "Appellant argues that the Examiner is improperly interpreting claim 21, and that the \"means for coupling\" recited in claim 21 should be interpreted as a means-plus-function limitation under 35 U.S.C. S 112, sixth paragraph. Appeal Br. 21.", + "Appellant states, \"\"Ithe structure that carries out the *means for coupling' is shown in figure 6. As is apparent, this structure includes two L- brackets 11, 12.\" Appeal Br. 4.", + "Appellant summarizes claim 21 as follows: With regard to claim 21 \"an apparatus for translating a rail-guided door\" is disclosed in figure 6. The limitation of \"means for engaging a motorized wheel carriage movable along a translation direction\" is disclosed as an un-numbered member that connects the bracket 11 to the wheel 5. The limitation of \"means for engaging said rail-guided door\" is disclosed as a fastener 18 in figure 6 and described on page 12, line 14-15. The limitation of \"means for coupling said means for engaging said motorized wheel carriage to said means for engaging said rail-guided door whereby translation of said motorized wheel carriage causes translation of said rail-guided door\" is disclosed as the combination of brackets 11 and 12, as well as their associated fasteners elements 6, 17, and 7 in figure 6 and described on page 12, lines 11-15. Appeal Br. 3 (emphasis added).", + "Appellant asserts the Examiner has not made specific findings regarding claims 8-10." + ], + "examiner_findings": [ + "Claim 21 is rejected under 35 U.S.C. , 102(b) as anticipated by AAPA.'", + "Claims 7-20 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Beauchot and Lin.", + "The Examiner rejects claim 7 as unpatentable over Beauchot and Lin, and relies on holes/slots 30 and 330 in Lin for \"adjustment along a vertical direction\" and relies on the holes/slots 35 for *adjustment along a horizontal direction.\" Ans. 6.", + "As for rationale to modify Beauchot to include such structure, the Examiner states: It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the mounting brackets of French patent no. 2 631 072 to Beauchot with adjustment slots as taught by Lin (138) since it is well known to provide a sliding panel with adjustment means in both a vertical and horizontal direction thereby improving the sliding door within an opening. Id.", + "The Examiner cites the slots/holes 35 and 330 for **adjustment means in both a vertical and horizontal direction.\" Ans. 6.", + "Specifically, the Examiner's rationale for incorporating the slots/holes in the brackets of Lin into the brackets of Beauchot is *to provide a sliding panel with adjustment means in both a vertical and horizontal direction thereby improving the sliding door within an opening. \" Ans. 6.", + "The Examiner finds that Lin discloses \"a sliding panel assembly having mounting holes/slots (3[3] and 330) for adjustment along a vertical direction, Final Act. 4., as shown in bracket 30 depicted in Fig. 2 of Lin.", + "The Examiner rejects claim 21 as anticipated by AAPA, Figure 2 of Appellant's Application. Ans. 5.", + "The Examiner refers to paragraphs 24 and 25 of the Specification and states, \"the [A]ppellant has pointed out the background and what is well known in the art which specifically states, that motorized sliding doors having wheels on a guided track are well known. Thus, [sic] reads directly on claim 21.\" Ans 7.", + "The Examiner states, \"[i]n the instant argument, it appears that the [A]ppellant is relying on limitations which are not in the claims and/or read into the claims based on arguments and/or not positively recited claim limitations.\" Ans. 8.", + "The Examiner set forth a rationale for modifying Beauchot to include slots as disclosed by Lin. Ans. 6." + ], + "ptab_opinion": [ + "The claimed invention is directed to a device for adapting commercial automatic sliding door systems for use on new or existing sliding doors. Spec. I (Title) and Appeal Br. 14-16, Claims App.", + "Claims 7, 11, 20, and 21 are independent.", + "Claims 7 and 21 are illustrative of the claims on appeal and are reproduced below:", + "7. An apparatus for adapting a motorized device having a wheel carriage for translating a hanging door along a translation direction to translate a rail-guided door along said translation direction, said apparatus comprising: an upper bracket adapted to engage the wheel carriage; and a lower bracket adapted to engage the upper bracket and the rail-guided door wherein the lower bracket is adapted to be offset relative to the upper bracket by a horizontal offset distance in a direction perpendicular to a plane defined by the rail-guided door, the horizontal offset distance being between inner and outer offset limits.", + "21. An apparatus for translating a rail-guided door, said apparatus comprising: means for engaging a motorized wheel carriage movable along a translation direction, means for engaging said rail-guided door; and means for coupling said means for engaging said motorized wheel carriage to said means for engaging said rail-guided door; whereby translation of said motorized wheel carriage causes translation of said rail- guided door.", + "Lin US 6,698,138 B1 Mar. 2, 2004", + "Beauchot FR2631072' Nov. 10, 1989", + "Admitted Prior Art (AAPA), Figure 2", + "Claim 7 recites, in part: an upper bracket adapted to engage the wheel carriage; and a lower bracket adapted to engage the upper bracket and the rail- guided door wherein the lower bracket is adapted to be offset relative to the upper bracket by a horizontal offset distance in a direction perpendicular to a plane defined by the rail- guided door.", + "Emphasis added.", + "Appellant, in the Summary of Claimed Subject Matter, refers to Fig. 4, inter alia, in describing the subject matter of claim 7, and we reproduce Fig. 4 of Appellant's Application below. Appeal Br. 1-2.", + "Figure 4 of Appellant's Application depicts an upper L-shaped bracket 11 disposed above a lower L-shaped bracket 12. Spec. 9, I 45-46.", + "The upper bracket 11 includes slots 15 located on a vertical wall, and the lower bracket 12 includes slots 14 located on a horizontal wall. Spec. 11, I 59.", + "Regarding Appellant's comments on the Examiner's discussion of slots and holes rather than a lower bracket adapted to be offset relative to an upper bracket as recited in claim 7, we are not convinced of Examiner error on this point.", + "Appellant has not demonstrated that providing such means for positional adjustment is different from making the respective bracket *adapted to be offset\" as recited in claim 7.", + "For example, Appellant has not demonstrated that Beauchot, modified to include the slots of Lin, would not allow positioning producing an offset.", + "In relation to Appellant's s argument that \"[the technical problems associated with suspended doors are completely different [than the problems associated with rail-guided doors],\" \" Appeal Br. 6-7, we note that the Examiner set forth an adequate reason with rational underpinnings to combine the teachings of Beauchot and Lin.", + "We are not apprised of error in this rationale.", + "Regarding the disclosure in Lin of three brackets (upper, middle, and lower) rather than two as reciting in claim 7, we note that the Examiner cites Lin for the recited adaptation of the lower bracket to be offset relative to the upper bracket by a horizontal offset distance. Ans. 6.", + "Figure 2 of Lin, reproduced below, depicts holes and slots 35 and 330 cited by the Examiner.", + "Figure 2 of Lin is an exploded perspective view of pulley assembly disclosed in which various slots 35 and 330 are depicted on vertical or horizontal surfaces.", + "We note that the Examiner relies primarily on Beauchot for disclosing the particular brackets (upper and lower) recited in claim 7, Ans. 5, and Appellant acknowledges that Beauchot discloses *an upper bracket adapted to engage the wheel carriage and a lower bracket adapted to engage the upper bracket and the rail-guided door,\" Appeal Br. 5 (citing claim 7).", + "It is the combination of Beauchot and Lin that the Examiner relies on in rejecting claim 7, not either reference alone.", + "As for Appellant's assertion that a person of ordinary skill in the art would not have replaced a circular hole in Beauchot with a slot because such a change would reduce the ability of the bracket in Beauchot to secure the shaft or would allow the shaft to shift along the long axis of the slot, Appellant has not provided persuasive evidence that such detrimental effects would occur.", + "Attorney argument cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).", + "Further, our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Medichem, S.A. V. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (if there are tradeoffs involved regarding features, such things do not necessarily prevent the proposed combination); Winner Int'l Royalty Corp. V. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (*The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another. \"", + "The Examiner set forth adequate reasoning, supported by rational underpinnings, for combining the teachings of Beauchot and Lin.", + "Weighing this reasoning against the alleged detriments of modifying Beauchot as asserted by Appellant, even assuming arguendo such detriments exist, we are not persuaded a person of ordinary skill in the art would have been dissuaded from modifying Beauchot, as asserted by the Examiner.", + "Accordingly, we see no error in the Examiner's rejection of claim 7, and we sustain this rejection.", + "Appellant does not set forth any substantive arguments with respect to the rejection of dependent claims 14-19. Appeal Br. 9.", + "Accordingly, we also sustain the rejection of claims 14-19 over the combined teachings of Beauchot and Lin.", + "Claim 11 recites, in part, *an upper bracket. .a lower bracket. . when engaged to the upper bracket, the lower bracket is adapted to be offset relative to the wheel carriage along a direction perpendicular to a rail guiding the rail-guided door by a vertical offset distance.\"", + "As found by the Examiner in relation to the rejection of *claims 7-13 and 20,\" Final Act. 4, and as acknowledged by Appellant, Beauchot discloses *an upper bracket adapted to engage the wheel carriage and a lower bracket adapted to engage the upper bracket and the rail-guided door,' \" Appeal Br. 5 (referring to brackets 19 and 21 in Beauchot).", + "Claim 11 further recites, *when engaged to the upper bracket, the lower bracket is adapted to be offset relative to the wheel carriage along a direction perpendicular to a rail guiding the rail-guided door by a vertical offset distance, the vertical offset distance being between upper and lower offset limits.\" Appeal Br. 14-15, Claims App.", + "Appellant has not persuasively demonstrated that the modification to Beauchot in view of Lin would not include the above-noted feature.", + "Further, as we discussed above with respect to the rejection of claim 7, the Examiner set forth an adequate reason with rational underpinnings to combine the teachings of Beauchot and Lin.", + "Accordingly, we are not convinced of error in the Examiner's rejection of claim 11.", + "Appellant does not set forth any substantive arguments with respect to the rejection of dependent claims 12 and 13. Appeal Br. 10.", + "Accordingly, we also sustain the rejection of claims 12 and 13 over the combined teachings of Beauchot and Lin.", + "Claim 20 recites, in part, *said upper bracket having a vertical face for engaging the wheel carriage, said vertical face having two slots separated by a distance equal to a distance separating two wheels in said wheel carriage.\" Appeal Br. 16, Claims App. (emphasis added).", + "Claim 20 further recites, \"a lower bracket having a horizontal face having two slots separated by a distance equal to a distance separating said two apertures in said horizontal face of said upper bracket.\" Appeal Br. 16, Claims App.", + "We are persuaded that the Examiner has not sufficiently demonstrated the above-noted limitations recited in claim 20 are disclosed in the cited references. See Ans. 6 and 10-11.", + "Accordingly, we do not sustain the rejection of claim 20.", + "Claim 21 recites, in part, \"means for coupling said means for engaging said motorized wheel carriage to said means for engaging said rail- guided door.\" Appeal Br. 16, Claims App.", + "We agree that claim 21 is properly summarized as pertaining to the above-noted embodiment as explained by Appellant.", + "We also agree that the recited \"means for coupling\" requires two brackets, i.e., requires more than is depicted in Appellant's AAPA.", + "Thus, as the Examiner has not properly interpreted the scope of claim 21 in accordance with 35 U.S.C. & 112, sixth paragraph and has not demonstrated that all of the features of claim 21, as properly construed, are in AAPA, we do not sustain the Examiner's rejection of claim 21 as anticipated by AAPA.", + "We enter a new ground of rejection of claim 21 as unpatentable under 35 U.S.C. & 103(a) over Beauchot and Lin.", + "As correctly found by the Examiner in the rejection of claim 7: Beauchot discloses an apparatus comprising an upper bracket (19) having a vertical planar face having a roller (18) attached thereto and a horizontal planar face, a lower bracket (21) having a horizontal planar face complimentary to the horizontal planar face of the upper bracket (19) and a vertical planar face perpendicular thereto for attachment to a sliding door panel (1, see figure 2), and a bolt (20) extending between and for attaching the two horizontal planar faces. Ans. 5.", + "We further find Beauchot discloses a member (un-numbered in Figs. 1 and 2) connecting the wheel 18 to the bracket 19, which correlates to the recited *means for engaging a motorized wheel carriage movable along a translation direction.\"", + "Beauchot discloses fasteners, also un-numbered in Figs. 1 and 2, connecting the bracket 21 to the door 1, which fastener(s) correspond to the recited means for engaging said rail-guided door.\"", + "The two brackets, 19 and 21 satisfy the recited \"means for coupling said means for engaging said motorized wheel carriage to said means for engaging said rail-guided door whereby translation of said motorized wheel carriage causes translation of said rail-guided door\" as this limitation is construed by Appellant on page 3 of the Appeal Brief.", + "However, Appellant's Specification states, in comparison to admitted prior art Fig. 2, \"Figure 6 shows that the automatic door system power unit is no longer directly above the door panel.\" Spec. p. 10, I 50.", + "To the extent claim 21 requires the above-noted offset, it would have been obvious to a person of ordinary skill in the art to modify the assembly disclosed in Beauchot to include adjustability (to create an offset as shown in Fig. 6 of Appellant's Application) via the inclusion of slots for connection of the brackets as disclosed by Lin for the reasons discussed above for claim 7.", + "Further, adding adjustability as disclosed in Lin to the brackets disclosed in Beauchot to provide an offset (such as depicted in Fig. 6 of Appellant's Application) would merely have been **application of a known technique to a piece of prior art ready for the improvement,\" KSR Int'l 7 Co. V. Teleflex Inc., 550 U.S. 398 (2007), inasmuch as the addition of adjustability would improve the [fit] of a sliding door within an opening,\" Ans. 6.", + "Claim 8 recites, in part, \"the lower bracket comprises a slot extending in a direction perpendicular to a plane defined by the rail-guided door.\" \" Appeal Br. 14, Claims App.", + "Claim 9 depends from claim 8 and recites, in part, \"the slot is placed under an aperture in the upper bracket.\" Appeal Br. 14, Claims App.", + "Claim 10 depends from claim 9 and recites, in part, \"a fastener for passing through the aperture and the slot, said fastener having a first state for permitting the lower bracket to be offset in the direction perpendicular to the plane defined by the rail-guided door and a second state for immobilizing the lower bracket.\" Appeal Br. 14, Claims App.", + "In the rejection of claims 8-10 as unpatentable over Beauchot and Lin, we note the Examiner finds that Beauchot discloses, a lower bracket (21) having a horizontal planar face complimentary to the horizontal planar face of the upper bracket (19) and a vertical planar face perpendicular thereto for attachment to a sliding door panel (1, see figure 2), and a bolt (20) extending between and for attaching the two horizontal planar faces. Ans. 5.", + "We reproduce Fig. 2 of Beauchot below.", + "Fig. 1 of Beauchot depicts a side view of the door 1, bracket 19, and bracket 21.", + "We agree with Appellant that the Examiner has not specifically explained the relationship of the Examiner's findings as they relate to claims 8-10.", + "However, it is clear from Fig. 2 above that bolt 20 must pass through both brackets 19 and 21, and that the faces through which bolt 20 passes must extend in a direction perpendicular to door 1.", + "As the rationale for modifying Beauchot to include slots is for providing adjustment, it would have been obvious to provide slots in the particular orientation and placement recited in claims 8 and 9 to allow adjustment of bracket 19 relative to bracket 21 in a variety of directions, including one that extends the slot in a direction perpendicular to a plane defined by the rail- guided door.", + "As for the fastener with a first state permitting an offset and a second state for immobilizing the lower bracket as recited in claim 10, this is an obvious application of bolt 20.", + "Additionally, the fact that the slots are provided for adjustability means that the slots must allow movement of one bracket relative to another and then, once the adjustment is achieved, prevent further movement.", + "Providing a fastener to allow movement and then to prevent movement would have been an obvious use of a bolt according to the purpose for which it was designed.", + "Moreover, Lin teaches loosening a tightened bolt to provide adjustment, albeit in a different direction than the one recited in claim 10. Lin, col. 4, 11.17-32.", + "As the Examiner does not fully articulate the application of the references to claims 8-10, we designate the rejection of claims 8-10 under 35 U.S.C. 8 103(a) as unpatentable over Beauchot and Lin a new ground of rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2012011012_DECISION.json b/opinion_split/2012011012_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d66e97efb9d16016283460659e284eb0a68254bb --- /dev/null +++ b/opinion_split/2012011012_DECISION.json @@ -0,0 +1,40 @@ +{ + "appellant_arguments": [ + "In contrast, Appellants contend that **[c]laim 1 explicitly describes a mobile station in soft hand-off operating in a mode wherein each control command is sent multiple times . \u00b7 \u00b7 \u00b7 ~ App. Br. 15.", + "Appellants argue that, therefore, the cited references do not render obvious all claim limitations, because Ticdemann does not teach or suggest the \"combining of multiple power control commands.\" \" (App. Br. 13).", + "Appellants argue that this combination is improper, because, although Tiedemann teaches \"occasionally\" retransmitting the commands, \"there is no suggestion in Tiedemann of retransmitting for purposes of improving reliability \" App. Br. 13-14.", + "Appellants further argue that Hamabe teaches relative power control signals, and *repeating the previous increase command or repeating the previous decrease command would too often exacerbate rather than mitigate the problem \u00b7 \u00b7 M App. Br. 14." + ], + "examiner_findings": [ + "The Examiner rejects claims 1, 2, 4, 6-9, and 28-31 under 35 U.S.C. 8 103(a) as being unpatentable over Hamabe (US 6,405,021 B1; June 11, 2002) and Tiedemann (US 2004/0258024 A1; Dec. 23, 2004). Non-Final Act.2 2-7.", + "The Examiner rejects claim 3 under 35 U.S.C. 8 103(a) as being unpatentable over Hamabe, Tiedemann, and Bender (US 6,253,085 B1: June 26, 2001). Non-Final Act. 7-8.", + "As to above Issue A, the Examiner finds that Hamabe in view of Tiedemann renders obvious claim 1. and that claim 1 encompasses a *single determined power control command based upon all the received signals [that] is sent only once during a plurality of power control groups or slots or frame intervals \u00b7 . \u00b7 ., Non-Final Act. 3, Ans. 3.", + "As explained by the Examiner, the \"during\" portion may occur in only one group in the plurality, in multiple groups in the plurality, or in every group in the plurality. See Ans. 3.", + "As to above Issue B, the Examiner finds that: it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the teachings of Hamabe with the teachings of Tiedemann in order for the mobile station to provide power commands to the base stations to decrease or increase its power effectively and reduce error rate. Non-Final Act. 3.", + "As articulated by the Examiner, Hamabe teaches sending a power control command, and Tiedemann teaches that \"remote station 6 can be configured to repeat\" to ensure that the command is successfully transmitted (i.e., reducing the error rate which will improve reliability). Non-Final Act. 3, citing Hamabe, Col. 15, II. 53-62 and Tiedemann 9 86." + ], + "ptab_opinion": [ + "Appellants' invention relates to a method for *sending power control commands in a CDMA cellular radio system from a mobile station to a plurality of base stations with which the mobile station is in soft handoff . . .\" Abstract.", + "Claim 1 is illustrative of the subject matter on appeal: 1. A method of sending power control commands in a CDMA cellular radio system from a mobile station to a plurality of base stations with which the mobile station is in soft handoff, comprising: said mobile station receiving a signal from each of said base stations; repeatedly determining, in said mobile station, a power control command based upon said received signals; and sending said each power control command during a plurality of power control groups.", + "Appellants' arguments present us with the following issues:", + "A. Did the Examiner err in rejecting independent claims 1, 4, 6, and 8, because the cited art does not teach or suggest all claim limitations? App. Br. 12-13.", + "B. Did the Examiner err in rejecting independent claims 1, 4, 6, and 8. because \"it would not have been obvious to adopt the Tiedemann technique of base station power control in Hamabe\"M? App. Br. 13.", + "We agree with the Examiner's findings and conclusions (see Non- Final Act. 3-8, Ans. 3-5) and adopt them as our own.", + "We further add the following for emphasis.", + "As an initial matter, we give claims their broadest reasonable interpretation consistent with the Specification as they would be understood by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).", + "Here, we note that the claim 1 limitation **sending \u00b7 \u00b7 \u00b7 during a plurality of power control groups\" does not limit when the \"during\" occurs.", + "Appellants' Specification provides numerous different examples of \"power control command\" timing, including repeating all or portions of the same command with each power control group, or sending a command once every few groups. See Spec. 7, 11. 20-31, Spec. 8, 11. 20-31.", + "Accordingly, one of ordinary skill in the art would understand claim 1 to broadly encompass at least the situations discussed by the Examiner.", + "That is, to the extent disclosed in the Specification, the broadest reasonable interpretation covers both a power control command sent \"at least once during a plurality of power control groups\" (Ans. 3-4, Spec. 8, 11. 25-28), as well as sending each power control command *during multiple power control groups or slots \u00b7 . \u00b7 \" (App. Br. 12, Reply Br. 6, Spec. 8, 11. 20-24).", + "Independent claims 4, 6, and 8 recite similar limitations and thus encompass the arrangement identified by the Examiner.", + "We do not find error in the Examiner's rejection based upon the broadest reasonable interpretation of the claims.", + "We agree with the Examiner that Hamabe teaches sending a power control command and Tiedemann teaches sending multiple power control commands. Non-Final Act. 3, App. Br. 12-13,", + "Although Appellants argue Tiedemann does not teach the \"combining of multiple power control commands\" (App. Br. 13), this is not a recited limitation within even the broadest reasonable interpretation of the claim (See Ans. 4).", + "Appellants have thus not persuasively shown that the broadest reasonable interpretation of the independent claims is precluded by the teachings of Hamabe and Tiedemann.", + "Accordingly, we do not find error in the Examiner's s finding Hamabe and Tiedemann teach or suggest all the recited features of claim 1.", + "We are not persuaded the Examiner erred.", + "Appellants appear to be arguing that Tiedemann must be \"bodily\" incorporated into Hamabe. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).", + "See, also, Hamabe Col.19, 11. 45-65 and Tiedemann I 69.", + "Thus, we do not find error in the Examiner's combination of Hamabe with Tiedemann to teach *sending each power control command during a plurality of power control groups\" for the purposes of adjusting \"power effectively and reduc[ing] error rate . . \" Non-Final Act. 3." + ] +} \ No newline at end of file diff --git a/opinion_split/2012011546_DECISION.json b/opinion_split/2012011546_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..2b6521701bc78ae5d3c570c09252bee674bbf5d8 --- /dev/null +++ b/opinion_split/2012011546_DECISION.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [ + "Appellant argues that Szmuk fails to disclose the claimed screening step. Br. 9.", + "Rejections 2 and 3 Appellants do not provide separate argument for Rejections 2 and 3, claims 47 and 48, other than indicating what the claims recite. Br. 14-15." + ], + "examiner_findings": [ + "Claims 46, 53-55 are rejected under 35 U.S.C. $103(a) as being unpatentable over Szmuk in view of Geerts, Landau, Pond, Koesterman and Miller.", + "Claim 47 is rejected under 35 U.S.C. $103(a) as being unpatentable over Szmuk in view of Landau, Pond, Koesterman, Miller and Weston.", + "Claims 48-49, 51-52 are rejected under 35 U.S.C. $103(a) as being unpatentable over Szmuk in view of ofLandau, Pond, Koesterman, Miller and Geerts.", + "The Examiner relies on Szmuk for the claimed screening step.", + "The Examiner finds that Szmuk discloses that, **Needle phobia affects at least 10% of the general population.\" Abstract.", + "The Examiner argues that First, Szmuk does not state anywhere in the abstract that Szmuk makes any assumption or guessing to get the number of 10% of population who having needle phobia.", + "Secondly, in order to get the result of 10% of population which is affected by needle phobia, the interviewer either takes survey or the doctor can ask simple question directly to person (e.g. patient) that relating to phobia of needle.", + "Therefore, it is well-known in the art or at least in Szmuk indirectly discloses the step of screening a patient with respect to factors relating to injection with a needle including the patient's fear of needles and the patient's ability to use a needle for injection. Ans. 10-11." + ], + "ptab_opinion": [ + "Rejection 1 ISSUE The dispositive issue is: Does Szmuk support the Examiner's finding that the claimed screening step for a patient's fear of needles is obvious?", + "PRINCIPLES OF LAW In making our determination, we apply the preponderance of the evidence standard.", + "The Board *determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction *in light of the specification as it would be interpreted by one of ordinary skill in the art.", + "In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham V. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present.", + "ANALYSIS We find that the Examiner has provided evidence to support a prima facie case of obviousness.", + "However, we rely on the full publication of Szmuk instead of just the abstract relied on by the Examiner.", + "For this reason, as well as the reason that our rationale differs slightly from that of the Examiner, we designate a new ground of rejection in this Decision.", + "Thus, Szmuk discloses identifying or screening patients for needle phobia, and if needle phobia is present, using a needleless injection system.", + "Szmuk suggests screening for patients who have a phobia of needles given that those are the particular patients to which a needle free injection is administered.", + "We conclude that, in view of the disclosure of Szmuk, a person of ordinary skill in the art would have found it obvious to screen a patient for needle phobia in order to ensure compliance with a treatment regimen, and administer a drug to a needle phobia patient via a needleless injector.", + "We further agree with the Examiner, for the reasons of record, that It would have been obvious at the time the invention was made to a person having ordinary skill in the art to modify the device and method of Szmuk in view of Landau with an injection kit including plurality of single use, disposable needle-free injectors, as taught by Pond, for the benefits of preventing of contaminating the fluid, spilling the fluid and convenience for ready to use of the injectors. Ans. 6.", + "The obviousness rejection of claims 46, and 53-55 over Szmuk in view of Geerts, Landau, Pond, Koesterman and Miller is affirmed for the reasons of record.", + "We require more than a bare assertion that the reference does not disclose the limitation.", + "The obviousness rejections of claims 46-49, 51-55 are affirmed." + ] +} \ No newline at end of file diff --git a/opinion_split/2012011597_DECISION.json b/opinion_split/2012011597_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..56e50eba797196d76eb0b3dbbae439143c62a295 --- /dev/null +++ b/opinion_split/2012011597_DECISION.json @@ -0,0 +1,56 @@ +{ + "appellant_arguments": [ + "Appellants contend that \"the alleged combination of Nakae and Engstrom does not teach or suggest detecting a rotation direction of a folder of a mobile terminal and determining whether a camera module is exposed\" (App. Br. 6) because \"Engstrom does not teach of suggest that camera 732 can be selectively concealed independent of the folder position\" and \"Nakae does not teach or suggest determining whether a camera module is exposed, if the folder is open\" (App. Br. 8).", + "Appellants assert that \"there would be no need to determine both whether a camera module is exposed and if the folder is open because, if the folder is open, then both the inner and outer cameras are exposed in the alleged combination\" (id.) and therefore, \"the Examiner's is modification of Nakae and Engstrom is hindsight bias gleaned from [Appellants]' own disclosure\" (App. Br. 9).", + "Appellants finally contend that \"the Examiner has not satisfied the burden to establish inherency\" because \"Ithe Examiner provides no such reasoning\" that if the mobile terminal determines that \"the folder is open \u00b7\u00b7\u00b7 [that it] necessarfily] flow[s] from the disclosure in Nakae and/or Engstrom\" that the mobile terminal *[dletermin[es] whether a camera module is exposed\" (id.).", + "Appellants argue that claim 6, 8, 11-17, 22, 23, and 25-35 is patentable over the cited prior art for the same reasons asserted with respect to claim 1 (App. Br. 9)." + ], + "examiner_findings": [ + "However, the Examiner finds that \"Nakae discloses determining whether or not the mobile terminal is open or closed based on the folded state\" and that *[i]ncorporating a front facing camera, arranged in the position as illustrated by Engstrom .. , would create a mobile terminal\", Ans. 22-23).", + "Thus, \"the combination of Nakae and Engstrom does disclose determining whether a folder is open and consequently also discloses determining whether a camera module is exposed\" (Ans. 23)." + ], + "ptab_opinion": [ + "I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. 5 134(a) from a Final Rejection of claims 1-36.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We affirm.", + "A. INVENTION Appellants' invention is directed to folding mobile terminal and method that automatically changes the operation mode of the mobile terminal by detecting a rotating direction of the folder (folding housing) and determining whether a camera module is exposed; wherein, if the camera module is not exposed, a camera stop mode is entered for terminating the camera mode and, if the camera module is exposed, the camera mode is maintained (Abstract).", + "B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A method for changing operation mode of a mobile terminal, the method comprising: detecting a rotation direction of a folder of a mobile terminal to determine if the folder is open or closed; determining a current mode of the mobile terminal, if the folder is open; determining whether a camera module is exposed, if the folder is open; and changing the current mode of the mobile terminal to a camera mode in the rotating direction of the folder, if the folder is open and the camera module is exposed.", + "C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: (Mizuta 758) US Pat. App. Pub. No.:2003/0064758 A1 Apr. 3, 2003 Nakae US Pat. App. Pub. No.: 2004/0166829 A1 Aug. 26, 2004 Engstrom US Pat. App. Pub. No.: 2007/0024698 A1 Feb. 1, 2007 (Filed Mar. 26, 2004) (Mizuta *049) US 7,353,049 B2 Apr. 1, 2008 (Filed Mar. 28, 2003)", + "Claims 1-5, 7, 9. 10, 18-21, 24, and 36 stand rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over Nakae in view of Engstrom.", + "Claims 6, 8, 11-17, and 25-35 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Nakae in view of Engstrom and Mizuta *049.", + "Claims 22 and 23 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Mizuta '758 in view of Mizuta *049.", + "II. ISSUES The dispositive issues before us are whether the Examiner has erred in determining that the combination of Nakae and Engstrom teaches or would have suggested \"detecting a rotation direction of a folder of a mobile terminal to determine if the folder is open or closed\" and *determining whether a camera module is exposed, if the folder is open\" (claim 1, emphasis added).", + "III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence.", + "Nakae 1. Nakae discloses a folding mobile communications terminal having a camera 22 built into an exterior surface of a sub-housing 12 and an open/close state detecting unit 16 built into an interior surface of the sub- housing 12; wherein, when a sub-housing 11 is closed and placed juxtapose to sub-housing 12, the folder is in a closed position and the detecting unit 16 detects that the folder is closed or when the sub-housing 11 is open, the detecting unit 16 detects that the folder is open (Figs. 1A and C; I [0034]).", + "Particularly, the detecting unit 16 may further detect an opening angle of the folding mobile communications terminal (I [0011]).", + "2. The camera also includes a photographing control unit that disables the photographing function when the detected opening angle is below a threshold angle (id.).", + "3. The photographing control method having a photographing function which is openable and closable includes (i) a detecting step of detecting whether the folding mobile communications terminal is in a closed state, and (ii) a photographing control step of disabling the photographing function when detected that the folding mobile communications terminal is in the closed state (I [0009]).", + "Engstrom 4. Engstrom discloses a wireless mobile phone having a camera 732 disposed at a front surface of upper section 716b of phone 700 which is not exposed when the upper and lower sections (716b and 716e) of phone 700 are closed (Figs. 6a and 6b; I [0063]).", + "Appellants' argument that \"Engstrom does not teach of suggest that camera 732 can be selectively concealed independent of the folder position\" is not commensurate in scope with the specific language of claim 1 (App. Br. 8).", + "In particular, claim 1 does not recite such \"selectively concealling the cameral independent of the folder position\" as Appellants argue.", + "We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).", + "Claim 1 does not place any limitation on how *determining whether a camera module is exposed\" is implemented.", + "Thus, we give *determining whether a camera module is exposed, if the folder is open\" its broadest reasonable interpretation as a detection of the camera module being exposed when the folder is open, as consistent with the Specification and claim 1.", + "Nakae discloses a folding mobile communications terminal having a camera built into an exterior surface of a lower sub-housing and an open/close state detecting unit built into an interior surface of the lower sub- housing; wherein, the detecting unit detects whether the upper and lower sub-housings are open or are folded closed (FF 1).", + "The photographing control unit disables the photographing function of the terminal when the opening angel is below a threshold range or when the terminal is in the closed state (FF 2 and 3).", + "Nakae's Figures 1A and 1C are reproduced below: FIG.1C FIG.1A and 16 Figures 1A and 1C depict external views of the folding mobile communications terminal 1 in the open state, where Fig. 1A illustrates a front view of the terming and Fig. 1C illustrates a rear view (I [0025]).", + "As shown, the detecting unit 16 detects when the lower and upper sub-housings (12 and 11) are open or closed.", + "More particularly, the detecting unit 16 detects the angle of rotation of the folder.", + "The built-in camera 22 on the exterior of sub-section 12 of the terminal is always exposed whether the terminal is in an open or closed state.", + "The photographing control unit (not shown) disables the photographing function of the camera 22 when the angle of rotation of the folder is below a threshold range or the folder is closed.", + "We find that the method of operation for the open/closed state detecting unit comprises the step of \"detecting a rotation direction of a folder of a mobile terminal to determine if the folder is open or closed\" (claim 1).", + "We find further that although Nakae's camera module is always exposed, Nakae's photographing control unit controls \"whether a camera module [is functional] if the folder is open\" (claim 1).", + "In addition, Engstrom discloses a wireless mobile phone having a camera disposed at a front surface of upper section of phone which is not exposed when the upper and lower sections are closed (FF 4).", + "Engstrom's Figures 6a and 6b are reproduced below: 716b 700 716b I 732 & 734 700 a 732 .734 706a 716d 16d 706b 7160 716e 7lie Figure 6b Figure 6a 722 722 706b Figures 6a and 6b depicts two perspective views of the wireless mobile phone in an open state (I [0012]).", + "As shown, the camera 732 is exposed when the folder is open and is not exposed when the folder is closed.", + "We find that Engstrom's phone comprises a camera that is exposed when the folder is opened and not exposed when the folder is closed.", + "That is, we find that Engstrom's phone comprises \"a camera module [that] is exposed, if the folder is open\" (claim 1).", + "In view of our claim construction above, we find that the combination of Nakae and Engstrom at least suggests all the claimed limitations of claim 1.", + "The Supreme Court has stated that \"[the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.\" KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).", + "Thus, we find no error in the Examiner's finding that the combination of Nakae's folding mobile communications terminal (including the open/closed state detecting unit and photographing control unit) that detects whether the folder is open or closed (disabling the photographing function when closed) with the a wireless mobile phone having a camera built into its interior surface (that is exposed when the folder is open), as disclosed in Engstrom, produces an apparatus that detects whether the folder is open or closed and if the folder is open, detects whether the camera module is exposed, which would be obvious (Ans. 23-24; FF1-4).", + "Accordingly, we find no error in the Examiner's 's rejection of claim 1 under 35 U.S.C. \u25cf 103(a) over Nakae in view of Engstrom.", + "Further, independent claims 4, 20, 24, and 36 having similar claim language and claims 2, 3, 5, 7, 9. 10, 18, 19, and 21 (depending from claims 1, 4, and 20) which have not been argued separately, fall with claim 1.", + "As noted supra, however, we find that the combination of Nakae and Engstrom at least suggests all the features of claim 1.", + "We therefore sustain the Examiner' s rejection of claims 6, 8, 11-17, and 25-35 under 35 U.S.C. \u25cf 103 over Nakae in view of Engstrom and Mizuta *049 and of claims 22 and 23 under 35 U.S.C. S 103 over Mizuta '758 in view of Mizuta *049." + ] +} \ No newline at end of file diff --git a/opinion_split/2013000003_DECISION.json b/opinion_split/2013000003_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0820c65a5c2678ac581b2289e86922ffcd5b8028 --- /dev/null +++ b/opinion_split/2013000003_DECISION.json @@ -0,0 +1,21 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "The Examiner first finds that \"[b]ased on the definitions stated above [at pages 4 and 5 of the Answer], all software, firmware and performed results are stored in one or more levels of memory at some point within the performed steps, algorithm.\" Answer 6.", + "The Examiner also finds, regarding claim 1, that \"[t]he non-volatile memory portion of a computer's memory hierarchy as disclosed by Blackburn is considered equivalent towards the claimed data repository located within each gaming device (flash memory, hard drive, virtual memory, etc.) (par. 19, lines 24-30).\" Id.", + "In light of Blackburn's 's disclosure of allowing the gaming management service to access a database for storing information regarding extraordinary occurrences, the Examiner determined that it would have been obvious \"to include another database to store other information also considered important enough to report. \" Answer 7." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "We are persuaded that the Examiner failed to establish a prima facie showing of obviousness in rejecting claims 1, 3-5, 8-10, 12-15, and 17 under 35 U.S.C. $ 103(a) as being unpatentable over Blackburn.", + "However, the Examiner's reliance on paragraph 19, lines 24-30 of Blackburn is misplaced.", + "We find that the Examiner's referenced portion of Blackburn does not disclose a data repository that stores component parameters, but discloses the storage of *program instructions\" relating to actions and processes of a computer system.", + "Furthermore, while equating *the non-volatile memory portion of a computer's memory hierarchy as the claimed data repository\" (Answer 12), the Examiner has not identified where Blackburn discloses that each gaming processor has a memory hierarchy that includes a non-volatile memory portion.", + "As explained by our reviewing court, \"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.\" In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(quoted with approval in KSR Int'l 'I Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007)).", + "We agree with Appellants that *the Examiner [has] erred in interpreting the non-volatile memory portion of a processor's memory hierarchy as equivalent to the claimed data repository.\" Br. 4.", + "It is not clear whether this discussion by the Examiner is directed to the *data repository\" limitation.", + "However, to the extent that it is, it is not apparent, and the Examiner does not adequately explain, why a person of ordinary skill in the art would have been prompted, in the absence of a teaching in Blackburn of a non-volatile memory device in the gaming device that stores component parameters to include such *another database\" in the gaming devices, as called for in claim 1.", + "Accordingly, we will not sustain the Examiner's obviousness rejection of claims 1, 3-5, 8-10, 12-15, and 17 over Blackburn." + ] +} \ No newline at end of file diff --git a/opinion_split/2013000486_DECISION.json b/opinion_split/2013000486_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..acf85175f5edca4fd4870c3248cf45e357d1eba4 --- /dev/null +++ b/opinion_split/2013000486_DECISION.json @@ -0,0 +1,72 @@ +{ + "appellant_arguments": [ + "In traversing the Examiner's rejections of the appealed claims, Appellants argue claims 1, 10, and 17 as a group (App. Br. 6-11) and claims 4, 5, 13, 18, and 19 as a group (id. at 11-16), Appellants contend \"[t]he remaining dependent claims (i.e., Claims 2, 3, 6, 7, 9, 15, 16, and 21-24) are believed to be allowable for at least the same reasons presented \u00b7 . regarding their respective base claims.\"", + "Id. at 16.", + "Appellants contend Prassas is non-analogous art because it is directed to an opaque, porous hose.", + "App. Br. 11 CM is unlikely that a person skilled in the photobioreactor field would look to hoses to solve problems in this diverse field. \").", + "Appellants also argue Prassas uses a heterogeneous mixture that is not equivalent to the claimed homogeneous mixture because Prassas' hose comprises elastomeric particles which remain discrete in the thermoplastic binder and UV absorber, i.e., Appellants contend that because the particles do not dissolve, the mixture is heterogeneous, not homogeneous.", + "App. Br. 10-11.", + "Appellants also argue that neither Berzin nor Rabinovitch teach pipes formed by extruding the homogeneous mixture of PVC and UV retardant.", + "See, e.g., App. Br. 9-10." + ], + "examiner_findings": [ + "The Examiner rejects claims 1-7, 9, 10, 13, 15-19, and 21-24 as follows: I. Claims 1-7, 9, 10, 13, 15, 16, and 23 under 35 U.S.C. S 103(a) as obvious over Cloud in further view of Berzin.", + "Ans. 5-15.", + "II. Claims 17-19, 21, 22, and 24 under 35 U.S.C. 8 103(a) as obvious over Cloud in view of Berzin and further view of Prassas.", + "Id. at 15- 22.", + "III. Claims 1-7, 9, 10, 13, 15-19, and 21-24 under 35 U.S.C. $ 103(a) as obvious over Cloud in view of Berzin and further in view of Prassas.", + "Id. at 22-39.", + "IV. Claims 1-3, 6, 7, 9. 10, 15, 16, and 21-23 under 35 U.S.C. a 103(a) as obvious over Berzin in view of Rabinovitch and further in view of Prassas.", + "Id. at 39-48.", + "V. Claims 4, 5, and 13 under 35 U.S.C. 8 103(a) as obvious over Berzin in view of Rabinovitch in view of Prassas and further in view of Cloud.", + "Id. at 48-52.", + "VI. Claims 17-19 and 24 under 35 5 U.S.C. 8 103(a) as obvious over Berzin in view of Cloud in view of Rabinovitch and further in view of Prassas.", + "Id. at 52-59.", + "The Examiner finds Berzin discloses a photohioreactor comprising a rigid pipe made of polyvinyl chloride material with walls allowing passage of light and an algae-containing slurry where the polyvinyl chloride material is resistant to UV radiation to some extent.", + "Ans. 39-40.", + "The Examiner also finds Berzin discloses various optical filters and blocking material on or in the tubing to reduce UV transmission, but does not specifically disclose that the pipe is formed from an extruded homogeneous mixture of PVC and an UV retardant as recited in independent claims 1, 10, and 17.", + "Id. at 41.", + "The Examiner relies on Rabinovitch for a specific teaching of using benzophenone compounds as an UV-retardant in combination with PVC (id. at 40), concluding it would have been obvious to one of ordinary skill to use benzophenone compounds in the device of Berzin to reduce degradation and **ensure a longer lasting and more weatherable device\" (id. at 40-41).", + "The Examiner concedes Berzin as modified by Rabinovitch does not specifically disclose that the pipe is extruded from a homogeneous mixture of polyvinyl chloride and the UV retardant.", + "Id. at 39-42, The Examiner finds Prassas discloses forming a homogeneous mixture of plastic, which may be PVC, and UV retardants to lengthen the life of pipe exposed to UV radiation.", + "ld. at 41.", + "The Examiner concludes it would have heen obvious to form the pipe of Berzin as modified by Rabinovitch by extrusion of a homogeneous mixture of PVC and UV UV-inhibitor as described by Prassas to form pipes resistant to UV degradation.", + "Id.", + "The Examiner concedes the combination of Berzin, Rabinovitch, and Prassas does not disclose a pipe wall thickness between 0.091 and 0.172 inches as required by independent claim 10.", + "Id. at 42.", + "However, the Examiner finds Berzin describes a system for the effective growth of algae and provides guidance as to optimizing pipe size and diameter (id. at 63 (citing Berzin 11 59-61, 91-94), and determines it would have been obvious to one of ordinary skill to change the thickness for desired light transmittance where it was well known that the thickness of translucent material affects the transmittance of light.", + "Id. at 42-43, With respect to claim 17, the Examiner finds one of ordinary skill would have been motivated to use a pump to circulate fluids in the device of Berzin based on Cloud's disclosure of a photobioreactor system with a plurality of interconnected pipes containing algae and a pump for circulating the algae.", + "ld. at 53-54, The Examiner concedes Berzin, as modified by the secondary references, does not disclose a ratio of outer pipe wall diameter to pipe wall thickness of at least 25 to 1 (see e.g. dependent claim 4) and that the ratio allows increased light beneficial for growth of algae to pass through (see e.g. dependent claim 5).", + "Id. at 48, 50.", + "The Examiner finds changing this ratio, like the pipe thickness, would have been a matter of routine optimization, as explained above in connection with the pipe wall thickness limitations.", + "Id. at 48-49, 50-52.", + "Specifically, the Examiner finds that because *light transmittance, cost of construction and strength of tubing\" can be modified by adjusting the pipe wall thickness and **thus the ratio of outside [pipe] diameter to [pipe] wall thickness,\" the thickness would be recognized as a result effective variable by one of ordinary skill who would have optimized it by routine experimentation to balance, inter alia, these factors.", + "Id. at 49, 51-52.", + "Further, the Examiner finds Cloud discloses a photobioreactor where the ratio of outer pipe wall diameter to pipe wall thickness is at least 25 to I and that the configuration allows for successful growth of algae.", + "Id. at 50, 52.", + "As explained by the Examiner, the rejection is not based on using the specific pipe of Prassas in the Berzin/Rabinovitch device.", + "Ans. 60-61." + ], + "ptab_opinion": [ + "ANALYSIS We have reviewed the Examiner's rejections in light of arguments advanced by the Appellants in their Appeal and Reply Briefs, but are not persuaded the Examiner erred reversibly in concluding the claims are unpatentable for obviousness as set forth in rejections IV-VI,3 essentially for the reasons expressed in the Examiner's Response to Argument.\"", + "3 Because we find no reversible error in rejections IV-VI, Appellants' arguments addressing rejections I-III advanced for the first time in the Answer are moot.", + "4 Rather than reiterate all arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed February 24, 2012), the Answer (mailed August 2, 2012), and the Reply Brief (filed October 2, 2012) for the respective details.", + "We have considered in this decision only those arguments Appellants actually raised in their Briefs.", + "Any other arguments Appellants could have made but chose not to make in their Briefs are deemed waived.", + "See 37 C.F.R. $ 41.37(c)(1)(vii).", + "In general, we note many of Appellants' arguments are directed to deficiencies in the individual references and fail to identify error in the facts and reasons relied on by the Examiner in determining one of ordinary skill at the time of the invention would have been motivated to combine the teachings of the references in the manner claimed.", + "Further, many of Appellants\" arguments are based on unsupported opinion of counsel and are, therefore, insufficient to refute the Examiner's fact finding and reasoning, which we find is supported by a preponderance of the evidence.", + "We add the following comments for emphasis.", + "We agree with the Examiner, however, that one of ordinary skill would have looked to Prassas in considering the problem of UV degradation of PVC.", + "Ans. 60-61 (Prassas **teach[es] that mixing UV retardant materials homogen[e]ously with plastics is known\").", + "\").", + "Appellants' argument is not persuasive because Appellants have not persuasively explained why the Examiner erred in determining Prassas' disclosure of \"an ultraviolet stabilizer uniformly dissolved or dispersed in the binder resin\" (Prassas col. 3, 11. 66-67), would have suggested using a pipe comprising a homogeneous mixture of UV retardant materials and plastics in Berzin's device as modified by the secondary references.", + "See Ans. 60-61 (citing Prassas, Abstract, col. 3, 1. 66 to col. 4, 1. 1).", + "We agree with the Examiner, however, that the term **extruded\" is a product-by-process limitation (see Ans. 61) and Appellants have not explained how a homogeneous mixture of PVC and a UN-retardant/henzophenone compound would differ from a homogeneous mixture formed by another method.", + "Appellants' arguments relating to the modification of Berzin in light of Cloud to provide the claimed pipe wall thickness or ratio of outer pipe diameter to pipe wall thickness (see, e.g., App. Br. 11-14; Reply Br. II, 13) are unpersuasive of reversible error because they are merely attorney argument and Appellants have not identified unexpected results which refute the Examiner's finding that pipe wall thickness and the ratio would have been a matter of routine optimization.", + "For example, Appellants have not identified evidence to support their argument that one of ordinary skill in the art would have simply removed Berzin's 's light-blocking film rather than adjust pipe wall thickness and diameter (App. Br. 16).", + "Appellants' arguments that there is no teaching of a frame (Reply Br. 6-7.), that combining the teachings of a porous opaque pipe in Prassas with other references was improper hindsight reconstruction (id. at 10-11), and that there is no reasonable expectation of success (id.), were not raised in the Appeal Brief, and are not responsive to arguments in the Final Rejection, which included rejections IV-VL", + "We decline to consider these arguments because they could have been raised in the Appeal Brief.", + "41 C.F.R. 9 41.41(b)(2) (\"Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer \u00b7 \u00b7 will not be considered by the Board for purposes of the present appeal, unless good cause is shown. \"); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision) (\"[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not. \")." + ] +} \ No newline at end of file diff --git a/opinion_split/2013000650_DECISION.json b/opinion_split/2013000650_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8f3341cd4b421100f5ece67709b07403fcb45dfc --- /dev/null +++ b/opinion_split/2013000650_DECISION.json @@ -0,0 +1,38 @@ +{ + "appellant_arguments": [ + "Did the Examiner err in rejecting claims 1-19 and 11-13 under 35 U.S.C. $ 112, second paragraph, because it is clear from a reading of claims 1 and 11 in light of the Specification what is meant by the phrases **evaluation of the transaction information, \" \"configured to provide,\" and **initiating storage?\"", + "Did the Examiner err in rejecting claims 1-9 and 11-13 under 35 U.S.C. 8 103 because the Examiner did not establish that the step of receiving transaction information from a computing device of the transacting entity would have been obvious to the person of ordinary skill in the art at the time of the invention?" + ], + "examiner_findings": [ + "The Examiner argues that the recitation in claim 1 of *evaluation of the transaction information\" is unclear because it is not clear at what step in the method the evaluation is performed and because this phrase lacks antecedent basis. Ans. 14.", + "In explaining this rejection, the Examiner first determines that the step recited in claim 1 of \"receiving from the computing device of the transacting entity transaction information\" is not entitled to patentable weight because the language related to the source of the transaction information does not change the way the receiving step is performed.", + "The Examiner, recognizing that Bissonette does not disclose receiving transaction information from a transacting entity, relies on Official Notice that receiving transaction information from the computing device of the transaction entity is old and well known.", + "In response to the Appellant's argument that the facts officially noted are not old and well known, the Examiner provides the Joao reference to support the Official Notice taken.", + "We also note that the Examiner explains that such a modification of Bissonette would have been obvious because it would help ensure that the information received is secure compared information received from an unknown source (Ans. 8)." + ], + "ptab_opinion": [ + "We have jurisdiction over the appeal under 35 U.S.C. & 6(b).", + "We AFFIRM-IN-PART,", + "We will not sustain the Examiners' rejection under 35 U.S.C. 8 112, second paragraph.", + "We agree with the Appellant that it is clear from a reading of the words of claim 1 that the evaluation is included in the determining step, and as the claim does not use the article \"the\" in front of \"evaluation of the transaction information, this portion of the claim does not lack antecedent basis.", + "We also agree with the Appellant in regard to the recitation of *configured to provide\" that it is clear from a reading of claim 1 that the transaction evaluation result information is configured or put together in a particular form so as to provide an indication to the transacting entity as to whether the financial transaction is appropriate.", + "As such, the metes and bounds of the claim are clear.", + "We further agree with the Appellant that the fact that the step of initiating storage in claim 11 is broad enough to cover several different possibilities of ofinitiating storage does not make the metes and bounds of this limitation unclear.", + "This limitation is merely broad, not ambiguous.", + "See In re Johnson, 558 F.2d 1008, 1016 n. 17 (CCPA 1977) (*breadth is not indefiniteness\").", + "Accordingly, we do not sustain the rejection of claim 11 as being indefinite.", + "We will not sustain the Examiner rejection under 35 U.S.C. S 103.", + "While this may be true, the source of the transaction information certainly affects the how the method recited in claim 1 is performed.", + "In this regard, the method of claim 1 requires that this transaction information be received from the computing device of the transacting entity.", + "Therefore, this recitation must be given patentable weight.", + "Specifically, the Examiner relies on large portions of columns 14-17, 22-25, and 39-41 of Joao to support the taking of Official Notice without directing our attention to any specific teachings in these columns. Ans. 13.", + "In any case, we find that these portions of Joao do not relate to receiving transaction information from the computing device of a transaction entity but rather relate broadly to a computing device sending and receiving data.", + "What is missing is a teaching that transaction information is received from a computing device of a transaction entity.", + "However, Bissonette discloses at column 6, lines 10-12, that transaction information is sent by the bank, not by an unknown source, and as such would appear to be secure.", + "Thus, the Examiner has failed to explain why even if it were known to receive transaction information from a transacting entity, one of ordinary skill would have modified Bissonette as proposed by the Examiner,", + "In view of the foregoing, we will not sustain this rejection of claim 1 and claims 2-9 and I 11-13 dependent thereon.", + "We summarily affirm the obviousness-type double patenting rejection of claims 1-3, 5, 6. 8 and 12 because the Appellant does not address the substance of the rejections.", + "See Manual of Patent Examining Procedure 8 1205.02 (\"If a ground of rejection stated by the examiner is not addressed in the appellant's brief. that ground of rejection will be summarily sustained by the Board. \");", + "see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an uncontested rejection of claims under 35 U.S.C. 8 112, second paragraph, and on appeal the Federal Circuit affirmed the Board's decision and found that the Appellant had waived his right to contest the indefiniteness rejection by not presenting arguments as to error in the rejection on appeal to the Board)." + ] +} \ No newline at end of file diff --git a/opinion_split/2013000832_DECISION.json b/opinion_split/2013000832_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a386957cf22428fcb18300d942b2e2c964673042 --- /dev/null +++ b/opinion_split/2013000832_DECISION.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "Appellants' invention is directed to a computer-implemented method for site development planning.", + "Claim 1, reproduced below, is illustrative: 1. A computer-implemented method for site-development planning, said method comprising: automatically determining a development mix for developing a site, said development mix comprising a mix of structures for building upon said site, said development mix automatically determined by a computing system based upon: a location of said site, a user supplied development constraint, and regulatory information regarding said location of said site, wherein said computing system automatically uses said location of said site to search for and retrieve said regulatory information from a site development planning data source extrinsic to said computing system; automatically estimating, with said computing system, a site earthworks parameter for said development mix; automatically determining, with said computing system, a site build phase parameter for said development mix; and providing, from said computing system, said development mix, said site earthworks parameter, and said build phase parameter as a site development planning output.", + "Appellants argue these claims as a group. Appeal Br. 7-14.", + "Appellants traverse this rejection on the bases that: Detwiler, Tipton, and Haunschild are nonanalogous art (Appeal Br. 7-9, Reply Br. 2-3); modifying Detwiler in view of Tipton would change the principle of operation of Tipton (Appeal Br. 9-12, Reply Br. 3); and modifying Detwiler in view of Haunschild would change the principle of operation of Haunschild (Appeal Br. 12-14, Reply Br. 4).", + "Appellants acknowledge that the nonanalogous art test *is to compare whether a reference is analogous to the field of the inventor\". s endeavor and not whether two references used in combination are analogous to one another.\" Reply Br. 2.", + "In the Reply Brief, Appellants reassert that \"Detwiler, Tipton, and Haunschild are non- analogous art.\" Reply Br. 2.", + "Appellants further argue that **Tipton fails the two-step analysis\" for determining whether the art is nonanalogous. Id.", + "Appellants correctly state the conditions for the second step of the two-step test, namely, \"if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular\" problem faced by Appellants. Reply Br. 2.", + "Appellants assert that Tipton fails this step.", + "In support of this position, Appellants point out that Tipton is directed to industrial problems, which are not the same as building problems. Id.", + "Appellants also correctly state the principle that \"(ilf the proposed modification or combination of the prior are would change the principle of operation of the invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. ~ Appeal Br. 10 (citing In re Ratti, 270 F.2d 810 (CCPA 1959)).", + "Appellants also correctly state the principle that, \"lilf the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. \" Id. (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)).", + "Appellants make no additional arguments for the patentability of claims 31-37 apart from those made with respect to claim 1, and simply argue that Ballew does not overcome the alleged deficiencies in the combination of Detwiler, Tipton, and Haunschild. Appeal Br. 14-15." + ], + "examiner_findings": [ + "The following rejections are on appeal: (i) claims 1, 3-11, 13-30, and 38-46 are rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over Detwiler (US 2006/0025971 A1, published Feb. 2, 2006) in view of Tipton (US 6,097,995, issued Aug. 1, 2000) and Haunschild (US 2003/0131011 A1, published July 10, 2003); and (ii) claims 31-37 are rejected under 35 U.S.C. & 103(a) as being unpatentable over Detwiler in view of Tipton, Haunschild, and Ballew (US 2008/0086508 A1, published Apr. 10, 2008).", + "The Examiner' s position is that it would have been obvious to modify the Detwiler system to include features disclosed in the Tipton and Haunschild references, and the resulting system would have rendered obvious Appellants' claimed method. Ans. 5-11." + ], + "ptab_opinion": [ + "We take claim 1 as representative, and claims 3-11, 13-30, and 38-46 stand or fall with claim 1.", + "As the arguments advanced in the Appeal Brief are directed specifically to whether the references are analogous to each other, the arguments do not persuade us that any of the references would be regarded as nonanalogous art. Appeal Br. 7-9.", + "This, however, goes to the first step of the test, i.e., whether the reference is within the same field of endeavor.", + "It says nothing about the possible pertinence of the teachings to the problem Appellants faced.", + "Appellants advance no reasoning as to why the teachings of Tipton would not be reasonably pertinent to Appellants' problem.", + "Furthermore, Appellants themselves acknowledge that the field of their endeavor includes \"building/industrial problems and applications for the purpose of ensuring regulatory compliance,\" in addition to other aspects involving site planning. Id. at 2-3.", + "Because the Examiner proposes modifying the prior art Detwiler reference in view of Tipton and Haunschild, the proper inquiry for the above two legal principles is whether the modifications proposed by the Examiner would change the principle of operation of Detwiler or render Detwiler unsatisfactory for its intended purpose.", + "As noted above, Appellants' arguments are instead directed to allegedly changing the principle of operation of the secondary references, i.e., Tipton and Haunschild, or rendering those references unsatisfactory for their intended purposes.", + "As such, Appellants' arguments fail to apprise us of Examiner error in concluding that it would have been obvious to modify Detwiler as proposed, in view of the Tipton and Haunschild references.", + "The rejection of claim 1 as being unpatentable over Detwiler in view of Tipton and Haunschild is thus sustained.", + "Claims 3-11, 13-30, and 38-46 fall with claim 1.", + "As noted above, we are not persuaded that the combination of Detwiler, Tipton, and Haunschild is deficient in rendering obvious the subject matter of the claims.", + "The rejection of claims 31-37 as being rendered unpatentable over Detwiler in view of Tipton, Haunschild, and Ballew is sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2013001809_DECISION.json b/opinion_split/2013001809_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..b1bd6c60373fd08e48dead54e20f170f186f0148 --- /dev/null +++ b/opinion_split/2013001809_DECISION.json @@ -0,0 +1,41 @@ +{ + "appellant_arguments": [ + "The Appellant challenges the Examiner's position on the ground that Chua, Lunt, and Idelman are non-analogous art to the claimed invention. Appeal Br. 19-22 and Reply Br. 4-7.", + "The Appellant argues that the present application is *directed towards providing a safe and effective manner for extracting a child from an emergency situation\" (Appeal Br. 19), while Chua, Lunt, and Idelman are \"merely directed towards a blanket/bunting that is configured to simply provide warmth and/or comfort for a baby (Appeal Br. 20).", + "As a result, the Appellant submits that \"the disclosures of Chua, Lunt, and Idelman are not reasonably pertinent to the carrier device disclosed in the above referenced application\" and that *an inventor would not have considered a baby wrap that is intended for warmth and comfort, as disclosed in Chua, Lunt, and Idelman, when inventing a protective carrier that can be secured around a child and prevents bodily harm from external contact while also providing a means for safely extracting the child from an emergency situation.\" Appeal Br. 22.", + "In the Reply Brief, the Appellant disagrees with the Examiner's statements regarding the field of endeavor and the particular problem with which the Appellant is concerned. Reply Br. 4-7.", + "With regard to the field of endeavor, the Appellant contends that the cited references are each directed to a blanket or similar covering for keeping an infant warm. Id. at 4.", + "In contrast, the Appellant's invention is directed to a child carrier for safely extracting a child from a dangerous situation and not toward a baby blanket or any type of covering. Id.", + "Thus, the Appellant submits that none of Chua, Lunt, and Idelman discloses the same field of endeavor as that of the Appellant. Id.", + "With reference to the particular problem being addressed by the Appellant, the Appellant argues that *someone with ordinary skill in the art focused on solving the problem of safely extracting children from a dangerous situation would not have considered references which only address such problems as providing warmth and/or comfort to an infant. \" Reply Br. 5.", + "Therefore, the Appellant asserts that the cited references are not reasonably pertinent to the problem which the Appellant addresses. Id.", + "The Appellant argues that \"Chua is made of fleece, cashmere, cotton, wool, and/or a weatherproof fabric which are each too porous to be *inflated adding air or gas\"\" and that \"Chua fails to define a chamber (let alone an\"" + ], + "examiner_findings": [ + "Taking claim 1 as representative, the Examiner takes the position that Chua discloses all the claim 1 limitations but \"does not disclose that the lower portion is selectively foldable with respect to the main section from an opened position to a wrapped position or a second fastener as claimed. \" Final Act. 3.", + "The Examiner relies on Lunt or Idelman for a teaching of these elements and asserts: It would have been obvious to one of ordinary skill in the art at the time of the invention, given Lunt or Idelman's disclosure of a baby blanket having a lower portion that is selectively foldable with respect to the main section from an open position to a wrapped position, to use that structure instead of the pouch lower portion of Chua, in order to make it easier to attach or remove the pouch, and/or as a mere substitution of one art known infant lower leg wrapping structure for another. Id.", + "In response to the Appellant's s argument, the Examiner asserts that *the references are all in the field of applicant's endeavor, which is child carriers, or are reasonably pertinent to the particular problem with which Appellant was concerned (e.g.[.] carrying a child and/or providing protection for a child).\" Ans. 3-4,", + "The Examiner further argues that: Even with the restrictive field of endeavor listed by Appellant (i.e.[.] providing a safe and effective manner for extracting a child from an emergency situation), all of these references still relate, as child carriers would clearly aid in extracting a child from an emergency situation as it would allow the person carrying the child to keep their hands free, and child coverings would serve to protect a child from injury while the child is being extracted from an emergency situation. Id. at 4.", + "The Examiner takes the position that \"[a]t least one of the main section and the flap section defines an inflatable chamber (inasmuch as it is capable of being inflated by adding air or gas to it). \" Final Act. 4." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 9 6(b) (2002).", + "SUMMARY OF DECISION We AFFIRM-IN-PART and enter New Grounds of Rejection pursuant to 37 C.F.R. $ 41.50(b).3 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal.", + "We rely on the Examiner's factual findings stated in the Answer.", + "Additional findings of fact may appear in the Analysis below.", + "We have carefully reviewed the present application, Chua, Lunt, and Idelman.", + "We do not find the Appellant's arguments persuasive.", + "Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.", + "With specific reference to the \"field of endeavor\" test: This test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed the invention.", + "Because Chua, Lunt, and Idelman each has essentially the same function and structure as the present invention, Chua, Lunt, and Idelman are in the same field of endeavor as the Appellant's invention.", + "Not only are Chua, Lunt, and Idelman in the same field of endeavor, but each of these references is reasonably pertinent to the particular problem with which the Appellant is involved.", + "In In re ICON Health and Fitness, Inc., the Court stated: \"A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.\"", + "In other words, **familiar items may have obvious uses beyond their primary purposes.\"", + "We therefore have concluded, for example, that an inventor considering a hinge and latch mcchanism for portable computers would naturally look to references employing other \"housings, hinges, latches, springs, etc., \" which in that case came from areas such as \"a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes.\"", + "Here, an inventor considering a child carrier for extracting a child from an emergency situation would naturally look to references disclosing apparatuses for securing a child, such as carriers, buntings, and swaddling blankets.", + "Whether removing a child from an emergency situation or swaddling a baby, the notion of safely securing a child remains the same.", + "In view of the foregoing, as well as the similarities in structure and function, Chua, Lunt, and Idelman are each reasonably pertinent to the particular problem with which the Appellant is involved.", + "We disagree with the Appellant that Chua, Lunt, and Idelman are non- analogous art to the claimed invention.", + "Accordingly, we find that the Appellant have not shown that the Examiner erred in rejecting claims 1, 5, 7, and 26-28 under 35 U.S.C. 8 103(a) as unpatentable over Chua and Lunt or Idelman." + ] +} \ No newline at end of file diff --git a/opinion_split/2013001893_DECISION.json b/opinion_split/2013001893_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..69b6be52b92001d9202bab0275a17d5b00cb6106 --- /dev/null +++ b/opinion_split/2013001893_DECISION.json @@ -0,0 +1,49 @@ +{ + "appellant_arguments": [ + "In particular, Appellants primarily argue that Anderson fails to describe a proxy.", + "Appellants do not lexicographically define a proxy, but proffer the ordinary meaning of something that acts on behalf of something else.", + "Appellants rely on their arguments in support of claim 1 for the remaining claims.", + "Additionally, Appellants do not argue that one of ordinary skill would not have accepted or understood the definition of a volume discount from the Dictionary as of the filing date.", + "Appellants do not argue that the application of volume discounts would fail to describe shipments of plural objects in these claims." + ], + "examiner_findings": [ + "The Examiner relies upon the following prior art:", + "Soga US 6,304,856 BI Oct. 16, 2001", + "Andersen WO 02/073546 A2 Sept. 19, 2002", + "Collin, Dictionary of Business (2006)", + "REJECTIONS\" Claims 1-16 stand rejected under 35 U.S.C. 8 102(e) as anticipated by Andersen.", + "Claims 17-20 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Andersen, Soga, and Dictionary of Business.", + "The Examiner has at least shown an image of that book with that copyright date and as such this constitutes substantial evidence that it was published as of that date." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE' George William Erhart, Valentine C. Matula, and David Joseph Skiba (Appellants) seek review under 35 U.S.C. S 134 of a final rejection of claims 1-20, the only claims pending in the application on appeal.", + "We have jurisdiction over the appeal pursuant to 35 U.S.C. 8 6(b).", + "The Appellants invented a mechanism for billing and payment in the presence of one or more portable objects, such as a cargo unit. Spec. I 1.", + "I Our decision will make reference to the Appellants' Appeal Brief (*Br., \" filed May 16, 2012) and the Examiner's Answer (\"Ans.,\" mailed August 17, 2012), and Final Rejection (\"Final Act.. mailed December 16, 2011).", + "An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added].", + "1. An apparatus, comprising: [1] a first sensor configured to detect whether a first responsive object that is configured to respond to a first payment request signal by providing a first account datum is within a vehicle; [2] a second sensor configured to determine a state of the vehicle; and [3] a proxy configured to send a response to the first payment request signal based at least in part upon detection of the first responsive object within the vehicle and the state of the vehicle, wherein the response includes the first account datum.", + "ISSUES The issues of anticipation turn primarily on the breadth of the term \"proxy.\"", + "The issues of obviousness turn primarily on whether volume discounts were known at the time of filing.", + "FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence.", + "Facts Related to Claim Construction 01.The disclosure contains no lexicographic definition of \"proxy.", + "Facts Related to the Prior Art Andersen 02.Andersen is directed to automatic billing of a person or an object such as cargo or a piece of luggage being transported where the travelling person or object has an individual wireless device, preferably Bluetooth, that can be wirelessly detected and that represents the person or the object. Andersen, Abstract.", + "03.Another Bluetooth device detects whether the representative Bluetooth device is within a vehicle. Andersen, 6:27-7:11.", + "04.A GPS device tracks the distance travelled by the representative Bluetooth device. Andersen, 7:23-31.", + "05. When the vehicle Bluetooth device detects the representative Bluetooth device, verification ensuring billing of the correct account is performed, and a message is sent to the mobile phone asking to confirm the billing of his account. Andersen, 7:2-11.", + "ANALYSIS Claims 1-16 rejected under 35 U.S.C. 5 102(e) as anticipated by Andersen", + "We adopt the Examiner's findings and analysis from Final Rejection 3-9 and Answer 10-12 and reach similar legal conclusions.", + "The limitation at issue is \"a proxy configured to send a response to the first payment request signal. \"", + "The proffered definition does not structurally limit a proxy.", + "In the context of the claim, the proxy sends a response to a payment request signal.", + "Thus, the proxy stands in the place of the party to whom the payment request signal is intended.", + "There is no issue that the phone, and more particularly the software within the phone is standing in place of the intended request party. See Answer 10-11.", + "Additionally, because the claim does not narrow the source or manner of propagation of the payment request signal, all nodes including both Bluetooth devices that act as intermediate nodes along the path from the original payment request signal to a billing site and back are sending a response to that payment request signal, as the signal coming into each node represents the payment request signal and causes a response to be sent to the next node.", + "Claims 17-20 rejected under 35 U.S.C. 5 103(a) as unpatentable over Andersen, Soga, and Dictionary of Business", + "We are not persuaded by the Appellants' argument that the copyright date on the Dictionary of Business is insufficient evidence as to date of publication.", + "The Examiner has therefore at least satisfied his evidence production burden to present a prima facie case as to the date of the reference.", + "The burden therefore shifts to Appellants to produce evidence that the date is incorrect.", + "Appellants have presented no evidence to contradict that date.", + "Volume discounts were well known back into the prior century.", + "Appellants rely on their arguments in support of claim 1 for the remainder of their arguments, which are equally unpersuasive here." + ] +} \ No newline at end of file diff --git a/opinion_split/2013001894_DECISION.json b/opinion_split/2013001894_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..16c509a7fb444723d7c17fe45f30c04204ea6c6f --- /dev/null +++ b/opinion_split/2013001894_DECISION.json @@ -0,0 +1,102 @@ +{ + "appellant_arguments": [ + "\"On\" Appellants question the Examiner's construction that the term *on.' as used in the phrase, *the photosensor array located on the substrate,\" \" in claim 1, encompasses an arrangement in which the photosensor array is a separate structure that is coupled to and located adjacent to the substrate. See App. Br. 7-10, 12; Ans. 2-3; Reply Br. 4-5.", + "Appellants also question the Examiner's construction that the term \"on,\" as used in this phrase, permits the photosensor array to be below the substrate and that it permits intervening structures between the photosensor array and the substrate. App. Br. 11-12; Ans. 3; Reply Br. 7.", + "Appellants respond by arguing that the Examiner's cited usage of \"on\" is not relevant because it involves the functional relationship between moving parts, rather than *circuit arrangements.\" Reply Br. 5.", + "As support for the phrase, *the photosensor array located on the substrate, in claim 1, Appellants direct us to paragraph 25 and Figure 2 of the Specification. App. Br. 5.", + "Appellants argue that, because claim I is directed to a detector, which comprises a substrate, the term **substrate* is limited to a substrate of a detector, as opposed to structures that are separate from a detector. App. Br. 9; Reply Br. 6.", + "Aside from the claim language, Appellants also cite Figure 2 of the Specification, contending that it supports their claim construction because it *illustrates a sectional view of a detector 64 which has an aperture 70 \u00b7 \u00b7 \u00b7 through which the motor shaft passes.\" App. Br. 9.", + "Appellants argue that \"Osborne does not disclose a detector comprising a substrate having an aperture through the substrate and a photosensor array located on the substrate.\" App. Br. 6.", + "Appellants contend that the limitations of Appellants' claim 1 are not met by Figure I of Osborne because: (1) detector 38 is not located on the planar member that the Examiner identifies as a substrate, App. Br. 7-8, and (2) the planar member identified by the Examiner does not form a substrate of the detector and does not have any circuitry components mounted on it, App. Br. 10.", + "Appellants argue that, in Osborne Figure 1, the components of read station 30 are shown adjacent to the planar member that supports bearing 26 and are not located on the planar member. App. Br. 7.", + "Appellants further argue that, in Osborne Figure 1, detector 38 is not on the planar member because it is located in a separate enclosure of read station 30. Id.", + "In addition, Appellants argue that, in Osborne Figure 1, detector 38 is below the height or elevation of the planar member and bearing 26. Id. at 8.", + "Similar to their arguments regarding Osborne, Appellants argue that \"Ellis does not disclose a detector comprising a substrate having an aperture through the substrate and a photosensor array located on the substrate.' \" App. Br. 10.", + "Appellants contend that the limitations of Appellants' claim 1 are not met by Figure 2 of Ellis because the detectors 50 are physically mounted on the microprocessor system 60 (or a separate substrate), not on the portion of the motor body 109 indicated by the Examiner. App. Br. 11-12.", + "In effect, Appellants are arguing that Ellis Figure 2 does not satisfy Appellants' claim 1 because there is an intervening structure (microprocessor system 60 in Ellis Figure 2) between the photosensor array (detectors 50 in Ellis Figure 2) and the substrate (the structure connecting to bearing 108 in Ellis Figure 2).", + "Appellants contest the Examiner's finding that body 22 shown in Figure 1 of Osborne is a \"package\" that satisfies the limitations of Appellants? claim 2. Compare Ans. 4 with Reply Br. 7-8.", + "Specifically, Appellants argue that the large opening at the bottom of body 22 is not **aligned to receive the rotary shaft,\" as recited in claim 2, because *there is no nexus between the shaft 41 and the broad opening at the bottom of body 22.\" Reply 8.", + "In challenging the Examiner's obviousness rejections, Appellants merely refer back to their arguments in support of patentability of claims 1 and 2, arguing that claims 4 and 5 are patentable for the same reasons. App. Br. 14." + ], + "examiner_findings": [ + "Claims 1-3 and 7 are rejected under 35 U.S.C. 8 102(b) as anticipated by Osborne.", + "Claims I and 6 are rejected under 35 U.S.C. 5 102(b) as anticipated by Ellis.", + "Claim 4 is rejected under 35 U.S.C. 6 103(a) as unpatentable over Osborne,", + "Claim 5 is rejected under 35 U.S.C. 8 103(a) as unpatentable over Osborne in view of Tobiason.", + "The Examiner asserts that \"interchangeability between *adjacent' and 'on' is reasonable and is well[-Jestablished\" based on Appellants' usage of \"on\" in the Specification. Ans. 3, citing Spec. I 23.", + "The Examiner finds that all elements of Appellants' claim I are disclosed by the optical encoder shown in Figure 1 of Osborne. Final Action 2.", + "The Examiner finds that the planar member that connects to disk alignment bearing 26 corresponds to the \"substrate\" of Appellants' claim I and that detector 38 corresponds to the claimed \"photosensor array.\" \" Final Action 2; see also App. Br. 6 (quoting Examiner's findings).", + "The Examiner finds that all elements of Appellants' claim I are disclosed by Figure 2 of Ellis. Final Action 3.", + "The Examiner finds that the structure connecting to bearing 108 corresponds to the \"substrate\" of Appellants\" claim 1 and that detectors 50 correspond to the claimed \"photosensor array.\" Final Action 3; see also App. Br. 11 (paraphrasing Examiner's findings)." + ], + "ptab_opinion": [ + "As a first step toward resolving Appellants' appeal of the anticipation rejections, we address the following claim construction issues.", + "Giving the term \"on\" its broadest reasonable construction consistent with the specification, In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007), we answer all of these questions in the affirmative.", + "Appellants do not dispute that, at least in some contexts, the word \"on\" has a meaning equivalent to the term \"adjacent.\" Ans. 3; Reply Br. 4- 5.", + "That understanding is consistent with an on-line dictionary, which defines \"on\" as follows: *used as a function word to indicate position in contact with and supported by the top surface of[.] . \u00b7 , position in or in contact with an outer surface[,] \u25a0 \u00b7 position in close proximity with[,] \u00b7 I [or] the location of something.\" \" .com/dictionary/on, accessed October 1, 2014.", + "Appellants do not contend that anything in the claim language requires a narrower meaning for the term \"on.\"", + "We find that the meanings of \"on\" encompassed by above-quoted dictionary definition are consistent with the Examiner's construction of the term in claim 1.", + "Appellants have not directed us to anything in the Specification that requires that the term \"on\" be construed more narrowly than its ordinary meaning.", + "We agree with the Examiner that the Specification supports a construction of*on\" consistent with its ordinary meaning.", + "Paragraph 25 states that \"detector 64 includes a substrate 66 and a photosensor array 68, but says nothing about the spatial or functional relationship between these structures. Spec. I 25.", + "Figure 2 *depicts a schematic block diagram of one embodiment of a transmissive optical encoding system \u25a0 \u00b7\u00b7 \" Id. at 1 10.", + "Although Figure 2 shows a block representing photosensor array 68 directly on top of a block representing substrate 66, the Specification cautions that \"the invention is not to be limited to the specific forms or arrangements of parts . , \u00b7 described and illustrated. Id. at I 62.", + "In addition to the portions of the Specification cited by the parties, the following passage sheds light on the meaning of as used in the phrase \"the photosensor array located on the substrate*): \u00b7 \u00b7 , the photosensor array 68 is mounted on the substrate 66.", + "As used herein, the term mounting may refer to joining two structures, but is not necessary [sic] limited to joining or coupling separate structures together.", + "Mounting also may include fabricating one structure from another structure. Spec. I 55.", + "In this passage, the Specification expressly defines the term \"mounting,\" \" but the express definition is also relevant to the term *on,* \" which also appears in the phrase whose meaning is being explained.", + "This passage supports a construction of \"on\" that includes the relationship between separate structures that are joined or coupled together, without limitation as to how or where the structures are joined or coupled.", + "Based on the entirety of the intrinsic and extrinsic evidence, we conclude that the term *on, as used in the phrase \"the photosensor array located on the substrate, encompasses an arrangement in which the photosensor array is a separate structure that is coupled to and located adjacent to the substrate, regardless of whether the photosensor array is above or below the substrate, and does not require the absence of intervening structures between the photosensor array and the substrate.", + "Under a broadest reasonable construction consistent with the specification, In re ICON Health & Fitness, Inc., 496 F.3d at 1379, we do not agree with Appellants that a substrate is limited to a substrate of a detector or a circuit substrate.", + "We are not persuaded by Appellants\" argument for two separate and independent reasons.", + "First, because the term \"detector\" appears only in the preamble of claim 1, and the body of the claim recites a complete invention with no reference back to the preamble, the meaning of \"substrate\" in the body of the claim is not limited by the term \"detector\" in the preamble.", + "As our reviewing court has explained: *If the body of the claim sets out the complete invention, and the preamble is not necessary to give *life, meaning, and vitality' to the claim, *then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim' limitation. \" Bristol-Myers Squibb Co. V. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001) (citing and quoting Pitney Bowes Inc. V, Hewlett-Packard Co., 182 F.3d 1298,1305 (Fed. Cir. 1999).); see also In re Dawe, 53 F.2d 543, 544 (CCPA 1931) (holding that preamble was **introductory only, and should not be considered as limitations of the subject-matter of the issue**) (quoting Braren V. Horner, 47 F.2d 358, 364, (CCPA 1931).)", + "In Dawe, the court held that the preamble, \"[a] driving wheel for tractors and similar agricultural implements,\" did not limit the claimed subject matter. Dawe, 53 F.2d at 543.", + "The court ignored the preamble and considered only the structural elements following it. Dawe, 53 F.2d at 545 (\"Claim 7 is very broad and, with the introductory phrase discarded, each of its three elements is found disclosed in Stuart \u00b7 \u00b7 .\".", + "Here, the body of claim 1 recites a complete invention and makes no reference to a detector.", + "The claim body describes a substrate and a photosensor array.", + "Neither of these claim elements refers to a detector.", + "Under a broadest reasonable construction, the term \"detector\" in the preamble of claim 1 does not limit the meaning of \"substrate\" in the body of the claim.", + "Second, Appellants' argument is inconsistent with the language of claim 1, which imposes no strict functional or physical boundary between structures of the detector and structures that work with, but are separate from, the detector.", + "In addition to a substrate and a photosensor array, the body of claim I also recites \"a rotary shaft of a motor,' \" \"an emitter,\" \" and \"a coding element coupled to the rotary shaft.\" App. Br. 17 (Claims Appendix).", + "Appellants do not contend that any of these claim elements is part ofa a detector.", + "Even if the term \"detector\" in the preamble were considered a structural element of the claim, Appellants have provided no persuasive argument for how a substrate of a detector differs from the substrates of Osborne and Ellis.", + "As noted above, however, Figure 2 merely illustrates one embodiment of Appellants' claimed invention, and claim 1 is not limited to the particular configuration shown in Figure 2. Spec. I 62.", + "Howmedica Osteonics Corp. V. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (\"the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language\").", + "We also disagree with Appellants\" contention that the term \"substrate\" is limited to a circuit substrate on which other circuit components are mounted or coupled. App. Br. 9; Reply Br. 6.", + "Appellants point to no intrinsic or extrinsic evidence to support their proposed construction.", + "Nothing in the language of claim 1 limits the term \"substrate\" to a circuit substrate.", + "Although integrated circuits are mentioned in the Specification, they are described as exemplary embodiments, not a requirement of Appellants' invention. Spec. I 25 (*Exemplary embodiments of the detector 64 include integrated circuit (IC) dice and IC packages.\"). \").", + "Accordingly, under a broadest reasonable construction, the term **substrate* in claim I is not limited to a circuit substrate on which other circuit components are mounted or coupled. Howmedica, 540 F.3d at 1345.", + "Having addressed the parties' contentions regarding claim construction, we now turn to the anticipation rejections.", + "Appellants argue claims 1-3 and 7 as a group, relying on limitations in claims 1 and 2 and presenting no argument for separate patentability of the dependent claims 3 or 7. App. Br. 5-10, 13.", + "Therefore, claims 1. 3 and 7 stand or fall together, and we need not address claims 3 or 7 separately from claims I and 2. 37 C.F.R. 8 41.37(c)(iv).", + "We address each of these arguments in turn.", + "First, based on a broadest reasonable construction for the term \"on\" in Appellants\" claim 1, we are not persuaded by Appellants' argument that detector 38 is not located \"on\" the planar member in Figure 1 of Osborne.", + "We agree with the Examiner that interpreting element 38 as being \"on\" a substrate (the planar member) is a reasonable interpretation that is consistent with Appellants' Specification. Ans. 3.", + "Under a broadest reasonable construction for the term *on,* \" however, Appellants' claim 1 encompasses the arrangement shown in Osborne Figure 1 in which the photosensor array (detector 38) is coupled to and located adjacent to the substrate (planar member connected to bearing 26).", + "Under a broadest reasonable construction, however, Appellants* claim 1 encompasses an arrangement in which the photosensor array is a separate structure from the substrate.", + "Under a broadest reasonable construction, however, there is no requirement in Appellants' claim 1 that the photosensor array be above the substrate.", + "As further support for the Examiner's finding, we note that the configuration shown in Osborne Figure I and the arrangement described in Appellants\" claim I have a common objective.", + "In both cases, the detector is maintained in alignment with the code wheel by aligning both the detector and the code wheel with the rotary shaft.", + "In Osborne, this objective is described in connection with Figure 6a, which shows essentially the same configuration as Figure 1. Osborne, 7:39-42 (\"The advantage of the pre- assembled unit 20 as shown in FIG. 6a is that the alignment of the optics with respect to disk 24 is maintained by a bearing 26 internal to the encoder 20.\").", + "Similarly, Appellants' Specification states that the optical encoder avoids misalignment of the detector with the code wheel, Spec. \" 4-5, and that this is accomplished by an aperture in the detector, which facilitates alignment of the photosensor array of the detector with the code wheel, id. at I 29.", + "This common objective supports the Examiner's finding that, in Osborne Figure 1, detector 38 is located \"on\" the planar member that connects to bearing 26 in the same sense that the photosensor array is located \"on\" the substrate in Appellants\" claim 1.", + "In both cases, the arrangement ensures that the detector is maintained in alignment with the coding wheel.", + "Based on a broadest reasonable construction for the term **substrate\" in Appellants' claim 1. we are not persuaded by Appellants' arguments that the planar member in Osborne Figure I is not a substrate. App. Br. 10.", + "As discussed above, under a broadest reasonable construction, the term \"detector\" in the preamble of Appellants\" claim I does not narrow the ordinary meaning of the term \"substrate\" in the body of the claim, and the term \"substrate\" is not limited to a circuit substrate on which other circuit components are mounted or coupled.", + "Based on this construction, we agree with the Examiner that the planar member that is connected to bearing 26 in Osborne Figure I corresponds to a \"substrate\" as recited in Appellants' claim 1. Final Action 2; Ans. 3.", + "Appellants argue claims I and 6 as a group, relying on limitations in independent claim 1 and presenting no argument for separate patentability of claim 6. App. Br. 5, 10-14.", + "Therefore, claims 1 and 6 stand or fall together, and we need not address claim 6 separately from claim 1. 37 C.F.R. 6 41.37(c)(iv).", + "For the reasons discussed above, we have determined that, under a broadest reasonable construction, the term *on, \" as used in the phrase *the photosensor array located on the substrate,\" encompasses an arrangement in which the photosensor array is a separate structure that is coupled to and located adjacent to the substrate and does not require the absence of intervening structures between the photosensor array and the substrate.", + "Based on a broadest reasonable construction, we agree with the Examiner's findings and are not persuaded by Appellants' argument regarding Figure 2 of Ellis.", + "We disagree.", + "Appellants do not contest that the large opening at the bottom of body 22 is *an aperture through the package,\" as recited in Appellants' claim 2.", + "Instead, Appellants attempt to distinguish the opening in body 22 from the claimed \"aperture\" based on the size of the opening.", + "Appellants' argument is inconsistent with the Specification, which teaches that \"[t]he size (i.e. diameter) of the aperture may vary depending on the implementation for which the detector 64 is designed.\" Spec. I $29.", + "The Specification further teaches that \"the aperture may be substantially larger than the shaft 16 of the motor 18 to facilitate easy assembly of the transmissive optical encoding system 50.\" Id.", + "Based on these disclosures, we conclude that claim 2 imposes no requirement regarding the size of the aperture.", + "Accordingly, we are not persuaded by Appellants' argument and agree with the Examiner's finding that, in Figure I of Osborne, the apertures are aligned to receive rotary shaft 41. Ans. 4.", + "Appellants thereby have waived any argument for separate patentability of claims 4 and 5." + ] +} \ No newline at end of file diff --git a/opinion_split/2013002303_DECISION.json b/opinion_split/2013002303_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..256030b564325b10e10534ec8b49a2758ec8b2ff --- /dev/null +++ b/opinion_split/2013002303_DECISION.json @@ -0,0 +1,113 @@ +{ + "appellant_arguments": [ + "Appellant contends the Board \"has already determined in the parent case 10/737,029 \u00b7 that neither Pope nor Graham teaches the narrower construction of *keystroke indicator,' as now recited in claim 25, in which *keystroke indicator,' indicates which key on a remote control device that a user has selected.\" App. Br. 7; see also id. at 9 (*keystroke indicators that indicate which keys\"), 10-12 (*a keystroke indicator that indicates which key\").", + "Appellant also argues the narrow construction of *keystroke indicator,\" recited in claim 25, precludes the appliance control codes of Pope. Id. at 9-10; Reply Br. 5-6.", + "\" Related to the above arguments, Appellant contends Pope's base unit receives a control code indicating a function instead of receiving a keystroke indicator that indicates which key a user has selected on a remote control device. App. Br. 10; Reply Br. 5-6.", + "Specifically, Appellant asserts Pope discloses the use of the handset to scroll through a menu of functions on a display, and that when transmit key XMIT on the handset is pressed, the control code for the selected function is transmitted to the base unit. App. Br. 10.", + "Appellant argues that it is not true that each control code received by the base unit indicates the pressed key based on the desired function that the control code represents because various keys or combinations of keys can be assigned to a function, and the base unit could not know the particular keys that were selected. Id. at 10-11.", + "Appellant argues the keystroke indicator cannot be synonymous with the key code. App. Br. 9; see Reply Br. 5.", + "Appellant contends it is improper to construe Pope's appliance control code to teach both a keystroke indicator and a key code, and would render claim 25 internally inconsistent. Id. at 11- 12.", + "Appellant further argues that the Examiner's position that the keystroke indicator is the RF signal transmitted from the handset, and the generated key code is the IR code transmitted from the base unit to an appliance (see Ans. 6) is erroneous because claim 25 does not require a signal. Reply Br. 10.", + "Appellant asserts: (1) neither the keystroke indicator nor the key code is a signal, and (2) the keystroke indicator is distinct from a keystroke indicator signal that contains the keystroke indicator. Id.", + "Appellant further contends Pope does not teach generating a key code within the base unit (i.e., a key code generator device) because the base unit receives the appliance control code from the handset and transmits or transfers the appliance control code to an appliance. App. Br. 12-13 (quoting Pope 1:31-36, 4:49-51).", + "Appellant argues: (1) Pope cannot teach generating a key code by translating the same key code that it has already received; and (2) converting received control codes into an infrared format is not the same as generating the control codes. Id. at 13-14 (citing Pope 1:31-36, 2:48-52, 2:63-65, 4:49-51).", + "Appellant argues Pope's appliance control codes transmitted from handset to base unit are stored in memory of handset. App. Br. 15 (citing Pope 2:48-52, 4:27-28).", + "Appellant argues Pope's infrared control code sent to an appliance does not teach the recited key code because the infrared control code is not associated with the particular key that was pressed, but is associated with a desired appliance control function. Id.", + "Appellant further asserts a key code associates a function of an electronic consumer device with a key or keys of a remote control device. Reply Br. 11.", + "Appellant asserts this association is not present on Pope's base unit, but is present on Pope's handset as the appliance control codes stored in the handset memory. Id. (citing Pope 5:16-17, 31-33).", + "Appellant argues Pope's appliance control code is understood by the appliance when it is formatted. App. Br. 16, 24-25 (both citing Pope 4:49- 51).", + "Appellant argues the Examiner does not present a prima facie case of obviousness because the Examiner \"does not contend that any of Pope, Graham or Grube teaches transmitting an RF transmission to an electronic consumer device and then transmitting an IR transmission to the electronic device after the device is not capable of receiving the RF transmission.\" \", App. Br. 22; see Reply Br. 14-15.", + "Specifically, Appellant contends \"Grube does not transmit an RF transmission to an electronic device and then transmit an IR transmission to the electronic device ifthe device was not capable of receiving the RF transmission.\" App. Br. 23 (emphasis added); see also Reply Br. 15 (\"Grube does not determine whether a device was capable of receiving one type of transmission. \").", + "In other words, Appellant contends \"wherein the electronic consumer device is not capable of receiving the radio frequency transmission\" recited in claim 41, requires a determination step that is performed as part of step (d) of claims 39 and 40.", + "Appellant argues the Examiner does not indicate where Grube teaches determining that a key code signal using a modulation technique cannot be used to communicate with a device. Reply Br. 15.", + "Appellant contends Grube makes no determination that any modulation technique cannot be used or that a device is not capable of receiving a transmission. Id.", + "Appellant contends Pope's teaching of an infrared signal transmitted as a train of pulses indicating high and low bits does not teach that codeset timing information is used to describe digital ones and zeroes. Reply Br. 13.", + "For example, Appellant's Specification discloses the use of 19 bursts of a 38.5 kHz intermediary signal having an \"on-time\" of ten microseconds and an *off time\" of sixteen microseconds to generate a 490 microsecond mark length representing a digital zero, and generating 151 bursts of the 38.5 kHz signal to generate a 3940 microsecond mark length representing a digital one. Spec. I 35, Fig. 6A.", + "Appellant argues Teskey does not make clear that a codeset with timing information describing digital ones and zeroes is necessarily present in Teskey because the signal timing information of Teskey does not necessarily describe digital ones and zeroes. Id. at 13-14." + ], + "examiner_findings": [ + "Claims 25, 27-33, and 48 stand rejected under 35 U.S.C. 9 103(a) as unpatentable over Pope (US 5,963,624; Oct. 5, 1999) and Graham (US 4,005,428; Jan. 25, 1977).", + "Claims 26 and 35 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Pope, Graham, and Autry (US 5,724,106; Mar. 3, 1998).", + "Claim 34 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Pope, Graham, and Teskey (US 6,747,568 BI; June 8, 2004).", + "Claims 36, 38-41, 43-45, 47, and 49 stand rejected under 35 U.S.C. , 103(a) as unpatentable over Pope, Grube (US 5,201,067; Apr. 6, 1993), and Graham.", + "Claim 37 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Pope, Grube, Graham, and Chiloyan (US 6,008,735; Dec. 28, 1999).", + "Claim 46 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Pope, Grube, Graham, and Autry.", + "The Examiner finds Pope's description of transmitting appliance codes from the handset (i.e., remote control) to the base unit (i.e., key code generator) teaches *receiving a keystroke indicator from a remote control device, wherein the keystroke indicator indicates a key on the remote control device that a user has selected,' \" as recited in independent claim 25 (\"the keystroke indicator limitation\"). Final Act. 7.", + "The Examiner further explains the signal transmitted from the handset to the base unit indicates the pressed key based on the desired control function. Final Act. 2 (citing Pope 2:57-3:9); Ans. 3 (citing Pope 2:57-3:9), Ans. 4 (Pope 3:35-40).", + "The Examiner finds Pope's description of the base unit processor retrieving an infrared control code from the base unit memory based on the appliance control code, and transmitting the infrared control code from the base unit to an appliance teaches *generating a key code within a key code generator device using the keystroke indicator \u00b7 \u00b7 \u00b7 and transmitting the key code signal from the key code generator to an electronic consumer device,' as recited in claim 25. Final Act. 7; Ans. 4 (both citing Pope 3:35-50).", + "The Examiner further explains that Pope's appliance control code teaches a keystroke indicator, and Pope's infrared (IR) control code teaches the key code. Final Act. 3, 7; Ans. 6.", + "The Examiner finds Pope's infrared control code generated by the base unit is not stored in the handset (i.e., remote control) because the base unit is required to translate the received code from the handset (i.e., remote control) into code for controlling the appliance. Final Act. 3 (citing Pope 3:35-36, 5:6-10); see Ans. 6.", + "The Examiner further explains the claimed codeset is taught by the infrared codes stored in the memory of the base unit. Ans. 6 (citing Pope 5:3-10).", + "As explained above addressing claim 25, the Examiner relies on Pope's appliance control codes received from the handset for teaching the keystroke indicator limitation, and Pope's infrared control codes from base unit memory for teaching the generated key code.", + "The Examiner relies on the combined teachings of Pope, Grube, and Graham to teach or suggest all of the limitations of claim 41. Final Act. 4 (citing Grube 4:9-24), 10-11 (citing Pope 3:35-40; Grube 4:9-24; Graham 2:7-21); Ans. 7-8 (citing Pope 3:35-40, 5:35-40, Grube 4:9-24, 6:1-11).", + "The Examiner relies on the combined teachings of Pope, Grube, and Graham to teach or suggest all of the limitations of claim 44. Final Act. 10-11 (citing Pope 3:35-40; Grube 4:9-24, Graham 2:7-21).", + "Specifically, the Examiner relies on Grube for teaching the limitation of claim 44 based on Grube's teaching of selecting the modulation scheme of the code signal according to the requirement of the remote control signal. Ans. 8 (citing Grube 4:9-24, 6:1-11).", + "The Examiner finds \"Pope teaches the infrared signal (i.e., key code)] transmitted from the base unit (code generator) is a pulse train and the train of pulses is 1.6 microsecond indicating a high (ones) or low bit (zeroes).\" Ans. 7 (citing Pope 3:40-47).", + "The Examiner finds that Teskey teaches \"the transmitted IR codes provides the necessary timing information each bits of the infrared code.\" Id. (citing Teskey 3:60-4:8)." + ], + "ptab_opinion": [ + "The disclosed invention is related to a remote control system and associated methods that includes a key code generator that receives a keystroke from a remote control device.", + "The key code generator generates a key code and transmits the key code. Spec. \" 2, 7-9.", + "Illustrative independent claims 25 and 39, reproduced from the Claim Appendix, read as follows: 25. A method comprising: (a) receiving a keystroke indicator from a remote control device, wherein the keystroke indicator indicates a key on the remote control device that a user has selected; (b) generating a key code within a key code generator device using the keystroke indicator; (c) formatting the key code for transmission and thereby generating a key code signal; and (d) transmitting the key code signal from the key code generator device to an electronic consumer device.", + "39. A method comprising: (a) receiving a keystroke indicator from a remote control device, wherein the keystroke indicator indicates a key on the remote control device that a user has selected; (b) generating a key code within a key code generator device using the keystroke indicator; (c) formatting the key code for transmission and thereby generating a key code signal; (d) transmitting the key code signal from the key code generator device to an electronic consumer device using a first modulation technique; and (e) transmitting the key code signal from the key code generator device to the electronic consumer device using a second modulation technique.", + "We have reviewed the Examiner's rejections in light of Appellant's arguments in the Appeal Brief, and the Examiner's Answer in light of the arguments in the Reply Brief.", + "We determine that Appellant has not shown error in the Examiner's rejections of claims 25-33, 35-41, 43, and 45-49, but has shown error in the rejections of claims 34 and 44, We highlight and address specific findings and arguments for emphasis below.", + "Appellant misapprehends our earlier Decision. See Ex parte Mui, Appeal 2008-4830, slip op. at 16 (BPAI Nov. 17, 2008).", + "Our earlier Decision rejected the narrow construction of \"keystroke indicator signal\" urged by Appellant. Id.", + "Contrary to Appellant's assertions, our earlier Decision did not endorse or adopt a specific construction for the term **keystroke indicator,\" or **keystroke indicator signal.\" See id.", + "Further, Appellant's arguments are not commensurate in scope with the claim language because claim 25 does not require an indication of *which key\" that was selected by a user.", + "For example, we disagree with Appellant's arguments on page 11 of the Appeal Brief that claim 25 requires that when a user presses the \"9\" key, for example, that the keystroke indicator signal contains a \"9\" in the signal.", + "All that is required by claim 25 is that the keystroke indicator indicates a key (i.e., one or more keys) on the remote control device that a user has selected.", + "We agree with the Examiner that the keystroke indicator, when interpreted in light of the specification, need only contain, for example, a function associated with a key or a code associated with a key in order to meet the claim language. Ans. 5.", + "For these reasons, we are not persuaded that claim 25 precludes Pope's appliance control code because claim 25 does not exclude explicitly an appliance control code from the scope of *keystroke indicator. \"", + "We are not persuaded by Appellant's arguments regarding Pope's appliance control code indicating a function because claim 25 does not exclude explicitly the keystroke indicator from indicating a selected function as explained above.", + "We agree with the Examiner's broad but reasonable construction of \"keystroke indicator\" as including an indicator of a desired function, based on the Specification disclosure of the keystroke indicator signal corresponding to a function. Ans. 5 (citing Spec. I 7); Spec. 11 23, 24,", + "The Examiner's s construction is reasonable in light of the Specification which discloses **the keystroke indicator signal can be an indication of a pressed key where there is a one-to-one relationship between the key and a function to be performed.\" Spec. 1 54.", + "As pointed out by Appellant, Pope discloses an appliance control code for a selected function which is transmitted to the base unit when transmit key XMIT on the handset is pressed (see App. Br. 10, Pope 2:57-3:4).", + "Pope further discloses \"there can be dedicated keys for some or all of the appliance control functions,\" and \"individual functions can be mapped with the associated buttons of the keypad.\" Pope 2:57-60, 3:12-19.", + "We agree the keystroke indicator limitation is met by Pope's teaching of receiving an appliance control code from the handset, because the receipt of the appliance control code indicates a key (i.e., one or more keys, the XMIT key) on the remote control device that a user has selected.", + "For these same reasons, we are not persuaded that Pope does not teach the keystroke indicator limitation *because the fact that transmit key XMIT was selected is not conveyed to the base unit O.\" See App. Br. 10; see also Reply Br. 6 (*the only information conveyed in the signal \u00b7 \u00b7 \u00b7 is that the indicated function has been selected\").", + "We are not persuaded by Appellant's arguments because the Examiner does not rely on Pope's appliance control code to teach both a keystroke indicator and a key code.", + "Appellant also does not meaningfully explain, or direct us to a Specification disclosure explaining, how a keystroke indicator is distinct from a keystroke indicator signal.", + "The term \"key stroke indicator\" is broader than and includes within its scope the narrower term \"keystroke indicator signal.\"", + "In other words, the term keystroke indicator encompasses a keystroke indicator signal and other means for conveying the keystroke indicator.", + "We further observe that the Specification utilizes repeatedly the term \"keystroke indicator signal.\" \"", + "Appellant's arguments do not address sufficiently the teachings of Pope relied upon by the Examiner.", + "We agree with and adopt the Examiner's finding that Pope teaches the base unit using the received appliance control code to retrieve the infrared code from the base unit memory. Final Act. 3 (citing Pope 5:6-10), 7; Ans. 6 (citing Pope 5:3-10); see also Pope 6:14-18, claim 5 (describing the received appliance control code as a pointer to the infrared control codes stored in the memory of the base unit).", + "For all of the foregoing reasons, we are not persuaded of error in the rejection of claim 25 as unpatentable over Pope and Graham.", + "Appellant presents arguments under separate headings addressing independent claims 36 and 39, which are substantially identical to the arguments presented addressing independent claim 25. Compare App. Br. 19-22, with App. Br. 7-14.", + "Therefore, for the same reasons provided with respect to claim 25, we are not persuaded of error in the rejection of independent claims 36 and 39 as unpatentable over Pope, Graham, and Grube.", + "Claims 27-32 and 35 depend from claim 25, claims 37 and 38 depend from claim 36, and claims 40, 43, and 45-47 depend from claim 39.", + "Appellant does not present separate substantive arguments addressing the limitations of dependent claims 27-32, 35, 37, 38, 40, 43, and 45-47. See App. Br. 14-17, 22-26.", + "Accordingly, for the same reasons provided with respect to claims 25, 36 and 39, we are not persuaded of error in the rejections of: (1) claims 27-32 as unpatentable over Pope and Graham; (2) claims 26 and 35 as unpatentable over Pope, Graham, and Autry; (3) claims 38, 40, 43, 45, and 47 as unpatentable over Pope, Grube, and Graham (4) claim 37 as unpatentable over Pope, Grube, Graham, and Chiloyan; and (5) claim 46 as unpatentable over Pope, Grube, Graham, and Autry.", + "Claim 33 depends from claim 25 and recites \"the key code generated in (b) is part of a codeset, and wherein the codeset is not stored on the remote control device.\" \"", + "We are not persuaded by Appellant' s arguments because they are not commensurate in scope with the claim limitations.", + "Claim 33 (and claim 25 from which it depends) does not recite or require the key code to associate a function of an electronic consumer device with a key or keys of a remote control.", + "We agree with and adopt the Examiner's finding that Pope teaches generating the infrared key code from a codeset stored in the base unit memory, and not stored on the handset.", + "We further observe that Pope teaches the received appliance control code is a pointer to the infrared control codes stored in the memory of the base unit. Pope 6:14-18, claim 5.", + "For these reasons, in addition to those addressing claim 25 above, we are not persuaded of error in the rejection of claim 33 as unpatentable over Pope and Graham.", + "Claim 48 depends from claim 25, and claim 49 depends from independent claim 39.", + "Claims 48 and 49 each recite \"the keystroke indicator is not a code that is understood by the electronic consumer device.\"", + "We agree with and adopt the Examiner's finding that Pope teaches the appliance control code (i.e., keystroke indicator) received from the handset is converted to an infrared signal format and transmitted to the appliance, and therefore, the appliance control code is not understood by the appliance because it is not in a format acceptable by the appliance. Final Act. 8, 12 (both citing Pope 3:35-40).", + "We are not persuaded by Appellant's arguments.", + "We agree with and adopt the Examiner's finding that Pope's appliance control code received by the handset is not in a format acceptable by the appliance.", + "Appellant does not direct us to evidence sufficient to demonstrate that Pope's appliance control codes received from handset (i.e., remote control) is a code that is understood by Pope's appliances (i.e., TV, Cable, CD, etc.).", + "For these reasons, in addition to those addressing claims 25 and 39 above, we are not persuaded of error in the rejections of claim 48 as unpatentable over Pope and Graham, and claim 49 as unpatentable over Pope, Grube, and Graham.", + "Claim 41 depends from claim 40, which depends from claim 39.", + "Intervening claim 40 recites \"the key code signal is transmitted in (d) in the form of a radio frequency transmission, and wherein the key code signal is transmitted in (e) is in the form of an infrared frequency transmission. \"", + "Claim 41 recites *the electronic consumer device is not capable of receiving the radio frequency transmission, and wherein the transmitting in (e) is performed after the transmitting in (d). \"", + "We agree with the Examiner that claim 41 does not recite or require transmitting an infrared frequency transmission after there is a determination that the electronic consumer device is not capable of receiving an RF transmission. Final Act. 4.", + "When considering the limitations of claims 39 through 41 together, there is no requirement that transmitting the IR signal must occur after there is a determination that a consumer device is not capable of receiving the RF transmission.", + "Appellant does not direct us to language in claims 39 through 41 connecting the subsequent transmission of the infrared key code signal to any determination that the electronic consumer device is not capable of receiving a first radio frequency key code transmission.", + "For these reasons, in addition to the reasons addressing claims 25, 36 and 39, we are not persuaded of error in the rejection of claim 41 as unpatentable over Pope, Grube, and Graham.", + "Claim 44 depends from claim 39 and recites \"before the transmitting in (e): (f) determining that the key code signal using the first modulation technique cannot be used to communicate with the electronic consumer device.\"", + "We are persuaded of error in the rejection of claim 44.", + "The Examiner does not provide sufficient explanation, or direct us to sufficient supporting evidence, demonstrating that Grube's selection of the appropriate transmitter in accordance with the requirement of the remote control signal requested (see Grube 6: 6:1-10) teaches or suggests determining that the key code signal using the first modulation technique cannot be used to communicate with the electronic consumer device.", + "For these reasons, we cannot sustain the rejection of claim 44 as unpatentable over Pope, Grube, and Graham.", + "Claim 34 depends from claim 25 and recites: \"the key code generated in (b) is part of a codeset, and wherein the codeset comprises timing information that describes a digital one and a digital zero.\"", + "We are persuaded of error in the rejection of claim 34.", + "The Examiner does not provide sufficient explanation, or direct us to sufficient supporting evidence, demonstrating that Pope's infrared code comprising a train of pulses with each pulse being 1.6 microseconds long, and indicating a one or a zero (Pope 3:45-47), combined with Teskey's remote control signal format characteristics including overall signal timing information (Teskey 3:60- 4:8), teaches or suggests a codeset comprising timing information that describes a digital one and a digital zero.", + "Specifically, it is not clear how Pope's train of 1.6 microsecond pulses, with each pulse indicating a high (T) or low CO\") bit, as modified in view of Teskey's general teaching of signal timing information, teaches or suggests that it is the timing information of the codeset pulses or signals that describes digital ones and digital zeroes.", + "For these reasons, we cannot sustain the rejection of claim 34 as unpatentable over Pope, Graham, and Teskey." + ] +} \ No newline at end of file diff --git a/opinion_split/2013003311_DECISION.json b/opinion_split/2013003311_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1b6165c4b52ec3b000fbb4a4c3d3ea8ed34d58ed --- /dev/null +++ b/opinion_split/2013003311_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "Appellants argue that Mishra teaches, in Fig. 6B, that its GaAs layer is a low temperature grown (LTG) layer which allows excess As to migrate into it, and focus on the failure of Mishra to explicitly teach that its GaAs layer in Fig. 7 was formed at a temperature of between 550-C and 680-C (App. Br. 4), and that there is no motivation to modify Mishra to use a GaAs layer formed at high temperature (id. at 5, 6; also Reply Br. 4, 5)." + ], + "examiner_findings": [ + "As noted by the Examiner, Mishra's discussion ofLTG GaAs is in reference to the embodiment of Fig. 6B (Ans. 17), which allows *excess As [to] migrate[] into the LTG GaAs layer\" (Mishra col. 9, 1. 19).", + "In contrast, the Examiner is relying upon Mishra's Fig. 7, which relies upon the plasma hydrogenation process of Fig. 6D to remove excess GaAs ions (Ans. 17; Mishra col. 10, II. 8-1 6; col. 9. II. 36-46).", + "Accordingly, there is no need to grow the GaAs cap layers 262, 264 of Fig. 7 at low temperatures (id.).", + "Notably, as pointed out by the Examiner, Rao exemplifies that the GaAs cap layer exemplified in Rao's Fig. 1b was grown at a \"conventional\" high temperature of 600-C (Rao 1258, 1259; Ans. 11, 16)." + ], + "ptab_opinion": [ + "The sole independent claim 9 is illustrative of the claimed subject matter on appeal (emphasis added): 9. A gallium arsenide (GaAs)-on-insulator structure, comprising: a Ge (100) 6 offcut substrate; a layer of GaAs formed at a temperature of between 550 and 680 a substantially completely oxidized layer of a compound of formula Al,Gas...As between the Ge (100) 60 offcut substrate and the layer of GaAs; and an abrupt interfacial profile between said substantially completely oxidized layer of Al, Al,GaixAs and the layer of GaAs; wherein the substantially completely oxidized layer of AlsGal.,As is both an electrical insulator as well as a diffusion barrier between the Ge (100) 6 offcut substrate and the layer of GaAs, such that Ge atoms diffused from the Ge (100) 6 offcut substrate are largely confined to the substantially completely oxidized layer of Al,Ga,_As.", + "We have thoroughly reviewed each of Appellants' arguments for patentability.", + "However, a preponderance of the evidence supports the Examiner's position that the claimed subject matter is unpatentable under 6 103 in view of the applied prior art.", + "We add the following primarily for emphasis.", + "In assessing whether a claim to a combination of prior art elements would have been obvious, the question to he asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions.", + "KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398, 417 (2007).", + "\"[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\"", + "Id. at 418.", + "We are unpersuaded by this argument.", + "Appellants do not directly address the Examiner's position and thus fail to persuasively point out any error therein (Reply Br. 4, 5).", + "Furthermore, Mishra does not identify these caps as LT (low temperature) layers (compare to Mishra's Fig. 6b wherein layer 206 is labeled LT GaAs).", + "Given Mishra's disclosure as a whole, and absent a showing of criticality, it would have been prima facie obvious to one skilled in the art to form the GaAs caps of Mishra within the recited temperature range.", + "Appellants have not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have likewise grown the GaAs caps of Mishra at such a conventional temperature.", + "See KSR, 550 U.S. at 421 (\"A person of ordinary skill is also a person of ordinary creativity, not an automaton. .\". make arguments that could have been made in the principal brief on appeal to rebut the Examiner's s rejections, but were not. \")." + ] +} \ No newline at end of file diff --git a/opinion_split/2013003435_DECISION.json b/opinion_split/2013003435_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8b387cc7bc58caf9a0ec489ed15bd5c7dfaaeb7f --- /dev/null +++ b/opinion_split/2013003435_DECISION.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "Appellants contend \"Liu provides customized content, based on user behavior identified from user profiles \u00b7 \u25a0 \u00b7 Liu is not concerned about the relationships between the content creator and content requesting user at all\" (App. Br. 10-11).", + "Appellants' emphasize that their Specification states that customizing is based on a requester's identity, not password protecting or otherwise securing content so that it is unavailable to unauthorized requesters (see App. Br. 11, citing Spec. I 6).", + "Appellants argue, therefore, Zuckerberg **teaches away from the recited claims\" (App. Br. 11) because Zuckerberg clearly describes a privacy summary (id.).", + "Appellants further contend that [t]he specification teaches the use of resources to modify the base content, as taught in para. 0037, and elsewhere.", + "In Liu, the *relevant links\" are not modifying or customizing the \"base\" content, i.e. the news story, rather, they are just added to the page and have no bearing on the base content (App. Br. 12).", + "Appellants also argue the Examiner did not provide a rational underpinning for the combination of Liu with AAPA (App Br. 12).", + "Appellants contend that \"Zuckerberg does not teach, for example, *querying a user customization storage area for user established customizations?'", + "(App. Br. 14).", + "Regarding claim 6, Appellants contend that Signes does not teach or suggest a speech processing customization (App. Br. 15).", + "Regarding claim 20, Appellants contend that *nowhere does Danner teach or suggest fwherein the customizations of the customization data store apply content provider established customizations to a remotely located, server-side, turn-based speech processing engine's (id. at 15-16)." + ], + "examiner_findings": [ + "The \"[E]xaminer acknowledges that Liu does not disclose wherein the content is based upon a relationship between the content creator and the at least one user\" (see Ans. 3), and finds that Zuckerberg discloses this limitation.", + "Specifically, the Examiner finds that Zuckerberg discloses \"providing different levels of content access based upon the relationship between a content creator\" (id.).", + "The Examiner finds that Zuckerberg teaches or suggests querying a user customization storage area in paragraph 24 (see Final Act. 5).", + "The Examiner finds that Danner discloses a speech processing customization in paragraph 13 (see Final Act. 10).", + "The Examiner also finds that \"Signes discloses speech processing customizations that affects a manner in which the speech processing engine performs a speech processing task\" (Ans. 9)." + ], + "ptab_opinion": [ + "Claim Groupings Based on Appellants\" arguments in the Appeal Brief, we will decide the appeal on the basis of claims 1, 2, and 6, as set forth below.", + "Issue 1: Did the Examiner err in finding, inter alia, that the combined cited art teaches or suggests a relationship between the content creator and the at least one user, as set forth in claim 12", + "We agree with the Examiner.", + "We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer.", + "Our discussions here will be limited to the following points of emphasis.", + "For example, Zuckerberg discloses that \"[the privacy summary generated by the privacy settings engine 108 explains that people that comprise the *friends' grouping will be able to view photos and photo albums for the user, but people that comprise the `school' grouping \u00b7 \u00b7 \u00b7 will not be able to access the photos\" (I 18).", + "In other words, Zuckerberg's creator of the photos specifies a set of end-users, i.e., friends or school, based on relationships between the content creator and the end-user.", + "We find this argument unavailing.", + "Although Zuckerberg allows the creator to designate which end- users have access to what content, this does not take away from the fact that Zuckerberg's content creator specifies an end-user based on relationships between the content creator and the end-user, such as the end-users' identity as a friend.", + "We also agree with the Examiner that **[A]ppellant[s]] claims do not require that the customization provide for serving a totality of content to unauthorized users or providing content in a manner transparent to the requestor\" (Ans. 4).", + "Regarding the claimed *wherein the user who is served the Web 2.0 content is able to modify the received Web 2.0 content with customizations\" (see claim 1), we note that the Examiner relied upon AAPA to teach or suggest this limitation, not Liu (see Final Act. 3-4).", + "Here, Appellants fail to rebut the Examiner's findings regarding AAPA and as such Appellants' arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's 's prima facie case of obviousness.", + "See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(\"The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.", + "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.\") (citations omitted).", + "We disagree.", + "The Examiner finds, and we agree, it would have been obvious to one of ordinary skill in the art at the time of the claimed invention to combine Liu with AAPA because the combination *would provide Liu's personalization of web content based upon a user within a Web 2.0 environment\" and also provide \"Liu with the improvement of allowing end- users to read, write, and update contents of a personalized web page.\"", + "Ans. 5.", + "Accordingly, we sustain the Examiner's rejection of claim 1.", + "Appellants\" arguments regarding the Examiner's rejection of independent claim 14 rely on the same arguments as for claim 1, and Appellants do not argue separate patentability for dependent claims 3-5, 7, 15-19, and 21-26.", + "See App. Br. 10-16.", + "We, therefore, also sustain the Examiner's rejection of claims 3-5, 7, 14-19, and 21-26.", + "Issue 2: Did the Examiner err in finding that the combined cited art teaches or suggests \"querying\" and \"customization,\" as set forth in claim 22", + "For example, Zuckerberg discloses that \"[a] user profile database 208 is provided for storing data associated with each of the users, such as the users associated with the user device 102A-102N \u00b7 \u00b7 The user profiles . \u00b7 \u00b7 may be stored, modified, added, and so forth to any storage medium\" (I 24).", + "Although, we find that this cited portion of Zuckerberg suggests the ability to query a database, we find that data stored therein only refers to creator established customization and not end-user established customization.", + "Claim 2 requires discovering and applying at least one user established customization and serving both the customization established by the creator and by the user to the user (see claim 2).", + "Here, the claimed \"user\" refers to the end-user (see Spec. I 7), and the Examiner has not clearly shown where Zuckerberg considers the end-user's established customizations.", + "We are, therefore, constrained by the record before us to find that the Examiner erred in rejecting claim 2.", + "We reverse the Examiner's rejection of claim 2.", + "Issue 3: Did the Examiner err in finding that the combined cited art teaches or suggests a speech processing customization?", + "We agree with the Examiner.", + "For example, Danner discloses using natural language or natural sounding commands to access and receive content (see Danner 9 13) and Signes discloses using placeholders for insertion of customized content, where the placeholders affect the manner in which the customization is applied (see Signes I 8).", + "Here, Appellants' contentions do not rebut the specific evidence proffered by the Examiner and the combination thereof, i.e., Appellants have failed to present substantive arguments and supporting evidence persuasive of Examiner error regarding the aforementioned disputed limitation.", + "See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 201 1) (\"[W]e hold that the Board reasonably interpreted Rule 41 .37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. \").", + "We decline to examine the claims sua sponte, looking for distinctions over the prior art.", + "Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (\"It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art. \").", + "See also Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, at *3-4 (BPAI Aug. 10, 2009) (informative).", + "Accordingly, we sustain the Examiner's rejection of claims 6 and 20." + ] +} \ No newline at end of file diff --git a/opinion_split/2013003570_DECISION.json b/opinion_split/2013003570_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..dc8c50f7ebd1a52431ca8983888555d87b0458ee --- /dev/null +++ b/opinion_split/2013003570_DECISION.json @@ -0,0 +1,104 @@ +{ + "appellant_arguments": [ + "The Appellant contends that the Examiner's proffered combination would not result in a circulator being within MacNab's rotating reference frame because Gromoll's circulator is not part ofa a *refrigeration cycle\" as the term is used by MacNab. See Appeal Br. 13.", + "The Appellant argues that it would not have been obvious to modify MacNab's cooling system to include a circulator, See Appeal Br. 13.", + "The Appellant contends that it would not have been obvious to modify the non-superconducting rotor windings disclosed by Laskaris to include the superconducting rotor windings disclosed by MacNab. See Appeal Br. 17.", + "Additionally, the Appellant relies on the argument presented against the rejection of claim 1 for the rejection of claim 23. Appeal Br. 16-17,", + "The Appellant relies on arguments presented for the rejection of claim 1 for the rejection of independent claim 24. See Appeal Br. 19.", + "The Appellant contends that the modification of MacNab with the teachings of Reis would render MacNab unsatisfactory for its intended purpose of the cooling fluid within refrigerators 19, 20 cooling rotor windings 2. See Appeal Br. 19.", + "The Appellant asserts that the cooling fluid within MacNab's refrigerators 19, 20 would no longer reach superconducting windings 2 because the Examiner's modification would require that the cooling fluid used to cool superconducting windings 2 be separate from the other cooling fluid that cools refrigerators 19, 20. Appeal Br. 19.", + "Additionally, the Appellant relies on the argument presented against the rejection of claim 1 for the rejection of claim 25. Appeal Br. 19.", + "The Appellant contends that there is no motivation to provide a second cooling loop in MacNab because MacNab's refrigerators 19, 20 do not need to be cooled, i.e., they are configured to cool the fluid of the first circuit without themselves being cooled. Appeal Br. 22.", + "Additionally, the Appellant relies on the argument presented against the rejection of claim 1 for the rejection of claim 28, Appeal Br. 21.", + "The Appellant refers back to the arguments presented against the rejections of claim 23 and claim 24 for this ground of rejection. Appeal Br. 23-24,", + "The Appellant refers back to the arguments presented against the rejections of claim 23 and claim 27 for this ground of rejection. Appeal Br. 25-26.", + "The Appellant contends that a person having ordinary skill in the art would not consider MacNab's ducting 10, 11 to be a \"circulator\" in light of the Appellant's Specification. See Reply Br. 8, 10.", + "The Appellant supports this contention by pointing out: first, the Examiner relied upon dictionary definitions of the words \"circulator\" and \"circulating\" that would not apply grammatically to the claimed language (see Reply Br. 11-12); and second, the claimed circulator must cause the coolant to circulate (see Reply Br. 9- 10)." + ], + "examiner_findings": [ + "1. Claims 1-12, 14-16, 18, 19, 21, and 22 are rejected under 35 U.S.C. , 103(a) as unpatentable over MacNab (US 3,648,082, iss. Mar. 7, 1972) and Gromoll (US 7,816,826 B2, iss. Oct. 19, 2010).", + "II. Claim 23 is rejected under 35 U.S.C. I 103(a) as unpatentable over Laskaris (US 2008/0197633 A1, pub. Aug. 21, 2008), MacNab, and Gromoll.", + "III. Claims 24, 25, 27, and 28 are rejected under 35 U.S.C. S 103(a) as unpatentable over MacNab, Gromoll, and Ries (US 7,018,249 B2, iss. Mar. 28, 2006).", + "IV. Claims 26 and 29 are rejected under 35 U.S.C. 6 103(a) as unpatentable over Laskaris, MacNab, Gromoll, and Ries.", + "V. Claims 1-12, 14-16, 18, 19, 21, and 22 are rejected under 35 U.S.C. . 102(b) as anticipated by MacNab.", + "VI. Claim 23 is rejected under 35 U.S.C. 5 103(a) as unpatentable over Laskaris and MacNab.", + "VII. Claims 24, 25, 27, and 28 are rejected under 35 U.S.C. 8 103(a) as unpatentable over MacNab and Ries.", + "VIII. Claims 26 and 29 are rejected under 35 U.S.C. S 103(a) as unpatentable over Laskaris, MacNab, and Ries.", + "The Examiner finds that MacNab teaches substantially all of the claimed features of claim 1, except for a circulator disposed in a rotating reference frame. Final Act. 2-3.", + "The Examiner relies on Gromoll to teach a circulator, but the Examiner does not find that Gromoll's circulator is disposed in a rotating reference frame. See Final Act. 3.", + "The Examiner reasons, however, that MacNab's cryogenic cooling system, as modified by Gromoll's teaching of a circulator, would have resulted in a circulator within MacNab's refrigeration cycle, which is in MacNab's rotating reference frame. See Final Act. 3.", + "Additionally, we note that the Examiner states \"the refrigeration cycle is interpreted as a closed loop, and therefore the circulator is thermally and fluidically connected to every component in the loop including cryocooler.\" Final Act. 3-4,", + "The Examiner rejects independent claim 12 on the same grounds as claim 1. Final Act. 2-4.", + "The Examiner finds that Laskaris discloses a wind turbine, including superconducting windings 26.3 See Final Act. 6, Ans. 26.", + "The Examiner finds that Laskaris's superconducting winding 26 is not disposed in the rotating reference frame. See Final Act. 6.", + "To remedy this deficiency with regard to the subject matter of claim 23, the Examiner finds that MacNab includes a superconducting winding disposed in a rotating reference frame. Final Act. 6-7.", + "The Examiner concludes it would have been obvious to one of ordinary skill in the art to modify Laskaris's wind turbine to dispose its superconducting windings in its rotor, as is taught by MacNab. See Final Act. 7.", + "In response to the Appellant's contention, the Examiner further explains that a person having ordinary skill in the art would recognize that superconducting windings would have been disposed on either the stator or the rotor, but not both. See Ans. 26-27.", + "The Examiner relies on same findings and conclusion for independent claim 24 as provided for the rejection of claim 1. See Final Act. 9-10.", + "The Examiner finds that MacNab and Gromoll together disclose substantially all of the claimed subject matter of claim 25, except that they do not disclose that the cold head is configured to be cooled by a cooling fluid that is separate from a cooling fluid used to cool the superconducting winding. See Final Act. 9.", + "The Examiner relies on Reis to cure the above deficiency, and concludes that \"it would have been obvious \u00b7 \u00b7 to have two cooling fluid circuits that cool the thermal load and cold head separately \u00b7 \u00b7 in order to minimize the total distance travelled by the cooling fluid by having two cooling circuits instead of a single long circuit.\" Final Act. 9.", + "In response, the Examiner determines that it would have been advantageous to cool MacNab's refrigerators because they must warm as they cool the fluid within the cooling circuit. Ans. 31; see also Final Act. 10-11.", + "Rejections V-VIII rely on a finding that MacNab's ducting 10, 11 corresponds to the circulator, as required by independent claims 1, 12, and 23-26 (Appeal Br., Claims App.). See Ans. 13-14," + ], + "ptab_opinion": [ + "Claims 1, 12, and 23-26 are the independent claims on appeal.", + "Claim 12, reproduced below, is illustrative of the subject matter on appeal.", + "12. A rotating electric machine comprising: a rotating reference frame having a rotation axis, a superconducting winding disposed in the frame, a cryogenic cooling system disposed in the frame, and a cryocooler having a cold head for cooling the superconducting winding, and a circulator connected to the cryocooler, the circulator circulating a coolant to and from the superconducting winding.", + "The Appellant's contention is persuasive.", + "The purpose of MacNab's **refrigeration cycle\" (i.e., refrigerators 19, 20) is for cooling a cryogenic fluid to lower temperatures. See MacNab, col. 4, II. 11-17; see also Appeal Br. 21.", + "The purpose of Gromoll's circulator is not for a refrigeration cycle, it does not cool a cryogenic fluid to lower temperatures. See Appeal Br. 13.", + "Indeed, the purpose of Gromoll's circulator is for circulating cryogenic fluid. See Gromoll, col. 3, 11. 12-14; see also Appeal Br. 12.", + "In this case, the purpose of MacNab's refrigeration cycle does not overlap with the purpose of Gromoll's circulator.", + "As such, we fail to ascertain why a person of ordinary skill in the art would understand that as result of the modification of MacNab's refrigeration cycle with a circulator as taught by Gromoll, a circulator would be part of a refrigeration cycle.", + "Hence, we disagree with the Examiner that the modification of MacNab's cryogenic cooling system refrigeration cycle would have resulted in a circulator within MacNab's rotating reference frame.", + "This statement equates a refrigeration cycle to a fluid path.", + "We disagree with the Examiner's suggestion. See also Reply Br. 7.", + "A person of ordinary skill in the art would understand that refrigeration cycle refers to a sequence of thermodynamic process whereby heat is withdrawn from a cold body and expelled to a hot body, not merely a fluid path.", + "Thus, we do not sustain the Examiner's rejection of independent claim 1, and claims 2-11 which depend therefrom, as unpatentable over MacNab and Gromoll.", + "Here, each of Appellant's arguments rely on an assertion that Gromoll's circulator would not be disposed in MacNab's rotating reference frame upon modification. Appeal Br. 13-15.", + "The Appellant's contentions are unpersuasive because claim 12 does not require that the circulator be disposed in the rotating reference frame. See Appeal Br., Claim App.", + "Rather, independent claim 12 recites, \"a circulator connected to the cryocooler, the circulator circulating a coolant to and from the superconducting winding.\" Appeal Br., Claim App.", + "As such, the Appellant's argument is not commensurate with the scope of claim 12.", + "Thus, we sustain the Examiner's rejection of independent claim 12 as unpatentable over MacNab and Gromoll.", + "The Appellant does not add further arguments for the rejection of dependent claims 14-16, 18, 19, 21, and 22.", + "Therefore the rejection of dependent claims 14-16, 18, 19, 21, and 22 as unpatentable over MacNab and Gromoll is also sustained.", + "Independent claim 23 is directed to a wind turbine having a rotating electric machine including a superconducting winding disposed in a rotating reference frame. See Appeal Br., Claims App.", + "The Appellant's contention is not persuasive.", + "At the outset, the Examiner's modification does not add another set of superconducting windings to Laskaris.", + "Rather, Laskaris is modified by the teachings of MacNab *to include [the superconducting windings] to be disposed in the rotor \u00b7 \u00b7 , Final Act. 7.", + "The Appellant's contention relies on an unsupported assumption that the Examiner modifies Laskaris to have superconducting windings as part of both the stator and the rotor. See Appeal Br. 17.", + "However, similar to our discussion concerning the rejection of claim 12, claim 23 does not require that a circulator be disposed in the rotating reference frame. See Appeal Br., Claim App.", + "As such, the Appellant's argument is not commensurate with the scope of claim 23.", + "Thus, we sustain the Examiner' s rejection of independent claim 23 as unpatentable over Laskaris, MacNab, and Gromoll.", + "Similar to claim 1, claim 24 requires a circulator disposed in a rotating reference frame. See Appeal Br., Claim App.", + "For the same reasons as discussed above, with regard to the rejection of claim 1, we disagree with the Examiner that the modification of MacNab's cryogenic cooling system refrigeration cycle would have resulted in a circulator within MacNab's reference frame.", + "Additionally, we note that the Examiner's additional findings based on Ries's teachings do not cure the deficiency in the Examiner's rejection.", + "Thus, we do not sustain the Examiner's rejection of independent claim 24 as unpatentable over MacNab, Gromoll, and Ries.", + "The Appellant's contention is not persuasive because the Appellant does not provide a cogent reason why the Examiner's modification of MacNab would require the cooling fluid used to cool superconducting windings 2 be separate from the other cooling fluid within refrigerators 19, 20.", + "In this case, the Examiner's modification adds a second cooling fluid to cool the cold heads, i.e., refrigerators 19, 20, and does not modify the cooling fluid associated with MacNab's refrigerators 19, 20. See Ans. 28.", + "Therefore, we disagree with the Appellant that the modification of MacNab with the teachings of Reis would render MacNab unsatisfactory for its intended purpose.", + "However, similar to our discussion concerning the rejection of claim 12, claim 25 does not require that a circulator be disposed in the rotating reference frame. See Appeal Br., Claim App.", + "As such, the Appellant's argument is not commensurate with the scope of claim 25.", + "Thus, we sustain the Examiner's s rejection of independent claim 25 as unpatentable over MacNab, Gromoll, and Ries.", + "Claim 27 depends from independent claim 1. Appeal Br., Claims App.", + "The Examiner does not establish that Ries cures the deficiency in the rejection of claim 1. See Final Act. 9-10.", + "Thus, we do not sustain the Examiner's s rejection of claim 27 as unpatentable over MacNab, Gromoll, and Ries.", + "We agree.", + "Here, the Appellant does not persuasively explain error in the Examiner's determination.", + "As such, the Appellant's contention is not persuasive.", + "However, similar to our discussion concerning the rejection of claim 12, claim 28 does not require that a circulator be disposed in the rotating reference frame. See Appeal Br., Claim App.", + "As such, the Appellant's argument is not commensurate with the scope of claim 28.", + "Thus, we sustain the Examiner' s rejection of dependent claim 28 as unpatentable over MacNab, Gromoll, and Ries.", + "As for the Appellant's reference back to the arguments presented for the rejection of claim 23, for similar reasons as discussed above, we determine that the Appellant's s arguments are not persuasive.", + "As for the Appellant's reference back to the arguments presented for the rejection of claim 24, the arguments are the same for the rejection of claims 24 and 25.", + "In this case, we determine that the Appellant's arguments are not persuasive for the reasons discussed above with regard to the rejection of claim 25.", + "Thus, we sustain the Examiner's rejection of independent claim 26 as unpatentable over Laskaris, MacNab, Gromoll, and Ries.", + "As for the Appellant's reference back to the arguments presented for the rejection of claim 23, for similar reasons as discussed above, we determine that the Appellant's arguments are not persuasive.", + "As for the Appellant's reference back to the arguments presented for the rejection of claim 27, the arguments are the same for the rejection of claims 27 and 28.", + "In this case, we determine that the Appellant's arguments are not persuasive for the reasons discussed above with regard to the rejection of claim 28.", + "Thus, we sustain the Examiner' s rejection of independent claim 29 as unpatentable over Laskaris, MacNab, Gromoll, and Ries.", + "We agree with the Appellant's contention and supporting points.", + "Put simply, because MacNab's ducting 10, 11 do not cause a coolant to pass from place to place, the Examiner's finding that the ducting 10, 11 is a \"circulator\" is not supported by a preponderance of the evidence.", + "Thus, the Examiner's rejections of independent claims 1, 12, and 23- 26, and their respective depending claims, are not sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2013003903_DECISION.json b/opinion_split/2013003903_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a8b674c7ab74e87ca1d4bf7f2786a71ab741de78 --- /dev/null +++ b/opinion_split/2013003903_DECISION.json @@ -0,0 +1,49 @@ +{ + "appellant_arguments": [ + "In challenging the first ground of rejection, Appellants argue claims 1-2, 4, 8-13, and 23 as a group, relying on limitations in independent claim 1 and presenting no argument for separate patentability of the dependent claims. App. Br. 9-13.", + "Furthermore, Appellants focus their arguments on Van Buskirk and do not contest the Examiner's findings or conclusions with respect to Paz de Araujo. App. Br. 13.", + "Appellants argue that the apparatus of Van Buskirk cannot attain a fixed molar ratio of vapor to gas, as recited in claim 1, because residual liquid and gas are removed from the lower part of vaporizer 130 during operation, resulting in a gas/vapor mixture that is not uniform and a gas/vapor ratio that continually changes. App. Br. 9-11.", + "Instead, Appellants argue that additional structures disclosed by Van Buskirk, including valve 132, non- volatile residue trap 136, and gas bypass line 154, prevent Van Buskirk's apparatus from operating in the claimed manner. App. Br. 10 (citing Van Buskirk 8:60-65).", + "Appellants further argue that the \"operable\" language of claim I is not merely an intended use, but defines the valve structures and how they are configured to operate.", + "In challenging the second ground of rejection, Appellants argue claims 1-2, 12-14, and 23-24 as a group, relying on limitations in independent claim I and presenting no argument for separate patentability of the dependent claims. App. Br. 9-15.", + "Furthermore, Appellants focus their arguments on Sun and do not contest the Examiner's findings or conclusions with respect to Paz de Araujo. App. Br. 15.", + "Appellants argue that Sun's vaporization chamber does not have valves that control the flow of carrier gas and/or reagent liquid for the purpose of maintaining a molar ratio as described in claim 1 and that the flow of carrier gas and liquid reagent are controlled by the relative diameter of the orifices or passages, not through the operation of valves. App. Br. 14-15.", + "Appellants argue that Sun's valve 70 has a different purpose from that described in claim 1 and that Sun's heated control valve 100 is not operable in the manner defined in claim 1. App. Br. 14, 15.", + "In challenging the third, fourth, and fifth grounds of rejection, Appellants merely refer back to their arguments in support of claim 1, presenting no argument for separate patentability of claim 3 or claims 5-7. App. Br. 15-16." + ], + "examiner_findings": [ + "1. Claims 1-2, 4, 8-13, and 23 are rejected under 35 U.S.C. \u25cf 102(b) as anticipated by Van Buskirk, or alternatively, under 35 U.S.C. 6 103(a) as unpatentable over Van Buskirk in view of Paz de Araujo. Ans. 3.", + "2. Claims 1-2, 12-14, and 23-24 are rejected under 35 U.S.C. 6 102(b) as anticipated by Sun, or alternatively, under 35 U.S.C. 8 103(a) as unpatentable over Sun in view of Paz de Araujo. Ans. 5.", + "3. Claims 5-7 are rejected under 35 U.S.C. $ 103(a) as unpatentable over Van Buskirk, or alternatively, over Van Buskirk in view of Paz de Araujo. Ans. 7.", + "4. Claim 3 is rejected under 35 U.S.C. 6 103(a) as unpatentable over Van Buskirk in view of Yasunori, or alternatively, over Van Buskirk and Paz de Araujo in view of Yasunori. Ans. 7.", + "5. Claim 3 is rejected under 35 U.S.C. s 103(a) as unpatentable over Sun in view of Yasunori, or alternatively, over Sun and Paz de Araujo in view of Yasunori. Ans. 8.", + "The Examiner finds that Van Buskirk teaches an apparatus including all limitations of claim 1, including a source chamber in the form of vaporization chamber 130. Ans. 3 (citing Van Buskirk Figs. 1, 5 and corresponding description).", + "With respect to inlet valves to the source chamber, the Examiner finds that Van Buskirk discloses a reagent supply line 114 joined by a valved manifold, id. (citing Van Buskirk 9:49-51), and that carrier gas supply line 126 inherently has a valve, id.", + "With respect to an outlet valve from the source chamber, the Examiner finds that Van Buskirk discloses valve 152 connected downstream of vaporization chamber 130. Id. (citing Van Buskirk Fig. 1, 8:39).", + "The Examiner further finds that, with these inlet valves and outlet valve, the apparatus disclosed in Van Buskirk is capable of performing the function/operation recited in claim 1, i.e., to hold said gas/vapor mixture in said source chamber for a sufficiently long period of time for said gas to be heated, said liquid to be vaporized, and said molar ratio of said gas/vapor mixture in said chamber to become uniform to produce a gas/vapor mixture having a fixed molar ratio of vapor to gas in said source chamber. Id.", + "The Examiner finds that Sun teaches an apparatus including all limitations of claim 1. including a source chamber in the form of heated vaporization chamber 62. Ans. 5 (citing Sun Abstract, Figs. 6, 9 and corresponding description).", + "With respect to inlet valves to the source chamber, the Examiner finds that Sun discloses a valve 70 for reagent liquid, id. (citing Sun 6:47), and that the compressed gas inherently has a valve, id.", + "With respect to an outlet valve from the source chamber, the Examiner finds that Sun discloses control valve 100. Id. (citing Sun Fig. 9, 8:59).", + "The Examiner further finds that, with these inlet valves and outlet valve, the apparatus disclosed in Sun is capable of operating in the manner described in claim 1. Id. at 5-6." + ], + "ptab_opinion": [ + "Therefore, claims 1-2, 4, 8-13, and 23 stand or fall together, and we confine our discussion to claim 1. 37 C.F.R. $ 41.37(c)(iv).", + "We therefore do not need to address Paz de Araujo.", + "After reviewing Appellants' arguments in the Briefs, the Examiner's Answer, and the cited reference (Van Buskirk), we are not persuaded that Appellants identify reversible error.", + "We adopt the Examiner's factual findings, analysis, and legal conclusions as set forth in the Answer as our own and add the following comments for emphasis.", + "Appellants do not direct us to evidence that persuades us that the apparatus disclosed in Van Buskirk is incapable of operating in the manner described in claim 1.", + "Appellants do not contest the Examiner's findings that Van Buskirk discloses all of the structures that are necessary to perform the recited functions, including a source chamber, inlet valves and an outlet valve. Compare Ans. 3 with App. Br. 9-11.", + "Appellants do not, however, direct us to any evidence, in Van Buskirk or elsewhere, supporting their position that these additional structures result in a gas/vapor mixture having a molar ratio that is not uniform or not fixed. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument cannot take the place of evidence).", + "Nor do Appellants persuade us of error in the Examiner's findings that Van Buskirk's disclosed apparatus can produce a fixed molar ratio of vapor to gas, either by using well-behaved chemical vapor deposition (CVD) precursors that do not produce residues or because non-volatile residues will not affect the vapor/gas ratio. Ans. 10 (citing Van Buskirk 3:6-8, 3:10-16, 3:22-23).", + "App. Br. 12-13, Appellants do not, however, identify any structural or configurational differences between Van Buskirk's disclosed valves and valves that are capable of operating in the manner described in claim 1.", + "We are therefore not persuaded that the Examiner reversibly erred in finding that Van Buskirk's disclosed apparatus is capable of operating in the manner described in Appellants* claim 1.", + "Therefore, claims 1-2, 12-14, and 23-24 stand or fall together, and we confine our discussion to claim 1. 37 C.F.R. 5 41.37(c)(iv).", + "After reviewing Appellants' arguments in the Briefs, the Examiner's Answer, and the cited reference (Sun), we are not persuaded that Appellants identify reversible error.", + "We adopt the Examiner's factual findings, analysis, and legal conclusions as set forth in the Answer as our own and add the following comments for emphasis.", + "Appellants do not direct us to evidence that persuades us that the apparatus disclosed in Sun is incapable of operating in the manner described in claim 1.", + "Appellants do not, however, challenge the Examiner's finding that, by closing Sun's valves 70, 100, and the valve intrinsically connected to the compressed air, the liquid reagent in the evaporation chamber 62 can be completely vaporized to produce a fixed molar ratio of vapor to gas in the source chamber, as recited in claim 1. Ans. 13.", + "The Examiner's finding regarding the capability of Sun's disclosed apparatus parallels the disclosure in Appellants' Specification as to how a fixed molar ratio of vapor to gas is achieved in the source chamber.", + "We are therefore not persuaded that the Examiner reversibly erred in finding that Sun's disclosed apparatus is capable of operating in the manner described in Appellants' claim 1.", + "Appellants have thereby waived any argument for patentability of claims 3 and 5-7 separate from claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2013003907_DECISION.json b/opinion_split/2013003907_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4fa4ec45b3153fb9dcf709e3e907194457575f50 --- /dev/null +++ b/opinion_split/2013003907_DECISION.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [ + "Directing our attention to the paragraph bridging pages 2288 and 2289 of Stone, Appellants assert that Stone fails to teach a method of treating a renal associated condition. Appeal Br. 13-14.", + "Appellants argue that \"Stone explicitly teaches that administration of this particular pharmacological agent was ineffective at treating contrast-induced nephropathy. Thus,\" contrary to the Examiner's assertion, Stone does not disclose a method of treating a renal associated condition.\" Appeal Br. 14.", + "In the Reply Brief, Appellants contest the Examiner's s proffered definition of \"treat\" and suggest that the proper definition of \"treat\" notably from the same source as the Examiner's 's definition is \"to care for or deal with medically or surgically .\" Reply Br. 2-3 (emphasis omitted).", + "Appellants further note that \"even if one were to rely on the Examiner's misplaced definition for 'treat,' the method of Stone still cannot be said to teach a method of treating contrast-induced nephropathy. Stone simply does not disclose that its method improves or alters contrast induced nephropathy.\" Id." + ], + "examiner_findings": [ + "I. Claims 1, 4, 20, 31, and 35 stand rejected under 35 U.S.C. . 103(a) as being unpatentable over Stone and Oung.", + "II. Claims 1, 3-6, 31, 34, and 35 stand rejected under 35 U.S.C. S 103(a) as being unpatentable over Dupont, Stone, and Oung.", + "III. Claims 7, 14-16, 21, and 22 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Dupont, Stone, Oung, and Levin.", + "IV. Claim 24 stands rejected under 35 U.S.C. , 103(a) as being unpatentable over Stone, Oung, Parekh, and Place.", + "V. Claim 33 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Stone, Oung, and Stanley.", + "VI. Claim 36 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Stone, Oung, and Stratton.", + "VII. Claim 37 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Stone, Oung, Stratton, and Stanley.", + "VIII. Claims 30, 38, and 39 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Stone, Oung, and Pilz.", + "IX. Claim 40 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Stone, Oung, Parekh, Place, and Stanley.", + "The Examiner finds that Stone discloses all of the limitations of claim 1 except that *Stone does not disclose the modulation causing the parasympathetic function to be at least substantially equal to the sympathetic function.\" Final Act. 2.", + "The Examiner further finds that \"Oung teaches that a sympathetic/parasympathetic balance (i.e., parasympathetic function is substantially equal to sympathetic function) is necessary to prevent an impairment resulting in a renal condition.\" Id. at 3 (citing Oung col. 1, 11. 48-55).", + "Based on these findings, the Examiner determines that it would have been obvious \"to perform the method disclosed by Stone to restore the parasympathetic function to be at least substantially equal to the sympathetic function with the expectation of reducing or preventing a renal condition.' \" Id.", + "In response to this argument, the Examiner determines that \"treat\" is a broad term which means **to act upon with some agent especially to improve or alter' (Merriam-Webster Dictionary, 2012).\" Ans. 13.", + "The Examiner reasons that *[t]he method disclosed in Stone is a method for treating contrast-induced nephropathy even if the treatment is ineffective or not *viable' (just as chemotherapy is said to *treat' cancer even when the treatment is ineffective), as the method acts upon the nephropathy to alter it (or to attempt to so alter). \" Id. at 13-14,", + "Rejection II relies upon Stone to teach treating contrast-induced nephropathy. Final Act. 4." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We REVERSE.", + "Appellants are correct.", + "The definition of \"treat\" proffered by the Examiner is not reasonable when considered in light of Appellants' Specification which is directed to *[m]ethods for treating a renal associated disease condition.' \" Spec. 16.", + "Furthermore, we agree with Appellants that even if we rely on the Examiner's definition of \"treat,\" \", Stone does not disclose a method of treating contrast-induced nephropathy in that the disclose therapy does not improve or alter contrast induced nephropathy.", + "For these reasons, we do not sustain the Examiner's decision rejecting claim I based on the combined teachings of Stone and Oung.", + "We likewise do not sustain the Examiner's decision rejecting claims 4. 20, 31, and 35 which depend from claim 1.", + "As discussed supra, the Examiner's finding that Stone teaches treating contrast induced nephropathy is in error.", + "Rejections III-IX rely on this erroneous finding as set forth in either Rejection I or Rejection II. See Appeal Br. 5-10.", + "Accordingly, we do not sustain Rejections II-IX." + ] +} \ No newline at end of file diff --git a/opinion_split/2013003933_DECISION.json b/opinion_split/2013003933_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..dad353a870de20e3634fe1ac0881de0975827324 --- /dev/null +++ b/opinion_split/2013003933_DECISION.json @@ -0,0 +1,87 @@ +{ + "appellant_arguments": [ + "Appellants' invention is directed to a system and associated method for monitoring and reporting productivity in an enterprise environment.", + "The enterprise environment has a server, a database, a client program and a web interface.", + "The database stores transaction data and administration data.", + "The transaction data stores records of time spent by an end user to perform a certain volume of work for a transaction.", + "The administration data configures operations of the client program per transaction.", + "The client program records a time log and provides an interface to upload a volume log of the transaction.", + "The end user or an administrative user manages content of the database via web interface.", + "The server processes a respective request for recording transaction time and volume log, and subsequently generates a productivity report including efficiency, availability, and utilization values based on the transaction data in the database. Abstract.", + "Claim 1 recites: 1. A method for monitoring and reporting productivity in an enterprise environment, said method comprising: a processor of a server computer receiving a request to modify a database coupled to the server computer, wherein the database comprises transaction data and administration data, wherein the transaction data comprise a time log and a volume log of a transaction performed by an end user by use of a client program, and wherein the administration data configures operations of the client program per transaction; said processor calculating a set of productivity metric figures of the transaction, wherein said calculating is based on a respective time spent (T) on each said transaction, a respective work standard (S) for each said transaction, and a respective time period (H), and wherein H specifies a time period during which said end user is expected to be available to work on each said transaction; said calculating further comprising said processor calibrating the productivity metric figures pursuant to the time log, wherein the productivity metric figures comprise an efficiency value (E), an availability value (A), and a utilization value (U), and wherein E=(T/S)x100, A=(T/H)x100, and U=ExA; said processor identifying a sender of the request, wherein the sender is selected from the group consisting of the client program and a web interface, wherein the web interface is configured to manage the database; said processor processing the received request pursuant to a type of the received request, wherein the type is selected from the group consisting of a management request and a transaction request if the sender is the web interface, wherein the type is the transaction request if the sender is the client program; and said processor generating at least one report comprising the productivity metric figures of the transaction from said processing and subsequently returning the generated at least one report to the sender from said identifying. App. Br. 28-29.", + "Appellants argue the Examiner erred in finding the combined cited prior art references teach or suggest the limitations of claim 1 reciting: \"a respective time spent (T) on each said transaction, a respective work standard (S) for each said transaction, and a respective time period (H), \u25a0 wherein H specifies a time period during which said end user is expected to be available to work on each said transaction\" and \"productivity metric figures [that] comprise an efficiency value (E), an availability value (A), and a utilization value (U), and wherein E=(T/S)x100, 00, A=(T/H)x100, and U=ExA.\" App. Br. 10.", + "Appellants argue that, even if the combination of Silvera, Whitsitt, and McGloin teach or suggest Appellants' claimed T, S, and H elements, the combined cited prior art would not suggest, to one of ordinary skill in the art, combining such elements into an efficiency value (E), an availability value (A), and a utilization value (U), and where E=(T/S)x100, A=(T/H) x100, and U=ExA. App. Br. 11.", + "Appellants contend the E, A, and U values are novel combinations of a specific set of elements T, S. and H. App. Br. 12.", + "Appellants argue these elements may be combined in many other ways, with or without additional elements, to yield a wide range of parameters that measure \"exotic\" and novel characteristics of worker efficiency, availability, utilization, and other productivity-related parameters. Id. at 12-13.", + "Appellants submit any legitimate motivation to combine this particular set of claimed elements in the exact ways claimed by Appellants thus requires more specificity than a broadly stated intent to \"utilize performance data to provide figures to analyze various metrics of the business.\" Id. at 13.", + "Appellants assert that the cited prior art references provide no such specific motivation. Id.", + "By way of example, Appellants point to Silvera, which, contrary to the Examiner's finding, they argue teaches only a method of comparing a measurement (or a sum or average of multiple instances of the measurement) to a standard target or threshold value. App. Br. 13 (citing Silvera I 97).", + "Appellants contend Silvera teaches the comparison of an instance of a *performance metric\" measured value (or a sum or average of multiple measured instances of a value) to a defined *achievement level\" threshold value to determine whether the measurement falls into one of a set of **performance value\" value ranges, where each value range is bounded by a pair of achievement levels. Id. (citing Silvera 99 40-42, 97).", + "Similarly, argue Appellants, Whitsitt teaches only the feature of a *summarized performance metric [that] is obtained from one of a plurality of business data statistics providers\" and does not teach claim 1's E, A, and U productivity metric values. App. Br. 13 (citing Whitsitt ' 4).", + "Rather, Appellants argue, Whitsitt's summarized **performance metric\" is an instance of a measured statistical parameter, or a sum (i.e., **aggregate%), ordering, or average of a set of measured instances of the parameter, in which each measurement is provided by a \"data statistics provider.\" App. Br. 14 (citing Whitsitt, I 4).", + "Appellants also argue McGloin does not teach or suggest Appellants' claimed H value or the claimed E, A, or U elements. App. Br. 14.", + "According to Appellants, the passage of McGloin cited by the Examiner might, at most, be construed to disclose an element similar to claim I's T or s elements. Id. (citing McGloin, col. 8, II. 53-63; see also Fig. 4(a).", + "Appellant argues that even if the combined cited prior art references teach elements T, S, and H, they do not teach claim I's elements (4) efficiency value E (E=(T/S)x100); (5) availability value A (A=(T/H)x100); and (6) utilization value U (U=ExA).", + "Appellants next contend the combined cited prior art references provide no motivation to combine elements T, S, and H with McGloin's software tool 22 in ways that would produce the specific E, A, and U values of claim 1.", + "Appellants argue McGloin's teaching of a tool that allows users to manipulate and compare directly measurable metrics is not sufficient to teach or suggest features of a productivity-analysis methodology that comprise specific, nontrivial combinations of three elements, and in which only one of those elements is a directly measurable metric. App. Br. 16 (citing McGloin, cols. 1-2, II. 65-10).", + "Appellants contend McGloin teaches a \"dictionary maintenance function 22M that \"allows users to manipulate measurement data that has been imported from the third party performance measurement systems. The primary purpose is to formulate the performance management system objective fields from all the data fields imported from the external third party databases or performance measurement systems.\" App. Br. 16. (quoting McGloin, col. 8, 11. 53-49, Fig. 4(a).", + "Appellants submit McGloin's data dictionary generates and reports simple combinations of imported, directly measurable, elements (i.e., *data fields\"), but does not teach or suggest every possible combination of such measured elements. Id.", + "Nor, Appellants argue, does the mere disclosure of such a tool make every such possible combination obvious to one skilled in the art. Id.", + "Appellants argue further McGloin's disclosure of software tool 22 teaches away from Appellants? combination of these elements into the E, A, and U values because McGloin's 's dictionary maintenance function 22 combines measured *measurement data\" to produce \"objective\" fields that describe \"worker performance expectations,\" such as a work standard that specifies a desired average call-handling time. App. Br. 18-19.", + "According to Appellants, the efficiency value (E), availability value (A), or utilization value (U) of claim I may not be considered either *measurement data\" or an \"objective\" in the sense used by McGloin. Id.", + "Appellants argue the Examiner erred in finding the combined cited prior art references teach or suggest the limitations of claim 1 reciting: (1) \"a respective time period H\" that *specifies a time period during which said end user is expected to be available to work on each said transaction\", and (2) *an availability metric A that comprises a normalized ratio between an actual time T spent working on a transaction and the respective time period H for that transaction.\" \" App. Br. 21.", + "These claims depend from claims 1, 7, 13, and 19, and Appellants rely upon their arguments with respect to claim 1 as supporting the patentability of these claims. App. Br. 24-26." + ], + "examiner_findings": [ + "The Examiner responds that Silvera teaches a system that monitors the performance of certain tasks by agents, which are employees of a company, against a defined set of metrics to assess the performance of the agent. Ans. 2 (citing Silvera, 11 19, 21).", + "The Examiner finds Silvera teaches calculating productivity metrics even if some of the calculations, such as work standard, are based on a comparison to a performance level. Id. at 3.", + "The Examiner points out the claims do not require the calculations of the T, H, and s values to be based on arithmetic. Id.", + "The Examiner also finds Silvera calculates a set of metrics by providing performance results based on the time spent, work standard, or time period measurements. Id. (citing Silvera, I 50).", + "The Examiner points out Appellants only argue that Whitsitt fails to teach the claim limitations that calculate performance metrics, which are limitations not cited as being taught by Whitsitt. Ans. 3-4.", + "The Examiner further finds McGloin teaches assigning a performance expectation to an individual and measuring the individual against the performance criteria. Ans. 4 (citing McGloin, col. 6, II. 35-41).", + "The Examiner finds measurement data for a performance expectation of an individual can be imported from external, third party systems or manually entered by a company. Id. (citing McGloin, col. 6. 11. 47-52),", + "The Examiner finds McGloin further teaches users can then manipulate the measurement data that has been imported or entered into the data dictionary to form measurements reflecting the performance of an individual. Id. (citing McGloin col. 8, II. 53-63).", + "The Examiner finds Figure 4(b) of McGloin teaches that users can manipulate the data by selecting values and an operator desired to be used in the formula: the different values are metrics from the data dictionary such as average handling time, total calls, service level, the time an agent was signed-in, and the amount of time an agent was scheduled to be signed in. Id. (citing McGloin, col. 6, II. 2-8; col. 9 II. 1-11).", + "Specifically, the Examiner finds McGloin teaches the claimed time period (H) and the time spent on each transaction (T). Ans. 4 (citing McGloin, col. 9, 11. 9-10).", + "The Examiner also finds McGloin teaches these two values are then manipulated to provide a Schedule Adherence metric, which corresponds to claim I's availability metric, A=(T/H)x100. Id. (citing McGloin, Figs. 4(a)-4(c); cols. 8-9, 11. 59-11).", + "The Examiner disagrees with Appellants' argument that McGloin does not teach the claimed H value or the claimed E, A, and U elements. Ans. 5.", + "The Examiner notes Appellants argue that the cited paragraph might be construed to disclose an element similar to Appellants' \"time spent\" T (*time an agent actually spends signed on to their phone\") or \"time standard\" s (*time they were scheduled to be there\"). Id.", + "The Examiner finds claim 1 does not disclose a \"time standard,\" \" but rather a *work standard\" (S) and a *time period\" (H). Id.", + "The claimed time period (H) requires specification of a time period during which said end user is expected to be available to work on each said transaction, and therefore corresponds to McGloin's metric of time the agent was scheduled to be signed in. Id. (citing McGloin, col. 9, 11. 9-10).", + "The Examiner finds it would have been obvious to a person of ordinary skill in the art to have imported and manipulated such metrics because they allow the administrator to utilize performance data to provide formulas for analyzing various metrics of the business. Ans. 7 (citing McGloin, cols. 1-2, II. 65-10)," + ], + "ptab_opinion": [ + "Because Appellants make essentially the same arguments for all claims on appeal, we select independent claim 1 as representative. See App. Br. 10; 24-26.", + "Appellants make three arguments with respect to the patentability of claim 1.", + "We address each of these arguments seriatim.", + "We are not persuaded by Appellants' reasoning.", + "Claim 1 requires: (1) determining the time spent on each transaction (T); (2) a work standard for each said transaction (S); and (3) a time period during which the end user is expected to be available to work on each transaction (H).", + "We agree with the Examiner's finding Silvera teaches element T.", + "Silvera teaches: *if a metric is defined as average call handling time, step 210 will include monitoring the average call handling time of an agent. The monitoring of average call handling time may be performed by monitoring each individual call time and obtaining an average of each individual call time.' \" Silvera I 47 (emphasis added); see Final Act. 4.", + "We also agree with the Examiner's finding Silvera teaches element S.", + "Silvera teaches: At step 212, the agent performance generated during step 210 is compared to the achievement values to determine an agent performance level.", + "The achievement values are used to determine which of the performance levels an agent's performance should be classified within.", + "Generally, at step 212 an agent's data is compared to the achievement values to determine which of the achievement values has been met.", + "The agent's performance is then classified as falling within the performance level associated with the met achievement value.", + "Expanding on a previous example for illustrative purposes, if an agent's average call time (agent performance metric) is below the achievement value associated with the \"target\" performance level, then the agent's performance with respect to the metric, average call handling time, will be classified as \"target.\" Silvera I 49.", + "Although Silvera does not teach explicitly the range of values for the disclosed performance levels, Silvera does teach the performance values are derived from, and comparable to, the range of possible average agent call handling times, as derived in step 210 supra. See Silvera I 47.", + "We therefore agree with the Examiner that a person of ordinary skill would recognize that the *performance levels\" taught by Silvera correspond to the *work standard\" of claim 1.", + "Furthermore, we agree with the Examiner's finding McGloin teaches element H.", + "McGloin teaches the user selects a field that \"relates to the actual time the agent was signed in\" and divides this by a quantity that *relates to the amount of time they had been scheduled to be signed in. McGloin, col. 9 II. 6-10; see Final Act. 4.", + "We agree with the Examiner that it would be obvious to a person of ordinary skill that McGloin thus teaches \"a time period during which said end user is expected to be available to work on each said transaction\" as recited in claim 1.", + "However, elements E, A, and U are merely simple arithmetical operations: A and E are simple percentage ratios of T/S and T/H respectively, and U is simply the product of E and A.", + "As such, a person of ordinary skill would be capable of performing these operations with pencil and paper, or in her head. See LifeScan Scotland, Ltd. V. Shasta Technologies, LLC, 734 F.3d 1361, 1380 (Fed. Cir. 2013).", + "As such, the steps performed are common procedures and noninventive, and we agree with the Examiner they would be obvious to a person of ordinary skill in view of the prior art. See Ans. 6-7.", + "We consequently affirm the Examiner's s rejection on this ground.", + "We are not persuaded by Appellants? arguments.", + "Appellants' argument that a person of ordinary skill would not be motivated to combine the cited prior art references is based on their contention that the cited prior art references, singly or in combination, *teach away\" from the limitations of claim 1 reciting \"a respective time spent (T) on each said transaction, a respective work standard (S) for each said transaction, and a respective time period (H), . wherein H specifies a time period during which said end user is expected to be available to work on each said transaction\" and *productivity metric figures [that] comprise an efficiency value (E), an availability value (A), and a utilization value (U), and wherein E=(T/S)x100, A=(T/H)x100, and U=ExA.\"", + "A reference teaches away when \"a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.\" In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).", + "Appellants do not adduce any evidence that the cited prior art references would discourage a person of ordinary skill from combining the prior art references, or would lead that person in a divergent direction from the path taken by Appellants.", + "Appellants' \"teaching away\" argument is rather based upon a difference with the Examiner over the claim terms *availability, \" \"utilization,\" \" and *efficiency, and whether McGloin teaches the express limitations on the types of inputs and outputs compatible with McGloin's software tool 22.", + "That is not a sufficient basis to show the prior art teaches away from combining the references to overcome the Examiner's prima facie finding of obviousness.", + "We affirm the Examiner's rejection of claim I on this ground.", + "We have related supra our reasoning as to why we find the combined prior art references cited by the Examiner either teach or suggest the limitations in question and why the values E, A, and U are noninventive, simple mathematical operations that would be obvious to a person of ordinary skill.", + "We consequently affirm the Examiner's rejection of claim 1.", + "For the reasons set forth supra, we affirm the Examiner's rejection of these claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2013003961_DECISION.json b/opinion_split/2013003961_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..65c46a57e5843821cdbccd8757d34e8d8b77142d --- /dev/null +++ b/opinion_split/2013003961_DECISION.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "With regard to claim 1. Appellants argue although Hedin teaches a distributed speech recognition function, Hedin fails to show or suggest that the vocabulary of the local speech recognition portion is \"adapted or changed during a normal speech recognition operation as is the case in Appellants\" invention.\" App. Br. 9.", + "Specifically, Appellants argue that while Hedin teaches that data stored within the local speech recognition portion may be replaced during an update, Appellants assert that Hedin does not teach or suggest that \"a meaning of an associated phonetic representation of a voice command is transmitted from the otT-board-speech-reognition-system 10 (compare to Hedin's automatic speech recognition 307 in remote application part 205) to a motor vehicle 2 (compare to Hedin's terminal application part 201)\" and that the phonetic representation and meaning of the voice command *is storable in the data base of the motor vehicle 2\" as required by claim 1. App. Br. 10, Reply Br. 3-4.", + "Regarding claims 2 and 3, Appellants argue the Examiner erred by misinterpreting the term *position** and urging that the cited references fail to show or suggest storing a **position allocated to the meaning\" that was *determined by the off-board-speech-recognition system,\" \" (claim 3), or that is *storable in the data base\" (claim 2).", + "Appellants acknowledge Hedin's teaching of city locations, but assert that occurs without the use of speech recognition. App. Br. 13-15.", + "Appellants argue the patentability of claim 7 based upon the failure of Hedin to show or suggest the transmission of a phonetic representation associated to the meaning of a voice command and a **position\" allocated to a voice command, as argued above. App. Br. 15.", + "Appellants also argue the Examiner erred in rejecting claim 12 based upon an erroneous interpretation of the term \"position,\" for the same reasons set forth above. App. Br. 15-16." + ], + "examiner_findings": [ + "The Examiner relies on the following as evidence of unpatentability: Hedin US 6,185,535 B1 Feb. 6, 2001 Chengalvarayan US 2009/0164216 A1 June 25, 2009 (filed Dec. 21, 2007)", + "The Examiner rejected claims 1-14 under 35 U.S.C. 5 103(a) as unpatentable over Chengalvarayan and Hedin. Final Act. 5-18.1", + "The Examiner finds that Appellants' argument regarding updates during normal speech recognition operations is not commensurate with Appellants\" claim.", + "The Examiner finds that claim 1 fails to recite such an update procedure. Ans. 3-4.", + "In response to Appellants' arguments regarding the transmission of a meaning of the voice command and a phonetic representation of that command, the Examiner finds that Hedin teaches that words not recognized by the client are transmitted to the server to be deciphered and then transmitted back to the client to be acted upon. Id. at 6.", + "With respect to Appellants' arguments regarding the phonetic representation of the unrecognized command, the Examiner points out that Chengalvarayan was relied upon for that teaching, citing paragraph 29, which teaches that digital speech data may be segmented into overlapping phonetic or acoustic frames which correspond to acoustic sub words.", + "The Examiner also points out that Hedin teaches the use of a cache memory for storing audio encoded data, citing column 7, lines 10-15. Id. at 6-7.", + "The Examiner finds that \"position,\" under a broadest reasonable interpretation, can constitute a geographic location.", + "Further, the Examiner finds that Hedin teaches, at column 14, lines 15-30, and column 15, lines 1- 15, a \"position\" associated with a particular command can designate a particular geographic location, noting that Hedin allows a user to verbally designate a city to determine the weather for that city.", + "The Examiner notes a user may utilize a verbal command to \"accept\" a particular city (position) to receive weather data for that city. Ans. 10-11." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejections in light of Appellants' contentions (App. Br. 7-17, Reply Br. 2-8) that the Examiner has erred.", + "We have also reviewed the findings and reasons set forth by the Examiner in (1) the action from which this appeal is taken (Final Act. 5-18), and (2) the reasons set forth by the Examiner in the Examiner's s Answer in response to Appellants\" Appeal Brief (Ans. 3-12),", + "We highlight and amplify certain teachings and suggestions of the references as follows.", + "We concur with the Examiner.", + "Appellants' arguments are not commensurate with the scope of claim 1.", + "Appellants' claim I only requires that the meaning and phonetic representations of unrecognized commands are \"storable\" in a data base.", + "The claim does not require that those values are actually stored in the data base.", + "We therefore find that the Examiner did not err in rejecting claim 1.", + "We find no error in the Examiner's s position.", + "The Examiner did not err in rejecting claims 2 and 3 as unpatentable under 35 U.S.C. S 103(a) as unpatentable over Chengalvarayan and Hedin.", + "For the reasons set forth above by the Examiner, we find no error in the Examiner's position with respect to claim 7.", + "For the same reasons we set forth above, we find no error in the Examiner's rejection of claim 12." + ] +} \ No newline at end of file diff --git a/opinion_split/2013004518_DECISION.json b/opinion_split/2013004518_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f843f81ef79a8875b9e672c3f02b9c860e5c59c6 --- /dev/null +++ b/opinion_split/2013004518_DECISION.json @@ -0,0 +1,73 @@ +{ + "appellant_arguments": [ + "THE INVENTION Appellants' invention relates to [a] system [for] generating a haptic effect that simulates a mechanical button.", + "The system receives a signal that indicates that a user has contacted a user interface of the system.", + "The system includes an impact actuator.", + "In response to the signal, a moving element of the impact actuator contacts the user interface, which generates the haptic effect. Abstract.", + "1. A method of generating a haptic effect, comprising: receiving a first signal that indicates that a user interface has been manipulated; generating a haptic effect signal based on the first signal; in response to the haptic effect signal, contacting the user interface with a moving element of an actuator thereby generating a haptic effect, wherein the actuator is coupled to a housing, and wherein the haptic effect comprises a single waveform that simulates a press of a mechanical button; maintaining the contact for a predetermined time duration and dampening the haptic effect based on the maintained contact; and discontinuing contact with the user interface after the contact.", + "Addressing the Examiner's findings regarding Leung, Appellants argue \"merely because a single vibration stops (or is *eliminated*) does not teach or suggest maintaining a contact with a user interface member in order to dampen the single vibration. \" App. Br. 6.", + "According to Appellants, *[w]hile the creation of Leung's pulse can be reasonably interpreted to be based on a contact of an actuator, the elimination of Leung' 's pulse cannot reasonably be interpreted to be based on the contact of the actuator. Reply Br. 3.", + "This is because *the maintained contact of pressing a button is irrelevant, as the claims do not recite maintained contact of a button press. Reply Br. 5.", + "With respect to Wegmuller, Appellants argue \"the Examiner has failed to provide any citation to Wegmuller that allegedly teaches that the 'actuator maintains contact with the user interface for the predetermined duration value and is discontinued after the release of the button press,' let alone dampening the haptic effect based on the maintained contact.\" Reply Br. 5.", + "Appellants next argue that \"Y \"Yoshikawa does not teach or suggest maintaining the contact for a predetermined time duration and dampening the haptic effect based on the maintained contact.\" App. Br. 8.", + "Appellants argue that the cited portions of Wegmuller are *silent with respect to a direct current motor.\" as claimed.", + "Appellants argue \"[a] permanent magnet as described in Wegmuller is not a *similar structural element of a piezo bender' as alleged by the Examiner.\" App. Br. 12.", + "Appellants further argue *general use of a piezo bender as allegedly taught by Moilanen does not teach or suggest a rubber mallet coupled to a piezo bender as claimed. \"" + ], + "examiner_findings": [ + "REFERENCES and REJECTIONS 1. Claims 1-4, 7-11, 14-16, 18, and 20-24 stand rejected under 35 U.S.C. & 103(a) as unpatentable over the combination of Leung et al. (\"Evaluation of Haptically Augmented Touchscreen GUI Elements Under Cognitive Load,\" published November 2007) (\"Leung\"), Wegmuller et al.' (US 2002/0067336 AI; June 6, 2002) (\"Wegmuller\"), and Yoshikawa et al. (US 7,215,329 B2; May 8, 2007) (\"\"Yoshikawa\").", + "2. Claims 5, 6, 12, 13, and 19 stand rejected under 35 U.S.C. 6 103(a) as unpatentable over the combination of ofLeung, Wegmuller, Yoshikawa, and Moilanen et al. (US 7,324,094 B2; Nov. 18, 2004) (\"Moilanen\").", + "3. Claim 17 stands rejected under 35 U.S.C. S 103(a) as unpatentable over the combination of Leung, Wegmuller, Yoshikawa, and Nakatani et al. \"3D Form Display with Shape Memory Allow,\" 2003 (*Nakatani\").", + "The Examiner finds \"Leung discloses providing a haptic effect of a pulse, which has a duration value of 250, upon a button press and a second pulse, with a duration value of 200 upon releasing the button.\" Ans. 4.", + "The Examiner finds that \"the elimination of the pulse after the duration value, reasonably constitutes dampening of the haptic effect based on the maintained contact\" and *the duration value corresponds to both the maintained contact of pressing the button and the duration value of pulse \u00b7 , \u00b7 \" Id.", + "The Examiner further finds Wegmuller discloses the mechanics of a viable actuator reasonably present in Leung to generate the haptic effect presented in Leung.", + "In combination with Leung, Wegmuller's moving element of an actuator maintains contact with the user interface for the predetermined duration value and is discontinued after the release of the button press. Id.", + "In the Answer, the Examiner states that Yoshikawa was merely cited to provide additional support that dampening of haptic effects are present in touch panels similar to that found in Leung.", + "The crust [sic] of the claimed limitation *a predetermined time duration and dampening the haptic effect based on the maintained contact\" based on the maintained contact' is reasonably suggested if not taught by Leung in view of Wegmuller as disclosed above. Ans. 6.", + "The Examiner relies on Wegmuller*: disclosure of an electromagnet having a coil surrounding a metallic core as teaching a direct current motor. Ans. 7." + ], + "ptab_opinion": [ + "Exemplary independent claim 1 is reproduced below with the disputed limitation emphasized.", + "ISSUES 1. Did the Examiner err in finding the combination of Leung, Wegmuller, and Yoshikawa teaches or suggests \"contacting the user interface with a moving element of an actuator thereby generating a haptic effect\" and *maintaining the contact for a predetermined time duration and dampening the haptic effect based on the maintained contact,\" as recited in claim 1?", + "2. Did the Examiner err in finding the combination of Leung, Wegmuller, and Yoshikawa teaches or suggests *wherein the actuator comprises a direct current motor having an arm, \" as recited in claim 18?", + "3. Did the Examiner err in finding the combination of Leung, Wegmuller, Yoshikawa, and Moilanen teaches or suggests \"a rubber mallet coupled to the piezo bender, wherein a signal applied to the piezo bender causes the rubber mallet to contact a user interface thereby generating a haptic effect \u00b7 \u00b7 \u00b7 \" as recited in claim 19?", + "ANALYSIS Claim I Claim 1 recites \"contacting the user interface with a moving element of an actuator thereby generating a haptic effect\" and \"maintaining the contact for a predetermined time duration and dampening the haptic effect based on the maintained contact.' \"", + "We are not persuaded by Appellants? arguments.", + "We interpret the claim under its broadest reasonable interpretation consistent with the specification.", + "See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).", + "First, under the broadest reasonable interpretation, we agree with the Examiner that \"the elimination of the pulse . \u00b7 \u00b7 reasonably constitutes dampening of the haptic effect.\" \" Ans. 4.", + "Thus, we agree with the Examiner's finding that Leung teaches the recited dampening of the haptic effect by disclosing that the haptic pulse is eliminated after a duration value of 250. Ans. 4 (citing Leung & 4.3).", + "Next, we note that the claim does not limit the duration of \"a predetermined time period\" nor does it require the time period to extend beyond a specific duration.", + "Thus, under the broadest reasonable interpretation, a moving element of an actuator making contact with a surface for some finite period of time would constitute a moving element of an actuator \"maintaining contact\" with that surface for \"a predetermined time period. \"", + "We agree with the Examiner's finding that the combination of Leung and Wegmuller teaches that a haptic pulse is generated by having the contact member of an actuator make contact with a surface.", + "Thus, under the broadest reasonable interpretation, we agree that Leung and Wegmuller teach or suggest a moving element of an actuator maintaining contact with a user interface for a predetermined time period, as claim 1 requires.", + "Finally, claim 1 requires that the dampening of the haptic effect be based on the maintained contact.", + "Under the broadest reasonable interpretation, we agree with the Examiner that the elimination of the pulse (i.e., dampening of the haptic effect) is based on the maintained contact of the actuator with the user interface, in that the contact causes the pulse to be generated which is then eliminated or dampened after a duration of time.", + "Because there is a causal link between the maintained contact and the elimination of the pulse, we find the Examiner's finding (see Ans. 4) that this elimination of the pulse is \"based on\" the maintained contact to be reasonable.", + "Therefore, we agree with the Examiner that the combination of Leung and Wegmuller teaches or suggests \"maintaining the contact for a predetermined time duration and dampening the haptic effect based on the maintained contact.\"", + "As explained supra, we agree that Leung and Wegmuller teach or suggest the disputed limitations, thus Appellants\" argument regarding Yoshikawa are unpersuasive.", + "Accordingly, we sustain the Examiner's rejection of independent claim 1 and of independent claims 9 and 20 which the Appellants argue as a group. App. Br. 5-9.", + "We also sustain the Examiner's rejection of dependent claims 2-4, 7. 8, 10, 11, 14-17, and 21-24 for which the Appellants do not make separate arguments for patentability. App. Br. 9 and 14.", + "Claim 18 Dependent claim 18 recites \"[the device of claim 9. wherein the actuator comprises a direct current motor having an arm.\" App. Br. 18.", + "We agree.", + "Although Wegmuller discloses an electromagnet, including a coil surrounding a metallic core, which subsequently causes a contact member to strike the housing of the mouse, we agree with Appellants that this disclosure is not enough to teach or suggest a direct current motor.", + "For this reason, we are persuaded the Examiner erred in finding the combination of Leung, Wegmuller, and Yoshikawa teaches or suggests *wherein the actuator comprises a direct current motor having an arm,\" ~ as recited in claim 18.", + "Claim 19 Independent claim 19 recites \"a rubber mallet coupled to the piezo bender, wherein a signal applied to the piezo bender causes the rubber mallet to contact a user interface thereby generating a haptic effect \u00b7 . \u00b7 \" App. Br. 19.", + "We are not persuaded by Appellants' arguments because Appellants are attacking the references individually instead of addressing the teachings of the references as a whole.", + "Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981).", + "Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee's invention to a person having ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Therefore, the argument that \"[a] permanent magnet as described in Wegmuller is not a *similar structural element of a piezo bender\" is unpersuasive of the Examiner error because the Examiner relies on Moilanen, not Wegmuller, as teaching an arm coupled to a piezo bender. Ans. 9.", + "Similarly, Appellants' argument that the *general use of a piezo bender as allegedly taught by Moilanen does not teach or suggest a rubber mallet coupled to a piezo bender\" does not address the Examiner's findings because the Examiner relies on Wegmuller, not Moilanen, as teaching an arm with a rubber mallet. Ans. 9 (citing Wegmuller's teaching ofa a contact member that includes an elastomer material); see also Wegmuller I 22.", + "Thus, we agree with the Examiner that the combination of Wegmuller and Moilanen teaches or suggests \"a rubber mallet coupled to the piezo bender, wherein a signal applied to the piezo bender causes the rubber mallet to contact a user interface thereby generating a haptic effect \u00b7 \u00b7 \u00b7 \" as recited in claim 19.", + "Accordingly, we sustain the Examiner* 's rejection of independent claim 19.", + "We also sustain the Examiner's rejection of claims 5, 6, 12, and 13 for which the Appellants make only the same arguments for patentability. App. Br. 13-14.", + "NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. 8 41.50(b) Claim 18", + "We adopt Examiner's findings and conclusions in the action from which this appeal is taken, and in the Examiner's Answer, regarding the limitations of independent claim 9, from which claim 18 depends.", + "Further, we find the additional limitation of claim 18 requiring \"wherein the actuator comprises a direct current motor having an arm\" is taught or suggested by the combination of Wegmuller and Moilanen.", + "Wegmuller teaches a tactile force feedback mechanism (the actuator) that includes an arm with an actuable member and a contact member. Wegmuller 11 21-22.", + "Wegmuller further teaches that the movement of the arm is produced by the interaction of an actuable member (i.e., a permanent magnet), and an electromagnet consisting of a coil surrounded by a circular cylinder. Wegmuller 723.", + "Moilanen teaches that conventionally \"a haptic\" feedback signal is generated, e.g.l.] with a DC motor, a solenoid, a moving magnet actuator, etc.\" Moilanen, 6:51-58.", + "Therefore, it would have been obvious for one of ordinary skill in the art to substitute the known elements of an actuator having an arm moved by use of magnets, as disclosed in Wegmuller, with one having an arm moved by a DC motor, as taught by Moilanen, to yield the predictable result of an actuator comprising a direct current motor having an arm for generating a haptic effect.", + "Having adopted the Examiner's findings for all other limitations, we reject claim 18 as unpatentable over Leung, Wegmuller, Yoshikawa, and Moilanen." + ] +} \ No newline at end of file diff --git a/opinion_split/2013004528_DECISION.json b/opinion_split/2013004528_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5e4d3194ff4d434c4022f137e3ab8030c4cdf547 --- /dev/null +++ b/opinion_split/2013004528_DECISION.json @@ -0,0 +1,63 @@ +{ + "appellant_arguments": [ + "Appellants argue (App. Br. 7-8; Reply Br. 2-4) the Examiner's rejection of claim 33 under 35 U.S.C. 5 112, first paragraph, as failing to comply with the written description requirement is in error.", + "As one skilled in the art would readily recognize, a communication session is a dialogue between two or more communication devices.", + "According to claims 33 and 34, during the communication session, which is a dialogue, the first language speech data is converted into first metadata and the second language speech data is converted into second metadata.", + "Claims 33 and 34 recite that, during the communication session, the first metadata is converted into second language converted metadata and the second metadata is converted into first language converted metadata. App. Br. 7.", + "Appellants argue (App. Br. 9-12; Reply Br. 4-7) the Examiner's rejection of claim 33 under 35 U.S.C. 8 103(a) as being obvious over the combination of Aityan and Griffin is in error.", + "Appellants contend, \"none of the cited references \u00b7 \u00b7 \u00b7 discloses or suggests that a delay is introduced prior to forwarding speech data to second and third voice terminals such that the second and third voice terminals receive speech data at the same time during a communication session.\" App. Br. 9-10.", + "In addition, Appellants contend: [T]he cited portions of Griffin disclose delaying the presentation of the response from the first recipient until all recipients have received copies of the outbound message 400.", + "However, the delay is only introduced for a message being sent to a single user.", + "As noted above, claim 33 recites that a delay is introduced prior to forwarding the second language speech data to the second and third voice terminals such that the second and third voice terminals receive the speech data at the same time during the communication session.", + "Griffin does not disclose this.", + "In order to meet this feature, assuming, arguendo, that the message corresponded to the second language speech data recited in claim 33, Griffin would have to disclose that the delay is being introduced for a message such that the message is received at two terminals (i.e., the second and third terminals positively recited in claim 33) at the same time during a communication session.", + "This simply is not the case. App. Br. 10-11 (footnote omitted).", + "Appellants further contend the Examiner responds to their reasoning \"with three arguments. App. Br. 11; and see Reply Br. 6 et seq.", + "3 Appellants disagree with the Examiner's third \"argument\" (see Final Act. 4) by contending the Examiner mischaracterized Griffin because \"Griffin does not disclose delaying the forwarding of responses.\" App. Br. 12.", + "Instead, Appellants contend: Griffin only discloses delaying a single response .", + "\u00b7 \u00b7 [and] even assuming, arguendo, that Griffin did in fact disclose \"responses, \" the claims recite that \"a delay is introduced prior to forwarding the second language speech data to the second and third voice terminals such that the second and third voice terminals receive the speech data at the same time during the communication session. \"", + "Thus, the delay is introduced such that second and third terminals receive speech data at the same time.", + "In Griffin, the delayed response is only being sent to the original sender. Id." + ], + "examiner_findings": [ + "Rejections on Appeal R1. Claims 2, 3, 9, 11, 18, 33, and 34 stand rejected under 35 U.S.C. 8 112, first paragraph, as failing to comply with the written description requirement. Ans. 3.", + "R2. Claims 2, 3, 9, 11, 18, 33, and 34 stand rejected under 35 U.S.C. & 103(a) as being obvious over the combination of Aityan and Griffin. Ans. 6.", + "The Examiner finds: According to Griffin \u00b7 \u00b7 \u00b7 \"the mobile terminal 100 or the server complex 204\" (Fig. 1) \"could delay\" (introduce a delay) \"presentation of delivery\" (forwarding speech data) \"of the recipient response until the original message was received by all recipients\" (to other clients who are unlimited (or more than 2 voice terminals)) \"and an echo sent back to the user\".", + "This without any doubt teaches that an incoming message is received by two or more terminals, and does indeed fulfill applicant's requirement that the Griffin's \"delay\" would [ensure] the incoming \"message is received at two terminals\". Ans. 18 (citing Griffin col. 13, 11. 25-29; Fig. 1)." + ], + "ptab_opinion": [ + "Based on Appellants' arguments (App. Br. 7-12), we decide the appeal of Rejection R1 of claims 2, 3, 9, 11, 18, 33, and 34 on the basis of representative claim 33; and we also decide the appeal of Rejection R2 of claims 2. 3, 9, 11, 18, 33, and 34 on the basis of representative claim 33.", + "Dependent claims not argued separately fall with the respective independent claim from which they depend. See 37 C.F.R. 8 41.37(c)(1)(V)(2012),", + "In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants.", + "We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. $ 41.37(c)(1)(iv).", + "We disagree with Appellants' arguments with respect to claims 2, 3, 9, 11, 18, 33, and 34, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments.", + "We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted.", + "However, we highlight and address specific findings and arguments regarding claim 33 for emphasis as follows.", + "These contentions present us with the following issue: Did the Examiner err in finding the originally-filed disclosure does not provide written description support sufficient to demonstrate that the inventors, at the time of invention, were in possession of the contested limitation [L1] \"a third interface configured to receive speech data of the second language from a third terminal where the first language speech data and the second language speech data are exchanged during a communication session between the voice terminals,\" as recited in independent apparatus claim 33, and as commensurately recited in independent method claim 34?", + "We note \"actual 'possession' or reduction to practice outside of the specification is not enough.", + "Rather \u00b7 \u25a0 \u25a0 it is the specification itself that must demonstrate possession.\" Ariad Pharmaceuticals, Inc. V. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc); see also PowerOasis, Inc. V. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed.Cir.2008) (explaining that S 112, I 1 \"requires that the written description actually or inherently disclose the claim element\").", + "\"It is not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure \u00b7 \u00b7 \u00b7 Rather, it is a question whether the application necessarily discloses that particular device.", + "\u00b7 \u00b7 A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson V. Coleman, 314 F.2d 533, 536 (CCPA 1963)).", + "This reasoning is applicable here.", + "Therefore, we find unavailing Appellants' contentions regarding what a person with skill in the art would readily recognize. App. Br. 7; Reply Br. 2.", + "Further, sufficiency of written description requires that the original disclosure reasonably convey to a person having ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of filing.", + "The exact level of detail required depends upon \"the nature and scope of the claims and on the complexity and predictability of the relevant technology.\" See Ariad, 598 F.3d at 1351.", + "As for the specific limitation [L1] identified by the Examiner as not having written description support (Final Act. 6; Ans. 4-5), i.e., \"a third interface configured to receive speech data \u00b7 \u00b7 \u00b7 \" we note Appellants have not addressed the Examiner's specific findings and, in particular, have not identified any supporting disclosure in the originally-filed application in response to the Examiner's findings. See App. Br. 7-8; Reply Br. 2-4.", + "Arguments not made are waived. 37 C.F.R. 8 41.37(c)(1)iv).", + "Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's finding that claim 33 lacks written description support for the contested [L1] limitation.", + "Therefore, we sustain the Examiner's written description rejection under 8 112, first paragraph of independent claim 33 and claims 2, 3, 9, 11, 18, and 34 which fall therewith. See Claim Grouping, supra.", + "These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a communications bridge that includes, inter alia, \"a second language application \u00b7 \u00b7 \u00b7 [that] forwards the second language speech data to the second and third voice terminals during the communication session[.] [L2] where a delay is introduced prior to forwarding the second language speech data to the second and third voice terminals such that the second and third voice terminals receive the speech data at the same time during the communication session,\" as recited in claim 332", + "\"In the patentability context, claims are to be given their broadest reasonable interpretations \u00b7 \u00b7 \u00b7 limitations are not to be read into the claims from the specification.\" In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).", + "Any special meaning assigned to a term \"must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.\" Multiform Desiccants, Inc. V. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998),", + "Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC V. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).", + "We note Appellants have provided no evidence that combining such teachings was \"uniquely challenging or difficult for one of ordinary skill in the art,\" Leapfrog Enters., Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), nor have Appellants presented evidence that this incorporation yielded more than expected results.", + "Rather, we find Appellants' invention is simply a combination of known teachings that realize a predictable result.", + "The Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 418 (2007).", + "The skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" since the skilled artisan is \"a person of ordinary creativity, not an automaton.\" Id. at 420-21.", + "In addition, Appellants have not provided objective evidence of secondary considerations which our reviewing court guides \"operates as a beneficial check on hindsight.\" \" Cheese Sys., Inc. V. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013).", + "Therefore, we agree with the Examiner's finding that Griffin teaches, or at least suggests, \"the second and third voice terminals receive the speech data at the same time during the communication session,' \" as recited in contested limitation [L2] of claim 33.", + "Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art.", + "Therefore, we sustain the Examiner's obviousness rejection of independent claim 33 and claims 2, 3, 9, 11, 18, and 34 which fall therewith. See Claim Grouping, supra.", + "To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2-7) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause. See 37 C.F.R. . 41.41(b)(2)." + ] +} \ No newline at end of file diff --git a/opinion_split/2013004574_DECISION.json b/opinion_split/2013004574_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ae0108bd2588ef3a6cad0f9ff1e5997a6f8ffd19 --- /dev/null +++ b/opinion_split/2013004574_DECISION.json @@ -0,0 +1,74 @@ +{ + "appellant_arguments": [ + "1. A method of detecting an unauthorized modification of a financial terminal comprising: [1] providing a detection device being preloaded with a stored electromagnetic profile, said stored electromagnetic profile corresponding to an uncompromised state of the financial terminal; [2] receiving, with the detection device, an electromagnetic profile emitted from the financial terminal, said received electromagnetic profile including radio wave activity if present; and, [3] calculating, with the detection device, a correlation coefficient based on said stored electromagnetic profile and said received electromagnetic profile to determine, with the detection device, whether an unauthorized modification has been made to the financial terminal.", + "Facts Related to Appellant's Disclosure 03.Thus, all electronic equipment ha[s] a corresponding electromagnetic fingerprint. However, if the terminal is modified in some way, such as by adding a skimmer (which extracts sensitive information during a transaction), an enhanced definition monitor (ECTV), or a radio transmitter (such as a Bluetooth, global system for mobile communication (GSM), or WiFi transmitter) to the terminal to broadcast transactional data to a remote receiver in the vicinity, the terminal will have a different electromagnetic fingerprint than an unmodified terminal. The device formed in accordance with the present invention is preferably a portable compact detection device or sniffer that can be pre-loaded with known electromagnetic fingerprints of original, unmodified equipment and can then be used to very quickly scan the financial terminal at the point-of-sale or transaction to see if the fingerprint of the terminal is substantially different from its expected electromagnetic profile. Spec. para. 24." + ], + "examiner_findings": [ + "The Examiner relies upon the following prior art: Preikschat US 4,768,034 Aug. 30, 1988 Peterson US 2005/0078093 A1 Apr. 14, 2005 Ross US 2006/0169764 A1 Aug. 3, 2006 Block US 7,093,749 B1 Aug. 22, 2006 Yuzik US 7,403,115 B2 July 22, 2008 Yajima US 2008/0305771 A1 Dec. 11, 2008 Breed US 7,663,502 B2 Feb. 16, 2010 Austin UK 2270182 A Mar. 2, 1994", + "Claims 1, 3-7, 9-15, 25, and 26 stand rejected under 35 U.S.C. $ 112, first paragraph, as lacking a supporting written description within the original disclosure.", + "Claims 1, 3-7, 9-15, 25, and 26 stand rejected under 35 U.S.C. $ 112, second paragraph, as failing to particularly point out and distinctly claim the invention.\"", + "Claims 1, 7, 13, 15, 25, and 26 stand rejected under 35 U.S.C. $ 103(a) as unpatentable over Block, Yuzik, and Peterson.", + "Claims 1, 7, 13, 15, 25, and 26 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Block, Yuzik, and Breed.", + "Claims 3, 4, 9, and 10 stand rejected under 35 U.S.C. $ 103(a) as unpatentable over Block, Yuzik, Peterson, and Ross.", + "Claims 3, 4, 9, and 10 stand rejected under 35 U.S.C. $ 103(a) as unpatentable over Block, Yuzik, Breed, and Ross.", + "Claims 5 and 11 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Block, Yuzik, Peterson, and Austin.", + "Claims 5 and 11 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Block, Yuzik, Breed, and Austin.", + "Claims 6 and 12 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Block, Yuzik, Peterson, and Yajima.", + "Claims 6 and 12 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Block, Yuzik, Breed, and Yajima.", + "Claim 14 stands rejected under 35 U.S.C. S 103(a) as unpatentable over Block, Yuzik, Peterson, and Preikschat.", + "Claim 14 stands rejected under 35 U.S.C. S 103(a) as unpatentable over Block, Yuzik, Breed, and Preikschat.", + "The Examiner found that the *if present\" this limitation suggests that what is received in limitation [2] may not be made up of electromagnetic radiation.", + "The Examiner applied Block for its description of a detection device preloaded with a stored electromagnetic profile of an uncompromised state of a financial terminal, receiving an electromagnetic profile of an uncompromised state of the financial terminal and determining from some algorithm comparing the emitted and stored profiles whether an unauthorized modification has been made.", + "The Examiner applied Yuzik to show that such stored and emitted profiles may be in the form of a steady state and subsequent actual electromagnetic field \"signature\" and that the fraudulent activity may arise from circuitry creating radio waves, and Peterson and Breed to show computing a coefficient for statistical comparison purposes as would be appropriate in Block's comparison.", + "As the Examiner found (Ans. 111), infra-red is part of the electromagnetic spectrum and electromagnetic waves are reflectable depending on wavelength and medium.", + "Also, as the Examiner found, Block refers to generic radiation sensing rather than only to infra-red radiation specifically.", + "Second, as the Examiner found, Block describes automatically performing the detection. Ans. 112-115." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE' Simon Blythe (Appellant) seeks review under 35 U.S.C. $ 134 of a final rejection of claims 1, 3-7, 9-15, 25, and 26, the only claims pending in the application on appeal.", + "We have jurisdiction over the appeal pursuant to 35 U.S.C. 9 6(b).", + "1 Our decision will make reference to the Appellant's Appeal Brief (\"Br., \" filed August 9, 2012) and the Examiner's Answer (\"Ans., mailed November 8, 2012), and Final Rejection (\"Final Rej., \" mailed February 7, 2012).", + "The Appellant invented a way of detecting unauthorized modifications to financial terminals. Specification para. 1.", + "An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added).", + "ISSUES The issues of written description and definiteness turn primarily on whether the limitation of receiving an electromagnetic profile emitted from the financial terminal, including radio wave activity if present is both supported by the Specification and definite in scope.", + "The issues of obviousness turn primarily on whether infrared radiation is in the electromagnetic spectrum.", + "FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence.", + "Facts Related to Claim Construction 01.The disclosure contains no lexicographic definition of \"emit. ~ 02.The ordinary meaning of emit is to send something into the air. 3", + "Facts Related to the Prior Art Block 04.Block is directed to automated banking machines. Block 1:17.", + "05.Block facilitates the detection of fraudulent activity and reduces the risk of unauthorized access. Block 3:44-58,", + "06.Block's ATM is provided with radiation sensing devices. The controller is programmed to sense changes in the magnitude of radiation sensed by the one or more radiation sensing devices. The installation of an unauthorized card reading device in proximity to the card reading slot generally produces a change in the magnitude of the radiation sensed by the radiation sensing devices. The exemplary controller is programmed to recognize such changes and to take appropriate action in response thereto so as to reduce the possibility of fraud. Block 6:5-16.", + "07.Block's housing includes radiation emitting devices that emit visible radiation or nonvisible radiation such as infrared radiation\" which can be used for sensing the presence of unauthorized card reading devices adjacent to the card slot. Block's radiation sensing devices are positioned to detect changes in the radiation reflected from the radiation emitting devices. The controller compares one or more values corresponding to the magnitude of reflected radiation sensed by one or more of the radiation sensing devices, to one or more stored values and to make a determination whether the comparison is such that there is a probable unauthorized card reading device installed on the fascia of the machine. Block's controller may be execute fuzzy logic programming for purposes of determining whether the nature of the change in reflected radiation is such that there has been an unauthorized device installed and whether appropriate personnel should be notified. Block 26:17-52.", + "08.Block describes how the installation of an unauthorized card reading device changes the amount of radiation from emitting devices and that is reflected to the sensors. Depending on the nature of the device and its structure, the amount of reflected radiation may increase or decrease. However, a detectable change will often occur in the magnitude of sensed radiation between a present transaction and a prior transaction which was conducted prior to an unauthorized card reading device being installed. Block 27:3-12.", + "Yuzik 09.Yuzik is directed to surveillance of suspects of automated banking machine (ABM) fraud. Yuzik 1:7-9.", + "10.Yuzik describes an illustrative detector for detecting the presence of an unauthorized foreign device. The detector may be configured and calibrated to detect a steady state electromagnetic field \"signature\" generated in the vicinity of bank card slot and may then be configured to detect changes in the electromagnetic field when a foreign device with components capable of disturbing the electromagnetic field is placed in the vicinity of bank card slot. For example, skimmers capable of reading the magnetic stripe on bank card and placed near bank card slot will normally include circuitry and/or components that will sufficiently disturb the electromagnetic field to be detected by detector. By way of example, the detector may be an electromagnetic field based skimmer detector manufactured by Wincor Nixdorf of Paderborn, Germany. Yuzik 6:2-19.", + "Peterson 11.Peterson is directed to touch input devices. Peterson para. 1.", + "12.Peterson describes developing signal profiles that characterize intended or unintended signal data in terms of one or more of the features of a signal as a function of time. A correlation can be performed on the features of the candidate signal and that of the signal profile to generate a correlation coefficient. The calculated correlation coefficient can be compared to a threshold (e.g., 80%) to discriminate between intended and unintended signal causes. Peterson para. 57.", + "Breed 13.Breed is directed to controlling systems in an asset. Breed 8:6-8.", + "14.Breed describes detecting by pulse modulating either a carrier wave or sending pure pulses of electromagnetic radiation to the reflection surfaces and comparing the returned signal with the transmitted signal through a correlation analysis. Breed 443:21- 32.", + "ANALYSIS Claims 1, 3-7, 9-15, 25, and 26 rejected under 35 U.S.C. $ 112, first paragraph, as lacking a supporting written description within the original disclosure", + "We are persuaded by the Appellant's argument that the Specification paragraph 24 supports the limitation *including radio wave activity if present.\" Br. 4.", + "This is an inaccurate reading of the limitation because it is the \"activity\" rather than the electromagnetic radiation per se that may not be present.", + "This is supported by Specification paragraph 24 describing sniffer or the like activity that may or may not be present.", + "Claims 1, 3-7, 9-15, 25, and 26 rejected under 35 U.S.C. 5 112, second paragraph, as failing to particularly point out and distinctly claim the invention", + "We are persuaded by the Appellant's argument that Specification paragraph 24 clarifies that radio-wave activity may or may not be present, depending on whether something is occurring that affects (e.g. modulates) the emitted profile. Br. 5.", + "Again, it is the activity rather than the emitted electromagnetic (radiation) profile that may or may not be present.", + "The claimed use of the word emit requires that the electromagnetic profile be radiated.", + "Claims 1, 7, 13, 15, 25, and 26 rejected under 35 U.S.C. $ 103(a) as unpatentable over Block, Yuzik, and (Peterson or Breed)", + "Block actually describes such unauthorized modification arising from an unauthorized card reading device, similar to the types of unauthorized use described in Appellant's Specification. See FF 04-08.", + "We are not persuaded by the Appellant's argument that \"the Examiner asserted that *nonvisible radiation* in Block 'obviously includes radio frequency radiation*. However, Block requires reflectable radiation. Radio- waves are not reflectable radiation. Block relies on reflection of radiation to indicate tampering. Radio-waves are not useable for this purpose.\" Br. 5.", + "Satellite dishes are common examples of radio wave reflection immediately apparent to any lay person let alone one of ordinary skill.", + "Further what is recited as being emitted is an electromagnetic profile rather than radio waves.", + "The only recitation of radio waves in the claims modifies activity, as we found supra in the rejections under 35 U.S.C. $ 112.", + "This may be no more than modulation of the emitted electromagnetic profile.", + "More critical still, the claim makes no recitation of reflection or non-reflection of radio waves.", + "Infra-red is described as one embodiment.", + "Thus, the full scope described by Block encompasses the portion of the electromagnetic spectrum conventionally referred to as ordinary radio waves.", + "We are not persuaded by the Appellant's argument that *any hypothetical combination of Block and Yuzik would utilize a radio listening device which requires a person to actually hear radio activity for detecting. This is a different approach from that provided by the subject invention.\" \" App. Br. 7.", + "First, the Examiner did not find it was predictable to bodily incorporate Yuzik wholesale into Block.", + "\"The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. \u00b7 \u00b7 \u00b7 Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.\" In re Keller, 642 F.2d 413, 425, (CCPA 1981).", + "See also In re Sneed, 710 F.2d 1544, 1550, (Fed. Cir. 1983) (\"It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review. \"); and In re Nievelt, 482 F.2d 965, (CCPA 1973) (\"Combining the teachings of references does not involve an ability to combine their specific structures. \").", + "Third, nothing in the claim excludes a person from actually hearing radio activity for detecting as well.", + "Although Appellant nominally also argues the reliance upon Breed (Br. 7), these arguments only contend that these references do not ameliorate the above contentions.", + "None of the remaining rejections are separately argued." + ] +} \ No newline at end of file diff --git a/opinion_split/2013004864_DECISION.json b/opinion_split/2013004864_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7a182af9e400d3082fc87186b7fc66e0dc6c21e6 --- /dev/null +++ b/opinion_split/2013004864_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "Appellants assert the Examiner errs in determining it would have been obvious, from the combination of AAPA, Ura, and Nakanishi, to have a probe tip comprising a base end with a cavity for receiving an identifier element that remains visible when the tip is mounted on a handpiece and during use thereof. as recited in claim 1. Appeal Br. 7-10: Reply Br. 2-6." + ], + "examiner_findings": [ + "REJECTIONS ON APPEAL Claims 1. 2, 5-10, 12, and 13 are rejected under 35 U.S.C. , 103(a) as unpatentable over Applicants' Admitted Prior Art (*AAPA*), Ura (US 5,941,706, iss. Aug. 24, 1999), and Nakanishi (US 2004/0098006 A1, pub. May 20, 2004).", + "Claims 3 and 4 are rejected under 35 U.S.C. .5 103(a) as unpatentable over AAPA, Ura, Nakanishi, and Vogel (US 6,082,227, iss. July 4, 2000).", + "The Examiner initially finds AAPA includes \"an identifier element received on the base end [of a tip] capable of projecting beyond a handpiece when the tip is mounted thereon.\" ~ Final Act. 2 (emphasis added, citing Spec., pg. 2, 1 3).", + "Rather, Ura is cited as teaching a cavity forming a housing receiving an identifier element made of a biocompatible elastic material with a melting temperature higher than 130. Final Act. 3-4; Ans. 7.", + "The Examiner finds Nakanishi discloses \"a medical handpiece with interchangeable tips having an identifier element (1b) thereon which projects beyond the handpiece and therefore remains visible when the tip is mounted on the handpiece and during use thereof.\" Final Act. 4.", + "The Examiner determines it would have been obvious to modify the AAPA/Ura appliance \"by ensuring the identifier element remains visible as taught by Nakanishi in order to allow the operator to know at a glance which one of a plurality of tips is being used without error when the handpiece is assembled.\" Id." + ], + "ptab_opinion": [ + "We REVERSE.", + "For the following reasons, this assertion is persuasive.", + "We agree with Appellants that AAPA does not disclose locating an identifier element on the base end of a tip. See Appeal Br. 7; Reply Br. 3.", + "Specifically, although AAPA includes *marking the tip\" with an identifier element, it does not specify exactly where the tip is marked, and particularly does not specify that the tip is marked on its base end. Spec., 2:28-3:3.", + "The Examiner does not rely on Ura in relation to locating the identifier element on the base end of the tip.", + "The Examiner does not, however, find that Nakanishi's visible identifier element Ib' is located on a base end of the tip, as recited in claim 1. Final Act. 4; Ans. 8.", + "Nor does the Examiner provide any reason(s) as to why it would have been obvious to use Nakanishi* visible identifier element Ib' at the base end of the tip of the AAPA/Ura appliance. Final Act. 4; Ans. 8.", + "In short, the Examiner's s rejection of claim 1 erroneously relies on AAPA as disclosing an identifier element located on the base end of a tip, and does not otherwise provide analysis for why it would have been obvious to locate an identifier element on the base end of a tip.", + "The rejection of claims 2, 5-10, 12, and 13 does not cure these deficiencies with respect to claim 1. See Final Act. 2-4.", + "We, therefore, do not sustain the rejection of claims 1, 2, 5-10, 12, and 13 as unpatentable over AAPA, Ura, and Nakanishi.", + "The Examiner's reliance on Vogel in rejecting claims 3 and 4 does not cure the deficiencies noted above with respect to claim 1 being unpatentable over AAPA, Ura, and Nakanishi. See Final Act. 4-5 (citing Vogel as disclosing both a circular cavity and an oblong cavity to receive a corresponding shape of identifying means).", + "We therefore do not sustain the rejection of claims 3 and 4." + ] +} \ No newline at end of file diff --git a/opinion_split/2013004925_DECISION.json b/opinion_split/2013004925_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a35e08d12060998bb32abd934886980f27b30a0f --- /dev/null +++ b/opinion_split/2013004925_DECISION.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "Appellants argue claims 1-12 as one group.", + "App. Br. 9-20.", + "Appellants contend that the Examiner's rejection of claims 1-12 as obvious over Sandholm and Wong is in error because the combination of 3 See Ethicon, Inc. V. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Sandholm and Wong does not teach the limitations regarding wherein the estimate of potential savings defines a target savings, wherein the target savings is not committed to by the supplier, and the step of storing data indicative of the target savings (limitations [11]-[13).", + "See App. Br. 10-19, Reply Br. 2-5.", + "Specifically, Appellants argue that Wong, upon which the Examiner relies, does not teach storing data indicative of the target savings in a data object for at least one of a performance objective for an employee or a bonus agreement for the employee (limitation [13D.", + "Id.", + "Appellants argue \"the position that storing in any type of data object whatsoever can be interpreted as teaching storing in a data object for at least one of: a performance objective for an emplovee or a bonus agreement for the employee. \" is improper as it is unreasonably broad in view of the Specification.", + "App. Br. 17, 18.", + "Appellants further argue that the Examiner's rejection is not adequately supported by an explicit analysis and rational underpinning as required to support the conclusion of obviousness.", + "App. Br. 19, 20; Reply Br. 6.", + "Appellants present the same arguments against the rejection of claims 13-20 as presented against the rejection of claims 1-12.", + "App. Br. 20-41." + ], + "examiner_findings": [ + "Claims 1-20 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Sandholm (US 2010/0106652 A1, pub. Apr. 29, 2010) and Wong (US 2003/0149578 AI, pub. Aug. 7, 2003).", + "See Final Act. 4, citing Wong 11 160-162 and 488; see also Ans. 3.", + "The Examiner finds Sandholm teaches limitations WH of claim 1, and Wong teaches the remaining limitations [8]-[13].", + "Final Act. 3, 4.", + "The Examiner reasons \"(i]t would have been obvious to one of ordinary skill in the art at the time of the invention to combine these lacking limitations disclosed by Wong with the invention of Sandholm because it would provide and [sic] improved and more efficient method for purchasing activities.\"", + "Id. at 4." + ], + "ptab_opinion": [ + "Appellants' invention is directed to methods and apparatuses for use with purchasing activities to explore savings.", + "See Spec. p. 2, II. 5-7 and 19- 24.", + "Claim 1, reproduced below, is illustrative of the subject matter on appeal:", + "1. A method comprising: [1] receiving, by a processing system, data indicative of purchasing activities; [2] displaying, by a processing system, a summary of at least a portion of the purchasing activities; [3] receiving, by a processing system, a user request to simulate a change to the at least a portion of the purchasing activities; [4] determining, by a processing system, at least one result of the simulated change to the at least a portion of the purchasing activities; [5] displaying, by a processing system, the at least one result of the simulated change to the at least a portion of the purchasing activities; [6] receiving, by a processing system, a user request to store data indicative of the at least one result; and [7] storing, by a processing system, data indicative of the at least one result in association with the data indicative of the purchasing activities; [8] wherein the at least one result comprises: an estimate of potential savings from the simulated change to the at least a portion of the purchasing activities; [9] wherein the data indicative of purchasing activities comprises a data object defining a contract with a supplier; [10] wherein the contract with the supplier comprises a target value for the contract with the supplier; [11] wherein the estimate of potential savings from the simulated change defines a target savings for the contract with the supplier compared to the target value of the contract with the supplier; and Application 12/971.274 [12] wherein the target savings for the contract with the supplier is not committed to by the supplier; [13] the method further comprising: storing, by a processing system, data indicative of the target savings for the contract with the supplier that is not committed to by the supplier in a data object for at least one of: a performance objective for an employee or a bonus agreement for the employee.", + "We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.", + "We have reviewed the Examiner's rejections in light of Appellants' contentions in the Appeal and Reply Briefs that the Examiner has erred.", + "We disagree with Appellants' positions for the below reasons.", + "We select claim 1 as representative.", + "37 C.F.R. 5 41.37(c)(iv) (2014).", + "Wong discloses that a cost management module identifies cost reduction opportunities and candidates based on calculations of savings per unit and aggregate potential savings based on uncommitted requirement, i.e. an estimate of potential savings from a simulated change \u00b7 \u00b7 \u00b7 wherein the target savings is not committed to by the supplier.\"", + "Wong further discloses that those calculations provide a cost report including target reductions and goals (data indicative of target savings) that is **within the processed database, \" i.e., stored in the processed database.", + "See Wong 11 73 and 163, and Table 2.", + "Thus, we agree with the Examiner's findings that Wong teaches the estimate of potential savings defining a target saving that is not committed to by the supplier as claimed in limitations [11] and [12] and storing data indicative of target savings in a data object.", + "Although Wong discloses storing data indicative of target savings for the contract and monitoring, guiding, and defining goals for performance (see Final Act. 4, citing Wong 11 963-966; see also Ans. 3), Wong does not specifically teach storing the data indicative of target savings in a data object of an employee's performance objective or bonus agreement.", + "However, we find the specific label of the data file/object in which the information is stored to be non-functional descriptive material that may not be relied upon for patentability.", + "We note that non-functional descriptive material cannot render patentable an invention that is otherwise not patentable over the prior art.", + "See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability); and Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (\"[The nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.\"). \").", + "Although we will not disregard any claim limitations and will assess the claimed invention as a whole, we will follow the Federal Circuit's guidance as in the Gulack decision and will \"not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate.\"", + "Id; see also King Pharm. Inc. V. Eon Labs, Inc., 616 F.3d 1267, 1279-79 (Fed. Cir. 2010) (applying the *printed matter\" reasoning to method claims containing an \"informing\" step that could be either printed or verbal instructions).", + "In this case, the relevant question is whether the specific label of the data object in which the data are stored has a \"new and unobvious functional relationship\" with the processing system-implemented method.", + "There is no objective evidence of record that there is a functional distinction in storing the data indicative of target savings in a data object labeled a processing database, as taught by Wong, or in a differently labeled data object, such as the claimed data object for an employee performance objective or bonus agreement.", + "The function of storing the data in a data object would be performed in the same manner regardless of the specific label of the data object.", + "As such, the specific label of the data object in which the data are stored constitutes non-functional descriptive material that may not be relied upon for patentability.", + "See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex parte Nehls, 88 USPQ2d at 1889, Concluding otherwise would result not only in Appellants' identified data object label distinguishing over the prior art, but equally would distinguish every other unique label for data objects.", + "However, we disagree that the cited portions of the Specification (see id.) distinguish a data object for an employee performance objective or bonus agreement from every other type of data object, particularly the processing database of Wong.", + "To give effect to Appellants' argument, we would need to ignore our reviewing court's concerns with repeated patenting.", + "See King Pharm., 616 F.3d at 1279 (\"The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.\" .\" (citation omitted).", + "We decline to do so.", + "Thus, the Examiner provides the required articulated reasoning with rational underpinning to support a legal conclusion of obviousness.", + "See KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007).", + "Appellants' statement that the Examiner fails to provide an explicit analysis and articulated reasoning with rational underpinning to support the legal conclusion (App. Br. 19, 20; Reply Br. 6) is not supported with adequate evidence or technical reasoning as to how the Examiner's analysis and reasoning are insufficient.", + "Therefore, we sustain the Examiner's 's rejection of independent claim 1 under 35 U.S.C. $ 103(a).", + "We also sustain the Examiner's rejection of dependent claims 2-12 for the same reasons we sustain the rejection of claim 1.", + "Thus, for the same reasons we sustain the Examiner's rejection of claim 1, we also sustain the Examiner' 's rejection of claims 13-20." + ] +} \ No newline at end of file diff --git a/opinion_split/2013005218_DECISION.json b/opinion_split/2013005218_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f9fdcefc7348606fbf9d2240e053f86c919e5b0c --- /dev/null +++ b/opinion_split/2013005218_DECISION.json @@ -0,0 +1,25 @@ +{ + "appellant_arguments": [ + "STATEMENT OF THE CASE Introduction Appellant's invention relates to selective recording for digital video recorders using implicit correlation (Spec. I 1).", + "Claim 1 is illustrative of the invention and reads as follows, with the disputed limitations in italies: 1. A method of ofidentifying programming estimated to meet a preference of a user, the method comprising: receiving, from a remote device, a user recording log comprising implicit data associated with programs recorded by the user over a time period; estimating similarity of the program recording log with user recording logs corresponding to a plurality of other users to create a preference profile for the user; and identifying a program, using the preference profile, for recording from content to be broadcast in the future, wherein the implicit data is collected in association with a user's interaction with a digital video recorder (DVR) and includes data indicative of recorded program viewing history and data indicative of at least one of program title or program ID, program run length, time of day of broadcast, wherein data indicative of recorded program viewing history includes a percentage of an entire recorded program which is played back, and wherein estimating the similarity of the program recording log includes using the recorded program viewing history and the program run length included in the user recording logs to create the preference profile.", + "ANALYSIS First Issue Appellant contends Robarts' query for shows played within a particular time frame allows a user to find programs broadcast during a specified window of time, but does not teach estimating the similarity of a program recording log using a program run length (Br. 6).", + "Appellant further contends that, although the duration of a program is available in Robarts' graphical interface, Robarts does not teach using this program duration in estimating the similarity of programming (Br. 7).", + "Second Issue Appellant contends the Examiner used impermissible hindsight to interpret Robarts' *particular time frame\" as the claimed \"program run length\" (App. Br. 6)." + ], + "examiner_findings": [ + "The Examiner's Rejection The Examiner rejected claims 1-20 under 35 U.S.C. 8 103(a) as being unpatentable over Robarts et al. (US 2005/0278741 A1; Dec. 15, 2005) and Leurs (US 2006/0101490 AI; May 11, 2006) (Ans. 4).", + "The Examiner finds the electronic program guide of Robarts automatically identifies programs a viewer is likely to watch based on viewing preferences, such as the viewer's favorite programs (Ans. 14, citing Robarts I 79).", + "The Examiner further finds the viewing preferences include searching within a particular time frame for the favorite shows, and finds the show duration (i.e., the program run length) is incorporated in that search (Ans. 14-15, citing Robarts 99 49, 77; see also Ans. 6-7, citing Robarts I 83 and Figs. 6-8)." + ], + "ptab_opinion": [ + "Issues on Appeal Appellant's contentions present us with the following issues: 1. Did the Examiner err in finding Robarts teaches estimating the similarity of a program recording log includes using the program run length, as recited in claim 122 2. Did the Examiner use impermissible hindsight when interpreting \"program run length?\"", + "We agree with the Examiner's finding that Robarts' program duration (e.g., Fig. 6, Seinfeld, 9:00-9:30 P.M.) is \"included\" when the electronic program guide searches for favorite programs (i.e., estimates similarity of programs) within a specified time frame.", + "Therefore, we are not persuaded the Examiner erred in finding Robarts discloses the disputed limitation of claim 1.", + "As discussed supra, we agree with the Examiner's finding that the program duration, or run length, is included in Robarts' search for similar programs.", + "See First Issue.", + "Thus, the Examiner's definition of **run time\" is the same as the definition proffered by Appellant (i.e., playing time of the program).", + "Additionally, the Examiner has provided *some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness\" based on factual findings supported by the record (see Ans. 4-8).", + "See KSR Int'l V. Teleflex, Inc., 550 U.S. 398, 417-18 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).", + "Accordingly, we are not persuaded of Examiner error because we find the Examiner did not use impermissible hindsight to rejected claim 1 over Robarts and Leurs." + ] +} \ No newline at end of file diff --git a/opinion_split/2013006169_DECISION.json b/opinion_split/2013006169_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..46c6e57d823dea9e1d9f60264852e0fc74361b00 --- /dev/null +++ b/opinion_split/2013006169_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [], + "examiner_findings": [], + "ptab_opinion": [ + "ANALYSIS We have reviewed the Examiner's obviousness rejection in light of Appellant's arguments, and we concur with the conclusions reached by the Examiner.", + "In particular, we agree with the Examiner the methods recited in the disputed claims are simply obvious variations of the clock synchronization schemes disclosed by Lee and Curran-Gray.", + "See Final Act. 2-6, 10-12; Ans. 5-10.", + "With respect to Appellant's s contention the Examiner improperly relied on legal precedent as motivation to combine the cited art, see App. Br. 18-20, we note the Examiner explicitly provided a separate reason one of skill in the art would have been motivated to combine the cited art in the claimed manner: to preserve the slave device's resources.", + "See, e.g., Final Act. 5; Ans. 10.", + "If prosecution continues, the Examiner may wish to consider whether the claims satisfy the requirements of 35 U.S.C. 8 112.", + "In particular, the Examiner may wish to determine consider whether Appellant's written description enables and provides support for the following limitations recited in claim 1 (and similar limitations recited in the other pending claims): .", + "The cited portions of Appellant's specification disclose sending a time value transfer message comprising a time of departure value of the request message, not the response message.", + "See Spec. I 46; App. Br. 3 (citing Spec. 11 46, 50; Figs. 6, 7).", + "In addition, the cited portions of Appellant's specification disclose the time value transfer message includes \"a time of reception value of the request message.\"", + "Spec. I 46.", + "Claim 1 does not recite that the time value transfer message includes this value.", + "The cited portions of Appellant's specification disclose calculating a clock correction value based on time of departure values and time of reception values, not time of reception values alone.", + "See Spec. I 48; App. Br. 3-4 (citing Spec. 11 46, 48, 50; Figs. 6. 7).", + "The cited portion of Appellant's specification discloses the second device records \"the time of reception value of the request message,\" not that this time value is recorded with respect to a clock of the second device.", + "See Spec. I 46; App. Br. 3 (citing Spec. I 46).", + "The Examiner may also wish to consider whether these limitations lack the necessary antecedent basis or render the claims indefinite." + ] +} \ No newline at end of file diff --git a/opinion_split/2013006327_DECISION.json b/opinion_split/2013006327_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ee3958956ccec552b8bbc5d928a5e4923914703d --- /dev/null +++ b/opinion_split/2013006327_DECISION.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "Appellant argues the Examiner erred because *Sharma teaches a system in which a portion of a page is highlighted, in order to allow it to be later identified by a portion identifier.", + "Note that when Sharma *highlights\" the selected content, it is not to visually modify content in a format that is to be duplicated on the recipient's system \u00b7 \u00b7 Rather, in Sharma the selected area is merely identified.\" App. Br. 6; Reply Br. 2.", + "Appellant argues: Athas teaches in the cited passages that a section of a web page (called a clip) can be identified, thus allowing another computer to go forward and backward though the user's clip list as well as navigating directly to a clip.", + "Paragraph [0063] further teaches that multiple clips can be displayed on a single page.", + "There is no teaching/suggestion of rendering multiple visually modified resources on a second system in a manner that mirrors how they were modified on a first system (\"transmitting the anchor store to a content receiver, wherein the content receiver is enabled to render the multiple visually modified resources by selecting one or more anchors from the anchor store\").", + "Rather, the clips in their original format are simply displayed together on one or more pages. App. Br. 8.", + "In other words, Appellant argues that claim 1 is patentable because a person of ordinary skill in the art at the time of Appellant's invention would not have found Athas to teach or suggest transmitting modification information about multiple modified resources instead of multiple modifications of a single modified resource.", + "Appellant advances similar arguments for the patentability of claims 8-10, 12-16, and 18-20. App. Br. 10-12.", + "Appellant argues *Sharma teaches that a particular section of a text on a webpage can be automatically scrolled to by the user of the anchor- augmented URL, \" and that \"[t]here is no teaching/suggestion that the webpage displayed on the receiving client's system will have the same visual modification as depicted on the sender's system \u00b7 \u25a0 \u25a0 \" App. Br. 9." + ], + "examiner_findings": [ + "Claims 1-20 are rejected under 35 U.S.C. $ 103(a) as unpatentable over Sharma and Athas. Final Act. 28.", + "The Examiner finds Sharma teaches or suggests modifying a selected region of a resource to create a first visually modified resource, and creating an anchor for the selected region of the visually modified resource. Final Act. 2-3 (citing Sharma 4:64-5:11; 1; Figs. 3A-3B).", + "In particular, the Examiner finds Sharma teaches highlighting a web page, and \"[h]lighting a portion of a web page is clearly visually modifying [a] portion of the web page. Specific description may be provided by defining start and end characters for the selected region.\" \" Ans. 3.", + "The Examiner finds Athas teaches or suggests creating an anchor store comprising multiple anchors for visually modified resources, and transmitting the anchor store to a content receiver enabled to render the multiple visually modified resources by selecting anchors from the anchor store. Final Act. 3-4 (citing Athas 11 49-50 and 62-63), Ans. 6-7 (citing Athas \" 36-63).", + "The Examiner finds Sharma teaches or suggests the recited limitations. See Final Act. 5 (citing Sharma 5:43-65, Fig. 5); Ans. 7 (citing Sharma 4:64-67, 6:31-44)." + ], + "ptab_opinion": [ + "Appellant seeks our review under 35 U.S.C. S 134(a) of the Examiner's Final Rejection of claims 1-20, which constitute all the claims pending in this application.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "The invention is directed to dynamically creating anchors for each section of an altered document, storing the anchors in an anchor store, and sending the anchor store to a receiving computer for viewing the altered document. Abstract.", + "Claim 1, reproduced below, is illustrative of the claimed subject matter:", + "1. A method for transmitting content, the method comprising: modifying a selected region of an original resource to create a first visually modified resource; dynamically creating an anchor for the selected region of the first visually modified resource, wherein the anchor describes a visual modification to the selected region of the original resource; appending the anchor to a Uniform Resource Identifier (URI) for the first visually modified resource to create an appended URI for the first visually modified resource; creating an anchor store that comprises multiple anchors, wherein the multiple anchors include the anchor for the selected region of the first visually modified resource, and wherein each of the multiple anchors corresponds with a different selected region of multiple visually modified resources that include the first visually modified resource; and transmitting the anchor store to a content receiver, wherein the content receiver is enabled to render the multiple visually modified resources by selecting one or more anchors from the anchor store.", + "We have reviewed the Examiner's rejection in light of Appellant's arguments that the Examiner has erred.", + "We disagree with Appellant's 's contentions, and adopt as our own the findings and reasons set forth by the Examiner in the Examiner's Final Action and Answer in response to Appellant's Appeal Brief.", + "We highlight the following for emphasis.", + "Issue 1: Whether Sharma teaches or suggests creating a first visually modified resource?", + "We are not persuaded by Appellant's argument.", + "Sharma teaches highlighting a portion 304 of a webpage, and embedding a portion identifier or anchor in a URL that identifies the highlighted portion. Sharma 4:64-5:2.", + "This is shown, for example, in Figure 3A of Sharma, reproduced below.", + "Figure 3A is a screenshot illustrating the creation of a URL with an embedded portion identifier or dynamic anchor that identifies a highlighted portion 304 of a web page.", + "When a recipient of the modified URL renders the web page using a web browser, the modified portion 304 of the web page is highlighted. Sharma 5:43-6:6.", + "This is shown, for example, in Figure 5 of Sharma, reproduced below.", + "Figure 5 is a screenshot illustrating the rendering of a URL having an embedded portion identifier or dynamic anchor that identifies a previously modified portion 304 ofa a web page.", + "As shown in Figures 3A and 5, when a sender modifies a web page and creates a dynamic anchor indicating the modification, and a receiver uses the embedded anchor to render the web page, the web page rendered on the receiver's browser is identical to the modified web page rendered on the sender's browser (e.g., having highlighted portion 304).", + "We note Sharma's procedure for modifying a web page, creating a dynamic anchor for the modification, and using the dynamic anchor to render the modified web page in the receiver's web browser is identical to the process described in Appellant's Specification. See Spec. 11 24-25,", + "Accordingly, we are not persuaded the Examiner erred in rejecting claim 1.", + "Issue 2: Whether the combination of Sharma and Athas teaches or suggests transmitting an anchor store to a content receiver enabled to render multiple visually modified resources by selecting one or more anchors from the anchor store?", + "We are not persuaded by Appellant's s argument.", + "\"The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art.\" In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).", + "*An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case.", + "Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.\" Leapfrog Enterprises, Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).", + "Consequently, an obviousness *analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\" \" KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007).", + "We are not persuaded by Appellant's contention that a person or ordinary skill in the art would not have understood Athas to teach or suggest transmitting modification information for multiple modified resources rather than a single modified resource.", + "Accordingly, we are not persuaded the Examiner erred in rejecting claim 1 over the combination of Sharma and Athas, and sustain the rejection.", + "Appellant does not separately argue for the patentability of claims 2-4, 6 and 7, which depend from claim 1. App. Br. 5-8.", + "Consequently, we sustain the Examiner's rejection of claims 2-4, 6- 10, 12-16, and 18-20 for the same reasons as claim 1.", + "Issue 3: Whether Sharma teaches or suggests visually modifying a resource in the same manner when the resource is rendered at a content sender and content receiver?", + "Claim 5 recites the visually modified resource includes all content found in the original resource, and the selected region is visually modified in the same manner at the content sender and content receiver. App. Br. 13 (Claims App 'x).", + "We are not persuaded by Appellant's argument.", + "As noted in the discussion of issue 1, supra, and as shown in Figures 3A and 5 of Sharma reproduced there, Sharma discloses the visually modified resource includes all content found in the original resource, and is visually modified in the same manner in the web browsers of the content sender (Fig, 3A) and content receiver (Fig. 5).", + "Accordingly, we are not persuaded the Examiner erred in rejecting claims 5, 11, and 17, and sustain the rejection of these claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2013006729_DECISION.json b/opinion_split/2013006729_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..2a2003ae2dd2ab10d1d62e933d68945d9278b640 --- /dev/null +++ b/opinion_split/2013006729_DECISION.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [ + "With respect to exemplary claim 20, Appellants contend: as explicitly found by the Examiner, it is the implementation in Fig. 10 (and thus also in Fig. 4) of Kano where the servers 304 and 308 are separate that are applied to the language of claim 20.", + "Based on the foregoing construction by the Examiner, it is clear that Kano does not disclose a first virtual tape library that includes a store to store a data structure as defined by claim 20, where this data structure in the store in the first virtual tape library associates a first subset of emulated tape storage elements of an emulated tape library with the storage elements in the first virtual tape library and which associates a second subset of emulated tape storage elements of the emulated tape library with corresponding storage elements emulated by remote storage in a second virtual tape library that is separate from the first virtual tape library, wherein the first virtual tape library is to present the emulated tape library that includes the storage elements of the first and second virtual tape libraries to a requesting entity that is separate from the first and second virtual tape libraries and that is configured to interact with a tape library having a target geometry.", + "Significantly, note that the data structure in the store of the first virtual tape library associates subsets of emulated tape storage elements of an emulated tape library with the respective storage elements in both the first virtual tape library and the second virtual tape library that is separate from the first virtual tape library. (App. Br. 6-7.)", + "Appellants further contend: It is apparent that there is no one virtual tape library (i.e. the first virtual tape library of claim 20) in Kano that includes a store to store the data structure of claim 20, which associates subsets of emulated tape storage elements of an emulated tape library with the respective storage elements in both the first virtual tape library and the second virtual tape library that is separate from the first virtual tape library (App. Br. 7.)", + "Additionally, Appellants contend: Fig. 4 or 10 of Kano does depict a tape library 302 and a vault 306-however, neither of these can constitute the first tape library of claim 20, since neither 302 nor 306 in Kano includes the \"data structure\" as defined by claim 20. (App. Br. 8.)", + "In response to the Examiner's correlation of the prior art to the claimed invention, Appellants contend that: the asserted combination of Kano and Gonzalez fails to disclose or hint at a first virtual tape library comprising a store to store a data structure which associates a first subset of emulated tape storage elements of an emulated tape library with the storage elements in the first virtual tape library and which associates a second subset of emulated tape storage elements of the emulated tape library with corresponding storage elements emulated by remote storage in a second virtual tape library that is separate from the first virtual tape library. (Reply Br. 1.)", + "Appellants further contend that: Since the Examiner has equated the first virtual tape library of claim 20 with the server 304/local library 302 in Fig. 4 of Kano, the Examiner would have to establish that the server 302/local library 302 includes a data structure that satisfies the language recited in claim 20.", + "It is clear that the first virtual tape library of Kano (mapped to the server 304 and local library 302 by the Examiner) does not include such a data structure.", + "In fact, the Examiner specifically stated that the data structure of claim 20 is satisfied by elements [d] and [e] identified in the annotated Fig. 4 of Kano provided in the Examiner's Answer. Id. at 4.", + "Element [d] identified by the Examiner in annotated Fig. 4 points to the table 312 in the server 304, while element [e] identified by the Examiner in annotated Fig. 4 points to the table 348 in the vault server 308.", + "In other words, what the Examiner has done is to argue that tables 312 and 348, which are located in different ones of the first and second virtual tape libraries (as mapped by the Examiner) make up the data structure of claim 20. (Reply Br. 2.) (Emphasis omitted.)", + "Furthermore, Appellants contend that: It is clear that the Examiner cannot do so, since the Examiner is relying on both tables 312 and 348 located in the first and second virtual tape libraries, respectively, to argue that Kano purportedly discloses the data structure of claim 20.", + "It is apparent that there is not one virtual tape library (i.e. the first virtual tape library of claim 20) in Kano that includes a store to store the data structure of claim 20, which associates subsets of emulated tape storage elements of an emulated tape library with the respective storage elements in both the first virtual tape library and the second virtual tape library that is separate from the first virtual tape library. (Reply Br. 3). (Emphasis omitted)." + ], + "examiner_findings": [ + "REJECTION The Examiner made the following rejection: Claims 1, 4-6, 9-11, 13, 14, 16-18, and 20-27 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over Kano in view of Gonzalez.", + "The Examiner maintains that the prior art of the Kano reference corresponds to the claimed invention as *First Virtual Tape Library is specifically mapped as Server 304 and local library 302 coupled together as stated in the Kano: Col. 5 Lines: 40-44.\" (Ans. 3)", + "The Examiner further maintains that: It can be clearly seen in Kano: Fig 4 that \"emulated tape library\" (see fal) \"includes a store to store the data structure of claim 20 (See [d] and [e] below), which associates subsets of emulated tape storage elements (See in [d] and [e] \"Import/Export\" association entry in oval in the data structures in store of 1\" VTL and 2nd VTL, physically executed by element 334 and 342) of an emulated tape library with the respective storage elements (See LO and fgl) in both the first virtual tape library (See [b] and the second virtual tape library (See [cD that is separate from the first virtual tape library (See [b] & [c] are separate). (Ans. 4-5.)", + "Additionally, the Examiner further maintains that: As per [4], annotated Fig 4 above clearly shows data structure 312 (See [d] in figure above) storing the data information of the first subset of emulated tape storage 332, Specifically data structure 312 Slot entries 1, 2, 3 are mapped to Media entries A01, A02, A03 respectively as reflecting the emulated storage area 332.", + "Similar mapping can be made between data structure 348 (See [e] in figure above) and emulated storage area 340.", + "Further \"Import/Export\" entries in data structures 312 & 348 (See ovals in figure above) associate the first and second virtual tape libraries (See [b] and [c] in figure above) as showing the second (or vault) virtual tape library is used to store or retrieve (Fig 4 - store & Fig. 10 - retrieve) data \"A03\" (flow shown in bold black arrow in original figures), using this association.", + "Hence appellant's assertions that there is no hint should not be found persuasive. (Ans. 5-6.)" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We reverse.", + "Therefore, we will address Appellants' arguments with respect to exemplary independent claim 20.", + "We agree with Appellants that the Examiner has not shown that the Kano reference teaches or fairly suggests the claimed: a store to store a data structure which associates a first subset of emulated tape storage elements of an emulated tape library with the storage elements in the first virtual tape library and which associates a second subset of emulated tape storage elements of the emulated tape library with corresponding storage elements emulated by remote storage in a second virtual tape library that is separate from the first virtual tape library, wherein the first virtual tape library is to present the emulated tape library that includes the storage elements of the first and second virtual tape libraries to a requesting entity that is separate from the first and second virtual tape libraries and that is configured to interact with a tape library having a target geometry, where the emulated tape library has a geometry that conforms to the target geometry even though the second virtual tape library has a geometry that does not conform to the target geometry. (Claim 20).", + "Nor has the Examiner specifically addressed Appellants' arguments regarding one virtual tape library (i.e. the first virtual tape library of claim 20) in Kano that includes a store to store the data structure of claim 20, which associates subsets of emulated tape storage elements of an emulated tape library with the respective storage elements in both the first virtual tape library and the second virtual tape library that is separate from the first virtual tape library.", + "Therefore, the Examiner has not shown each element of the invention recited in exemplary claim 20 is taught or suggested by the combination of the Kano and Gonzalez references.", + "Independent claims 13 and 18 contain similar limitations.", + "As a result, the Examiner has not shown each element of the invention recited in claims 13 and 18.", + "Consequently, we cannot sustain the rejection of claims 1, 4-6, 9- 11, 13, 14, 16-18, and 20-27 over the combination of the Kano and Gonzalez references." + ] +} \ No newline at end of file diff --git a/opinion_split/2013006781_DECISION.json b/opinion_split/2013006781_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d002c7bac7e01cdfaa75c2651d2f49e9837b1053 --- /dev/null +++ b/opinion_split/2013006781_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Appellant argues claims 1, 4-6, and 8-12 as a group. Br. 4-5.", + "Appellant focuses on the last *wherein** clause of claim 1 contending that none of these references, whether alone or in combination, teach that limitation. Br. 4-5.", + "To be clear, Appellant contends that these references fail to teach or suggest *wherein the presence of said one or more products in said customer delivery bin is detected based on monitoring the received reflected ultrasonic beam during the sensing period for at least one of a deflection, a disruption, or a distortion, from the transmitted ultrasonic beam attributable to the presence of said one or more products in said customer delivery bin.\" as recited in claim 1. Br. 4.", + "Although Appellant agrees with the Examiner \"that Mason fails to teach or suggest the above feature,' Appellant argues that \"Y \"Yamakawa does not overcome the deficiencies of Mason\" on this point. Br. 4.", + "Appellant contends that Bautista *does not overcome the deficiencies of Mason and Yamakawa\" because \"Bautista does not detect the presence of an object in a customer delivery bin. \" Br. 4.", + "This is because \"Bautista only detects a product container passing through a product delivery chute to the opening 20.\" Br. 4-5 (referencing Bautista I 19 and Abstract).", + "Appellant also contends \"that it would not be obvious to combine Mason and Yamakawa\" because \"Yamakawa teaches away from using a non-dispersive optical beam,\" (i.e., Yamakawa teaches the use of a different beam type). Br. 5.", + "Appellant's sole contention regarding the additional reliance by the Examiner on Levasseur (Final Act. 5) in rejecting claims 2 and 3 is that \"Levasseur does not overcome the deficiencies of Mason, Yamakawa, Bautista, and Schlinkmann.\" Br. 5." + ], + "examiner_findings": [ + "Claims 1, 4-6, and 8-12 are rejected under 35 U.S.C. S 103(a) as unpatentable over Mason, Yamakawa, Bautista, and Schlinkmann.", + "Claims 2 and 3 are rejected under 35 U.S.C. 6 103(a) as unpatentable over Mason, Yamakawa, Bautista, Schlinkmann, and Levasseur.", + "The Examiner's s rejection of claim 1 is a combination of the teachings of Mason, Yamakawa, Bautista, and Schlinkmann. Final Act. 2-4.", + "The Examiner identifies the specific teachings in each that is relied upon and provides reasons for their combination (but noting that \"Schlinkmann merely shows the [possibility] that one (i.e., ultrasonic sensor)] may be used in []place of the other (i.e., optical sensor)]\"). Final Act. 2-4.", + "The Examiner also re-iterates that \"Bautista teaches detecting the presence of an object within a delivery bin.\" Ans. 4." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. \u25cf 6(b).", + "We AFFIRM.", + "We select claim 1 for review with claims 4-6 and 8-12 standing or falling with claim 1. See 37 C.F.R. S 41.37(c)(1)().", + "We note Appellant's emphasis on the claimed \"customer delivery bin\" and the presence of a product therein.", + "This argument is not persuasive because the Examiner relies on Bautista for **sensing a presence of [a] product \u00b7 \u00b7 \u00b7 within said customer delivery bin (70) during a sensing period.\" Final Act. 4.", + "Accordingly, we agree with the Examiner that *one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.\" Ans. 4.", + "We thus are not persuaded the Examiner erred in correlating Bautista's chute 70 to the claimed \"customer delivery bin.\"", + "For these reasons, Appellant's contention (i.e., **Bautista does not detect the presence of an object in a customer delivery bin\" (Br. 4) is not persuasive of Examiner error.", + "Appellant's contention is not persuasive because Yamakawa is relied on for disclosing a transducer that *constantly receives\" a reflected beam during a sensing period as claimed. Final Act. 3.", + "Yamakawa is not relied on for the particular beam type disclosed and Appellant does not explain how Mason's sensor is unable to likewise *constantly receivell\" a beam as taught by Yamakawa. See Final Act. 3-4,", + "Accordingly, and based on the record presented, we sustain the Examiner's rejection of claims 1, 4-6, and 8-12.", + "Because we are not persuaded that the initial four references are deficient, Appellant's contention regarding Levasseur is not persuasive of Examiner error.", + "We sustain the Examiner's rejection of claims 2 and 3." + ] +} \ No newline at end of file diff --git a/opinion_split/2013007862_DECISION.json b/opinion_split/2013007862_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a0bd20cf96ad94b4aeaf92c6d602bbf4880466e2 --- /dev/null +++ b/opinion_split/2013007862_DECISION.json @@ -0,0 +1,41 @@ +{ + "appellant_arguments": [ + "Appellants do not contest the Examiner's findings regarding the disclosures of Bosselmann.", + "Rather, Appellants contend that the claims are entitled to the benefit of the filing date of the *671 application, which disqualifies Bosselmann as prior art under 35 U.S.C. 8 102(b). Appeal Br. 3-6.", + "Specifically, Appellants argue that every element of the claims is supported by the disclosure of the '671 application. Id. at 4-5.", + "In reply to the Examiner's finding that there is inadequate support in the *671 application for using the apparatus outside of the environment of a turbine engine, Appellants point to paragraph 16 of the '671 application, which recites that \"the detection system *can be used to detect other information within the gas turbine engine 10 or other aircraft systems. \" Reply Br. 2 (quoting '671 appl., para. 16).", + "Appellants also distinguish the facts of the present case from Tronzo by arguing that, unlike in Tronzo in which the specification disclosed only two species of the shape of the claimed cup and specifically distinguished the prior art shapes as inferior, nothing in the '671 application indicates that the turbine section is critical to the invention, but, instead, the *671 application discloses the turbine section as an example. Id." + ], + "examiner_findings": [ + "The Examiner determined that the present claims are not entitled to the benefit of the filing date of the '671 application because the '671 application *only envisioned an apparatus for a turbine engine\" and the scope of the claims has been broadened to encompass use of the apparatus outside of the environment of a turbine engine. Final Act. 2.", + "In particular, the Examiner found that \"[t]here is nothing in [the *671 application] to suggest that the apparatus is used outside the turbine section of a turbine engine,\" \" and that *[t]he disclosure clearly suggests the contrary, by asserting the advantages the window material provides with respect to the operating conditions specific to the turbine section of a turbine engine.\" Ans. 5.", + "According to the Examiner, the *671 application discloses and claims a single species, but the claims on appeal are directed to a genus. Id.", + "As such, the Examiner determined that the claims should not be afforded the filing date of the '671 application. Id. (citing Tronzo V. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998)).", + "Thus, the Examiner rejected the claims under 35 U.S.C. 5 102(b) as anticipated Bosselmann. Final Act. 3-4." + ], + "ptab_opinion": [ + "John A. Leogrande and Peter L. Jalbert (Appellants) seek our review under 35 U.S.C. 6 134 of the Examiner's decision rejecting claims 1-7 under 35 U.S.C. & 102(b) as anticipated by Bosselmann (WO 2008/040601 A1; published April 10, 2008)'.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We REVERSE.", + "Appellants' claimed subject matter *relates to a method of mounting a frequency probe in a turbine engine.\" Spec. para. 2.", + "Claim 1, reproduced below, is the sole independent claim and is illustrative of the subject matter on appeal.", + "1. An apparatus comprising: a blade tip clearance detection system; a probe configured to communicate first and second detection frequencies from and gather reflected signals for the blade tip detection system, the probe having an end supported relative to a casing; material providing a reference point; and wherein the blade tip clearance detection system is configured to: generate the first detection frequency configured to pass through the material to detect the position of a target structure; generate the second detection frequency configured to reflect from the material and detect the reference point; and determine a position of a surface proximate to the target structure based upon the reference point.", + "Appellants' application claims priority under 35 U.S.C. S 120 to U.S. non-provisional application 11/621,671, filed January 10, 2007 (hereinafter *the '671 application\"). Spec. para. 1.", + "Without the benefit of the earlier filing date, Bosselmann would qualify as prior art under 35 U.S.C. 6 102(b) against the claims on appeal.", + "The issue presented by this appeal is whether the *671 application provides adequate written descriptive support for the claimed invention such that the present claims are entitled to the benefit of the '671 application's filing date.", + "Under 35 U.S.C. 8 120, Appellants' claims are entitled to the benefit of the *671 application's filing date if the subject matter of the claims is disclosed in the *671 application in the manner provided by 35 U.S.C. 8 112, first paragraph.", + "35 U.S.C. S 120 (pre-AIA).", + "To satisfy the written description requirement, **the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.\" Ariad Pharms., Inc. V. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).", + "\"[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.\" Id. (citations omitted).", + "\"[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.\" Id. (citing Capon V. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)).", + "The court in Ariad noted that \"[f]or generic claims, we have set forth a number of factors for evaluating the adequacy of the disclosure, including *the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue. \u00b7\u00b7\u00b7 Id. (quoting Capon, 418 F.3d at 1359),", + "The *671 application describes an exemplary turbine section in a turbine engine 10 having a blade tip clearance detection system with a probe 24 supported in a casing 18. '671 appl., paras. 4, 6, 15, 16.", + "The blade tip clearance detection system monitors clearance between tips of rotating turbine blades 14 and a blade outer air seal 16. Id. at para. 16.", + "The *671 application describes that the *detection system can be used to detect other information within the gas turbine engine 10 or other aircraft systems.\" Id. (emphasis added).", + "We find that the disclosure of the *671 application provides adequate written description support for the use of the detection system outside of the environment of a turbine section of a turbine engine because the *671 application describes the turbine embodiment as an \"example\" and describes applicability of the detection system to *other aircraft systems\" apart from the gas turbine engine.", + "Further, this detection system is not based in a relatively immature or unpredictable art in which many species may need to be described in order to support adequately a claim to a genus.", + "For these reasons, the Examiner has failed to adequately show that the claims of the present application are not entitled to the priority of the *671 application's filing date.", + "As such, Bosselmann does not qualify as prior art under 35 U.S.C. , 102(b).", + "Therefore, we cannot sustain the rejection of claims 1-7 as anticipated by Bosselmann." + ] +} \ No newline at end of file diff --git a/opinion_split/2013008087_DECISION.json b/opinion_split/2013008087_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5768e29cd81c4beb442d0697860929357014167b --- /dev/null +++ b/opinion_split/2013008087_DECISION.json @@ -0,0 +1,59 @@ +{ + "appellant_arguments": [ + "First, Appellants rely on various definitions of the term storage to show that it does not include \"a transitory signal propagating through a transmission media.\" App. Br. 11-13.", + "Second, Appellants challenge the legal standard used by the PTO and set forth in a memo written by Commissioner Kappos. See David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. & Trademark Office 212 (Feb. 23, 2010); App. Br. 13-19.", + "Third, Appellants rely on Ex Parte Hu, App. No. 2010-000151, 2012 WL 439708 (BPAI Feb. 9. 2012) for the proposition that *computer-readable storage medium\" \"qualifies as patentable subject matter.\" Reply Br. 5-6.", + "Appellants also rely on a series of Federal Circuit cases for proposition that the Board must treat \"Beauregard claim 20 as a process for purposes of determining patent eligibility under 35 U.S.C. $ 101.\" App. Br. 19; see also App. Br. 13-19.", + "According to Appellants, because claim 1 recites the same process as claim 20 and claim 1 recites patentable subject matter, then \"claim 20 is also directed to statutory subject matter within the meaning of 35 U.S.C. 8 101.\" App. Br. 19.", + "The focus of Appellants' argument is on the construction of the term \"distance.\" App. Br. 22.", + "According to Appellants, distance means *[t]he spatial separation of two points, measured by the length of a hypothetical line joining them.\" App. Br. 25 (citation omitted).", + "In support of that definition, Appellants cite a dictionary definition and paragraph 36 of their specification. App. Br. 25.", + "Appellants do not dispute that Kezys determines whether one or both of the antennas are covered and the best antenna or weighted combination of antennas are selected based on the environment surrounding the device. App. Br. 21-22.", + "Appellants, however, argue that *[nJowhere does Kezys disclose or suggest detecting Ithe spatial separation of two points, measured by the length of a hypothetical line joining them' with respect to an object and a mobile station or antenna of a mobile station.' \" App. Br. 25; see also App. Br. 26 CUt is clear that *to determine whether one or both antennas are covered up by a user' (Kezys, col. 7, lines 23-24) is NOT synonymous with *detecting a distance between an object and the mobile station or a first antenna of the mobile station,' as recited in claim 1.\").", + "In reply, Appellants argue that the specification teaches measuring the distance of a hypothetical line in paragraph 36. Reply Br. 8.", + "Additionally, Appellants provide dictionary definitions of proximity sensor and optical proximity sensor in support of Appellants' claim construction. Reply Br. 9.", + "Appellants argue that \"Kezys provide[s] no disclosure or teaching of 'detecting a change in the detected distance, .. as required by claims 6 and 16. App. Br. 30 (emphasis omitted).", + "Additionally, in the Reply Brief, Appellants argue that *the Examiner has not indicated which of the elements of FIG. 7 and col. 9, line 29 - col. 10, line 29 are supposed to correspond to Appellants' recited elements.' \" Reply Br. 12.", + "Appellants argue that the dependent claims are allowable \"by virtue of their dependence upon underlying base claim(s) discussed above.\" App. Br. 32." + ], + "examiner_findings": [ + "REJECTIONS Claim 20 stands rejected under 35 U.S.C. , 101 as directed to non- statutory subject matter. Ans. 2-3.", + "Claims 1, 3, 5-7, 11, 13, 15-17, and 20 stand rejected under 35 U.S.C. 6 102(e) as being anticipated by Kezys. Ans. 3-6.", + "Claims 2 and 12 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Kezys in view of Hilgers. Ans. 6-7,", + "Claims 8-10, 18, and 19 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Kezys in view of Winkler. Ans. 7-8.", + "The Examiner found that the language of claim 20 was broad enough to encompass both *'non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of machine readable storage.\" Ans. 9.", + "Because *the broadest reasonable interpretation of a claim covers a signal per se,\" the Examiner *rejected [the claim] under 35 U.S.C. 5 101 as covering non-statutory subject matter. \" Ans. 11.", + "Similar to the fact of Ex parte Mewherter, Appellants' specification fails to expressly limit \"machine readable storage\" to exclude transitory propagating signals. Ans. 9-10.", + "Similarly, neither the dictionary definition nor the definition provided in an Amendment exclude transitory propagating signals. Ans. 9-11", + "However, as the Examiner found, \"the broadest reasonable interpretation of claim 1 does not include a signal, while the broadest reasonable interpretation of claim 20 includes a transitory, propagating signal, per se.\" Ans. 12.", + "The Examiner's s findings are focused not on the word distance alone but on the phrase \"detecting a distance.\" Ans. 13.", + "In interpreting the phrase, the Examiner \"interpreted 'detecting' to include at least identifying a presence or existence.\" \" Ans. 13.", + "Thus, the Examiner concluded that *merely identifying that a aspace between two objects exists (or doesn't exist) can be considered to be *detecting a distance' (as in claim 1) without requiring measuring a *length of a hypothetical line' (as in Applicant[s'] alleged definition).\" Ans. 13", + "The Examiner found that interpretation was consistent with Appellants* specification. See Ans. 14-19,", + "For example, the Examiner found that \"the sensors of Applicant[s*] invention that perform *detecting a distance'\" include proximity sensors that can detect when it \"is proximate to an object. \", Ans. 15 (citing Spec. 11 22-23).", + "Similarly, the Examiner found that: [P]aragraph 35 of Applicant[s'] disclosure shows at least an instance where \"detecting a distance\" by the *proximity sensor(s) 125 and/or the transceiver sensor(s) 130\" is a matter of simply determining whether or not \"the mobile station 100 and/or the antenna 105 is proximate to organic tissue\". Similarly, paragraph 36 of Applicant[s'] disclosure shows distributing RF energy to an *antenna 105\" and *antenna 110\" based on relative distance as detected by *proximity sensor(s) 125 and/or the transceiver sensor(s) 130%; wherein the relative distance detected is not based on measuring *length of a hypothetical line\" but rather based on sensing a change related to a particular parameter (e.g. proximity as sensed by a particular type of sensor). Ans. 18-19 (emphasis added).", + "Based on the specification, the Examiner found that *notably absent from paragraphs 22-23 (and from Applicant[s*] disclosure altogether) is a sensor(s) that measures a *length of a hypothetical line' \" Ans. 16 (emphasis omitted).", + "No particular reason is given for the lack of the teaching. See App. Br. 29-30; Ans. 22 (recognizing lack of a specific reason).", + "The Examiner found that Kezys taught the additional limitations of claims 6 and 16. Ans. 5.", + "The Examiner also made detailed findings on the scope of the Appellants\" specification, the broadest reasonable interpretation of the claims and how they related to the disclosure in Kezys. See Ans. 22-23." + ], + "ptab_opinion": [ + "This situation is further addressed in Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).", + "In Ex parte Mewherter, the Board held that a person of ordinary skill in the art would understand that a claim reciting computer-readable storage medium would cover a signal per se and was therefore ineligible under Section 101.", + "For the reasons set forth above, we sustain the Examiner's rejection of claim 20 as directed to non-statutory subject matter under 35 U.S.C. 9 101.", + "When claim terms are construed during prosecution they are given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).", + "Our reviewing court further states that \"the fordinary meaning' of a claim term is its meaning to the ordinary artisan after reading the entire patent.\" Phillips V. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc).", + "Furthermore, it is improper to read limitations from the specification into the claims. Phillips, 415 F.3d at 1323.", + "Appellants' arguments, including the discussion of paragraph 36 are not persuasive of Examiner error.", + "In particular, we disagree with Appellants\" narrow claim construction which is inconsistent with the broad language of the claims and teachings of the specification.", + "Appellants' arguments as to why Kezys does not anticipate are based on an incorrect claim construction. See App. Br. 25.", + "Therefore, Appellants have not persuaded us that the Examiner erred.", + "In view of the foregoing, we sustain the rejection of independent claims 1, 11 and 20 and dependent claims 3, 5, 7, 13, 15, and 17 which are not argued separately.", + "We are not persuaded by the Appellants' argument that the Examiner's findings are erroneous.", + "As for Appellants' argument that the Examiner did not sufficiently indicate which portions of the prior art corresponded to the claim limitation, that argument was not raised in the Appeal Brief. See App. Br. 29-31.", + "Because Appellants did not raise that argument in the opening brief and good cause has not been shown why it should be considered, we will not consider this argument. 37 C.F.R. \u25cf 41.41(b)(2) (2014); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (\"[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not. \").", + "But even if we did consider that argument, we would still sustain the rejection because we find the Examiner identified how the cited portion of the prior art disclosed the claim limitation (Ans. 5, 22-23), thus fully complying with the requirements of37 C.F.R. 8 1.104(c)(2).", + "In view of the foregoing, we sustain the rejections of claims 6 and 16.", + "Because we sustain the Examiner's rejection of the independent claims and Appellants have not specifically identified any additional error with regard to the Examiner's findings regarding claims 2, 8-10, 12, 18, and 19, we sustain the Examiner's 's rejection of those claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2013008420_DECISION.json b/opinion_split/2013008420_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..718e9d5cbe761a1d9554c0d7db84ea23099c33a0 --- /dev/null +++ b/opinion_split/2013008420_DECISION.json @@ -0,0 +1,53 @@ +{ + "appellant_arguments": [ + "Appellants argue claims 1-8 are directed to a patent- eligible practical application, rather than an abstract idea. Appeal Br. 5.", + "Appellants further argue the claims are not directed to an abstract idea because the step of \"triggering a communication to one or more of the other devices in the communication environment based, at least in part, on the comparison,\" recited in claim 1, cannot be performed manually, as no amount of mental activity by a human will result in triggering a communication to devices in a communication system. Id.", + "Appellants argue that Jiang fails to disclose \"computing . \u25a0 \u00b7 a privacy level based, at least in part, on the parameters and the privacy metric; comparing \u00b7 \u00b7 the computed privacy level against a predetermined privacy level; and triggering a communication to one or more of the other devices in the communication environment based, at least in part, on the comparison, \" as recited in claim 1. Appeal Br. 9.", + "More specifically, Appellants argue that Jiang describes **application-level\" location privacy and \"network-level\" location privacy, but fails to disclose a computer privacy level. ld.", + "Appellants further argue that Jiang describes that users can select a desired level of privacy, but that Jiang fails to disclose that (1) the selected privacy level is based on parameters and a privacy metric, (2) the selected privacy level is computed against a *predetermined privacy level,\" \" or (3) a communication is triggered to other devices based, at least in part, on the comparison. Appeal Br. 10.", + "Appellants also argue that Jiang describes a system that achieves a higher privacy level, but fails to disclose that the higher privacy level is based on parameters and a privacy metric, and further fails to disclose or suggest that the higher privacy level is computed against a *predetermined privacy level\" and that a communication is triggered to other devices based, at least in part, on the comparison. Id.", + "Appellants rely upon their arguments regarding Jiang, and argue also that Lee does not cure the previously argued deficiencies of Jiang. Appeal Br. 11." + ], + "examiner_findings": [ + "The Examiner rejects claims 1-8 as directed to patent-ineligible subject matter. Ans. 3.", + "The Examiner rejects claims 1-16 and 18-20 as anticipated by Jiang (Tao Jiang et al., Preserving Location Privacy in Wireless LANs, in Proceedings of the 5th International Conference on Mobile Systems, Applications and Services (MobiSys), ACM Press, 246-57 (2007)). Ans. 3.", + "The Examiner rejects claim 17 as unpatentable over Jiang and Lee (Jenn K. Lee, Review: Nokia N810 Internet Tablet, available at Newsgroups: (last visited May 22, 2012)). Ans. 3.", + "The Examiner rejects claims 1-8 under 35 U.S.C. & 101 as directed to patent-ineligible subject matter because the claims are directed to an abstract idea. Final Act. 2." + ], + "ptab_opinion": [ + "This is a decision on appeal, under 35 U.S.C. S 134(a), from the Examiner's final rejection of claims 1-20. Appeal Br. 5-11.", + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We affirm.", + "Appellants' invention is directed to \"protecting a user identity in communication based on privacy information.\" Abstract.", + "Independent claim 1 is representative and reproduced below: 1. A method comprising: selecting one or more parameters associated with a privacy metric; determining, via at least one processor, the parameters in a communication environment, the communication environment including a user device and a plurality of other devices; computing, via at least one processor, a privacy level based, at least in part, on the parameters and the privacy metric; comparing, via at least one processor, the computed privacy level against a predetermined privacy level; and triggering a communication to one or more of the other devices in the communication environment based, at least in part, on the comparison. Appeal Br. 13 (Claims App.).", + "We are not persuaded by Appellants' arguments.", + "In Alice Corp. Pty. Ltd. V. CLS Bank Int 'I, the Supreme Court articulated the required analysis for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas (which are not patent eligible under 35 U.S.C. 6 101) from patents that claim patent-eligible applications of these concepts. Alice Corp. Pty. Ltd. V. CLS Bank Int 7, 134 S. Ct. 2347, 2355 (2014).", + "The first step in the analysis is to determine whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea. Id.", + "If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the claim elements individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application. Id.", + "With respect to the first step, we agree with the Examiner that claims 1-8 are directed to an abstract idea of evaluating an environment and triggering a communication based on the evaluation, which can be performed mentally. Final Act. 2-3; Ans. 6-7.", + "Such a concept is similar to other concepts the Federal Circuit has identified as abstract, such as using categories to organize, store and transmit information in Cyberfone Systems, LLC V. CNN Interactive Group, Inc., 558 F F.App'x 988 (Fed. Cir. 2014), and comparing new and stored information and using rules to identify options in SmartGene, Inc. V. Advanced Biological Labs., SA, 555 F.App'x 950 (Fed. Cir. 2014).", + "With respect to the second step in the analysis, we see nothing in the claims that would transform the patent-ineligible concept--evaluating an environment and triggering a communication based on the evaluation--to a patent-eligible concept.", + "The claims recite well-understood, routine, and conventional computer functions that can be performed by a generic computer and are therefore not sufficient to transform an abstract idea into a patent-eligible invention. See, e.g., Alice, 134 S. Ct. at 2360.", + "More specifically, claim 1 recites \"selecting one or more parameters,\" *determining \u00b7 . the parameters,' \"computing , \u00b7 \u00b7 a privacy level based, at least in part, on the parameters,\" and *comparing . \u00b7 \u00b7 the computed privacy level against a predetermined privacy level.\"", + "Such steps are routine data processing steps, analogous to the data processing steps in Alice that the Supreme Court held were not sufficient to transform an abstract idea into a patent-eligible invention. Id.", + "Claim I further recites \"triggering a communication to one or more of the other devices \u00b7 \u00b7 \u00b7 based, at least in part, on the comparison\" of\"the computed privacy level against the predetermined privacy level.\"", + "The \"triggering\" step is broad, encompassing determining to send the communication, as opposed to actually sending the communication.", + "Determining to send the communication is a mental step, and thus, not sufficient to transform an abstract idea into a patent-eligible invention.", + "Even assuming arguendo that the triggering step encompasses sending the communication, the Federal Circuit has held that merely transmitting data over a network is also not sufficient to transform an abstract idea into a patent-eligible invention. Cyberfone, 558 F.App'x at 993.", + "Accordingly, we sustain the Examiner's rejection of claims 1-8 under 35 U.S.C. . 101.", + "We are not persuaded by Appellants' arguments.", + "Appellants fail to distinguish a computer privacy level from either a level of application-level location privacy or a level of network-level location privacy.", + "Notwithstanding this point, we agree with the Examiner that Jiang teaches a privacy level for a computer (i.e., device) because Jiang discloses allowing a device user to select a privacy level. Ans. 12 (citing Jiang, 247).", + "Thus, Jiang teaches a *privacy level.\" \"", + "Further, we agree with the Examiner that Jiang discloses a system that introduces a silent period between a user's communication sessions, where the system calculates an optimal silent period that offers eight bits of privacy entropy. Ans. 12-13 (citing Jiang 247, 251).", + "Thus, by disclosing a privacy entropy associated with the optimal silent period, Jiang teaches a *predetermined privacy level.\"", + "We further agree with the Examiner that Jiang discloses that the system determines an elapsed time period between communication sessions in response to a communication request, and compares the elapsed time period with the optimal silent period. Ans. 13 (citing Jiang 256, Fig. 15).", + "Thus, Jiang's elapsed time period teaches \"parameters,' and Jiang's privacy entropy teaches a \"privacy metric. \"", + "Further, Jiang's determination of the elapsed time period teaches \"computing \u00b7 , \u25a0 a privacy level based, at least in part, on the parameters and the privacy metric, \" and Jiang's comparison of the elapsed time period with the optimal silent period teaches \"comparing \u00b7 \u00b7 \u00b7 the computed privacy level against a predetermined privacy level.\"", + "We also agree with the Examiner that Jiang discloses that the system initiates the communication when the elapsed time period is greater than or equal to the optimal silent period, and the system otherwise alerts the user to wait until the end of the silent period. Ans. 13 (citing Jiang 256).", + "Thus, Jiang's initiation of the communication in response to the comparison of the elapsed time period with the optimal silent period teaches \"triggering a communication to one or more of the other devices \u00b7 \u25a0 \u00b7 based, at least in part, on the comparison.\"", + "Thus, we sustain the Examiner's rejection of claim 1.", + "We also sustain the Examiner's rejection of claims 2-16 and 18-20, which Appellants do not argue separately. See Appeal Br. 5, 10.", + "Thus, for the reasons outlined supra, we also sustain the Examiner's rejection of claim 17." + ] +} \ No newline at end of file diff --git a/opinion_split/2013009695_DECISION.json b/opinion_split/2013009695_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d758278c23e8d07aad5b4949b98d90abe440a9b4 --- /dev/null +++ b/opinion_split/2013009695_DECISION.json @@ -0,0 +1,24 @@ +{ + "appellant_arguments": [ + "Appellant contends McKenna's communique system provides a collection of channels of immutable program content to an identified group of subscribers and uses active feedback to dynamically adjust the communique coverage area and/or the identity of the programs contained in the broadcast. App. Br. 10.", + "Appellant argues the STCM of McKenna gauges consumer interest in the programs offered to end users and, although the list of \"channels\" in the communique may change, \"the content of each multi-media channel is immutable.\" Id. at 10-11; Reply Br. 3." + ], + "examiner_findings": [ + "Claims 1, 3-5, 8-10, 12, 14-16, and 19-21 stand rejected under 35 U.S.C. 8 102(b) as being anticipated by McKenna (US 2006/0099981 A1; published May 11, 2006).", + "Claims 2 and 13 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over McKenna in view of Lesser (US 2009/0165895; published July 10, 2008).", + "Claims 6, 7, 11, 17, 18, and 22 currently stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over McKenna in view of Kerns (US 2002/0057670 A1; published May 16, 2002).", + "As indicated above, the Examiner rejects independent claims 1 and 12 as anticipated by McKenna.3 Final Act. 3.", + "Regarding claim 1, the Examiner finds that the communique system of McKenna uses active feedback from end-subscribers to dynamically adjust the communique content. Id. at 6-7 (citing McKenna, 11 6, 110, and 111).", + "The Examiner also finds McKenna discloses a Spatial Temporal Content Manager (STCM 114), which is a form of feedback integration means, and that the STCM is used to evaluate a given set of available programs against the subscriber information to identify whether any of the presently available programs are of interest to those subscribers and then use the information to dynamically alter the content of communiques in several modes. Id. at 8 (citing McKenna, Figure 1A, 11 113 and 114." + ], + "ptab_opinion": [ + "We are persuaded by Appellant's arguments.", + "Although McKenna discloses the use of subscriber information as active feedback to dynamically and automatically manage and adjust the list of programs offered or contained in a communique or broadcast, there is no disclosure in McKenna of modifying or changing a frame of the stream of content of any program, as required by the limitations at issue.", + "In particular, the STCM 114 of McKenna does not modify \"at least one present frame of the stream of content frames\" of a program to be transmitted, but manages the definition of the cells to which a particular communique is transmitted (see McKenna, I 96) and computes an estimate of the likelihood of a subscriber's 's interest in presently available programs, so the subscribers can be advised of relevant programs, which are automatically selected by the communique system for transmission to selected cells (see McKenna, 11 112-113).", + "Thus, we agree with Appellant that McKenna \"enables the subscriber to *switch channels' from one immutable program to another or adjust the list of channels offered to the user, and fails to have the ability to modify frames of the content stream.\" Appeal Br. 12; Reply Br. 3-4,", + "Accordingly, the Examiner has erred in rejecting claim 1 for anticipation based on McKenna because McKenna fails to disclose the limitations at issue of claim 1.", + "Thus, we do not sustain the rejection of claim 1.", + "For the same reasons, we also do not sustain the rejection of claim 12, which recites limitations similar to the limitations at issue of claim 1.", + "We also do not sustain the rejection of claims 2-11 and 13-22, which depend from claims 1 and 12, respectively." + ] +} \ No newline at end of file diff --git a/opinion_split/2013009921_DECISION.json b/opinion_split/2013009921_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..68426586ea3fb396ab6eede2f7f0086817267cf9 --- /dev/null +++ b/opinion_split/2013009921_DECISION.json @@ -0,0 +1,40 @@ +{ + "appellant_arguments": [ + "Appellants argue that the Examiner erred in finding Kalavade's HLR (Home Location Register) to correspond to the claimed *database configured' for storing distribution addresses corresponding to subscriber IDs, wherein the distribution address is the address of a message router corresponding to each receiving subscriber device's communication network, because *there is no disclosure in Kalavade of the HLR storing the addresses of message routers\" (App. Br. 17).", + "Appellants contend \"[t]he address stored in the HLR in Kalavade is that of the CGW [(Consumer Wireless Gateway)], which is analogous to the defined *serving node' rather than that of a message router. See paragraph 0038M (App. Br. 17).", + "Appellants argue the Examiner has erred in finding Jean teaches the claimed limitations of the (i) means for interrogating, (ii) means for retrieving, (iii) means for storing, and (iv) means for forwarding, as recited in claim 1, because: once the ported subscriber's home network is provided to the sending network, the sending network must still query the HLR of the ported subscriber's home network to determine the address of the SMS router before sending the SMS message in the classical manner to the ported subscriber. See paragraph 0024. App. Br. 18.", + "Regarding Jean at paragraph 17, Appellants contend `[there is no mention or suggestion in this paragraph of directly forwarding an SMS message and subscriber ID to a known address of message router without the need to query a remote HLR\" (App. Br. 19).", + "Regarding Jean at paragraph 22, Appellants contend \"the paragraph only discusses searching for HLRs using a probability equation to help the system quickly find the device['\\']s new HLR\" (App. Br. 19).", + "Appellants argue the Examiner has erred in combining Kalavade and Jean because *one of skill in the art would find no motivation when reading both the references to combine their alleged teachings\" (App. Br. 20).", + "Appellants contend \"the system of Kalavade would facilitate classical SMS forwarding even without being modified by the alleged teachings of [Jean] since classical SMS forwarding is known\" (App. Br. 20)." + ], + "examiner_findings": [ + "The Examiner first finds that Jean teaches the means for interrogating the database, in which the \"look-up table which gives the address of the HLR of the subscriber, Para. 0002, and MNP-SMSC [computer] looks to find the Destination Address, page 2, Para. 0022\" and *Para. 0017, cache memory is necessary interrogation so not to make unnecessary interrogations of the various HLRs and retrieves from HLR if the destination address is not found in MNP- SMSC cache memory, page 2, Para. 0022M (Ans. 7).", + "The Examiner next finds that Jean teaches the means for retrieving, in which the apparatus *retrieves from HLR if the destination address is not found in MNP- SMSC cache memory, page 2, Para. 0022M (Ans. 7).", + "The Examiner additionally finds that Jean teaches the means for storing, in which \"MNP-SMSC is being updated with new entry in the cache memory 4, page 2, Para. 0024\" (Ans. 7-8).", + "The Examiner further finds that Jean teaches the means for forwarding, in which the \"MNP-SMSC then sends the SMS-MT [Mobile Terminated short message] to the intended operator, page 2, Para. 0024\" (Ans. 8).", + "The Examiner finds motivation \"to combine Jean's distributing messages system into communications system of Kalavade in order to provide an effective communications system of routing SMS messages\" (Ans. 8)." + ], + "ptab_opinion": [ + "We affirm.", + "We adopt the Examiner's findings in the Answer and add the following primarily for emphasis.", + "We are not persuaded.", + "The Examiner finds, and we agree, that the HLR stores the subscribers' data (Ans. 6, citing Kalavade I 30, 44), and \"routing information queries from the HLR [are] the [Visited] MSC [(mobile switching center)] or SGSN [(Serving GPRS Service Node)] address associated with the mobile device\" (Ans. 6, citing Kalavade 1 44).", + "Appellants have not provided persuasive evidence or argument to rebut the Examiner's prima facie case of obviousness. See In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 201 1) (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "Here, Appellants' citation to Kalavade at paragraph 38 describes operations occurring after an SMS forwarding service is enabled, whereas the Examiner's citations to Kalavade at paragraphs 30 and 44 describe operations *[b]efore the SMS forwarding service is enabled\" (Kalavade I 44).", + "Thus, Appellants attempt to distinguish Kalavade by citing operations unrelated to the Examiner's finding.", + "Therefore, we are not persuaded the Examiner erred in finding Kalavade teaches the limitation of \"a database configured for storing distribution addresses corresponding to subscriber IDs, wherein the distribution address is the address of a message router corresponding to each receiving subscriber device's communication network, as appears in claim 1.", + "We are not persuaded.", + "In contrast, Appellants' arguments do not address and rebut the Examiner's specific findings.", + "Appellants' arguments do not counter the Examiner's findings quoted above.", + "For example, the Examiner's findings above indicate Jean's use of a cache memory is central to the Examiner's finding that Jean teaches the disputed means limitations.", + "Neither Appellants' Appeal Brief nor Reply Brief makes any reference to the Examiner's findings regarding Jean's cache memory. See App. Br. 14-22 and Reply Br. 5-8.", + "Therefore, we are not persuaded the Examiner erred in finding Jean teaches the claimed limitations of the (i) means for interrogating, (ii) means for retrieving, (iii) means for storing, and (iv) means for forwarding, as recited in claim 1.", + "We are not persuaded.", + "We agree.", + "Additional support includes the Examiner's finding that Jean at paragraph 17 teaches \"cache memory is necessary interrogation so not to make unnecessary interrogations of the various HLRs\" (Ans. 7, 14), as the elimination of unnecessary interrogations would increase the effectiveness of the combined communications system.", + "Appellants finally argue that *[t]he Examiner used impermissible hindsight when rejecting the claims\" (App. Br. 21), but this argument is not persuasive as it is based on the same assertion that the Examiner has not found proper motivation to combine the references.", + "Accordingly, we affirm the Examiner's rejection of independent claim 1 and the rejection of independent claims 13 and 27 which are commensurate in scope.", + "We also affirm the Examiner's rejections of dependent claims 2-12 and 14-24 which were not separately argued. See App. Br. 21-22." + ] +} \ No newline at end of file diff --git a/opinion_split/2013010461_DECISION.json b/opinion_split/2013010461_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..286c328be2c4cfcaecb1d62bc9a1131853ce9a21 --- /dev/null +++ b/opinion_split/2013010461_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellants contend the claims do not recite *means for\" or *step for\" and thus do not invoke 35 U.S.C. S 112, sixth paragraph. App. Br. 13.", + "Appellants argue the Specification describes the elements as hardware components of the device for driving a sound system such that one of ordinary skill in the art would recognize what structure performs the claimed function. App. Br. 13-16 (citing Spec. Fig. 1, 13:31-34, 14:28-36, 15:22- 32).", + "Appellants further argue \"configured to\" and \"connected to\" are structural terms. Reply Br. 3-4." + ], + "examiner_findings": [ + "Claims 1-8 and 10-15 stand rejected under 35 U.S.C. & 112, second paragraph as being indefinite. Final Act. 3-4.1", + "The Examiner finds the claims are indefinite because they recite limitations that invoke 35 U.S.C. $ 112, sixth paragraph, and the written description fails to disclose the corresponding structure, material, or acts for the claimed functions. Final Act. 3-4.", + "Specifically, the Examiner finds the claimed audio input, position input, wave field synthesis unit, and provider are non-structural terms modified by functional language and the claim limitations do not include the structure necessary to perform the claimed function. Id.", + "The Examiner further finds that the specification describes the audio input, position input, and wave field synthesis unit as *merely iblack boxes' without any disclosure of underlying structure. Id.", + "With respect to the \"provider\" limitation, the Examiner finds there is confusion as to whether the provider is associated with the amplifier, which the Examiner finds is a structure, or the delay unit 24, which is a non-structural term. Id at 4." + ], + "ptab_opinion": [ + "Claim 1 is representative of the subject matter on appeal:", + "A device for driving a sound system by loudspeaker signals, the sound system comprising a wave field synthesis loudspeaker array and one or several supply loudspeakers arranged separate from the wave field synthesis loudspeaker array, comprising: an audio input for receiving at least one audio signal from at least one sound source; a position input for receiving information on a position of the sound source; a wave field synthesis unit for calculating loudspeaker signals for the loudspeakers of the wave field synthesis loudspeaker array based on the position of the audio signal, based on the audio signal and based on a position of the loudspeakers of the wave field synthesis loudspeaker array so that a sound field produced by the wave field synthesis loudspeaker array allows localizing the sound source by a listener in a space supplied by the supply loudspeakers; and a provider for providing the loudspeaker signal for the one or the several supply loudspeakers on the basis of the audio signal, wherein the device for driving is implemented to drive the wave field synthesis loudspeaker array and the one or the several supply loudspeakers such that a wave front of the wave field synthesis loudspeaker array arrives at a listener before a wave front of the one or the several supply loudspeakers.", + "Appellants' contentions present us with the following issue: Did the Examiner err in rejecting claims 1-8 and 10-15 under 35 U.S.C. 8 112, second paragraph?", + "We have reviewed the Examiner's rejections in consideration of Appellants\" contentions.", + "We disagree with Appellants' conclusions that the Examiner's rejection of the claims is in error.", + "We are not persuaded of error in the Examiner's rejection.", + "The Federal Circuit has abandoned characterizing as \"strong\" the presumption that a limitation lacking the word \"means\" is not subject to $ 112, para. 6. Williamson V. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).", + "Instead, the presumption can be overcome if the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. Id.", + "We agree with Appellants that one of ordinary skill in the art, in light of the Specification, would understand the claimed audio input, position input, and provider to have sufficiently definite meaning as the name for structure.", + "See Spec Fig. 1, elements 16, 24, 32; 13:15-20; 14:30-31; 15:21-32); thus, we agree with Appellants that these terms do not invoke 112, paragraph 6. See App. Br. 13-15.", + "However, Appellants fail to persuade us the Examiner erred in finding the claimed *wave field synthesis unit\" invokes 112, paragraph 6.", + "We determine that \"unit\" is a generic term that does not recite sufficiently definite structure for performing the claimed functions. See Mass. Inst. of Tech. V. Abacus Software, 462 F.3d 1344, 1354-55 (Fed. Cir. 2006) (holding that a generic term such as \"mechanism\" does not typically connote sufficiently definite structure).", + "We also determine there is no further language in the claim that adds sufficient structure for performing the recited functions, including the \"wave field synthesis\" functional modifier to the claimed \"unit\".", + "Nor have Appellants provided persuasive argument that one of ordinary skill in the art would understand \"wave field synthesis unit\" to have sufficient defined meaning as the name for a structure.", + "Contrary to Appellants\" argument that 112, paragraph six is not invoked because the claim recites the wave field synthesis unit is \"connected to the audio input and the position input\" and is **configured to [perform the recited functions], \" neither of these terms impart sufficient specific structure to the wave field synthesis unit for performing the claimed functions. .,2", + "Thus, we determine the Examiner did not err in finding the wave field synthesis unit limitation recited in the claims invokes 35 U.S.C. 8 112, paragraph 6.", + "Furthermore, we agree with the Examiner that the portions of the Specification cited by Appellants as describing structural support for the wave field synthesis unit merely describe the functions performed by the wave field synthesis unit and do not disclose any structural elements or an algorithm for performing the claimed function. See Spec. 13:31-34, 14:28- 36; see also Noah Systems, Inc. V. Intuit Inc., 675 F.3d 1302, 1312 (2012) (in cases involving a special purpose computer, the specification must disclose an algorithm for performing the claimed function.).", + "In view of the above analysis and failure by Appellants to point out a corresponding structure for the *wave field synthesis unit,\" we determine the Examiner did not err in rejecting the claims under 35 U.S.C. , 112, paragraph two.", + "Accordingly, we sustain the rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2013010612_DECISION.json b/opinion_split/2013010612_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a13000f06db9e8274fef784d0d950121c9ffc837 --- /dev/null +++ b/opinion_split/2013010612_DECISION.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "Contending that \"[t]he Examiner fails to recognize the criticality of the claimed range of 12-24% silica based on the weight of cement in [the] cement slurry,\" Appellants argue that Vassey does not teach \"the limitation of using a relatively high concentration of silica in the cement slurry. \" Br. 10, 11.", + "In support of this argument, Appellants note that the Examples in the Specification use **half of the amount of silica used in [Vassoy's] Example 3.\" Id. at 11.", + "Appellants further argue that \"Vassoy teaches that lower amounts of silica, below 35%, can be used but the lower amounts cause a loss of strength retrogression.\" Br. 12.", + "In addition, Appellants argue that *one of ordinary skill in the art when reading Vassoy would not be motivated to pick specifically 12-24% silica because Vassoy does not suggest making the claimed substitution or other modification if one wants to avoid a reduction in strength\" and \"the Examiner has failed to explain why a person of ordinary skill in the art would optimize the silica content to 12-24% \u00b7 \u00b7 \u00b7 when the evidence the Examiner relies upon expressly teaches that it is advantageous to utilize at least 35% of silica. \" Br. 14-15," + ], + "examiner_findings": [ + "The Examiner finds that Vassey discloses all of the limitations of claim 1, except that Vassoy \"discloses the microfine silica as mainly globular and less than 1 micrometer.\" Final Act. 2.", + "The Examiner further finds that \"lilt is notoriously known that microfine silica has a crystalline structure (see for example US 6,899,177 (col. 5 lines 60-64) and US 5,049,596 (col. 4, line 59)).\" Id.", + "Based on these findings the Examiner determines that *it would have been obvious to a person of ordinary skill of the art that the microfine silica of Vass[e]y is in a crystalline format.\" Id. at 2-3.", + "In response to this argument, the Examiner reiterates that Vassey *discloses [t]he invention also includes a hydraulic cement slurry which contains 5-100% silicon oxide additive containing liquid amorphous silica with particles of less than I micro-[meter] with silica flow admixture, based on the weight of cement.\" Ans. 3 (citing Vassey 5:14-18) (emphasis omitted)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We AFFIRM.", + "We select independent claim 7 as the illustrative claim, and claims 1-3, 6, and 8, stand or fall with claim 7.", + "The range disclosed in Vassey (5-100% of silica' based on the weight of cement) encompasses the claimed range of 12-24%,", + "In the case where the claimed ranges **overlap or lie inside ranges disclosed by the prior art,\" a prima facie case of obviousness exists. See MPEP 8 2144.05(I) (citing In re Wertheim, 541 F.2d 257 (CCPA 1976) and In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)).", + "The criticality of the claimed range is not relevant to the inquiry in the instance of a claimed range that is encompassed by the prior art range.", + "Thus, Appellants do not apprise us of error.", + "Thus, we understand Vassey to disclose a preferred embodiment of greater I As noted by the Examiner, Vassey states that silica flour and silica sand both consist mainly of silicon oxide. Vassey 2: 2:10-13. Thus, we understand that the amount of silicon oxide additive referenced in the quote supra is equivalent to the amount of silicon oxide. We further understand the amount of silicon oxide to be substantially equivalent to the amount of silica. than 35% when high temperatures are of concern.", + "However, Vassoy's disclosure of this preferred embodiment does not negate the fact Vassey discloses a range of 5-100% silica, which overlaps the claimed range.", + "A reference's disclosure is not limited to its preferred embodiment.", + "Rather, *a prior art reference is relevant for all that it teaches to those of ordinary skill in the art. \" See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992).", + "Appellants' arguments are not responsive to the rejection as articulated by the Examiner which relies upon Vassoy's explicit disclosure of the overlapping range of 5-100% to establish a prima facie case of obviousness.", + "Vassey is not relied upon to \"teach\" this range in the manner argued by Appellants.", + "Thus, Appellants do not apprise us of error.", + "For these reasons, we sustain the Examiner's decision rejecting claim 7, and claims 1-3, 6, and 8 which fall therewith." + ] +} \ No newline at end of file diff --git a/opinion_split/2014000345_DECISION.json b/opinion_split/2014000345_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..bbd3d692a6787063536d460f4c0d249d16df5c28 --- /dev/null +++ b/opinion_split/2014000345_DECISION.json @@ -0,0 +1,49 @@ +{ + "appellant_arguments": [ + "Appellants do not provide a substantive argument as to the separate patentability of claims 2-8, 10, 11, 13-15, 17, 19-22, 24, and 25 that depend from claims 1, 12, and 18.", + "Appellants argue Hewitt does not disclose a *display capable of being viewed by a customer.\" (Appeal Br. 5-6).", + "Appellants argue there would be no reason to combine Lemon with Hewitt. (Appeal Br. 6).", + "Appellants next argue that adding Lemon's consumer display to Hewitt would not result in the claimed invention because Lemon *does not display incentive data associated with a weighed product.\" \" (Appeal Br. 6- 8).", + "Appellants further argue that Hewitt discloses printing an advertisement for an incentive product, or displaying advertisements not associated with a weighted product only to a machine operator, and not a consumer, and that Lemon discloses displaying advertisements to a customer, but not for an incentive product associated with a weighed product. (Reply Br. 2-5).", + "As a result, Appellants argue, the combination fails to meet the claim language.", + "Appellants do not argue dependent claims 9, 16, and 23 separately." + ], + "examiner_findings": [ + "The Examiner rejected claims 1-8, 10-15, 17-22, 24, and 252 under 35 U.S.C. . 103(a) as unpatentable over Hewitt and Lemon.", + "The Examiner rejected claims 9, 16, and 23 under 35 U.S.C. 6 103(a) over Hewitt, Lemon, and Degasperi.", + "Notwithstanding. the Examiner also relies on Lemon as disclosing a video consumer display. (Final Act. 3-4)." + ], + "ptab_opinion": [ + "' Appellants seek our review under 35 U.S.C. 6 134 from the Examiner's final rejection of claims 1-25.", + "We affirm.", + "THE CLAIMED INVENTION Appellants claimed invention *relates generally to in-store scales utilized for weighing food products and printing labels applied to weighed products.\" (Spec. para. 2).", + "Claim 1 is illustrative of the claimed subject matter: 1. A method of delivering a coupon promotion to a consumer in a store utilizing a scale system located in a perishables department of a store, the scale system including a weighing station, a label printing mechanism, and a display unit having an integrated database and at least one consumer display, the method comprising the steps of identifying a product being weighed; based upon identity of the weighed product, (a) obtaining pricing data for the weighed product; (b) prior to purchase of the weighed product, obtaining incentive label data for an incentive product associated with the weighed product; (c) prior to purchase of the weighed product, obtaining video commercial advertisement data for the incentive product from the integrated database; (d) during the weighing process of the weighed product, (1) displaying to the consumer, using the consumer display, calculated price information for the weighed food product, and (2) displaying to the consumer, using the consumer display, a video commercial advertisement for the incentive product based on the video commercial advertisement data for the incentive product; printing on a label both (i) product price information for the weighed food product and (ii) coupon information for the incentive product; applying the label to a package containing the weighed food product; and providing the package to the consumer.", + "REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lemon US 4,674,041 June 16, 1987 Degasperi US 5,097,981 Mar. 24, 1992 Hewitt US 5,578,797 Nov. 26, 1996 REJECTIONS The following rejections are before us for review.", + "FINDINGS OF FACT We find the following facts by a preponderance of the evidence.", + "1. Hewitt discloses a weighing scale with printer, where a *coupon can be generated by the weighing scale 20 in accordance with the product purchased.\" (Col. 5, 11. 25-27).", + "2. Hewitt discloses that \"lilf it is not desired to generate a coupon with a purchased product, an advertising message or recipe can be generated instead.\" (Col. 5, II. 29-31).", + "3. Hewitt discloses the scale also includes \"a large bright fluorescent alphanumeric dot display 34 plus a numeric display 32.\" (Col. 6, 11. 4- 6).", + "4. Hewitt discloses the alphanumeric display may be programmed to display *recipes, ingredients, or coupon labels, *, \"nutritional facts, *, price mark-downs, dates, and *specials for the day, helpful hints or recipes for preparing an item.\" \" (Col. 6, II. 4-37).", + "5. Lemon discloses a coupon dispensing terminal where a consumer display *includes a conventional cathode ray tube 28 for displaying the video menu of coupons available for selection as well as other video graphics, such as advertisements.\" (Col. 5, 11. 8-12).", + "Initially, we note that the Appellants argue independent claims 1, 12, and 18 together as a group. (Appeal Br. 4).", + "Correspondingly, we select representative claim 1 to decide the appeal of these claims, with remaining claims 12 and 18 standing or falling with claim 1.", + "Thus, claims 2-8, 10-15, 17-22, 24, and 25 stand or fall with claim 1. See 37 C.F.R. 8 41.37(c)(1)(vii).", + "We are not persuaded of error by Appellants' argument.", + "Hewitt discloses a scale that prints, along with the price of the weighed item, coupons or advertisements associated with the weighed item (FF 1, 2), and includes a display that displays messages. (FF 3).", + "Hewitt is silent as to whether the display is for an operator, customer, or both.", + "But, given that Hewitt discloses messages for display may include recipes, ingredients, nutritional facts, helpful hints, and so on, which are of interest to a customer (FF 4), we find, by inference, that the display in Hewitt is intended for display to the consumer. See KSR Int 'I. Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making the obviousness determination one \"can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. .\")", + "Even still, we find that one having ordinary skill in the art would understand that the display can be positioned so a customer and operator can both view it from the same side.", + "For purposes of completeness, we respond as follows.", + "Lemon discloses a video consumer display that displays advertisements to a customer. (FF 5).", + "Lemon thus meets the claim language of *displaying to the consumer, using the consumer display, a video commercial advertisement.\" (Emphasis added).", + "We are not persuaded by Appellants' argument, because the Examiner articulates a credible motivation for the combination, \"for the benefit of displaying the messages to the user, during the weighing process or any other process.\" \" (Final Act. 3-4 (emphasis omitted)).", + "The Examiner thus sets forth a sufficient **articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.\" See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).", + "Appellants' argument is also unpersuasive because it argues references separately when the rejection is based on a combination of references.", + "The ordinary artisan would recognize that if Hewitt's display is situated such that a consumer would not be able to view it, it would be common sense to include one that is visible to a customer, such as disclosed by Lemon, to view the advertisements displayed or printed for a consumer in Hewitt, and linked to a weighed product. (FF 2, 4, 5).", + "At a minimum, the artisan would recognize that including Lemon's 's display for ads associated with weighed items would eliminate the need to print an advertisement associated with weighed items.", + "Thus, one need not incorporate all of Lemon's teachings, such as the stand-alone terminal, into Hewitt.", + "\"Combining the teachings of references does not involve an ability to combine their specific structures.\" In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).", + "We are not persuaded by Appellants' arguments because we find that the ordinary artisan would recognize that Lemon's video display could be used in lieu of the line messages used by Hewitt's system to display advertisements like those which Hewitt prints for incentive products Hewitt associates with the weighed product. (FF 2, 4, 5). See KSR Int'l. Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making the obviousness determination one \"can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. .\")", + "We thus affirm the rejection of these claims on the same basis upon which we affirm the rejection of claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2014001272_DECISION.json b/opinion_split/2014001272_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1ce3d239b05c3c4e8eb0bca08d5dc04ede271f3c --- /dev/null +++ b/opinion_split/2014001272_DECISION.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [ + "Rather, Appellants contend, because Livoreil's s teachings are limited to solid products, the Examiner applied the teachings of Livoreil out of context in asserting that an ordinary artisan would have been motivated by Livoreil to modify the non-solid compositions described in Lavaud. Br. 4-5.", + "On the other hand, Appellants contend, an ordinary artisan starting with the solid compositions of Lavaud would not have modified those compositions according to the teachings of Livoreil, *because the product is already solid.", + "In total, a person of ordinary skill in the art has no reason to increase the level of stearyl heptanoate beyond the 5% taught in [Lavaud].\" Id. at 5." + ], + "examiner_findings": [ + "The Examiner cited Lavaud as teaching cosmetic compositions that include stearyl heptanoate, a cosmetic carrier (water), and emulsifiers. Final Action 2.", + "The Examiner found that Lavaud's compositions differed from those recited in claim 1 in that Lavaud did not describe using the claimed emulsifier, and used stearyl heptanoate at a concentration less than claim 1's concentration range (8% to 70% by weight) for the cooling ingredient. Id. at 2-3.", + "The Examiner cited Livoreil as evidence that stearyl heptanoate was known to be useful in the fatty phase of cosmetic compositions at a concentration of 0.2 to 98.9% by weight, a range overlapping that recited in claim 1. Id. at 3.", + "The Examiner cited Kung as evidence that the emulsifier recited in claim 1, at a concentration range overlapping that recited in claim 1. was known in the art to be useful in cosmetic compositions for enhancing the penetration of hydrophilic and hydrophobic agents. Id.", + "Based on the references' teachings, the Examiner concluded that an ordinary artisan would have considered it obvious to modify Lavaud's compositions by changing the amount of stearyl heptanoate, as **taught by 2 U.S. Patent No. 5,914,117 (issued June 22, 1999), 3 U.S. Patent Appl. Pub. No. 2003/0091520 Al (published May 15, 2003). 4 EP 0 998 914 A1 (published May 10, 2000).[Livoreil] and add polymeric emulsifier taught by [Kung] with the reasonable expectation of success that the polymeric emulsifier will enhance the penetration of stearyl heptanoate (hydrophobic agent) into the skin and also provide low irritation to the skin taught by [Kung].\" Id.", + "As the Examiner notes (Ans. 8), claim 1 's use of the transitional phrase \"comprising\" encompasses the inclusion of Livoreil's organo-gelator component in addition to claim I's expressly recited oil-soluble hydrophobic cooling ingredient (i.e., stearyl heptanoate)." + ], + "ptab_opinion": [ + "We select claim 1 as representative of the rejected claims. 37 C.F.R. 6 41.37(c)(iv).", + "Appellants' arguments do not persuade us that a preponderance of the evidence fails to support the Examiner's prima facie case as to representative claim 1.", + "Appellants do not contend that the Examiner mischaracterized the teachings of the cited references as compared to the limitations of claim 1.", + "Nor do Appellants contest the Examiner's conclusion that it would have been obvious to include Kung's emulsifier in Lavaud's composition. See Br. 6 (declining to comment on the Examiner's rationale for including Kung's emulsifier in Lavaud's composition).", + "We are not persuaded.", + "Appellants, therefore, do not persuade us (see Br. 4-5) that an ordinary artisan would have considered the advantageous rheological properties, taught by Livoreil as being imparted by its organo-gelator/stearyl heptanoate combination, to be applicable only to solid formulations.", + "To the contrary, given Livoreil's teachings that its organo-gelator/stearyl heptanoate combination imparts desirable rheological properties to cosmetic compositions which may be either solid or non-solid, we agree with the Examiner that an ordinary artisan would have had sufficient reason to include those ingredients in Lavaud's compositions, both solid and non- solid, at the concentrations taught in Livoreil, thus resulting in a cosmetic composition containing an amount of stearyl heptanoate undisputedly encompassed by claim 1.", + "Moreover, because the impetus for modifying Lavaud's composition comes, as discussed, from the teachings in the prior art, Appellants do not persuade us (Br. 5-6) that the Examiner's s rejection relies on improper hindsight.", + "Appellants also do not persuade us that Lavaud *is explicit that stearyl heptanoate may be used at no more than 5% by weight of the composition (see column 4, lines 56-62).\" Br. 4.", + "Rather than setting absolute limits, Lavaud provides some leeway in the concentrations of its ester component, disclosing at its broadest that the ester \"is preferably present in weight concentrations (referred to the whole of the composition) ranging approximately from 0.1 to 5%.\" Lavaud, 4:58-61 (emphasis added).", + "In any event, this teaching in Lavaud must be viewed alongside the teachings in Livoreil, discussed above, that much greater amounts of stearyl heptanoate (undisputedly encompassed by claim 1), when included in compositions of the type described in Lavaud, impart desirable properties to such compositions.", + "In sum, for the reasons discussed, Appellants do not persuade us that the cited references do not support the Examiner's finding that an ordinary artisan would have been motivated by Livoreil to increase the amount of stearyl heptanoate in Lavaud's compositions to concentrations encompassed by claim 1.", + "As also discussed above, Appellants do not contest the Examiner's conclusion that an ordinary artisan would have been prompted to include Kung's emulsifier in Lavaud's compositions (Br. 6), and we detect no deficiency in the reasoning underlying the Examiner's conclusion in that regard.", + "Accordingly, because Appellants' arguments do not persuade us that a preponderance of the evidence fails to support the Examiner's prima facie case of obviousness as to representative claim 1. and because Appellants do not advance secondary evidence of nonobviousness, we affirm the Examiner's rejection of claim 1 over Lavaud, Livoreil, and Kung under 35 U.S.C. . 103(a).", + "Because they were not argued separately, the remaining rejected claims fall with claim 1. 37 C.F.R. 8 41.37(c)(iv)." + ] +} \ No newline at end of file diff --git a/opinion_split/2014001965_DECISION.json b/opinion_split/2014001965_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..69d42be346ab847b2a39bee8e726eeba9eb7485c --- /dev/null +++ b/opinion_split/2014001965_DECISION.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "Appellants argue claims 1-3, 7-10, and 12-14 as a group in rebutting the Examiner's 8 102(b) rejection of record. (See generally App. Br. 8-13.)", + "Appellants argue that \"the disclosures of Ref. 1 [Spyrou] and the present application address entirely different compositions.\" ~6 (App. Br. 12.)", + "Appellants also argue that Spyrou \"makes no mention whatsoever of the need for trimerisation of the isocyanurate rings in the outer zones of a PIR foam.\" (App. Br. 12.)", + "Appellants further broadly argue that \"the compositions, catalyst systems and processing utilizing the catalyst compositions\" disclosed in Spyrou are \"completely different\" from Appellants' compositions, catalyst systems and processing utilizing the catalyst compositions. (App. Br. 12- 13.)" + ], + "examiner_findings": [ + "1. Claims 7 through 9 under 35 U.S.C. 8 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that Appellants regard as the invention; and", + "2. Claims 1 through 3 and 7 through 10 and 12 through 144 under 35 U.S.C. . 102(b) as anticipated by the disclosure of U.S. Patent Application Publication 2005/0239956 A1 published in the name of Spyrou on October 27, 2005 (hereinafter referred to as \"Spyrou\").", + "The Examiner contends that \"it [cannot] bc determined how the structures and/or elements as defined by groups R, R. R, and R4 \u00b7 \u00b7 \u25a0 can exist in the [phosphonium cation] structure[] defined by the claims without further definition. \" (Ans. 3.)" + ], + "ptab_opinion": [ + "Upon consideration of the evidence on this record and each of Appellants* contentions, we determine that Appellants have identified reversible error only in the Examiner's rejection of claims 7-9 under 35 U.S.C. & 112, second paragraph.", + "Accordingly, we reverse the Examiner's rejection of claims 7-9 under 35 U.S.C. $ 112, second paragraph, for the reasons set forth in the Appeal Brief, but sustain the Examiner's rejection of claims 1-3, 7-10, and 12-14 under 35 U.S.C. 8 102(b) for the reasons set forth in the Final Rejection and the Answer.", + "We add the discussion below primarily for emphasis and completeness.", + "Therefore, for the purposes of addressing the Examiner's a 102(b) rejection on this appeal, we select claim I as representative and decide the propriety of the rejection based on this claim alone.", + "However, the Examiner has not carried the burden of showing that one of ordinary skill in the art would not understand the scope and meaning of the phosphonium cation recited in claim 7, including the scope and meaning of the \"R, R. R3, and R4\" groups recited in the claim.", + "As correctly indicated by Appellants, the Specification provides guidance sufficient to allow one of ordinary skill in the art to understand the scope of the phosphonium cations encompassed by the structure recited in claim 7. (App. Br. 13-14, Spec. 9.)", + "Accordingly, we cannot sustain the Examiner's rejection of claims 7- 9 under 8 112, second paragraph.", + "The Examiner correctly finds that Spyrou discloses catalyst compositions comprising a phosphonium cation and a carboxylate anion, as required by claim 1, and finds that the isocyanate trimerisation activity and trimerisation activation temperature of the catalysts are inherent features of the catalysts. (Ans. 3-4.)", + "However, as correctly found by the Examiner (Ans. 3), Spyrou discloses catalysts encompassed by the catalyst system recited in claim 1. (Spyrou claim 11, 11 101, 102, 105, and 133.)", + "Although Spyrou does not explicitly indicate that such preferred catalysts are \"trimerisation\" catalysts, and have the trimerisation activation temperature of less than or equal to 73\"C, the Examiner has correctly found that the catalysts necessarily or inherently have these properties because they contain the same phosphonium cation and isocyanate-trimer inducing carboxylate anion recited in the claims.", + "We find this argument to be without persuasive merit because claim 1 does not require trimerisation of isocyanurate rings in the outer zones of a PIR foam.", + "Claim 1 is directed to a trimerisation catalyst system, rather than to a process for forming isocyanurate rings in the outer zones of a PIR foam.", + "We find this argument to be unavailing because Appellants have not explained how their compositions, catalysts, and processing differ from those of Spyrou.", + "Moreover, nothing in Appellants' argument identifies or explains any error in any of the Examiner's specific findings directed to Spyrou's disclosure of the claimed compositions, catalysts, and processing, as required by 37 C.F.R. 41.37(c)(1)(iv) (2012).", + "Therefore, on this record, Appellants have not identified reversible error in the Examiner's finding that Spyrou describes or teaches the subject matter recited in claims 1-3, 7-10, and 12-14,", + "We accordingly sustain the Examiner's rejection of these claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2014002415_DECISION.json b/opinion_split/2014002415_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..880a94d289b20d0e47acddcb7b7e0abd5fb9e881 --- /dev/null +++ b/opinion_split/2014002415_DECISION.json @@ -0,0 +1,50 @@ +{ + "appellant_arguments": [ + "Appellants' invention relates to sharing media content (audio, video, or images) within a conference session over an Internet protocol (IP) network.", + "Spec. 2:1-4, and Abstract.", + "1. A server for receiving first user content from a first user and sending the first user content to at least one other user in a conference session; the server arranged to: receive a first invite from the first user to create or join the conference session; add the first user to the conference session; and determine if the first invite contains information that identifies first media content; and if so, send the first media content to the at least one other user. App. Br. 24 (Claims App.).", + "Appellants acknowledge Leppanen discloses: (1) receipt of a SIP INVITE message where \"Session Initiation Protocol (SIP) is a protocol for the development of session-based applications. App. Br. 11 (citing Leppanen 11 1, 127); (2) \"Session Initiation Protocol (SIP) is an application- layer control (e.g., signaling) protocol for creating, modifying, and terminating [conference] sessions with one or more participants.\" Id. at 12 (citing Leppanen I 34); and (3) *SIP invitations used to create [conference] sessions may include session descriptions that allow participants to agree on a set of compatible media types... Examples of media types may include, at least, audio, video, and messaging.\" Id. at 12 (citing Leppanen 11 37, 50).", + "Nevertheless, Appellants argue Leppanen merely describes *that an invite message may be used to establish what media types will be compatible with the conference session,\" and does not teach or suggest \"that the invite message may also identify any specific media 'content' that is to then be distributed to other participants.\" App. Br. 14.", + "In other words, Appellants argue Leppanen does not disclose Appellants' claimed *first invite\" message \"contains information that identifies first media content [that a user wishes to share in a conference session]\" as recited in claim 1. Id. at 11.", + "According to Appellants, *specifying a media type is not the same thing and does not amount to specifying particular media content.\" Reply Br. 5 (emphasis added).", + "First, Appellants argue neither Leppanen nor Nguyen teaches or suggests: *determining if the first invite contains information that identifies first media content\" as recited in claim 9 and similarly recited in claim 17, for the same reasons discussed against claim 1. App. Br. 19-22.", + "Second, Appellants also argue \"Nguyen, however, does not teach or suggest distinguishing between user content and media content 'during the conference session' as claimed.\" \" Id. at 20." + ], + "examiner_findings": [ + "Claims 1-7, 22, and 23 stand rejected under 35 U.S.C. 6 102(e) as being anticipated by Leppanen. Final Act. 4-7.", + "Claims 8-18 and 21 stand rejected under 35 U.S.C. S 103(a) as being unpatentable over Leppanen and Nguyen. Final Act. 7-13.", + "With respect to independent claim 1, the Examiner finds Leppanen discloses a server performing all the claimed functions, including: (1) to \"receive a first invite from the first user to create or join the conference session;\" (2) to *add the first user to the conference session;\" and (3) to *determine if the first invite contains information that identifies first media content; and if so, send the first media content to the at least one other user.\" Final Act. 4 (citing Leppanen 11 34, 37 *where a user invites to join or create a conference session\" and Fig. 2); (Leppanen \" 34, 48, 127 \"where a user is added to a conference\" and Fig. 1); and (Leppanen 11 34, 37, 48, 50, 127-131 \"where media content identification and distribution to other users\" and Fig. 6).", + "In addition to the Examiner's findings regarding Leppanen as discussed in connection with claim 1, the Examiner further relies on Nguyen for teaching the missing feature in the preamble of Appellants' claims 9 and 17.", + "That is, \"a method of sharing content including user content which is generated by a video or audio capture device on a user's s conferencing device during a conference session and media content which is content other than user content\" is taught by Nguyen, thus supporting the conclusion of obviousness. Final Act. 8 (citing Nguyen 11 11, 19, 22, and Fig. 2)." + ], + "ptab_opinion": [ + "Claims 1. 12, and 20 are independent.", + "Claim 1 broadly describes Appellants' invention and is reproduced below with disputed limitations in italics:", + "Nguyen US 2008/0075255 A1 Mar. 27, 2008", + "Leppanen US 2008/0281971 A1 Nov. 13, 2008", + "Based on Appellants' arguments, the dispositive issue on appeal is whether Leppanen discloses the disputed limitation *determine if the first invite contains information that identifies first media content, as recited in claim 1. App. Br. 10-22; Reply Br. 3-11.", + "We disagree.", + "Contrary to Appellants' arguments, claim 1 does not require *information that identifies first media content\" [included in the *first invite\"] to be a specific media \"content\" that a user wishes to share in a conference session, as suggested by Appellants.", + "Instead, as recognized by the Examiner, the term *information that identifies first media content\" as recited in claim 1 can be broadly interpreted to encompass any information that can be used to identify media, including *session descriptions that allow participants to agree on a set of compatible media types\" as described in paragraphs 37 and 50 of Leppanen, Ans. 3-4,", + "The Examiner's interpretation is consistent with Appellants' Specification, including: (1) page 4 of Appellants' Specification, which describes the *SIP INVITE message 220 [as containing or associating] with information that identifies media content\" and (2) dependent claims 5 and 6, which further require \"the session description protocol (SDP)\" to be part of SIP. Id. at 4 (citing Spec. 4:25-26).", + "With respect to Appellants' arguments against dependent claims 2-7, 22, and 23, we also disagree and adopt the Examiner's s responses provided on pages 5-6 of the Examiner's s Answer. Ans. 5-6.", + "For the reasons set forth above, we sustain the Examiner's anticipation rejection of claim 1 and its dependent claims 2-7, 22, and 23 based on Leppanen.", + "Independent claim 9 is identical to claim 1, except that the preamble is further revised to specify that content in a conference session *is generated by a video or audio capture device on a user's conferencing device during the conference session. \"", + "Independent claim 17 is even broader than claim 1 in light of the absence of any *first invite\" used \"to create or join the conference session.\" \"", + "However, the preamble is further revised to specify that content in a conference session *is generated by a video or audio capture device on a user's conferencing device during the conference session.' ~", + "Appellants present two arguments against the combination of Leppanen and Nguyen.", + "We disagree for the same reasons discussed in connection with claim 1.", + "We disagree with Appellants.", + "At the outset, we note Appellants' arguments are predicated upon features recited in the preamble.", + "As a matter of law, \"the preamble does not limit the claims.\" DeGeorge V. Bernier, 768 F.2d 1318, 1322 n.3 (Fed. Cir. 1985).", + "In particular, \"[t]he preamble of a claim does not limit the scope of the claim when it merely states a purpose or intended use of the invention.\" In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (citing DeGeorge, 768 F.2d at 1322 n.3).", + "Here, the term \"a video or audio capture device on a user's conferencing device during the conference session\" appears only in the preamble of claims 9 and 17.", + "The body of the claims 9 and 17 neither repeats nor references the term *video or audio capture device.\" \"", + "Because the language in the body of the claims, standing alone, is clear and unambiguous there is no compelling reason to accord the term any patentable weight.", + "Without any patentable weight, Leppanen alone discloses the subject matter of claims 9 and 17.", + "A disclosure such as Leppanen that anticipates under 35 U.S.C. 6 102 typically renders the claim unpatentable under 35 U.S.C. 8 103 in all but rare cases. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); ef Cohesive Tech V. Water Corp., 543 F.3d 1351, 1363 (Fed. Cir. 2008) (\"novelty under 35 U.S.C. 102 and nonobviousness under 35 U.S.C. 8 103 are separate conditions of patentability\").", + "Even assuming arguendo that the term \"video or audio capture device\" recited in the preamble of claims 9 and 17 is accorded patentable weight, we still agree and adopt the Examiner's responses provided on pages 6-8 of the Examiner's Answer. Ans. 6-8.", + "For example, contrary to Appellants\" argument, Nguyen also teaches user content is different from media content, as the Examiner finds. Ans. 7 (citing Nguyen 11 19, 22, and Fig. 2).", + "Therefore, on this record, we are not persuaded of error regarding the Examiner's obviousness rejection and sustain the Examiner's rejection of independent claims 9 and 17, and dependent claims 8, 10-16, 18 and 21, which Appellants do not argue separately." + ] +} \ No newline at end of file diff --git a/opinion_split/2014002417_DECISION.json b/opinion_split/2014002417_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..919ee4d1290ca492aa999385bcafe89befd21ce3 --- /dev/null +++ b/opinion_split/2014002417_DECISION.json @@ -0,0 +1,55 @@ +{ + "appellant_arguments": [ + "Appellants' claimed invention \"relates generally to electronic trading and more specifically to a system and method for generating and displaying composite values and receiving and executing composite trading orders\" (Spec. 1, 11. 6-8).", + "72. An apparatus comprising: a processor; and a memory, in which the memory stores instructions which, when executed by the processor, direct the processor to perform: determining that a plurality of different trading products are related to but different from a first trading product, in which a quantity of the first trading product is determined to be substantially equivalent to a quantity of each of the plurality of different trading products; receiving market data from at least one market center, in which the market data relates to the first trading product and the plurality of different trading products; determining, based at least in part on the market data, a composite value for the first trading product and the plurality of different trading products; generating, based on the composite value, a composite trading order; determining, via a processor, based on the composite trading order, at least one constituent trading order that is configured to satisfy at least a portion of the composite trading order, and transmitting, on behalf of the trader, the at least one constituent trading order to the at least one market center.", + "However, as Appellants observe, the \"plurality of different trading products\" and the \"first trading product, as called for in claim 72, are *actual products (e.g., instruments) for trading\" as distinguished from \"a price of [a] trading product, a quantity of the trading product, and orders to buy or sell the trading product\" (App. Br. 13)." + ], + "examiner_findings": [ + "Claims 60-75 and 77-85 are rejected under 35 U.S.C. 8 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellants regard as the invention.", + "Claims 60, 61, 63-73, 75, and 77-85 are rejected under 35 U.S.C. 6 103(a) as unpatentable over Romani (US 7,469,229 B2, iss. Dec. 23, 2008).", + "Claims 62 and 74 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Romani and Official Notice.", + "Claims 60-75 and 77-85 are rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-180 of Claus *565 (US 7,873,565 B2, iss. Jan. 8, 2011), claims 1-127 of Claus *644 (US 7,711,644 B2, iss. May 4, 2010), claims 1-124 of Claus *640 (US 7,711,640 B2, iss. May 4, 2010), and claims 1-66 of Claus '056 (US 7,921,056 B2, iss. Apr. 5, 2011).", + "Claims 60-75 and 77-85 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 60-72 of co-pending application Serial No. 12/953,838.", + "In rejecting claims 60-75 and 77-85 under 35 U.S.C. S 112, second paragraph, the Examiner finds that the claims are indefinite because: [i]n claim 60, line 4 (and elsewhere, where applicable), Examiner is unclear about the scope of the term **substantially\" in substantially equivalent.", + "It is not clear to the Examiner when the quantity of the first trading product is substantially equivalent to the quantity of the plurality of trading products. Final Act. 2.", + "See also Ans. 2 (\"Examiner notes that the use of the term **substantially)' as in substantially equivalent does not clarify the scope of the claim. Does substantially equivalent differ in scope from simply equivalent.\"). \").", + "The Examiner directs our attention to claim 1 of Romani and asserts that the argued limitation is disclosed by: claim 1, combination order for different instruments with a bid price serves as plurality of trading products; ask price of a combination order serves as first trading product; both these orders are related (combination order) but different (buy vs. sell). Final Act. 3, 6.", + "In rejecting claims 60-75 and 77-85 as unpatentable over the claims of Claus *565, Claus *644, Claus *640, and Claus '056, the Examiner asserts: Claims 60-75 and 77-85 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-180 of U.S. Patent No. 7,873,565 [\"Claus *565M], claims 1-127 of U.S. Patent No. 7,711,644 [\"Claus *644\"], claims 1-124 of U.S. Patent No. 7,711,640 [\"Claus *640,\"] and claims 1-66 of U.S. Patent No. 7,921,056 [\"Claus *565M.", + "Although the conflicting claims are not identical. they are not patentably distinct from each other because the claims are directed towards a method for generating a constituent trading order from a plurality of orders which are of different type than the first trading order such that the quantity of the constituent trading order is equivalent to the quantity of the first trading order. Final Act. 8." + ], + "ptab_opinion": [ + "Appellants appeal under 35 U.S.C. 6 134(a) from the Examiner's final rejection of claims 60-75 and 77-85.", + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "An oral hearing was held on January 28, 2016.", + "We REVERSE.", + "Claim 72, reproduced below, is illustrative of the subject matter on appeal:", + "The Examiner's objection to the term **substantially\" appears based on the Examiner's perception that the use of that term per se renders the claim indefinite.", + "It does not.", + "*Expressions such as *substantially' are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention\" and, indeed, *may be necessary in order to provide the inventor with the benefit of his invention.\" Verve, LLC V. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).", + "Thus, \"li]t is well established that when the term *substantially' serves reasonably to describe the subject matter so that its scope would be understood by persons in the field of the invention \u00b7 \u00b7 \u00b7 . it is not indefinite.\" Id.", + "The Examiner summarily concludes here that use of the term **substantially'' in independent claim 60 *and elsewhere, where appropriate,\" renders the claims indefinite.", + "But the Examiner does not explain why a person of ordinary skill in the art would not understand the metes and bounds of the claim in light of the Specification.", + "The Examiner has not established a prima facie case of indefiniteness.", + "Therefore, we do not sustain the Examiner's rejection of claims 60-75 and 77-85 under 35 U.S.C. 8 112, second paragraph.", + "We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 72 under 35 U.S.C. 8 103(a) because Romani does not disclose or suggest \"determining that a plurality of different trading products are related to but different from a first trading product, in which a quantity of the first trading product is determined to be substantially equivalent to a quantity of each of the plurality of different trading products,\" \" as recited in claim 72 (App. Br. 10-13).", + "An *ask price of a combination order\" cannot constitute a \"first trading product\" at least because an *ask price\" is not a \"trading product.\"", + "Nor, for the same reason, can a \"bid price\" be a \"plurality of different trading products.\"", + "\" Moreover if, as Appellants suggest, the Examiner takes the position that the *first trading product\" and the \"plurality of different trading products\" comprise different legs of a combination order, Romani's claim 1 does not disclose or suggest that a quantity of one leg of a combination order is *substantially equivalent to\" a quantity of another leg of the combination order, i.e., that \"a quantity of the first trading product is \u00b7 \u00b7 substantially equivalent to a quantity of each of the plurality of different trading products, as recited in claim 72.", + "In view of the foregoing, we do not sustain the Examiner's 's rejection of independent claim 72 under 35 U.S.C. 6 103(a).", + "For the same reasons, we also do not sustain the Examiner's rejection of claims 73, 75, and 77-83, which depend from claim 72.", + "Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (*dependent claims are nonobvious if the independent claims from which they depend are nonobvious\").", + "Independent claims 1 and 84 include language substantially similar to the language of claim 72, and are rejected based on the same rationale applied with respect to claim 72.", + "Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. 8 103(a) of independent claims 1 and 84, and claims 61 and 63-71, which depend from claim 1. for the same reasons set forth above with respect to claim 72.", + "But the Examiner does not present any comparison of the pending claims with those of the identified patents.", + "In accordance with section 804 of the Manual of Patent Examining Procedure (the *MPEP*), in making a double patenting rejection of the type involved here, the Examiner must determine whether any claim in the present application defines an invention that is merely an obvious variation of an invention claimed in the identified patents.", + "Moreover, the analysis employed in making the obviousness-type double patenting rejection must parallel that used in the guidelines for analysis ofa a 35 U.S.C. 8 103 obviousness determination.", + "Here, the Examiner has not identified any specific differences between any claim of the present application and a claim of any of Claus *565, Claus *644, Claus *640, and Claus '056, or provided reasons why any such differences would have been obvious to a person of ordinary skill in the art at the time of Appellants' invention.", + "Instead, the Examiner merely asserts that the claims of the present application are not patentably distinct from the claims of the Claus patents because \"the claims are directed towards a method for generating a constituent trading order from a plurality of orders which are of different type than the first trading order such that the quantity of the constituent trading order is equivalent to the quantity of the first trading order\" (Final Act. 8).", + "On the present record, the Examiner has failed to establish a prima facie case of obviousness-type double patenting.", + "Therefore, we do not sustain the Examiner's rejection of claims 60-75 and 77-85 on that ground as unpatentable over claims of the Claus patents.", + "Turning to the provisional rejection of claims 60-75 and 77-85 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 60-72 of application Serial No. 12/953,838 (*the *838 application\"), we note that the *838 application issued on July 23, 2013 as U.S. Patent No. 8,494,952,", + "An Examiner's Amendment was entered on March 12, 2013, i.e., after the Final Office Action in the present application was mailed, in which independent claim 60 and dependent claims 61-64, 66, 67, 71, and 72 were amended and dependent claims 65 and 68-70 were cancelled.", + "Because the patented claims are not the same as those originally considered by the Examiner when the obviousness-type double patenting rejection was made, we decline to reach this rejection.", + "See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (Panels have the flexibility to reach or not reach provisional obviousness-type double patenting rejections)." + ] +} \ No newline at end of file diff --git a/opinion_split/2014002853_DECISION.json b/opinion_split/2014002853_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..52cd14eb19d158f82d6f3ddfe786216dd2b9dbd7 --- /dev/null +++ b/opinion_split/2014002853_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "First, Appellants argue Firefox does not teach or suggest \"a single user interface element showing progress of the downloading and a symbol or text associated with stopping retrieval of the downloading.\" as recited in claim 1. App. Br. 8-9, Reply Br. 4-5,", + "According to Appellants, Firefox's disclosure of combining a stop button and a reload button into a single button does not teach or suggest a single user interface that shows downloading progress of a webpage and a symbol or text associated with stopping retrieval of the downloading. Id.", + "Therefore, Appellants argue that selecting any portion of the single button does not teach selecting any portion of the single user interface element. Id.", + "Further, Appellants argue because there is no indication of when the button refreshes, when the button stops, or modifying the button to refresh the webpage which has completed its downloading, the disclosed single button does not teach the single interface element. App. Br. 9.", + "Second, Appellants argue Repka discloses a floatable control area including a control block for allowing a user to interrupt the loading function at any time, and another area for indicating information on the progressing of the loading function. App. Br. 9 (citing Repka 99 27-28),", + "However, Appellants submit because the cited areas are separate and distinct, they do not teach the single interface element, and thereby do not remedy the noted deficiencies of Firefox. Id. at 9-10." + ], + "examiner_findings": [ + "Claims 1. 6. 7, 10-12, 15-17, and 19 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over the combination of Firefox and Repka.", + "Claims 3-5, 9, 14, and 18 stand rejected under 35 U.S.C. 6 103(a) as being unpatentable over the combination of Firefox, Repka, and Kelly.", + "Consequently, the ordinarily skilled artisan would readily appreciate that the proposed combination of the cited references would have reasonably led to the single interface element for indicating the download progress ofa a webpage, stopping the webpage download, and refreshing a completely downloaded webpage. Id. at 3-5." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We affirm.", + "We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 8-12, and the Reply Brief, pages 4-5.", + "We have reviewed the Examiner's rejections in light of Appellants\" arguments.", + "We are unpersuaded by Appellants\" contentions.", + "Except as indicated otherwise, we adopt as our own the findings and reasons set forth in the rejections from which appeal is taken and in the Examiner's Answer in response to Appellants\" Appeal Brief. See Ans. 2-6, Final Act. 2-13.", + "However, we highlight and address specific arguments and findings for emphasis as follows.", + "These arguments are not persuasive because they are tantamount to an individual attack against the cited references. Ans. 3-4.", + "One cannot show non-obviousness by attacking the references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "See also In re Keller, 642 F.2d 413, 425 (CCPA 1981).", + "We agree with the Examiner that Firefox's disclosure of combining the stop button and the reload button into a single button capable of performing both functions teaches a single interface element that enables a user to stop a download or to reload a downloaded webpage. Ans. 2.", + "We further agree with the Examiner that Repka teaches a single interface element capable of performing both the functions of stopping a download, as well as indicating the download progress. Id. at 2-3 (citing Repka 99 27- 28).", + "We therefore agree with the Examiner that the combined teachings of Firefox and Repka would predictably result in a single interface element for canceling the downloading of a webpage, for indicating the download progress thereof, and for reloading a downloaded page. Id.", + "Accordingly, we do not agree with the Appellants that the combination of Firefox and Repka would result in two different buttons/areas, as opposed to a single interface element. App. Br. 11.", + "As correctly noted by the Examiner, the ordinarily skilled artisan would readily discern from Firefox and Repka the notion of integrating in a single button the stop/reload functions, and the stop/download progress indicator functions. Ans. 3.", + "Therefore, we agree with the Examiner that the combination of Firefox and Repka teaches or suggests the disputed limitations.", + "It follows Appellants have not shown error in the Examiner's rejection of claim 1.", + "Regarding the rejection of claims 3-7, 9-12, and 14-19, because Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claims 3-7, 9-12, and 14-19 fall therewith. See 37 C.F.R. 8 41.37(c)(1)(iv) (2013)." + ] +} \ No newline at end of file diff --git a/opinion_split/2014002870_DECISION.json b/opinion_split/2014002870_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a1b42e3433addcb72fffaebbc218cdc6420032fb --- /dev/null +++ b/opinion_split/2014002870_DECISION.json @@ -0,0 +1,49 @@ +{ + "appellant_arguments": [ + "Appellants seek review of the following grounds of rejection maintained in the Examiner's Answer: 1." + ], + "examiner_findings": [ + "Claims 1-3, 6-11, 15-17, and 19 under 35 U.S.C. $ 103(a) as unpatentable over de Cremoux* in view of Shteynberg2; and 2.", + "Claim 21 under 35 U.S.C. 9 103(a) as unpatentable over Zhou.6 Ans. 2- 6.", + "In rejecting claims 1 and 15 under 35 U.S.C. 8 103(a), the Examiner relies upon the combined disclosures of de Cremoux and Shteynberg.", + "Final Act. 6-7, The Examiner finds that de Cremoux, in Figures 7 and 8 and the accompanying text, discloses a nonlinear converter comprising, inter alia, a controller for selecting phases associated with buck and/or boost modes of the converter, wherein voltage signals VCABUCK or VCABUCK - AV (corresponding to the recited sliding function signal) are generated by a sliding function which measures a summation of feedback variables comprising voltage signal VEA (corresponding to the recited output voltage) and voltage signal VCUR (corresponding to the recited coil current).", + "Final Act. 6-7; see de Cremoux col. 7, II. 37-67 and 8. II. 1- 12.", + "The Examiner acknowledges that de Cremoux does not teach that its feedback variables of the sliding function further comprise a processed value that is a function of the output voltage (the integral product (TO - Vref) dt)) as required by claims 1 and 15.", + "Final Act. 7.", + "To remedy this deficiency, the Examiner relies on the disclosure of Shteynberg as teaching that proportional and integral (PI) compensation for error signals was old and known at the time of the invention.", + "Id.", + "The Examiner then concludes that \"[i]t would have been obvious to one of ordinary skill in the art \u00b7 \u00b7 to modify the controller of de Cremoux to include PI compensation on the voltage error in order to improve stability as taught by Shteynberg as desired.\"", + "According to the Examiner, the inclusion of PI compensation for voltage signal VEA of de Cremoux would **fulfill the claim limitations in that the feedback variables comprise the output voltage (e.g. VEA or K*VEA(t), the coil current (e.g., VCUR), and the processed value that is a function of the output voltage [signal VEA] (e.g., K*[VEA(1) Ans. 4-5,", + "In rejecting claim 21 under 35 U.S.C. 8 103(a), the Examiner relies upon the disclosure of Zhou.", + "Final Act. 11-12.", + "The Examiner finds that Zhou, in Figure 20 and the accompanying text, discloses a DC-DC converter comprising, inter alia, integrator 100 (corresponding to the recited first amplifier) providing a scaled coil current (the signal received at the negative input of the operational amplifier of integrator 100), wherein integrator 100 (also corresponding to the recited second summing component) is operable to sum the difference between output voltage Vo and reference voltage Vref, the scaled coil current, and a compensated product (i.e., the output of voltage loop compensator 120 that is received at the positive input of the operational amplifier of integrator 100).", + "Final Act. 11-12; see Zhou col. 8, II. 8-30.", + "Although the Examiner acknowledges that Zhou does not teach that its compensated product is an integral product, the Examiner states that PI compensation *was old and known at the time of invention to provide compensation for error controllers, such as the compensated controller of Zhou. \"", + "Final Act. 12.", + "Then, the Examiner concludes that it would have been obvious to modify voltage loop compensator 120 of Zhou to include PI compensation, *in order to take advantage of old and known beneficial operating characteristics of PI compensation, such as the removal of the steady state component of the steady state error with the integration.\"" + ], + "ptab_opinion": [ + "DISCUSSION Under 35 U.S.C. S 103, the Examiner must evaluate the following factual inquiries: (1) **the scope and content of the prior art, ** (2) the **differences between the prior art and the claims at issue, \" (3) **the level of ordinary skill in the pertinent art, \" and (4) \" **secondary considerations''' of nonobviousness.", + "KSR Int 7 Co. V. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham V. John Deere Co. of Kan. City, 383 U.S. 1, 17-18 (1966)).", + "When a combination of prior art references is relied upon by the Examiner, [o]ften, it will be necessary for a court to look to interrelated teachings of multiple [prior art references] \u00b7 \u00b7 in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.", + "To facilitate review, this analysis should be made explicit.", + "See In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006) (\"[RJejections 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\").", + "KSR, 550 U.S. at 418.", + "The articulated reasoning and factual underpinnings are, thus, essential elements of the Examiner's obviousness rejections.", + "In other words, the Examiner must set forth such articulated reasoning and factual underpinnings to carry the initial burden of establishing a prima facie case of obviousness.", + "In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984); In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that while \"the applicant must identify to the Board what the examiner did wrong, . . \u00b7 the examiner retains the burden to show [unpatentability]\").", + "However, as correctly explained by Appellants, the Examiner has not demonstrated that a processed value that is a function of the output voltage, i.e., the integral product (I (Vo \u00b7 Vre) dt) required by claims I and 15, could be used in the algorithms employed by de Cremoux for computing voltage signals VCABUCK and VCABOOST (i.e., VCABUCK - AV).", + "App. Br. 4-8; Reply Brief entered December 24, 2013 (\"Reply Br.\") at 2-3.", + "Although Shteynberg, at columns 9- 11, teaches employing an integral product in the context of the particular algorithms used in its PI or PID controller or regulator (digital logic 26) that controls a ramp generator, the Examiner has not demonstrated that Shteynberg teaches or would have suggested summing such integral product with the difference between output voltage Vo and reference voltage Vref: and the coil current used in de Cremoux's amplifier for the purpose of providing output voltage signals VCABUCK and VCABOOST having improved stability.", + "Compare Final Act. 6-12 and Ans. 3-6 with App. Br. 7-8; Reply Br. 2-3,", + "Accordingly, we concur with Appellants that the Examiner has not carried the initial burden of establishing a prima facie case of obviousness regarding the subject matter recited in claims 1-3, 6-11, 15-17, and 19 within the meaning of 35 U.S.C. S 103(a).", + "However, as correctly explained by Appellants, the Examiner has not demonstrated that one of ordinary skill in the art would have been led to modify integrator 100 of Zhou to carry out the summation of three elements (the difference between the output voltage and the reference voltage, the scaled coil current, and the integral product) in order to provide the desired sliding function as recited in claim 21.", + "App. Br. 11-12.", + "As can be seen from Figure 20, Zhou's integrator 100, which the Examiner has designated as being both the recited first amplifier and second summing component, is directed to summing the difference between two signals or elements provided at the positive and negative inputs of its operational amplifier, namely one signal or element involving the difference between output voltage Vo and reference voltage Vref (Vc) from the output of voltage loop compensator 120 and one signal or element involving the scaled coil current from resistor (R).", + "Compare Final Act. 11-12 and Ans. 5-6 with App. Br. 11-12 and Reply Br. 4-6; see Zhou Fig. 20 and col. 7, II. 24-30.", + "Although the Examiner appears to contend that it would have been obvious to replace Zhou's third element involving a compensated product with the integral product of the algorithm used in the known PI compensation controller for the summing purpose, Zhou's integrator 100 does not involve summing of a third element involving a separate compensated product as indicated by Appellants.", + "Compare Final Act. 12 with App. Br. 11-12; Zhou col. 7, II. 17-30 and Fig. 20.", + "Even if we interpret Zhou's element or signal involving the difference between output voltage Vo and reference voltage Vref (Vc) from the output of voltage loop compensator 120 as a compensated product, the replacement of such compensate product with the integral product of the algorithm used in the known PI compensation controller would not result in summing of the recited three elements or signals as recited in claim 21.", + "Accordingly, on this record, we concur with Appellants that the Examiner has not carried the initial burden of establishing a prima facie case of obviousness regarding the subject matter recited in claim 21 within the meaning of 35 U.S.C. S 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2014003951_DECISION.json b/opinion_split/2014003951_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c865911d72459df025c9783df0af1cdf286bed17 --- /dev/null +++ b/opinion_split/2014003951_DECISION.json @@ -0,0 +1,43 @@ +{ + "appellant_arguments": [ + "Appellant's claimed invention relates generally to \"a system for providing at least one transaction credit (TC)* (Spec. I 4).", + "Appellant argues that Erikson fails to disclose a *transaction credit, \" as required by independent claims 1, 12, and 20 because *the term Stransaction credit' as defined by the Specification encompasses the term Sprepaid value', and therefore Applicant claims \"prepaid value' wherever the term Stransaction credit' appears in the claims\" (Appeal Br. 5-6 (citing Spec. I 12)." + ], + "examiner_findings": [ + "Claims 1. 2, 3, 5, 12, 13, 14, and 20 are rejected under 35 U.S.C. 6 102(b) as anticipated by Erikson (US 2007/0228153 AI, pub. Oct. 4. 2007).", + "Claims 4. 8. and 17 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Erikson and Ahlers (US 2009/0254441 A1, pub. Oct. 8. 2009).", + "Claims 6 and 15 are rejected under 35 U.S.C. 103(a) as unpatentable over Erikson and Zalik (US 2008/0177655 A1, pub. July 24, 2008).", + "Claims 7 and 16 are rejected under 35 U.S.C. S 103(a) as unpatentable over Erikson, Zalik, and Ross (US 2012/0265681 A1, pub. Oct. 18, 2012).", + "Claims 9 and 18 are rejected under 35 U.S.C. S 103(a) as unpatentable over Erikson and Goermer (US 2011/0035446 A1, pub. Feb. 10, 2011).", + "Claim 10 is rejected under 35 U.S.C. 8 103(a) as unpatentable over Erikson and Zara (US 2002/0169648 A1, pub. Nov. 14, 2002).", + "Claims 11 and 19 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Erikson and Benkert (US 2011/0125645 AI, pub. May 26, 2011)." + ], + "ptab_opinion": [ + "Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal.", + "1. A system for providing a transaction credit, the system comprising: [a] a reception processor configured to receive a transaction credit request; [b] a decision processor configured to determine approval of the request; [c] an accessible resource encoded in a computer-readable medium configured to interface with the processors of the system; and [d] a response processor configured to distribute an approved transaction credit and/or an alternate message, wherein the reception, decision, and response processors are capable of interfacing with each other to coincidentally receive a user request, determine approval of the request, create a transaction credit account, and distribute the approved transaction credit to a user or third party.", + "Independent claims 1, 12, and 20, and dependent claims 2-11 and 13-19", + "We are not persuaded by Appellant's argument that the Examiner erred in rejecting independent claims 1, 12, and 20 under 35 U.S.C. S 102(b) because Erikson does not disclose a \"transaction credit, \" as recited by independent claim I (see Appeal Br. 5-9; see also Reply Br. 5-6).", + "Instead, we agree with, and adopt the Examiner's findings and rationales as set forth at pages 2 and 8-10 of the Answer (see Ans. 2 (citing Erikson \" 31-33, 36, Figs. 2, 3).", + "We add the following discussion for emphasis.", + "Erikson is directed to a system \"for obtaining a transaction account with the use of a consumer's identification card\" (Erikson I 15).", + "More particularly, Erikson discloses a process wherein a \"consumer requests a transaction account application\" using a \"transaction account application [which] is automatically populated with data scanned from [an] identification card\" (id. I 30).", + "Erikson discloses that a \"transaction account provider receives the application\" and processes the application by *determin[ing] the validity of the identification card\" and using \"a credit report [which] is transmitted to the transaction account provider\" (id. 11 31- 33).", + "Erikson further discloses [t]he credit report is then used in the decision to approve or deny the transaction account application.", + "In step 222, the result of the decision is transmitted back to the credit requester (e.g., the store merchant), and the transaction account is then either approved or rejected in step 224, (Id. I 33),", + "We also note that Erikson discloses that \"[t]he term Stransaction card' as used herein may include any type of open or closed charge card, credit card, debit card, stored value card\" (id. I 20).", + "However, contrary to Appellant's argument, the Specification does not lexicographically define the term *transaction credit;\" instead, we find the Specification provides non-limiting examples only.", + "For example, the Specification discloses that [i]n some embodiments. a TC may be any form or transmission that allows a party to apply the credit of a prepaid value of the credit toward the purchase of any item, with any seller, that may accept the value of the TC, such as but not limited to a gift card, a coupon, a purchase credit, a discount, or any similar physical or virtual form or transmission as may be known in the art. (Spec. I 12 (emphasis added)).", + "The Specification further discloses TC accounts, and/or the value therein, may be partitioned to accommodate multiple providers of prepayment or a credit line for the TC. or for sharing the use or value of a TC among more than one customer.", + "A credit line assigned to a TC allows a TC to be issued without prepayment. but with a value assigned passed upon an approved line of credit obligated for the value of the TC. (Id. I 11 (emphasis added)).", + "There is a heavy presumption that claim terms take on their \"plain, ordinary, and accustomed meaning to one of ordinary skill in the relevant art.\" See Prima Tek II, L.L.C. V. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003).", + "Although Appellant may overcome that presumption by acting as their own lexicographer so as to assign a special definition to each claim term, that definition must be *clearly set forth\" and **explicit.\" Id.", + "Here, we find that a person of ordinary skill in the art would understand from the Specification that the term \"transaction credit\" may refer to either a **prepayment,* i.e., *prepaid value,\" \" as Appellant contends (see, e.g., Appeal Br. 6), or a *credit line, \" which Appellant's Specification states *allows a TC to be issued without prepayment, but with a value assigned passed upon an approved line of credit obligated for the value of the TC\" (Spec. 1 11).", + "Thus, we agree with the Examiner (see Ans. 9-10 (citing Erikson \" 30, 33)) that Erikson's 's transaction credit account constitutes a *transaction credit, \" within the meaning of independent claims 1, 12, and 20, under a broad, but reasonable, interpretation.", + "We also are not persuaded of error on the part of the Examiner by Appellant's argument that Erikson fails to disclose *distributing an instantly created transaction credit to a user or third party\" (Appeal Br. 7-9; see also 7-8).", + "Appellant's argument is unpersuasive because it is not commensurate with the scope of the claims, i.e., none of independent claims 1, 12, and 20 recites the distribution of \"an instantly created transaction credit. \"", + "And, to the extent Appellant argues that Erikson fails to disclose \"the distribution of its transaction credit account\" because Erikson fails to deliver *its transaction credit account to a user or third party\" (Reply Br. 7-8), we agree with the Examiner that \"[alpproving the transaction credit account is distributing the transaction credit because when the account is approved, the transaction credit exists\" (Ans. 10 (citing Erikson 11 30, 33)).", + "In this regard, we note that Appellant's Specification discloses that \"distributing the at least one TC may not require an issuer to physically produce or distribute a card\" (Spec. I 12), but may include *any method know[n] in the art for providing a negotiable credit to a user\" (id.).", + "In view of the foregoing, we sustain the Examiner's rejection of independent claims 1, 12, and 20 under 35 U.S.C. 9 102(b).", + "We also sustain the Examiner's rejections of dependent claims 2-11 and 13-19, which are not argued separately except based on their dependence on independent claims I and 12 (see Appeal Br. 10-11)." + ] +} \ No newline at end of file diff --git a/opinion_split/2014004313_DECISION.json b/opinion_split/2014004313_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a07866a7185c3b7b8fa9d380d8d8d1b207700ec7 --- /dev/null +++ b/opinion_split/2014004313_DECISION.json @@ -0,0 +1,71 @@ +{ + "appellant_arguments": [ + "Appellants argue (Br. 5-8) the Examiner's rejection of claim 1 under 35 U.S.C. & 103(a) as being obvious over the combination ofLG, Qiang, and Leung is in error.", + "Appellants contend the Examiner \"admits\"s the combination ofLG and Qiang does not teach or suggest the contested limitation of claim 1 (Br. 5), and further argue \"the Examiner has erred in concluding that Leung describes performing access authentication of a mobile unit to an authentication server for the first and second wireless communication links using a common network access identifier (NAI) for first and second wireless access technologies, as set forth in claim 1.\" Br. 6.", + "In support of their contentions regarding Leung, Appellants argue Leung's mapping of the NAI to an IP address as taught in paragraph 36 \"only changes upon handoffs to a new network address translation (NAT) zone \u00b7 \u00b7 \u00b7 [and] does not describe or suggest using the NAI to authenticate the target recipient upon handoffs to a new NAT zone.\" \" Id.", + "Appellants further argue the NAI of Leung is only used outside of the local IP network, and allegedly provides no teaching or suggestion of \"using the NAI to identify the target recipient during operations that are performed within the local IP network, such as authenticating the target device during handover between different base stations within the local IP network.\" ld.", + "With respect to the alleged deficiency of the Examiner's motivation to combine the references in the manner suggested, Appellants contend, because \"[e]ngineers are under constant pressure to reduce the processing burden and latency in wireless communication systems and consequently are averse to introducing unnecessary additional processing or latency,\" Leung teaches away from the proposed modification of Kim to use Leung's NAL Br. 7.", + "This \"teaching away\" is allegedly because, using Leung's \"NAI to identify the mobile terminal during handoff would require performing a network address translation on the NAI for every hand off that is performed within the local IP network.\" Br. 7.", + "Appellants argue the Examiner's rejection of claim 9 under 35 U.S.C. $ 103(a) as being obvious over the combination ofLG, Karagiannis, and Leung is in error." + ], + "examiner_findings": [ + "R1. Claims 1-3 and 5 stand rejected under 35 U.S.C. . 103(a) as being obvious over the combination of LG,' Qiang, and Leung. Final Act. 3; Ans. 2.", + "R2. Claims 9, 10, and 12 stand rejected under 35 U.S.C. & 103(a) as being obvious over the combination of LG, Karagiannis, and Leung. Final Act. 7; Ans. 2.", + "R3. Claim 4 stands rejected under 35 U.S.C. S 103(a) as being obvious over the combination ofLG, Qiang, Leung, and Handforth. Final Act. 10; Ans. 2.", + "R4. Claim 11 stands rejected under 35 U.S.C. \uc6a9 103(a) as being obvious over the combination ofLG, Karagiannis, Leung, and Handforth. Final Act. 11; Ans. 2.", + "R5. Claims 6-8 stand rejected under 35 U.S.C. 5 103(a) as being obvious over the combination ofLG, Qiang, Leung, and Famolari. Final Act. 12; Ans. 3.", + "R6. Claims 13-16 stand rejected under 35 U.S.C. S 103(a) as being obvious over the combination ofLG, Karagiannis, Leung, and Famolari. Final Act. 13; Ans. 3.", + "The combination of Kim and Qiang teaches performing access authentication of a mobile unit to an authentication server for the first and second wireless communication links using an access identifier for first and second wireless access technologies.", + "The Leung reference teaches that a Network Access Identifier (NAI) is a well-known identifier (like the identifier already used in Kim) for [identifying] a mobile node across all networks in a mobile IP handoff situation.", + "Kim teaches a handoff situation of a mobile node authenticating with an access point and an identifier.", + "Qiang further teaches the authentication happening at an authentication server, and lastly Leung teaches that a well-known common and unique identifier for heterogeneous networks is a Network Address Identifier.", + "It would have been obvious to one of ordinary skill in the art at the time of invention to combine the teachings of Leung and combination of LG and Qiang to use a common network access identifier, because Leung teaches that is it a well-known technique in mobile IP for associating a packet with an target user (mobile user like that in Kim and Qiang) (Leung [0023]). Ans. 4-5.", + "Adding the feature of an NAI is beneficial in mobile IP situations and is well known as evidenced in [0016] and [0026] of Leung.", + "It is this feature of Leung that is being combined with Kim.", + "Combining this feature would in no way require extra processing.", + "When using an NAI, devices would all have a unique identifier just as they did in Kim.", + "Mobile IP is well known and is being used in order to preserve the number of available IP addresses while having a single identification for devices across a plurality of networks. Ans. 5." + ], + "ptab_opinion": [ + "Based on Appellants' arguments (Br. 5-12), we decide the appeal of obviousness Rejection R1 of claims 1-3 and 5 on the basis of ofrepresentative claim 1.", + "We decide the appeal of obviousness Rejection R2 of claims 9, 10, and 12 on the basis of representative claim 9.", + "Remaining claims 4, 6-8, 11, and 13-16 in rejections R3 through R6, not argued separately with specificity, stand or fall with the respective independent claim from which they depend.\"", + "In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants.", + "We do not consider arguments that Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. 8 41.37(c)(1)().", + "We disagree with Appellants' arguments with respect to claims 1-16, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments.", + "We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted.", + "However, we highlight and address specific findings and arguments regarding claims 1 and 9 for emphases as follows.", + "These contentions present us with the following issues:", + "(a) Did the Examiner err in finding the cited prior art combination ofLG, Qiang, and Leung teaches or suggests \"[a] method implemented in a mobile unit capable of communicating with a network according to multiple wireless access technologies,\" in which \"access authentication of the mobile unit to an authentication server is performed for the first wireless communication link and the second wireless communication link using a common network access identifier (NAI) for the first and second wireless access technologies,\" as recited in claim 12", + "(b) Did the Examiner err in finding the cited prior art combination ofLG, Qiang, and Leung teaches or suggests the invention of claim 1 because a person with skill in the art would not be motivated to combine the references in the manner suggested, purportedly because modifying LG with the teachings of Leung teaches away from such a combination?", + "We first note, \"one cannot show non-obviousness by attacking references individually where . \u00b7 . the rejections are based on combinations ofreferences.\" In re Keller, 642 F.2d 413, 426 (CCPA 1981).", + "In response to Appellants' arguments, the Examiner summarizes his findings with respect to the teachings of the references, as well as the legal conclusions associated with Rejection R1 as follows:", + "We agree with the Examiner's unrebutted findings above.", + "We agree because each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Here, the Examiner has set forth what each reference teaches or suggests and has articulated a reasoning with a rational underpinning as to why one of ordinary skill would have found it obvious to combine the teachings or suggestions of the references.", + "See Issue 1(b), infra.", + "Appellants have not presented any persuasive evidence or argument to show error in the Examiner's findings or reasoning.", + "We first note, \"[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.' In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. V. SGS Importers Int'l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).", + "The Examiner responds to Appellants' allegations by finding:", + "We find Appellants' invention is simply a combination of known teachings that realize a predictable result.", + "The Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 418 (2007).", + "The skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" since the skilled artisan is \"a person of ordinary creativity, not an automaton.\" Id. at 420-21.", + "Further, Appellants have not demonstrated that the Examiner's proffered combination of references would have been \"uniquely challenging or difficult for one of ordinary skill in the art.\" See Leapfrog Enters., Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).", + "Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides \"operates as a beneficial check on hindsight.\" Cheese Sys., Inc. V. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).", + "Moreover, Appellant's assertions amount to unsupported attorney argument, and therefore we give them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139- 140 (Fed. Cir. 1996).", + "On this record, we find no evidence that a person of ordinary skill, when reading the reference, would be discouraged or otherwise led in a divergent way from the approach taken by Appellants. See Gurley, 27 F.3d at 553.", + "Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness.", + "Therefore, we sustain the Examiner's obviousness rejection of ofindependent claim 1. and grouped claims 2, 3. and 5 which fall therewith.", + "See Claim Grouping, supra,", + "These contentions present us with the following issues:", + "(a) Did the Examiner err in finding the cited prior art combination ofLG, Karagiannis, and Leung teaches or suggests \"[a] method implemented in a home agent capable of supporting multiple wireless communication links with at least one mobile unit according to multiple wireless access technologies,\" that includes, inter alia, the step of \"receiving a re-registration message at the home agent, wherein the re-registration is sent from the mobile unit to the home agent via the second wireless communication link using a common network access identifier (NAI) for the first and second wireless access technologies,\" as recited in claim 9?", + "(b) Did the Examiner err in finding the cited prior art combination ofLG, Karagiannis, and Leung teaches or suggests the invention of claim 9 because a person with skill in the art would not be motivated to combine the references in the manner suggested, purportedly because modifying LG with the teachings of Leung teaches away from such a combination?", + "Although Rejection R2 is a different statutory basis than Rejection R1, we find the arguments presented with respect to Issues 2(a) and 2(b) for Rejection R2 of claim 9 to be essentially the same as those discussed, supra, with respect to Issues 1(a) and 1(b) in connection with Rejection R1 of claim 1.", + "Consequently, we find our analysis of Issues 1(a) and 1(b) to also be dispositive of our analysis of Rejection R2.", + "Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 9, nor do we find error in the Examiner's resulting legal conclusion of obviousness.", + "Therefore, we sustain the Examiner's obviousness rejection ofindependent claim 9. and grouped claims 10 and 12 which fall therewith.", + "See Claim Grouping, supra.", + "In view of the lack of any substantive or separate arguments directed to obviousness Rejections R3 through R6 of claims 4, 6-8, 11, and 13-16 under $ 103 (see Br. 10-12), we sustain the Examiner's rejection of these claims.", + "Arguments not made are considered waived." + ] +} \ No newline at end of file diff --git a/opinion_split/2014004693_DECISION.json b/opinion_split/2014004693_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..84e0a1dbc6c0d22a53dc1f93c2da25c37021c403 --- /dev/null +++ b/opinion_split/2014004693_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellants argue the Examiner erred in rejecting independent claim 1, because Ramamurthy is directed to *displaying images taken at different times on side-by-side screens,\" and \"nothing in Ramamurthy teaches or suggests that the images should be combined or that a particular portion of one image should, or could, be displayed over the corresponding portion of the second image.\" Br. 7.", + "Appellants further contend **Ramamurthy teaches away from such a modification by indicating that diagnosis and evaluation of disease progression is improved by comparing the marked volume of interest in the different images side-by-side.\" Id.", + "Appellants contend Ramamurthy discloses merely *fused images,\" which *are a single image formed from fused data sets of two whole images and are not analogous to\" the claimed display, as \"the user input delineates a single area of interest in a single fused image.\" \" Br. 8.1", + "Appellants argue the Examiner erred in rejecting dependent claim 27, because: Ramamurthy does not describe that the display can be updated as recited in claim 27. In rejecting claim 27, the Examiner refers to a portion of Ramamurthy that merely relates to tracking changes in the image over time and comparing the images that are generated over time. Final Office Action, p. 6 (citing Ramamurthy, col. 11, II. 19-29), Br. 9." + ], + "examiner_findings": [ + "Claims 1, 2, 5-8, 11, 12, 15-18, and 25-27 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Ramamurthy (US 8,160,314 B2; Apr. 17, 2012). Final Act. 2.", + "Additionally, the Examiner finds Ramamurthy teaches or suggests the use of **overlapping medical image[s]\" is well-known in the art for comparing patient scans, including medical images from \"the same modality (taken at a different time). \" Ans. 7-8 (citing Ramamurthy 1:49-67); see also Advisory Action 1.", + "The Examiner finds Ramamurthy teaches or suggests the limitations of dependent claim 27 by citing to a portion of the reference directed to calculating tracked changes and quantifications of marked VOIs. See Final Act. 6 (citing Ramamurthy 11:19-29)." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner has erred.", + "We do not find the Examiner erred in rejecting independent claim 1; however, we agree with Appellants' arguments with respect to the Examiner's rejection of dependent claim 27.", + "We are not persuaded the Examiner erred in rejecting claim 1.", + "We agree with, and adopt as our own, the Examiner's findings and conclusions regarding the rejection of claim 1, and we add the following primarily for emphasis.", + "The Examiner correctly finds Ramamurthy teaches identifying and displaying areas of interest of first and second modality images. See Final Act. 2-3 (citing Ramamurthy 3:9-20).", + "We agree with the Examiner that it would be obvious to one of skill in the art to display Ramamurthy's area of interest from the first modality image \"over\" the corresponding area of interest in the second modality image, as required by claim 1, because such modification is no *more than the predictable use of prior art elements according to their established functions.\" KSR Int \" Co. V. Teleflex Inc., 550 U.S. 398, 401 (2007); see also Final Act. 3-4.", + "Similarly, we are not persuaded that Ramamurthy's teachings, directed to medical diagnostics (see Ramamurthy 2:31-34), discourages investigation into the claimed method. See DePuy Spine, Inc. V. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (*A reference does not teach away, however, ifit merely expresses a general preference for an alternative invention but does not *criticize, discredit, or otherwise discourage' investigation into the invention claimed. \")(citations removed). See Ans. 8.", + "Appellants do not persuade us the Examiner erred in finding the disputed limitations are obvious in view of Ramamurthy's teaching of overlapping images.", + "Ramamurthy, in the portion referenced by Appellants, teaches identifying VOIs (i.e., areas of interest) around both first and second images as well as a fused image. See Ramamurthy 10:49-54 (\"[w]hen a user draws a VOI on, for example, a PET image, the VOI is automatically copied onto a CT image at the appropriate voxel coordinate obtained by applying transformations using the registration results between PET and CT images. Further, the VOI may be displayed on fused images. \"); see also Br. 8.", + "Therefore, we are not persuaded the Examiner erred in finding it would have been obvious to one of ordinary skill in the art to use the teachings of Ramamurthy (see, e.g., Ramamurthy 1:49-67, 3:9-20) to perform the recited method of displaying image data of an imaged subject, *so that medical practitioners can make better-informed diagnostic, therapy and follow-up decisions in a cost-effective and efficient manner.\" Final Act. 3-4; see also Ans. 7-8.", + "Accordingly, we sustain the Examiner's rejection of independent claim 1, as well as claims 2, 5-8, 11, 12, 15-18, 25, and 26, which are not separately argued. See Br. 9.", + "We are persuaded by Appellants' arguments.", + "The Examiner, however, has not explained how such calculations relate to the limitations of claim 27.", + "Rather, we agree with Appellants that this portion of Ramamurthy does not teach or suggest updating the display of the area of interest in response to an update user selection of the area of interest in the first image. See Br. 9.", + "Accordingly, we do not sustain the Examiner's 's rejection of dependent claim 27. See In re Kahn, 441 F.3d 977, 988 (2006) (\"[R (*[RJejections 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\")." + ] +} \ No newline at end of file diff --git a/opinion_split/2014004708_DECISION.json b/opinion_split/2014004708_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..088849ea599857e7fd71a62382f7ba0966331343 --- /dev/null +++ b/opinion_split/2014004708_DECISION.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "Appellant argues the Examiner erred in rejecting independent claims 1 and 15, because \"the claims clearly require the mobile system itself *facilitate[s] an action \u00b7\u00b7 prior to the mobile system exiting the limited range of the signal source. \". whereas \"Lee2003 teaches actions [are] performed in the base station and not in the recited mobile system itself.\" Reply Br. 4.", + "Appellant argues the Examiner erred in finding the cited references teach the claim 1 limitation *determining a geographic position of the mobile television receiver, \" because \"the broadest reasonable construction of 'positioning' does not encompass the 'ranging' taught by Lee2003.\" Reply Br. 5.", + "Appellant argues the Examiner misconstrued claim 1. See Reply Br. 6.", + "Particularly, claim I recites *while receiving the television program via the first signal transmitted by the signal source and prior to exiting the limited range of the signal source\" (emphasis added), and, Appellant contends, the Examiner only **assert[s] that Lee2009 discloses *while receiving the television program via the first signal transmitted by the signal source and when exiting the limited range of the signal source. *** Id." + ], + "examiner_findings": [ + "See Ans. 23 (\"The examiner has not replaced *prior to' with *when' \u00b7 . Lee2003 is added in to teach \u00b7 . \u00b7 that prior to a device leaving the first signal source, that the device is predictively handed off to the second signal source. Therefore teaching the *prior to' limitation. \");", + "see also Ans. 24 (*appellant argues that Lee2009 teaches a reactionary *exiting'. The examiner agrees, which is why Lee2003 is added in to teach predictive exiting. \")." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejections in light of Appellant's arguments.", + "We agree with the Examiner's s responses to the issues raised by Appellant in the Appeal Brief for the reasons given in the Answer, and we adopt the reasoning and findings of fact made by the Examiner in the Final Action and Examiner's Answer as our own.", + "We highlight the following issues raised in the Reply Brief for emphasis.", + "We are not persuaded the Examiner erred.", + "We agree with the Examiner that claim 1 is a method claim that does not specify which device performs the disputed limitations. 2 See Ans. 21, 25.", + "Regarding claim 15, Appellant's argument is unpersuasive for focusing on Lee-2003, whereas the Examiner's s rejection is based on the combined teachings of Lee-2009, Lee-2003, and Chozui.", + "*The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.\" In re Keller, 642 F.2d 413, 425 (CCPA 1981)).", + "Rather, *if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.\" KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398, 417 (2007).", + "Here, the Examiner correctly finds Lee-2009 teaches a mobile device comprising a controller configured to facilitate an action allowing a viewer to continue viewing a program when the mobile device exits a broadcast range. See Final Act. 8 (citing Lee-2009 Figs. 3, 5).", + "Appellant, in contrast, has not provided sufficient evidence or reasoning to persuade us that the combination of the mobile device of Lee-2009 with Lee-2003's teaching of using \"predictive exiting\" to determine when to handoff a mobile device to a different base station based on the device's motion (Ans. 23-24, citing Lee- 2003 18-21) was \"uniquely challenging or difficult for one of ordinary skill in the art\" Leapfrog Enters., Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007); see also Ans. 29-30 (finding that one of ordinary skill would modify Lee-2009's mobile device with the antennas and functionality of Lee-2003's base station).", + "Accordingly, we are not persuaded the Examiner erred in finding the combination of cited references teaches the limitations required by claims 1 and 15.", + "Appellant's arguments are unpersuasive, at least because both Lee- 2003 and Chozui teach determining the geographic position of a mobile device. See Ans. 3-4; see also Lee-2003 I 4 (*a GPS system (global positioning system) can be used for positioning a user\"); Chozui I 55 (*postal zip code \u00b7 \u00b7 \u00b7 can be used\"), 11 78-81 (determining the \"present location\" ofa a mobile receiver).", + "Further, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993).", + "Thus, we agree with the Examiner that \"the mobile terminal being determined to be within range of a permanently fixed antenna with a known location would be a geographic location of the mobile device,\" and we find the disputed limitation reasonably encompasses the location *determination being performed by the Lee references,\" *, which \"use the signal strength of the signal being received by the mobile device as a means of determining how close a device is to the source (Lee2009: paragraph 63; Lee2003: paragraphs 18-20).\" Ans. 21-22; compare Appellant's Fig. 2, Lee-2003 Fig. 1.", + "Accordingly, we are not persuaded the Examiner erred in finding the combination of cited references teaches determining a geographic position, as required by claim 1 and similarly required by claim 15.", + "Appellant's argument is not responsive to the Examiner's findings: the Examiner cites Lee-2003 for teaching the disputed limitation.", + "Accordingly, we are not persuaded the Examiner erred." + ] +} \ No newline at end of file diff --git a/opinion_split/2014004881_DECISION.json b/opinion_split/2014004881_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5bd4dfd52d73c443e1597b443559d87539b39b47 --- /dev/null +++ b/opinion_split/2014004881_DECISION.json @@ -0,0 +1,65 @@ +{ + "appellant_arguments": [ + "The Appellant argues that the \"operating current supply transistor (21) differs from the recited second sense transistor. Rather than limiting the operating current, the claimed sense transistor senses the output of the output transistor, as recited by claim 1.\" App. Br. 6.", + "In the Reply Brief, the Appellant argues that \"it is not apparent that a basic current mirror is formed [by elements 1 and 21 of Imura Fig. 2].\" Reply Br. 3.", + "2. The Appellant argues that \"transistors MP4d and MP5d [of Wrathall Fig. 19] are not connected to a current source and do not supply an activation current.\" App. Br. 6.", + "3. Referring to claim 2, the Appellant argues that \"there is no suggestion by Imura of controlling the activation current by operation of the current upper limiter circuit (121) and the cascade circuit (1 (112).\" App. Br. 7.", + "4. The Appellant argues that the Examiner \"rellies] on the same structural element disclosed by Imura as being responsive to two different elements in claim 1.\" App. Br. 8.", + "5. The Appellant argues that the Examiner': s rejection is improperly motivated by hindsight. App. Br. 10.", + "6. The Appellant argues that Imura teaches away from the use of a current mirror. App. Br. 12 (citing Imura I 12).", + "The Appellant does not address the Examiner' rationale in the Appeal Brief but argues for the first time in the Reply Brief that \"[elven if one skilled in the art were to \u25a0 \u00b7 \u00b7 insert[] the identified transistors [from] Wrathal[1] in the error amplifier circuit (20) [of Imura], the result is [increased current consumption].\" Reply Br. 5.", + "7. In the Reply Brief, the Appellant characterizes the Examiner' 's proposal of substituting the error amplifier 1900 of Wrathall for the error amplifier 20 of Imura as a \"changed basis for the rejection.\" Reply Br. 4-6." + ], + "examiner_findings": [ + "Claims 1 and 2 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over Imura (US 2008/0265852 A1, published Oct. 30, 2008) in view of Wrathall (US 2004/0021518 A1, published Feb. 5, 2004).", + "Relying primarily on Figure 2 of Imura, the Examiner finds that Imura teaches each element of claim 1 except that it *is silent on whether the current mirror circuit supplies the activation current.\" Final Act. 5.", + "The Examiner explains two alternative interpretations of Figure 2: In one interpretation, the Examiner interprets the current mirror as the current mirror including at least references 5, 21, and 1, however, a different interpretation would include a current mirror which is connected to the current source such as a current mirror within Reference 20 which would be connected to Reference 121, would supply the activation current, and would fulfill the limitations of the claim.", + "Imura teaches that the current circuit comprises (at least portions of) a generic operational error amplifier 20.", + "Construction of operational error amplifiers, such as the Reference 20, were old and known at the time of invention to include current mirror circuits to input a current and output an appropriately scaled activation current for the core of the error amplifier, as evidenced by Wrathall in 2004/0021518 (Wrathall).", + "Wrathall teaches a specific topology for an error amplifier, such as the error amplifier 20 of Imura, including a current mirror (see e.g., Wrathall - Figure 19, Reference MP5d, MP4d) wherein the current mirror circuit inputs the current from a current source (such as the current source 121 of Imura via Reference Vdd/Vss) and outputs an activation current for activating the voltage control circuit (e.g., the core of the error amplifier). Id. at 5-6.", + "The Examiner concludes that it would have been obvious to include a current mirror circuit in item 20 of Imura Fig. 2 \"to receive the current from [items] 21 and 121 and output the activation current for the error amplifier core in order to appropriate scale the current \u00b7 \u00b7 \u00b7 which was old and known at the time of the invention.\" Id. at 6.", + "1. The Examiner finds that operating current supply transistor 21, see Imura Fig. 2, is equivalent to or otherwise renders obvious the claimed \"second sense transistor.\" E.g., Ans. 3-5.", + "As the Examiner explains in the Answer, \"the current output by 21 is based upon the output current from the output transistor 1.\" Ans. 5.", + "The Examiner finds that, when Wrathall' is current mirror including transistors MP4d and MP5d are added to Figure 2 of Imura, \"the transistors are connected to a current source (e.g., Reference 21 and 121 are both sources of current, or 'current sources') and supply an activation current \u00b7 \u00b7 \u00b7 , Ans. 3.", + "The Examiner finds that \"activation\" current is limited by the second sense transistor [21] based on the output current from the output transistor [1] \u00b7 \u00b7 \" Final Act. 6.", + "The Examiner proposes the substitution of the error amplifier 1900 of Wrathall, see Wrathall Fig. 19, which includes a current mirror, for the error amplifier 20 of Imura. See Final Act. 5-6." + ], + "ptab_opinion": [ + "After review of the evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner' rejection.", + "Accordingly, we affirm the rejection for reasons set forth by the Examiner in the Final Action dated July 11, 2013, and the Answer. See generally Final Act. 3-6; Ans. 2-10.", + "We add the following for emphasis and completeness.", + "The Appellant advances several arguments in opposition to the Examiner' s rejection, which we address below:", + "We are not persuaded by those arguments.", + "That finding is supported by Imura, which teaches that \"Islince the gate of the operating current supply transistor 21 is connected to the gate of the output transistor 1, the operating current of the error amplifier circuit 20 is in proportion to the current that flows in the load from the output transistor 1.\" Imura I 37.", + "The Appellant's unembellished arguments do not persuade us that the operating current supply transistor 21 and the second sense transistor do not serve equivalent functions, or that a person of ordinary skill in the art would not otherwise have considered the claimed sense transistor to be obvious in light of the operating current supply transistor 21 of Imura.", + "To the extent that the Appellant raises other differences between Imura Fig. 2 and claim 1, e.g., App. Br. 6 (\"The claimed current circuit differs from the upper limiter circuit . . . disclosed by Imur(a]. \"), we are likewise not persuaded of reversible error.", + "Merely alleging that differences exist between the prior art and the claim, without explaining why those differences result in nonobvious subject matter, is not sufficient to overcome the case of obviousness set forth by the Examiner.", + "Cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (even if the examiner failed to make a prima facie case, the Board would not have erred in framing the issue as one of reversible error because \"it has long been the Board's s practice to require an applicant to identify the alleged error in the examiner's rejections\").", + "That argument is not persuasive because it does not address the Examiner' s rationale, i.e., substitution of the error amplifier 1900 of Wrathall Fig. 19 for the error amplifier 20 of Imura Fig. 2. Final Act. 5-6; Ans. 3.", + "The Appellant's argument provides no basis to reject those findings.", + "See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (\"[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.\" \").", + "We are not persuaded by that argument because it fails to rebut the Examiner'. s rationale persuasively.", + "Imura supports that finding. Imura I 37.", + "The Appellant's argument provides no basis to reject it.", + "See Jung, 637 F.3d at 1365.", + "That argument is not persuasive because it fails to address the Examiner's s reliance on Wrathall as supplying the current mirror circuit. See Final Act. 5-6; see also Keller, 642 F.2d at 426.", + "Under that rationale, the Examiner is not relying on the same structural element of Imura as being responsive to two different elements. See Final Act 5-6; Ans. 7.", + "Moreover, even if the Examiner were relying on a single element of Imura as serving two different functions, the Appellant fails to persuasively explain why that would constitute reversible error in the context of the obviousness rejection set forth by the Examiner.", + "However, the Appellant's is argument addresses findings that the Examiner did not make. See id.", + "The Examiner does not propose replacement of elements 121 and 112 of Imura Fig. 2, as suggested by the Appellant. See id.", + "Substitutions of one known element for another typically do not result in nonobvious subject matter. See KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).", + "The Appellant's argument fails to persuasively explain why the substitution of the known error amplifier of Wrathall for the error amplifier of Imura would not have been obvious to a person of ordinary skill in the art.", + "We are not persuaded that I 12 of Imura teaches away from the use of a current mirror so as to render the proposed combination nonobvious.", + "For a reference to \"teach away, *, it must criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "The existence of \"better alternatives . \u00b7 \u25a0 does not mean that an inferior combination is inapt for obviousness purposes.\" In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).", + "Moreover, to the extent that increased current consumption is undesirable because it increases costs, that consideration does not persuasively support a \"teach away\" argument.", + "See In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (\"That a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility. Only the latter fact would be relevant. \"); see also Winner Int'l Royalty Corp. V. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (\"The fact that the motivating benefit comes at the expense of another benefit . \u00b7 \u00b7 should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another. \").", + "Additionally, that a prior art embodiment disclosed by Imura may include a current mirror that increases current consumption does not establish that the voltage regulator of Imura as modified by Wrathall, proposed by the Examiner, would possess the same \"drawback.\"", + "We will not consider new arguments raised in the Reply Brief because the Appellant has not shown good cause for failing to present those arguments in the opening Appeal Brief. See 37 C.F.R. \u25cf 41.41(b)(2).", + "Even if we were to consider that argument, however, the Appellant provides no evidence or persuasive technical reasoning to support the assertion that Imura as modified by Wrathall would have undesirable current consumption.", + "As explained above, however, the Examiner clearly presented that basis for rejection in the Final Action, see Final Act. 5-6, and the Appellant did not meaningfully address it in the opening Appeal Brief.", + "To the extent that the Reply Brief raises new arguments, we decline to consider them. See 37 C.F.R. .5 41.41(b)(2).", + "* * * For those reasons, the Appellant has failed to identify reversible error in the Examiner*. s rejection.", + "We therefore affirm the rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2014005060_DECISION.json b/opinion_split/2014005060_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..067631b451454326177e1149d44a0f2b51bcfaec --- /dev/null +++ b/opinion_split/2014005060_DECISION.json @@ -0,0 +1,63 @@ +{ + "appellant_arguments": [ + "Appellants contend that (a) one of skill in the art would not look to Piers as a starting point because the publication fails to address animal water consumption, and (b) the examiner has failed to provide a sufficient rationale for why one of skill would have combined the disclosure of Piers with Yu.", + "Moreover, the Examiner has failed to show that the addition of a palatant is a result-effective variable necessary to increase the consumption of water and that addition of a palatability agent would yield predictable results.", + "The Examiner has also erred by failing to adequately consider the surprising and unexpected results disclosed by the specification.", + "Finally, with regard to claim 8.", + "The Examiner's reference to Aldritt fails to cure the deficiencies of either Piers or Yu. Br. 4.", + "Appellants argue that Piers is not an appropriate starting point for an obviousness analysis as Piers is not directed to the same problem as the instant claims -- increasing water consumption by animals. Br. 4-7.", + "Appellants next argue that the Examiner has not provided a sufficient rationale for combining the teachings of Yu with Piers. Br. 7-11.", + "Appellants go on to argue that the Examiner has failed to show that the addition of a palatant is a *result effective variable necessary to increase the consumption of water and that the addition of a palatability agent would yield predictable results.\" Br. 11-13.", + "Appellants go on to argue that the Examiner failed to adequately consider the evidence of unexpected results. Br. 13-14,", + "Turning to the Examiner's rejection of claim 8 over Aldritt, Piers, and Yu, Appellants argue that Aldritt does not cure the deficiencies of Piers and Yu. Br. 14-15.", + "Appellants also argue that Aldritt appears to be limited to treating urinary tract infections in humans and that the Examiner has not shown its applicability to non-humans. Id." + ], + "examiner_findings": [ + "The claims stand rejected as follows: Claims 1, 3-7 and 9-17 have been rejected under 35 U.S.C. 5 103(a) as unpatentable over Tolley* GB 2083997 A (published Apr. 7, 1982) (\"Piers\") in view of Yu et al., US 2003/0086961 A1 (published May 8, 2003) (\"Yu\").", + "Claim 8 has been rejected under 35 U.S.C. 8 103(a) as unpatentable over Tolley in view of Yu in further view of Aldritt et al, WO 2005/072759 AI (published Aug. 11, 2005)(* Aldritt\").", + "The Examiner has rejected claims 1 and 3-17 as obvious.", + "The Examiner finds that \"Piers teaches an effervescent tablet which is dissolvable readily in water and is suitable for adding to animals' drinking water comprising: a water-soluble substrate, vitamins, trace elements, an antioxidant, flavoring agent. Final Action 3.", + "The Examiner also finds that \"Yu teaches a high moisture palatable composition that can significantly increase total water intake and urine production in a companion pet \u00b7 . . wherein the palatable composition comprises water and a palatability enhancing agent, i.e. animal hydrolysates.\" Final Action 2-3.", + "The Examiner goes on to find that One of the ordinary skilled in the art would have been motivated to add the palatant taught by Yu into Piers's effervescent composition because Yu teaches that their high moisture palatable composition containing a palatability enhancer can enhance the palatability for the animals, and thus can significantly increase total water intake and urine production for pets, and can help increasing total water intake and improving hydration for animals when it is contained in the animals' drinking water.", + "Therefore, one of ordinary skill in the art when reviewing the references would have been motivated to combine Piers's effervescent composition with Yu's palatant to produce a composition which not only can provide nutrients to animals through the drinking water, but also can enhance the palatability for the animals, and increase animals' total water intake and improve hydration for animals.", + "From the teaching of the reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention.", + "Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made. Final Action 5-6.", + "With respect to claim 8 the Examiner finds that while Piers and Yu do not teach the addition of cranberry juice to an effervescent composition, the deficiency is cured by the teachings of Aldritt. Final Action 7.", + "The Examiner finds that \" \"Aldritt teaches an effervescent composition comprising a cranberry extract and an effervescent agent that contains an acid and a base, wherein the composition is a tablet and disintegrates in water. Id.", + "The Examiner concludes by finding that \"[i]t would have been obvious to a person of ordinary skilled in the art at the time the invention was made to combine the teachings of Piers and Yu with Aldritt to arrive at the instant invention. \" Id.", + "In addition, as the Examiner pointed out, several of the instant claims are directed to delivery of micronutrients in an animal's drinking water, the same as Piers. Ans. 9.", + "As the Examiner has noted, Aldritt has only been offered to show the use of cranberry juice to treat urinary tract infections. Ans. 13." + ], + "ptab_opinion": [ + "The issue with respect to this rejection is whether the Examiner has established by a preponderance of the evidence that claims 1 and 3-17 are obvious in view of Piers combined with Yu and Aldritt as defined by 35 U.S.C. 8 103(a).", + "Analysis Claim I is representative of the claims subject to the first ground of rejection.", + "We agree with the Examiner that claim 1 would have been obvious in light of the cited references.", + "This is the same as the composition of claim 1.", + "This is the same as the composition of claim 1 which calls for a palatant comprising a hydrolyzed protein.", + "We agree with the Examiner that a person of ordinary skill in the art at the time the invention was made would have combined the palatants of Yu with the effervescent tablets of Piers to improve the palatability of the water containing micronutrients thereby increasing consumption of the water.", + "We disagree.", + "The specific problem that the applicant seeks to address does not control whether a reference is relevant or analogous.", + "We agree with the Examiner that Piers is analogous art to the claimed invention.", + "We find this argument unpersuasive.", + "Common sense dictates that one skilled in the art would recognize that the purpose of adding a flavoring is to increase palatability.", + "Thus the teachings of the references would lead one skilled in the art to use the palatants of Yu in the effervescent tablets of Piers to make the water containing micronutrients palatable thereby increasing the consumption of the micronutrient containing water.", + "Again, we are unpersuaded.", + "One skilled in the art would thus recognize that flavorings are commonly added to food products to improve palatability so as to increase consumption.", + "Thus the references both teach that adding flavorings or palatants is a variable which can be effective in increasing the consumption of water.", + "One skilled in the art, reading the references, would have a reasonable expectation that the addition of palatants would result in increased water consumption.", + "While we are unsure of the Examiner's reasoning that the results shown in the present examples are merely cumulative, we agree that the examples are not persuasive.", + "Here, the closest prior art is Piers which discloses the use of an effervescent tablet in an animal's drinking water. FF 1-3.", + "None of the examples in the specification compare the claimed composition with water treated with an effervescent agent alone.", + "Thus the evidence of unexpected results does not compare the claimed invention to the closest prior art and does not rebut the finding of obviousness.", + "These arguments are unpersuasive.", + "Moreover, as demonstrated above, Piers and Yu fully teach all of the elements of clam 1 and all the elements of claim 8 with the exception of cranberry juice.", + "There is no need to rely on Aldritt to cure deficiencies in the references other than the teaching to use cranberry juice.", + "One skilled in the art would have been motivated to use cranberry juice as the antibiotic of Piers or Yu to treat or prevent urinary tract infections.", + "With respect to the applicability of Aldritt to non-human foods, while some human food components are not useful in non-human foods, as shown by the references, many human food ingredients can also be used in non- human foods.", + "The references suggest that the ingredients used in the effervescent tablets of Piers and Aldritt can be used for both humans and non-humans.", + "Moreover, we see nothing in the references and Appellants have offered no evidence to show that one skilled in the art would not use cranberry juice as a non-human food ingredient.", + "We conclude that one skilled in the art, reading the references, would appreciate that the cranberry composition of Aldritt could be used for non-humans as well as humans.", + "We conclude that the Examiner has established by a preponderance of the evidence that claims 1 and 8 are obvious in view of Piers combined with Yu alone or Piers combined with Yu and Aldritt as defined by 35 U.S.C. 8 103(a).", + "Claims 3-7 and 9-17 have not been argued separately and therefore fall with claim 1. 37 C.F.R. $ 41.37(c)(1)(iv)." + ] +} \ No newline at end of file diff --git a/opinion_split/2014005256_DECISION.json b/opinion_split/2014005256_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0353527bec9e85c0a9bb3855fec3edd2bb2b9462 --- /dev/null +++ b/opinion_split/2014005256_DECISION.json @@ -0,0 +1,50 @@ +{ + "appellant_arguments": [ + "First, Appellant argues *the text starting at page 3, line 18 of the application is not AAPA.\" (Reply Br. 2 (emphasis omitted).)", + "Second, Appellant argues \"[a] key fact, ignored by the Examiner, is that the technique described in the relied-on AAPA has nothing to do with caches or cache coherency\" and \"*[]his is important because claim 1 is directed to a cache-based system where cache coherency is a central aspect of the claim.\" \" (App. Br. 8 (emphasis omitted); see also Reply Br. 5.)", + "Third, Appellant argues: [t]he applied AAPA's wake event mechanism for waking a master device from a power saving mode of operation involves the issuance of a notification over a dedicated path from a second master device when that second master device has finished with the shared resource to wake up the first master device (App. Br. 9-10) and the \"Unlock CPU mechanism [of Bryg] has nothing to do with issuing a wake event to the master device to cause the master device to exit a power saving mode, where the master device enters the power saving mode on execution of a wait for event (WFE) operation\" (App. Br. 10; see also Reply Br. 6-7).", + "Fourth, Appellant argues \"the AAPA does not teach *locally* issuing a wake event to the master device if the coherency action is taken\" and *[i]nstead, the wake event mechanism in the AAPA has the second master device issuing a wake up notification over a dedicated path to the first master device when the second master device has finished with a shared resource.\" \" (Reply Br. 6.)", + "Fifth, Appellant argues that \"the unlocking at step 311 in Figure 3 in Bryg occurs irrespective of whether there is a hit at step 309 (both the *No* and 'Yes' paths ultimately lead to the CPU unlocking at step 31 1), and hence, irrespective of whether any coherency action is taken.\" \" (App. Br. 12.)", + "Last, Appellant argues \"it was the inventor who recognized that in a coherent cache system, coherency requests continue to be serviced even when an associated master device enters the power saving mode\" (App. Br. 13) and \"[blased on that recognition, the inventor realized that a coherency action taken in response to processing a coherency request within the cache provides a useful indication for the master device to exit from the power saving mode and check whether the shared resource is now available\" (id. at 13-14; see also Reply Br. 3-4)." + ], + "examiner_findings": [ + "Claims 1, 4, and 8-10 stand rejected under 35 U.S.C. \u25cf 103(a) as unpatentable over Appellant's admitted prior art (AAPA) and Bryg (US 6,049,851; Apr. 11, 2000), Claims 2, 3, and 5-7 stand rejected under 35 U.S.C. S 103(a) as unpatentable over AAPA, Bryg, and Handy (Jim HANDY, The CACHE MEMORY Book: The AUTHORITATIVE REFERENCE On CACHE DESIGN 140 (2nd ed. 1998)).", + "The Examiner found that the master device of AAPA having a power saving mode of operation, which is woken when a semaphore value changes, corresponds to the limitations *wake event circuitry\" (Final Act. 4) and \"responsive to the wake event to exit the power saving mode\" (see Ans. 3).", + "The Examiner further found that the double cache snoop mechanism of Bryg, having a processor with a central processing unit (CPU) coupled to a cache memory, corresponds to the limitation \"circuitry within the cache, and responsive to the coherency handling circuitry, to locally issue a[n] \u00b7 ~ \u00b7 event to the master device if the coherency action is taken\" and \"the master device being responsive to the \u00b7 \u00b7 . event.\" (Final Act. 4-5.)", + "In particular, the Examiner found that \"[the \u00b7 \u00b7 \u00b7 event issued in step 311 \u00b7 \u00b7 is also directly dependent on the outcome of step 305 being a YES\" and **t]he coherency action taking from the YES outcome of 305 results in the \u25a0 \u25a0 \u25a0 event in step 311.\" (Ans. 5.)", + "The Examiner concluded that it would have been obvious to combine Bryg and AAPA *because it reduces the stall time due to coherency checks.\" \" (Final Act. 5.)", + "The Examiner found the combination of AAPA, Bryg, and Handy teaches the limitation *the master device performing an access operation in order to access a semaphore stored in shared memory \u25a0 \u25a0 \u00b7 a current value of the semaphore to be stored in the cache,' as recited in claim 2. (Final Act. 11-12.)", + "In particular, the Examiner acknowledged that *AAPA in view of Bryg may not specifically disclose the limitation of the shared memory being cache memory\" (id. at 12) and relied upon \"AAPA \u25a0 \u00b7 \u00b7 to teach the semaphore \u00b7 \u00b7 stored in a shared memory location allowing multiple devices to access the memory location bases on the semaphore value\" and *[H]andy \u00b7 \u00b7 to teach a shared memory location in a computer system is cache memory\" (Ans. 6)." + ], + "ptab_opinion": [ + "We are unpersuaded by Appellant's arguments (App. Br. 7-14: see also Reply Br. 2-8) that the combination of AAPA and Bryg would not have rendered obvious independent claim 1, which includes the limitations *wake event circuitry within the cache, and responsive to the coherency handling circuitry, to locally issue a wake event to the master device if the coherency action is taken\" and *the master device being responsive to the wake event to exit the power saving mode.", + "We agree with the Examiner.", + "Thus, because AAPA explains that a mechanism for waking master devices is provided when the semaphore value changes, AAPA teaches the limitations *wake event circuitry\" and a master device \"responsive to the wake event to exit the power saving mode.\" \"", + "Because Bryg explains that processor 10 includes CPU 11 that is unlocked after cache 10 is read, reread, and written (i.e., cache coherency is maintained), Bryg teaches the limitations \"circuitry within the cache, and responsive to the coherency handling circuitry, to locally issue [an] \u00b7 . event to the master device if the coherency action is taken\" and \"the master device being responsive to the \u00b7 \u00b7 \u00b7 event.\"", + "A person of ordinary skill in the art would have recognized that incorporating the double cache snoop mechanism of Bryg, as illustrated in Figure 3, with the mechanism for wakening master devices of AAPA would improve AAPA by providing the advantage of reducing the number of cycles of a coherency check.", + "This combination would result in utilizing the step of unlocking CPU 11 of Bryg to also provide a wakening mechanism for master devices of AAPA, and thus teaches the limitation *wake event.\"", + "Thus, we agree with the Examiner (Final Act. 5) that modifying the mechanism for wakening master devices of AAPA to incorporate the double cache snoop mechanism of Bryg would have been obvious.", + "Accordingly, the entire content this \"Description of the Prior Art\" section constitutes admitted prior art.", + "Contrary to Appellant's arguments, AAPA states that \"it is known to employ a cache coherency protocol within the multi-processing system to ensure that if a particular master device updates a data value held in its local cache, that up-to-date data will be made available to any other master device subsequently requesting access to that data.\" \" (Spec. 4:31 to 5:3.)", + "However, the Examiner cited to AAPA for the general teaching of the limitation \"wake event circuitry\" (Final Act. 4) and cited Bryg for teaching the limitation \"event circuitry within the cache, and responsive to the coherency handling circuitry, to locally issue a[n] \u00b7 event to the master device if the coherency action is taken\" (Final Act. 4-5).", + "Moreover, the rejection of claim 1 is based on the combination of AAPA and Bryg, and Appellant cannot show non-obviousness by attacking references individually.", + "However, the Examiner cited to Bryg for teaching the limitation \"locally issue [an] \u00b7 , , event\" (Ans. 5) and the Examiner cited to AAPA for the general teaching of the limitation \"wake event circuitry\" (Final Act. 4).", + "Again, Appellant cannot show non-obviousness by attacking references individually.", + "However, as found by the Examiner, the limitation \"to locally issue a[n] \u00b7 \u00b7 \u00b7 event to the master device if the coherency action is taken,\" as recited in claim 1, is broad enough to encompass unlocking CPU 11 of Bryg when the reread returns a hit, and the claim does not exclude unlocking CPU 11 when the reread does not return a hit. (Ans. 5.)", + "However, other than making conclusory statements, Appellant has not presented any persuasive evidence to support the arguments that \"it was the inventor who recognized that in a coherent cache system, coherency requests continue to be serviced even when an associated master device enters the power saving mode. \"", + "Arguments of counsel cannot take the place of factually supported objective evidence.", + "Thus, we agree with the Examiner that the combination of AAPA and Bryg would have rendered obvious independent claim 1, which includes the limitations *wake event circuitry within the cache, and responsive to the coherency handling circuitry, to locally issue a wake event to the master device if the coherency action is taken\" and \"the master device being responsive to the wake event to exit the power saving mode. \"", + "Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. $ 103(a).", + "Claims 4 and 8 depend from claim 1, and Appellant has not presented any substantive arguments with respect to these claims.", + "Therefore, we sustain the rejection of claims 4 and 8 under 35 U.S.C. 9 103(a), for the same reasons discussed with respect to independent claim 1.", + "Independent claims 9 and 10 recite limitations similar to those discussed with respect to independent claim 1, and Appellant has not presented any substantive arguments with respect to these claims.", + "We sustain the rejection of claims 9 and 10 for the same reasons discussed with respect to claim 1.", + "We are persuaded by Appellant's 's arguments (App. Br. 15-17) that the combination AAPA, Bryg, and Handy would not have rendered obvious dependent claim 2, which includes the limitation \"the master device is arranged to perform an access operation to access a semaphore stored in shared memory . \u00b7 \u00b7 performance of the access operation causing a current value of the semaphore to be stored in the cache.\" \"", + "We do not agree.", + "Although the Examiner cited AAPA for \"the semaphore \u00b7 \u00b7 \u25a0 stored in a shared memory\" and cited Handy for \"a shared memory location in a computer system [that] is cache memory\" (Ans. 6), the Examiner has not identified a feature in the prior art that corresponds to \"causing a current value of the semaphore to be stored in the cache, \" particularly when the Examiner's modification of AAPA appears to be substituting the shared memory of AAPA with the cache of Handy (Final Act. 12).", + "Moreover, the Examiner': s proposed modification apparently substitutes the shared memory of AAPA with the cache of Handy, when claim 1 already recites a \"cache.\"", + "Accordingly, we are persuaded by Appellant's arguments that: (i) the Examiner's statement *[h]owever AAPA may not specifically disclose the limitation of the shared memory being cache memory\" is not recited in claim 2; (ii) \"[the shared memory is recited as a separate feature to *the cache coupled to the master device\" (App. Br. 16); and (iii) \"this section [page 1, line 20 to page 2, line 23 of the Specification] makes no reference to *the cache' referred to in the claims and does not describe performance of the access operation causing a current value of the semaphore to be stored in the cache\" (id. at 16-17).", + "Therefore, we do not sustain the rejection of dependent claim 2 under 35 U.S.C. 8 103(a).", + "We do not sustain the rejection of claims 3 and 5-7 under 35 U.S.C. S 103(a) for the same reasons discussed with respect to dependent claim 2." + ] +} \ No newline at end of file diff --git a/opinion_split/2014005292_DECISION.json b/opinion_split/2014005292_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..6c252bcb09c44b7d6706598998b27756270a5ab1 --- /dev/null +++ b/opinion_split/2014005292_DECISION.json @@ -0,0 +1,51 @@ +{ + "appellant_arguments": [ + "Noting that \"[cllaim 1 requires *a non-metallic frame including a plurality of extrusions integrally secured together to form a one-piece rectangular frame, \u00b7\u00b7\u00b7 Appellants argue that **Eventoff discloses the frame 12 to be made of four separate frame members that are separately mounted in the wall opening 26.", + "There is no disclosure or teaching that the four frame members18, 20, 22 and 24 are integrally secured together to form a one- piece rectangular frame.\" Appeal Br. 7.", + "Noting that \"Bruno '654 discloses a lower guide track 17 mounted on a tub 12, an upper guide track 16 spaced vertically from the lower guide track 17 by end frame members 18 and 19 which are suitably secured to the walls 14 and 15 of a shower enclosure\" and that \"IrJemoving the upper guide track 17 would leave the end frame members 18 and 19 secured to the walls 14 and 15 of the shower enclosure,\" Appellants argue that \"*[t]his is evidentiary of the guide tracks 17 and 16 and end frame members 18 and 19 being separate from each other and being separately mounted on the tub 12 and walls of the shower enclosure.\" Appeal Br. 8-9." + ], + "examiner_findings": [ + "Claims 1, 6, 7, 14, and 15 stand rejected under 35 U.S.C. 9 103(a) as unpatentable over Eventoff and Niekrasz.", + "Claims 2-5, 9, 19, and 20 stand rejected under 35 U.S.C. 9 103(a) as unpatentable over Eventoff, Niekrasz, and Grossman.", + "Claim 8 stands rejected under 35 U.S.C. S 103(a) as unpatentable over Eventoff, Niekrasz, and Neal.", + "Claim 10 stands rejected under 35 U.S.C. S 103(a) as unpatentable over Eventoff, Niekrasz, Grossman, and Cassiere.", + "Claims 11-13 and 16 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Eventoff, Niekrasz, and Dallaire.", + "Claims 17 and 18 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Eventoff, Dallaire, and Niekrasz", + "Claims 1-3, 9. 11, 12, 14, and 15 stand rejected under 35 U.S.C. $ 103(a) as unpatentable over Bruno *654 and Etesam.", + "Claims 4, 6, 7, 10, and 13 stand rejected under 35 U.S.C. 9 103(a) as unpatentable over Bruno *654, Etesam, and Bruno '657.", + "Claims 5, 19, and 20 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Bruno '654, Etesam, and Grossman.3", + "Claim 8 stands rejected under 35 U.S.C. 8 103(a) as unpatentable over Bruno '654, Etesam, Bruno *657, and Neal.", + "The Examiner finds that Eventoff discloses all of the limitations of independent claim 1 except for \"the outer frame walls. \" Final Act. 3.", + "In addition, the Examiner finds that Niekrasz discloses *frame members 24 hav[ing] a pair of outer walls 30 of solid cross-section and a floor (unnumbered but clearly shown in figures 1 18a and b) of solid cross-section defining a channel-shaped cross-section.\" Id.", + "Based on these findings, the Examiner determines that it would have been obvious \"to provide the door assembly of [Eventoff] with the frame shape of [Niekrasz] because the outer walls allow for better guiding of the sashes by further definition of the tracks beyond just a roller track. *, Id.", + "Responding to this argument, the Examiner directs our attention to the following portion of Eventoff (see Ans. 24-25), which states: Door frame 12 includes upper and lower door frame members, generally designated 18 and 20 respectively, and left and right side frame members, generally designated 22 and 24 respectively.", + "Each of the door frame members are mounted in a wall opening, generally designated 26, of the refrigeration unit by any suitable means such as screws, etc. Eventoff 2:64-3:3.", + "In addition, the Examiner reasons that: one of ordinary skill in the art would know by this statement and what is shown in figure 1 that the frame members are connected together to form a one-piece frame because the frame members are connected together by the refrigeration unit and because the connection together of the frame members is necessary to keep the frame members from falling apart or becoming unaligned from each other, which would make it difficult to move the doors. Ans. 24-25.", + "The Examiner finds that Bruno '654 discloses all of the limitations of independent claim 1, except for \"the specific structure of the side jambs\" and non-metallic extrusions. Final Act. 14.", + "The Examiner further finds that Etesam shows \"a frame having sill 34, side jambs 42, and header 50 where side jambs 42 have solid cross-section outer walls and floor forming a channel-shaped cross-section\" and teaches *non-metallic frame members.\" Id.", + "Based on these findings, the Examiner determines that it would have been obvious to provide the door assembly of [Bruno *654] with the non- metallic material and side jamb structure of [Etesam] because non-metallic materials such as plastics were well known in the art at the time of invention and could provide benefits such as low cost and corrosion resistance which would be in keeping with the goals of [Bruno *654] as taught in column I lines 32-37 and because the simple side jamb structure with just floor and walls is in keeping with the header and sill of [Bruno *654]. Id. at 15.", + "Responding to this argument, the Examiner directs our attention to the following portion of Bruno *654 (see Ans. 36), which states: The lower guide track 17, which will hereinafter be described in detail, is mounted on, and extends along, the outer longitudinal edge or rim of the tub 12, while the upper guide track 16 extends parallel to the lower track and is spaced vertically from the latter by end frame members 18 and 19 which are suitably secured to the walls 14 and 15. Bruno *654 2:30-36.", + "In addition, the Examiner reasons that: the frame members are connected together to form a one-piece frame because the frame members are connected together by the enclosure and because the connection together of the frame members is necessary to keep the frame members from falling apart or becoming unaligned from each other, which would make it difficult to move the doors. Ans. 36." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We reverse.", + "The Examiner's reasoning is speculative and not supported by a preponderance of the evidence.", + "Eventoff states that the frame members are mounted in a wall opening.", + "Eventoff is silent with respect to the frame members being *secured together to form a one-piece rectangular frame\" as required by claim 1. Appeal Br., Claims. App.", + "Furthermore, alignment of the frame members to form the frame shown in Figure 1 does not necessarily require that the frame members be secured together,", + "Thus, Eventoff fails to explicitly or inherently disclose this limitation.", + "Accordingly, the Examiner's finding is in error.", + "For this reason, we do not sustain the Examiner's decision rejecting claim 1, and claims 6, 7, 14, and 15, which depend therefrom.", + "Rejections II-VI rely on the same erroneous finding as Rejection 1.", + "Accordingly, we do not sustain the Examiner's decision rejecting claims 2- 5, 9, 19, and 20 as unpatentable over Eventoff, Niekrasz, and Grossman; the Examiner's decision rejecting claim 8 as unpatentable over Eventoff, Niekrasz, and Neal; the Examiner's decision rejecting claim 10 as unpatentable over Eventoff, Niekrasz, Grossman, and Cassiere; the Examiner's decision rejecting claims 11-13 and 16 as unpatentable over Eventoff, Niekrasz, and Dallaire; and the Examiner's s decision rejecting claims 17 and 18 as unpatentable over Eventoff, Dallaire, and Niekrasz, for the reasons discussed supra.", + "Like the Examiner's reasoning with respect to Eventoff discussed supra, this reasoning is also speculative and not supported by a preponderance of the evidence.", + "Bruno '654, like Eventoff, states that the frame members are secured to the walls and is silent with respect to the frame members being \"secured together to form a one-piece rectangular frame\" as required by claim 1. Appeal Br., Claims. App.", + "Furthermore, alignment of the frame members to form the frame does not necessarily require that the frame members be secured together.", + "Thus, Bruno '654 fails to explicitly or inherently disclose this limitation.", + "Accordingly, the Examiner's finding is in error.", + "For this reason, we do not sustain the Examiner's decision rejecting independent claim 1, and claims 2, 3, 9, 11, 12, 14, and 15, which depend therefrom.", + "Rejections VIII-X rely on the same erroneous finding as Rejection VII.", + "Accordingly, we do not sustain the Examiner' s decision rejecting claims 4, 6, 7, 10 and 13 as unpatentable over Bruno *654, Etesam, and Bruno *657; the Examiner's decision rejecting claims 5, 19, and 20 as unpatentable over Bruno '654, Etesam, and Grossman; and the Examiner's decision rejecting claim 8 as unpatentable over Bruno *654, Etesam, Bruno '657, and Neal, for the reasons discussed supra." + ] +} \ No newline at end of file diff --git a/opinion_split/2014005443_DECISION.json b/opinion_split/2014005443_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..019a714acd46affff79bd104159f7879487c4396 --- /dev/null +++ b/opinion_split/2014005443_DECISION.json @@ -0,0 +1,55 @@ +{ + "appellant_arguments": [ + "BACKGROUND According to Appellants: The present invention relates to a method of controlling an aircraft, missile, munition or ground vehicle with plasma actuators, and more particularly to controlling fluid flow across their surfaces or other surfaces, which would benefit from such a method.", + "The method includes the design of an aerodynamic plasma actuator for the purpose of controlling airflow separation over a control surface of a[n] aircraft, missile, or a ground vehicle, and more particularly to the method of determining a modulation frequency for the plasma actuator for the purpose of fluid flow control over these vehicles.", + "Appellants first argue that the Examiner has not shown that claim 14 does not involve a particular machine; that the Examiner erred in considering the vehicle as the only machine; that the Examiner improperly expands the scope of the claim by applying it to other types of machines and reading the particular machine elements out of the claim; and that the Examiner errs in finding that it is not the vehicle that measures or estimates the free stream velocity. Appeal Br. 15-16.", + "Next, Appellants argue that the Examiner erred in finding that the sensor is only a data gathering mechanism; that the Examiner has not provided evidence to show that the claimed calculation regarding when and where fluid separation occurs can be derived from known formulas; and that the Examiner erroneously concludes that the sensor, vehicle, and data gathering are nominal to the method steps provided. Appeal Br. 18-21.", + "Finally, Appellants argue that the rejection is in error because the claim requires an actuator that is *integral to the claim not only because without an actuator there is no modulation frequency to compute, but also because the frequency computation can require knowing the distance the plasma actuator is placed from the trailing edge or aft end of the surface\" and \"the [E]xaminer has not even contested that the actuator is not a particular machine to which the claims are directed.\" Appeal Br. 21." + ], + "examiner_findings": [ + "REJECTIONS 1. The Examiner rejects claim 2 under 35 U.S.C. 5 112, second paragraph, as indefinite.", + "2. The Examiner rejects claims 14-20 under 35 U.S.C. 8 101 as directed to non-statutory subject matter.", + "3. The Examiner rejects claims 1-20 on the grounds of non-statutory obviousness-type double patenting as unpatentable over claims 1-20 of U.S. Patent No. 8,267,355.", + "4. The Examiner rejects claims 1-20 on the grounds of non-statutory obviousness-type double patenting as unpatentable over claims 1- 20 ofU.S. Patent No. 7,954,768.", + "5. The Examiner rejects claims 1-20 on the grounds of non-statutory obviousness-type double patenting as unpatentable over claims 1- 20 ofU.S. Patent No. 7,624,941.", + "DISCUSSION Rejection 1 The Examiner rejects claim 2 under 35 U.S.C. 8 112, second paragraph, because the term *sports* *is a relative term which renders the claim indefinite.' Final Action 2.", + "The Examiner finds that the term *is not defined by the claim, the [S]pecification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention\" because *the 'sportiness' of the car is subjectively determined.\" Id.", + "Rejection 2 The Examiner rejects claims 14-20 as directed to non-statutory subject matter.", + "The Examiner performs three tests to determine if the claims are directed to an abstract idea: 1) whether the claims require a particular machine; 2) whether the data gathering is extra-solution activity or a field-of-use; and 3) whether the method provides some transformation and reduction of an article to a different state. Final Action 3-5.", + "The Examiner finds that claim 14 does not require a particular machine, the claimed sensor is used only to gather data for calculating a frequency, and the claim does not provide any *transformation and reduction to a differing state of the system.\" ld.", + "Based on these findings, the Examiner concludes that the claim is directed to non-statutory abstract idea. Id. at 5.", + "With respect to these arguments, the rejection states: The data gathered by the sensor is used in a method for calculating a frequency based on a free stream flow.", + "Any such calculation would require some form of data gathering (outputs require inputs), and there is no other significant contribution of the sensor to the method-i.e. once the data is gathered, the sensor has no further use in the system[.] Final Action 4.", + "For example, the Examiner finds: Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8 267 355.", + "Although the conflicting claims are not identical, they are not patentably distinct from each other because they claim substantially similar plasma actuators with measurement or estimation of velocity as well as activation at a frequency based on fluid flow velocity and actuator placement distance. Id. at 6.", + "The Examiner does provide further analysis with respect to claim 1 as compared to claim 1 of the *941 patent: For example, both claim 1 of the instant application and claim 1 of U.S. Patent No. 7 624 941 recite \"activating a plasma actuator\" (instant: line 2; patent: line 11) at the claimed frequency (instant: lines 4-6; patent: lines 11-15) and placed in the same manner (instant: lines 2- 4; patent: lines 4-7).", + "The difference between the claims is the limitation \"wherein activation ofthe plasma actuator improves [ ] maneuverability, stability, [etc.]\" in the instant application.", + "However, this is a causation limitation (i.e. created by the use as provided) and thus inherent to the structure and use of the claims.", + "Since both claims recite the same use (absent the inherent causation), the claims are obvious over one another.", + "Further, the patent discloses this feature in claim 5.", + "The other claims of the noted patents are likewise obvious.", + "The obviousness of the claims in view of the patents would be rendered likewise, given the substantially similar nature of the claims of the documents. Id. at 7.", + "The Examiner goes on to state that the claims are substantially similar; all the patents share a common disclosure with the current Specification; and that *any feature claimed within one of the prior patents can be readily claimed in the instant application if not done so already.\" Id. at 7-8." + ], + "ptab_opinion": [ + "However, we agree with Appellants that the term *sports car\" has a common, ordinary meaning as provided by its dictionary definition, and one of ordinary skill in the art would be reasonably apprised of the scope of the invention based on this dictionary definition.", + "Further, we are not persuaded the Specification \"creates doubt as to whether the plain meaning should be applied.\" Ans. 4.", + "Accordingly, we do not sustain this rejection.", + "As discussed below, Appellants do not persuade us of reversible error.", + "We are not persuaded that any of these arguments show error in the rejection.", + "Rather, we find that the claim does not involve a particular machine because the claim as written involves no more than a conventional missile, aircraft, munition, or ground vehicle with a sensor.", + "Appellants' arguments have not persuaded us otherwise.", + "Appellants' arguments do not persuade us of error with respect to the Examiner's finding here.", + "As noted, the method involves only a conventional machine and sensor from which data is gathered and a frequency is calculated.", + "The only contribution the sensor makes is gathering velocity data from which the when and where of flow separation is determined.", + "Although there may be vehicles for which the methods of determining flow separation are not **known,\" as Appellants indicate (Appeal Br. 18), such particular vehicles are not claimed here.", + "However, to the extent an actuator is required by the claim, the claim nonetheless requires no more than gathering data on a conventional machine and computing a frequency value.", + "We are not persuaded that the presence of an actuator indicates that the claim is directed to a particular machine, and thus directed to statutory subject matter.", + "Rejections 3-5 The Examiner provides little explanation regarding the double patenting rejections other than providing a brief statement that the claims are not identical but are not patentably distinct because they claim similar plasma actuators. See Final Action 6-7.", + "We agree with Appellants that the Examiner's s general allegation that the claims are similar is not enough to establish a prima facie case of obviousness. See Appeal Br. 25.", + "However, we find that the Examiner has provided sufficient detail with respect to the rejection of claim 1 over claims 1, 2, and 5 of the *941 patent.", + "We find that these claims of the *941 patent teach all the limitations of appealed claim 1, as the Examiner has stated, including the results provided by the plasma actuator, i.e. activating the plasma actuator to stabilize, control, or improve the performance of a vehicle.", + "Thus, we find that the Examiner has established a prima facie showing of obviousness with respect to appealed claim I over claims 1. 2, and 5 of the '941 patent without error.", + "Based on the foregoing, we sustain the rejection of claim I over claims 1, 2, and 5 of the '941 patent, and we do not sustain the remaining double patenting rejections of claims 1-20." + ] +} \ No newline at end of file diff --git a/opinion_split/2014005726_DECISION.json b/opinion_split/2014005726_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..fe093068a4d8bbc72cd74e8a6d834185c781aadb --- /dev/null +++ b/opinion_split/2014005726_DECISION.json @@ -0,0 +1,56 @@ +{ + "appellant_arguments": [ + "Appellant argues the Examiner's findings are in error because \"Hayes performs no determinations at startup relating to a blackout timer.\" \" (App. Br. 10 (emphasis added).)", + "Appellant further argues **Hayes makes no disclosure with respect to any detection of any settings at startup,\" and instead requires *determination with respect to V-chip status is made only after receipt of a command.\" (App. Br. 11 (emphases added).)", + "Appellant argues the Examiner's findings regarding this disputed limitation are in error because neither Hayes nor Gutta \"discloses receiving an authentication code and resultantly enabling the display device.\" (App. Br. 8.)", + "In particular, Appellant argues Hayes teaches only a *remote ID code\" that is *independent of the user\" because it is \"coupled only to the remote itself?\" (Id. (emphasis added).)", + "Appellant then argues that Gutta is *[s]imilarly lacking\" because it *makes no reference to enabling or disabling any aspect of the display device \u00b7 \u00b7 \u00b7 \" (App. Br. 9.)", + "With regard to the Hayes reference, Appellant's argument is premised on the notion that the limitation \"receiving an authentication code from a user \u00b7 \u00b7 \u00b7 ., does not encompass Hayes' teaching of a user providing an authentication code via a specially programmed remote control. (App. Br. 8.)", + "In response, Appellant argues \"Kuhn's function that it enables is not a function that is subject to a blackout timer.\" \" (Reply Br. 7 (emphasis added).)", + "Appellant additionally argues that, even in the combined references, \"[there has been absolutely no showing of any single function that is both subject to the blackout timer and also subject to enabling through receipt of an authentication code via biometrics. \" (Reply Br. 7 (emphasis added).)", + "C. Teaching Away Appellant additionally argues the Gutta and Nagtzaam references *teach against the claimed invention.\" \" (App. Br. 11 (emphasis omitted).)", + "In particular, Appellant argues Gutta teaches parental monitoring of programs *actually watched by the child\" and, thus, *teaches against\" blacking out media entirely. (Id.)", + "Appellant also argues Natzgaam \"teaches against\" the claimed invention because Nagtzaam does not \"teach that a child's computer 12 and the control module 21 are, or can be, a single entity.\" (App. Br. 12 (emphasis added).)" + ], + "examiner_findings": [ + "The Examiner finds Damm discloses \"detecting a blackout timer setting for a display device \u00b7 \u00b7 \u00b7 \" (Final Act. 3; Ans. 6 (citing Damm 19 3- 4).)", + "The Examiner additionally finds \"common sense alone would counsel that the parent who sets explicitly sets specified time intervals for blocking channels would reasonably expect such parameters to be in effect at the startup of a viewing terminal.", + "However, as Appellant is quick to point out, Damm does not expressly disclose such an aspect \" (Ans. 6 (emphasis added).)", + "The Examiner relies on Hayes as disclosing *that the detecting occurs during the startup of the display device, because it \"discloses that V- chip parameters are detected and applied when a consumer appliance is powered on.\" (Final Act. 3 (citing Hayes 11 35, 39); Ans. 6-7.)", + "Rather, the Examiner relies on Gutta only for teaching use of \"biometrics\" as an alternative to entering a password or PIN to be recognized as an authorized user. (Id. (citing Gutta I 35).)", + "In the Answer, the Examiner additionally relies on Kuhn, finding \"it too contemplates the claimed aspect of 'receiving an authentication code from a user via biometrics and enabling the at least one function of the display device. ~ (Ans. 5 (citing Kuhn 11 12, 13, and Fig. 1) (emphases added).)", + "The Examiner relies on Damm as teaching a blackout timer. (Final Act. 3.)", + "The Examiner combines Damm with Hayes, Gutta, and/or Kuhn to disclose reenabling the display device (that is, overriding the blackout timer) upon the user's s entry of an authentication code via biometrics. (Final Act. 3, 5, 6; Ans. 3-5.)" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We affirm.", + "ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments the Examiner has erred.\"", + "We disagree with Appellant's conclusions and 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- 19) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief. (Ans. 3-8.)", + "We concur with the conclusions reached by the Examiner, and we highlight the following for emphasis.\"", + "This argument is unpersuasive because it does not address the Examiner' s findings--the Examiner relies on Damm, not Hayes, as disclosing a blackout timer. (Final Act. 3; Ans. 6.)", + "We disagree.", + "As the Examiner finds, and we agree, once V-chip has been enabled, \"the consumer appliance 22 can be adapted to use the parameters from the most restrictive parameter table when the consumer appliance 22 is directly powered on.\" (Ans. 6-7 (citing Hayes I 39).)", + "Contrary to Appellant's assertion, Hayes does not teach that a separate command is required each time; as the Examiner correctly finds, once V-chip has been enabled, the *most restrictive parameters\" may be applied when the device is powered on--thus, Hayes teaches detection of parameters *at startup.\" \" (Id.)", + "Appellant has not persuasively rebutted the Examiner's findings regarding this disputed limitation.", + "We are not persuaded by Appellant's arguments, which are piecemeal challenges to the references individually.", + "The test for obviousness is not whether the claimed invention must be expressly suggested in any one or all of the references.", + "\"Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. \" In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted) (emphasis added).", + "Thus, where, as here, the rejections are based upon the teachings of a combination of references, \"Injon-obviousness cannot be established by attacking references individually.\" In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425).", + "In addition, we find Appellant's individual challenges are conclusory and hence are not persuasive of Examiner error.", + "As the Examiner finds, and we agree, Hayes teaches **enabling the at least one function of the display device\" when \"the ID code of a parent's remote control is received.\" (Final Act. 5 (citing Hayes I 38).)", + "Claim 1, read reasonably and broadly in light of the Specification, does not preclude \"receiving an authentication code\" via a designated remote control, as the Examiner correctly finds is taught by Hayes.5", + "Appellant's argument regarding the Gutta reference is also unpersuasive as it fails to address the Examiner's s finding regarding that reference.", + "As the Examiner correctly notes, the Examiner does not rely on Gutta *for any teaching of enabling or disabling a display device.\" (Ans. 4.)", + "We agree the Examiner's s finding is supported by the teachings of Gutta.", + "This argument is unpersuasive because it does not address the basis of the Examiner's rejection.", + "As the Supreme Court has explained, the skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" because the skilled artisan is \"a person of ordinary creativity, not an automaton.\" KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398, 420-21 (2007).", + "Here, Appellant has not demonstrated that the Examiner's proffered combination would have been *uniquely challenging or difficult for one of ordinary skill in the art.\" \" Leapfrog Enters., Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).", + "We are, therefore, unpersuaded by Appellant's arguments.", + "We disagree.", + "As the Examiner finds, and we agree, Gutta discloses an \"alternative\" and does not provide any *affirmative disparaging. criticizing, or counseling against using other solutions.\" (Ans. 8.)", + "We disagree.", + "As the Examiner finds, and we agree, \"a mere absence of subject matter does not contemplate the condition of affirmatively disparaging or criticizing against the claimed invention. \" (Ans. 8.)", + "For the foregoing reasons, we are unpersuaded of error in the Examiner's 35 U.S.C. 8 103(a) rejection of claim 1, and we, therefore, sustain that rejection, along with the rejections of claims 2-7, 9-17, and 19-22, which are not separately argued. (App. Br. 13.)" + ] +} \ No newline at end of file diff --git a/opinion_split/2014005977_DECISION.json b/opinion_split/2014005977_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3c128dbfa11654229b73dd5479733f019ddae16d --- /dev/null +++ b/opinion_split/2014005977_DECISION.json @@ -0,0 +1,21 @@ +{ + "appellant_arguments": [ + "OPINION Appellants argue that \"[t]here is a recent precedential Federal Circuit opinion that is on point with the facts in this case.", + "App. Br. 6.", + "In support of their contention that Youman is on point, Appellants argue that while \"the reissue claim is broader than the patented claim in that it does not recite that the stop element has the contact-pressure piston and grooves, \u00b7 \u00b7 \u00b7 the reissue claim is narrower than the original claim in that it recites the stop pins and the cooperation of those pins with the bare end of the frictional damping lining.\"", + "App. Br. 10." + ], + "examiner_findings": [ + "STATEMENT OF THE CASE Thomas Peuker and Andreas Pelczer (Appellants) appeal under 35 U.S.C. $ 134 from the Examiner's decision rejecting claims 9-20 under 35 U.S.C. 6 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.'" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "While we agree with Appellants that the claims are narrower than the original claims with respect to the stop pins and their cooperation with the bare end of the frictional damping lining, we do not agree that the stop pins and their cooperation with the bare end of the frictional damping lining is the surrendered subject matter.", + "Rather, upon review of the change in scope between the original and patented claim and the accompanying arguments made by applicants during the original prosecution in the *098 patent, we determine that the surrendered subject matter is \"the frictional damping unit [that] has a contact-pressure piston which has several grooves which are parallel to the central longitudinal axis. \"", + "Thus, the analysis applied in Youman does not pertain to the facts of this case.", + "In instances, such as in the instant Appeal, \"where the patentee eliminates the added limitation in its entirety \u00b7 \u00b7 \u00b7 it is clear that the surrendered subject matter has been recaptured and the scope of the reissue claim is even broader than the original.'", + "Thus, Appellants' contention is unconvincing and Appellants do not apprise us of error.", + "For these reasons we sustain the Examiner's rejection of claims 9-20." + ] +} \ No newline at end of file diff --git a/opinion_split/2014006667_DECISION.json b/opinion_split/2014006667_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..10d4920bfa16426b4b28b3c6482a8b44c7d44455 --- /dev/null +++ b/opinion_split/2014006667_DECISION.json @@ -0,0 +1,44 @@ +{ + "appellant_arguments": [ + "The Appellants acknowledge that claims 9-11, 15, 16, 25, 26, 31, and 32 are withdrawn and claims 2, 12, 13, 18, 28, and 29 are cancelled. Appeal Br. 2.", + "As pointed out by the Appellants, however, there is inadequate evidence to support a finding \"that one can continue to actuate the adjuster\" device of Severinsson '905 to an extent where the pads contact the rotor to generate a parking brake force.\" Appeal Br. 16.", + "And, there is also inadequate evidence to support a finding \"that the adjuster transmission of Severinsson *905 can be engaged when the pads hypothetically contact the rotor to hypothetically generate a parking brake force (despite the explicit statement in Severinsson '905 on page 8. lines 10-11, 1, that: *The electromagnetic clutch 22 is only engaged, when a slack adjustment is desired.' (emphasis added).\" Id." + ], + "examiner_findings": [ + "I. Claims 1, 4-7, 14, 17, 20-23, and 30 are rejected under 35 U.S.C. & 102(b) as anticipated by Severinsson (WO 2005/028905 A1, pub. Mar. 31, 2005) (hereinafter \"Severinsson '905\"). Final Act. 2-3.", + "II. Claims 8 and 24 are rejected under 35 U.S.C. 6 103(a) as unpatentable over Severinsson '905 and Severinsson (US 2004/0060783 AI, pub. Apr. 1, 2004) (hereinafter \"Severinsson 7883\"). Final Act. 4.", + "III. Claims 3 and 19 are rejected under 35 U.S.C. S 103(a) as unpatentable over Severinsson '905. Final Act. 4-5.", + "IV. Claim 33 is rejected under 35 U.S.C. 8 103(a) as unpatentable over Severinsson '905 and Baumann et al. (US 2004/0238294 A1, pub. Dec. 2, 2004) (hereinafter \"Baumann\"). Final Act. 5.", + "V. Claims 1, 3-7, 14, 17, 19-23, and 30 are rejected under 35 U.S.C. . 103(a) as unpatentable over Severinsson '905 and Baumann. Ans. 2-4.", + "VI. Claims 8 and 24 are rejected under 35 U.S.C. 9 103(a) as unpatentable over Severinsson '905, Baumann, and Severinsson '783. Ans. 4-5,", + "The Examiner finds that Severinsson '905's electric motor 10 corresponds to the claimed *electric motor,\" Severinsson '905's adjustment rod 26 and adjustment screws 27 correspond to the claimed \"adjuster mechanism,\" and Severinsson '905's electromagnetic clutch 22, drive sprocket 23, and adjustment sleeves 24 correspond to the claimed **adjuster transmission,\" \" which includes *an electrically actuated clutch.\" Final Act. 2-3.", + "The Examiner supports these findings due to the similarly in Severinsson '905's structures as compared to corresponding structures of the Appellants\" invention. See, e.g., Ans. 6 (stating \"Igliven the structural similarity between WO 2005/028905 [(i.e., Severinsson *905)] and the instant invention, there does not appear to be any reason or indication that the adjuster transmission cannot be used to provide some degree of parking force. \").", + "The Examiner also explains \"Severinsson indicates that actuation of the clutch and adjuster causes plates 4 and 5 to move closer to each other.", + "If one continues to actuate the adjuster device, it will cause the pads to contact the rotor and generate a parking brake force.\" Id. at 5.", + "For the rejection of claim 33, the Examiner relies on Baumann to *teach the use of an adjustment mechanism to provide parking brake function.\" Final Act. 5 (citing Baumann I 26).", + "The Examiner concludes \"(i]t would have been obvious. \u00b7 \u25a0 to utilize the adjuster mechanism of wo 2005028905 (i.e., Severinsson *905)] to provide parking brake function, as taught by Baumann \u00b7 \u00b7 \u00b7 , to ensure secure parking of the vehicle with economical brake structure.\" Id.", + "In response, the Examiner's offers the position that the modification of Severinsson *905 with the teachings of Baumann would result in a single motor structure because **[]here is no reason to think that an additional motor would be necessary.\" Ans. 7; see also id. at 8-9." + ], + "ptab_opinion": [ + "Additionally, although claim 27 was indicated as rejected - and not indicated as a withdrawn \u00b7- on many occasions throughout the record, we understand that the Examiner has withdrawn claim 27. Non-Final Act. 2, mailed Dec. 23, 2010.", + "As such, the inclusion of claim 27 in any ground of rejection is understood to be a harmless oversight.", + "Claims 1, 17, and 33 are the independent claims on appeal.", + "Claim 1, reproduced below, is illustrative of the subject matter on appeal.", + "1. An electrically actuated brake assembly comprising: a brake disc in rotational engagement with a wheel of a vehicle; a brake pad which frictionally engages said brake disc when at least one of a service brake actuator force and a parking brake actuator force is applied thereto; an electric motor having an output shaft rotatable in both a forward direction and a reverse direction; a service brake transmission in operative rotational communication with the output shaft of said electric motor, said service brake transmission causing said brake pad to move toward said brake disc and exert the service brake actuator force thereon when the output shaft is rotated in the forward direction and causing said brake pad to move away from said brake disc and remove the service brake actuator force therefrom when the output shaft is rotated in the reverse direction; at least one adjuster mechanism, said adjuster mechanism being rotatable in one direction to decrease a distance between said brake pad and said brake disc and in another direction to increase the distance between said brake pad and said brake disc in order to control clearance between said brake pad and said brake disc; and an adjuster transmission comprising an electrically actuated clutch operatively connected between the output shaft of said electric motor and said adjuster mechanism, said adjuster transmission causing operative rotational communication between the output shaft of said electric motor and said adjuster mechanism when said adjuster transmission is engaged so as to transmit rotational movement of the output shaft of said electric motor to said adjuster mechanism, and causing there to be no operative rotational communication between the output shaft of said electric motor and said adjuster mechanism when said adjuster transmission is disengaged so as to not transmit rotational movement of the output shaft of said electric motor to said adjuster mechanism; wherein said at least one adjuster mechanism is rotated to an extent to apply the parking brake actuator force, and wherein said adjuster transmission is engaged when the parking brake actuator force is applied in order to prevent said at least one adjuster mechanism from rotating such that said adjuster transmission is employed as a park lock.", + "Independent claim 1 is directed to *[a]n electrically actuated brake assembly\" that includes *an electric motor having an output shaft, \" *at least one adjuster mechanism,'\\' and \"an adjuster transmission,\" which includes *an electrically actuated clutch operatively connected between the output shaft of said electric motor and said adjuster mechanism.\" See Appeal Br. 24, Claims App.", + "Independent claim 1 also recites: wherein said at least one adjuster mechanism is rotated to an extent to apply the parking brake actuator force, and wherein said adjuster transmission is engaged when the parking brake actuator force is applied in order to prevent said at least one adjuster mechanism from rotating such that said adjuster transmission is employed as a park lock. Appeal Br. 25, Claims App.", + "Accordingly, for the Examiner's findings to be adequately supported: adjustment rod 26 and/or adjustment screws 27 must be able to be rotated to an extent to apply the parking brake actuator force; and electromagnetic clutch 22, drive sprocket 23, and/or adjustment sleeves 24 must be able to be engaged when the parking brake actuator force is applied in order to prevent adjustment rod 26 and adjustment screws 27 from rotating such that electromagnetic clutch 22, drive sprocket 23, and/or adjustment sleeves 24 is employed as a park lock.", + "Thus, the rejection of claim 1, and its dependent claims, as anticipated by Severinsson '905, i.e., Rejection I, is not sustained.", + "Additionally, independent claim 17 is similar to independent claim 1 (Final Act. 2-3), and the rejection of claim 17 is based on the same inadequately supported findings as discussed above.", + "As such, the rejection of claim 17, and its dependent claims, as anticipated by Severinsson *905, i.e., Rejection I, is not sustained.", + "The remaining rejections based on Severinsson '905 alone or in combination with Severinsson *783 rely on the same deficiencies as discussed above.", + "As such, we do not sustain the rejections under 35 U.S.C. 6 103(a) of: claims 8 and 24 as unpatentable over Severinsson '905 and Severinsson '783, i.e., Rejection II; and claims 3 and 19 as unpatentable over Severinsson '905, i.e., i.e., Rejection III.", + "However, we agree with the Appellants that Baumann teaches *service braking is achieved using one motor 26, while the park lock functions are achieved using a completely separate motor 36.\" Appeal Br. 20.", + "We also agree with the Appellants that claim 33 requires service braking and park lock functions with the same motor. See id.", + "However, the Appellants persuasively argue that the Examiner is *relying upon assumptions rather than evidence.\" \" Reply Br. 4; see id. at 5-7.", + "Thus, the rejection of claim 33 as unpatentable over Severinsson '905 and Baumann, i.e., Rejection IV, is not sustained.", + "The Examiner offers a substantially similar rejection for independent claims 1, 3-7, 14, 17, 19-23, and 30 (see Ans. 2-4), i.e., Rejection V. and for similar reasons we do not sustain this rejection.", + "The remaining rejection based on Severinsson '905 in combination with Severinsson *783 relies on the same deficiencies as discussed above.", + "As such, we do not sustain the rejections under 35 U.S.C. 8 103(a) of claims 8 and 24 as unpatentable over Severinsson *905, and Baumann, and Severinsson *783, i.e., Rejection VI." + ] +} \ No newline at end of file diff --git a/opinion_split/2014006820_DECISION.json b/opinion_split/2014006820_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..6aa635ccaded158c38019b7678ca2ecf948361bc --- /dev/null +++ b/opinion_split/2014006820_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellants argue Suh *306 does not disclose a \"pseudo-identifier\" as that term is defined by the Appellants' specification, nor does Suh *306 disclose \"triggerling] abortion of decoding . . \u00b7 by a legacy media terminal that does not recognize the pseudo identifier.\" Id. at 8-10.", + "According to Appellants, Suh *306 discloses that media terminals must recognize, process, and interpret the \"stream_type\" field the Examiner equated to claimed \"pseudo-identifier.\" Id." + ], + "examiner_findings": [ + "REJECTIONS Claims 21, 22, 24-28, and 30-40 stand rejected under 35 U.S.C. \u25cf 102(e) as anticipated by Suh et al. (US 2011/0090306 A1; April 21, 2011) (\"Suh 1306\").", + "The Examiner found Suh *306 anticipates this limitation because Suh *306 discloses \"that a legacy media terminal (a 2D broadcast receiver), although reading the *stream_type' field, interprets the 'stream_type' as indicating the corresponding stream to be private data. Ans. 14.", + "The Examiner found \"[this is a wrong interpretation \u00b7 . . because the 'stream_type' is not to indicate the corresponding stream as private data, but, instead, the type of stream . ~ Id.", + "The Examiner reasoned that \"[w]hen a legacy media terminal wrongly recognizes the 'stream_type' field, it is safe to say that the legacy media terminal does not recognize the 'stream_type' field \u00b7 . \u00b7 . ++ Id. at 14-15." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE The present patent application concerns \"providing supplemental processing information useful in connection with media content processing.\" Spec. 1:4-5.", + "Claims 21, 27, 34, and 38 are independent.", + "Claim 21 illustrates the claimed subject matter: 21. A method of providing supplemental processing information relating to encoded media content, the method comprising: providing a pseudo-identifier of a media codec employed for encoding the media content; providing supplemental processing information defining post-decoding instructions for processing decoded media content obtainable by decoding the encoded media content; co-organizing the pseudo-identifier and the supplemental processing information in a file to: trigger abortion of decoding of the encoded media content by a legacy media terminal that does not recognize the pseudo-identifier; and enable decoding of the encoded media content using the media codec and post-decoding processing of the decoded media content using the supplemental processing information by a media terminal that recognizes the pseudo-identifier.", + "ANALYSIS Claim 21 recites \"co-organizing the pseudo-identifier and the supplemental processing information in a file to: trigger abortion of decoding of the encoded media content by a legacy media terminal that does not recognize the pseudo-identifier.\" App. Br. 20.", + "Independent claims 27, 34, and 38 recite similar limitations. Id. at 22, 25, 27.", + "We find Appellants' arguments persuasive.", + "Claim 21 recites \"triggerling] abortion of decoding. \u00b7 . by a legacy media terminal that does not recognize the pseudo-identifier.\" \"", + "But the cited portions of Suh *306 do not disclose that media terminals incorrectly interpret the stream_type field.", + "Rather, the cited portions disclose \"[a] *stream_type' field may indicate a coding type . \u00b7 \u00b7 \u00b7 [and] the stream_type field \u00b7 \u00b7 may have a specific field value that is interpreted as private data.\" *, Suh *306 I 77.", + "For example, \"[ilf the stream_type information is set to 0x06, the broadcast receiver determines a corresponding stream to be private data \u00b7 \u00b7 \u00b7 so that the corresponding program is ignored or discarded.\" Id. I 93.", + "Thus, contrary to the Examiner' s findings, one purpose of the stream_type field is to *indicat[e] the corresponding stream to be private data.\"", + "Given this, correctly determining that the stream_type field indicates a stream is private does not amount to \"wrongly interpreting\" the field.", + "Moreover, when the disclosed terminals read a particular stream_type field value (e.g., 0x06), the terminals ignore or discard the associated stream.", + "Reading the stream_type field and taking a specific action if the field is a certain value amounts to \"recognizing\" the field under any reasonable construction of the term.", + "We therefore agree with Appellants that the cited portions of Suh *306 do not anticipate the disputed limitations.", + "Accordingly, on this record, we do no sustain the Examiner'. s rejection of independent claims 21, 27, 34, and 38 or their respective dependent claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2014006944_DECISION.json b/opinion_split/2014006944_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7302cefd96bfceae0e1d2886b6f9ff39b345c0e3 --- /dev/null +++ b/opinion_split/2014006944_DECISION.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "STATEMENT OF CASE Introduction Appellants describe their **application relates \u25a0 \u00b7 . to mechanisms for arranging binary code based on call graph partitioning to reduce instruction cache conflict misses. \" Spec. 1 (\"Background\").", + "11. A computer program product comprising a computer readable storage medium having a computer readable program stored therein, wherein the computer readable program, when executed on a data processing system, causes the data processing system to: generate a call graph of a portion of code; weight nodes and edges in the call graph to generate a weighted call graph; partition the weighted call graph according to the weights, affinities between nodes of the call graph, and the size of cache lines in an instruction cache of the data processing system, so that binary code associated with one or more subsets of nodes in the call graph are combined into individual cache lines based on the partitioning; and output the binary code corresponding to the partitioned call graph for execution in a computing device, wherein each node in the call graph is weighted according to a size of code associated with the node and each edge in the call graph is weighted according to an estimate of a number of calls between nodes of the edge, and wherein partitioning the weighted call graph comprises performing the following operations iteratively until an edge having a maximum weight cannot be selected from unprocessed edges of the weighted call graph: selecting an edge from the unprocessed edges of the weighted can graph that has a maximum weight of the weights of the unprocessed edges; determining if nodes of the selected edge should be merged into a new node or not; and merging the nodes of the selected edge into a new node in response to a determination that the nodes of the selected edge should be merged. App. Br. 30 (Claims App'x).", + "Appellants argue the Examiner errs in finding the cited references teach the recited requirement. App. Br. 9-12, 14-16." + ], + "examiner_findings": [ + "Rejections? Claims 19 and 25 stand provisionally rejected under the judicially created doctrine of obviousness-type double patenting over claim 9 of co- pending patent application no. 13/444,907 (the **907 application*). Final Act. 2-4.", + "Claims 11, 16-18, and 21-24 stand rejected under 35 U.S.C. 6 103(a) as obvious over: Ju et al. (\"Ju\") US 6,839,895 BI Jan. 4, 2005; Ju et al. (Ju2\") US 6,175,957 BI Jan 16, 2001; Li et al. US 2005/0155023 A1 July 14, 2005; Archambault et al. US 2005/0246700 A1 Nov. 3, 2005; Delong et al. US 2007/0286483 A1 Dec. 13, 2007; and Chilimbi et al. US 6,330,556 B1 Dec. 11, 2001. Final Act. 5-16.", + "Claims 19, 20, 25, and 26 stand rejected under 35 U.S.C. 9 103(a) as obvious over Ju, Ju2, Li, Archambault, Delong, Chilimbi, and Kawaguchi et al. (US 5,926,632; July 20, 1999). Final Act. 16-20.", + "Claims 27 and 28 stand rejected under 35 U.S.C. 6 103(a) as obvious over Ju, Ju2, Li, Archambault, Delong, Chilimbi, and Kiriansky et al. (US 2004/0133777 Al; July 8, 2004). Final Act. 20-21.", + "The Examiner relies on either Ju3 or Delong in combination with Ju as teaching or suggesting claim 11's dispositive requirement of iteratively processing of edges having the largest weight first, until all edges are processed.\"", + "The Examiner also relies on the combination of Delong and Ju as teaching the dispositive requirement. Final Act. 12-13." + ], + "ptab_opinion": [ + "Claim 11 is illustrative, shown here with a dispositive requirement emphasized:", + "ANALYSIS The *907 application, over which the Examiner provisionally rejects claims 19 and 25, remains pending.", + "Because we reverse the Examiner's rejections under 35 U.S.C. , 103(a), we accordingly do not address the provisional rejection.", + "See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential).", + "While the Examiner correctly finds that Ju teaches an iterative process in which nodes are merged, we agree with Appellants that Ju does not teach or suggest the dispositive requirement of *selecting an edge from the unprocessed edges of the weighted call graph that has a maximum weight of the weights of the unprocessed edges\" as part of an iterative process \"until an edge having a maximum weight cannot be selected from unprocessed edges of the weighted call graph,\" as recited in claim 11.", + "We specifically agree with Appellants that: essentially what Ju is doing is generating clusters based on a smallest power of 2 multiple of a cache line, and then using the clusters as nodes in a next level PEG in which the weights of the clusters are set to 1 and the weights of the edges between the clusters is equal to the number of edges between nodes in one cluster and nodes in the other cluster.", + "It is noted that nowhere in this process, is there any selection of any edge in the PEG based on the edge having a maximum weight of the unprocessed edges.", + "There simply is no operation anywhere in Ju that performs such a selection \u00b7 \u00b7 Reply Br. 9 (referring to the process described for Ju Figures 6a-b).", + "Appellants persuade us that Delong's teaching of *partitioning a graph into regions based on a maximum amount of memory that is required to process the region of the graph\" does not cure the deficiencies of Ju vis-a-vis the dispositive requirement. App. Br. 12-13.", + "Because neither Ju nor Delong teaches or suggests claim 11's specific requirement of *selecting an edge from the unprocessed edges of the weighted can graph that has a maximum weight of the weights of the unprocessed edges\" \"iteratively until an edge having a maximum weight cannot be selected from unprocessed edges of the weighted call graph,\" \" the Examiner has not set forth a prima facie case of obviousness under 35 U.S.C. 8 103(a).", + "We accordingly do not sustain the rejection of claim 11, and of claim 21, which includes the same dispositive requirement.", + "We also do not sustain the rejection of claims 16-20 and 22-28, each of which depends, directly or indirectly, from claim 11 or 21." + ] +} \ No newline at end of file diff --git a/opinion_split/2014007077_DECISION.json b/opinion_split/2014007077_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..fdb1c8962e9321d6d51aef1013ff8396a1540614 --- /dev/null +++ b/opinion_split/2014007077_DECISION.json @@ -0,0 +1,82 @@ +{ + "appellant_arguments": [ + "Appellant first argues that **Nicholas merely shows a toss game mat made to have 'memory' to facilitate rolling or folding the mat into a roll to fit it into a carrying case, \" \"[therefore, it is not a *normally flat sheet of resilient plastic material which will return to a flat condition due to its resilience. ~ App. Br. 5 (citing Nicholas, 4:42-43).", + "Appellant also argues that Nicholas \"does not show the removal of multiple game pieces from the mat at the end of the game to permit the start of another.\" App. Br. 5.", + "Finally, in response to the Examiner's 's position regarding the functional language limitation, Appellant argues \"the recited limitations in Claim 1 are . \u00b7 \u00b7 not functional because they describe the physical characteristics of the game board which make it usable in the unique manner described in the patent application.\" App. Br. 6.", + "Appellant first argues that Pelzel does not disclose a resilient game board. App. Br. 8.", + "Appellant next argues that the Examiner's functional language rejections are improper. App. Br. 8.", + "Appellant next argues that \"[there is no disclosure in either the Pelzel or the Benett [sic] reference which teaches, suggests, or would motivate one to combine the two references.\" Id. at 9.", + "Appellant also argues that \"[the holding in the In Re Leshin case is not applicable here\" because **applicant does not claim any new materials at all. Instead, the applicant claims a new use as a game board for a mechanical structure used in a distant field of endeavor.\" \" App. Br. 9-10.", + "Appellant also argues that *[t]here is no disclosure in Benett [sic], which would suggest its use with a game board or anything resembling a game board, because it is merely used to stiffen the sides of a plastic trash bag. App. Br. 9.", + "Finally, Appellant argues that \"the Examiner is using hindsight when he suggests that it would have been obvious to one skilled in the art of making game boards to make it in the specific form recited in Claim 1.\" App. Br. 9.", + "Appellant argues, inter alia, that \"it is mere hindsight to attempt to combine these references in the way the Examiner has done.\" \" App. Br. 11.", + "Appellant replies that because claim 2 recites \"a retaining structure, \u00b7, *this language makes it clear that Claim 2 recites a physical structure. Reply Br. 2-3." + ], + "examiner_findings": [ + "Claim 1 is rejected under 35 U.S.C. 8 102(b) as being anticipated by Nicholas.", + "Claim I is rejected under 35 U.S.C. a 103(a) as being unpatentable over Pelzel and Bennet.", + "Claims 1-3 are rejected under 35 U.S.C. 6 103(a) as being unpatentable over Jackman and Baker or Bennet.\"", + "Claim 4 is rejected under 35 U.S.C. 9 103(a) as being unpatentable over Jackman, Baker or Bennet, and Liversidge.", + "The Examiner finds that Nicholas discloses all of the elements of independent claim 1. Non-Final Act. 3.", + "More specifically, the Examiner finds, inter alia, that Nicholas discloses a resilient game board (game mat 2)* \"with memory (see summary) bendable into a U shape (3:64) with markings (4) moving towards each other and returning to flat shape due to resilience upon being released (inherently). \" Id.", + "In addition to finding that Nicholas discloses a resilient game board, the Examiner also asserts that the \"Illimitations [sic] *sheet being bendable by hand RETERED return due to resilience to a flat surface' is a functional limitation and does not positively add any structure to the claimed [sic].\" Id.", + "The Examiner finds that Pelzel discloses the invention substantially as claimed, including, inter alia, a game board (game map/board 100) that is bendable and will resiliently return to its normal flat configuration upon release. Non-Final Act. 3 (citing Pelzel I 80, Figs. 1, 2).", + "\"The examiner takes the position that the game board sheet as shown in Pelzel had to [be] inherently resilient and [have] memory to uncurl because the sheet when 'allowed' has the tendency to unroll by itself and create hollow space for other game objects to be placed within the hollow.\" ld. at 4.", + "The Examiner also asserts that the *[Ilimitations [sic] *sheet being bendable by hand cenders return due to resilience to a flat surface' is a functional limitation and does not positively add any structure to the claimed [sic].\" Id.", + "The Examiner relies on Bennet to teach the use of a resilient plastic material for the game board, finding that it would have been obvious to a skilled artisan to use the *well known and commonly used memory plastic with resilience\" material of Bennet for Pelzel's game board *to allow efficient unrolling/uncoiling.\" Id. at 4-5.", + "The Examiner further asserts that \"the selection of a known material based on its suitability for its intended use was held obvious. \" Id. at 5 (citing In re Leshin, 277 F.2d 197 (CCPA 1960)).", + "Specifically, the Examiner explained that both Pelzel and Bennet disclose sheets of material that uncurl through resiliency, so a skilled artisan would look to the resilient material of Bennet in forming the game board of Pelzel. Non-Final Act. 4-5.", + "The Examiner finds that Jackman discloses the invention substantially as defined in claim 1, including, inter alia, a game board. Non-Final Act. 5.", + "The Examiner asserts that the **llimitations [sic] *sheet being bendable by hand ******* return due to resilience to a flat surface' is a functional limitation and does not positively add any structure to the claimed [sic].\" Id.", + "The Examiner also relies on Baker as establishing that the claimed material qualities *are known to be used in making game surfaces and in order to create variation in the game [so] it would have been obvious to select any known material as desired.\" Id. at 6 (citing Baker, 1:27-31).", + "As an alternative to Baker, the Examiner also finds that Bennet \"teaches a resilient plastic with memory when released from [a] rolled condition relaxes to a flat condition.\" Id. (citing Bennet, Figs. 1, 2a-2c).", + "The Examiner concludes that \"[i]n the art area of games it is common for manufacturers to select known material to use as a choice.", + "One of ordinary skills in art at the time the invention was made would have suggested using resilient material plastic as a choice.\" Id.", + "Rather, the Examiner summarily stated \"it would have been obvious to select any known material as desired.\" Id.", + "In the Examiner' s Answer, the Examiner states: Examiner also takes the position that in claim 2 the limitation \"said indicia include a retaining structure \u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7 to impede sideways movement\" only describes a printing (*indicia\" in this case) on the game board and does not add any structure to the game board surface.", + "Accordingly limitation \"the indicia include.... \" is being treated as a printed matter describing a rule of the play and not as a physical structure. Ans. 8." + ], + "ptab_opinion": [ + "We have jurisdiction over this appeal under 35 U.S.C. 8 6(b).", + "Thus, Nicholas fairly discloses a game board (mat) that is normally flat, can be bent by hand into a curved configuration (such as a U- shape), and will resiliently return to its flat shape when released.", + "We, therefore, find Appellant's argument to be unpersuasive.", + "This argument is unpersuasive because there is no such requirement in claim 1.", + "Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).", + "terms of structure rather than function, and in order to satisfy the functional limitations in an apparatus claim the prior art apparatus must be capable of performing the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).", + "Here, as the term \"bendable\" is an adjective, it serves as a modifier of the term *sheet, \" thereby describing a quality of the \"sheet,\" namely, the capability of the claimed sheet to be bent by hand into a substantial U-shape and without permanent deformation to return to its original shape due to its resilience.", + "As discussed above, the Examiner correctly finds Nicholas to be capable of performing the recited *being bendable\" and \"return due to its resilience to a flat shape\" functions of claim 1. Non-Final Act. 3.", + "Appellant has not provided persuasive evidence or technical reasoning to show otherwise.", + "Accordingly, we find Appellant's argument to be unpersuasive.", + "As such, for the foregoing reasons, we sustain the Examiner's rejection of claim 1 as being anticipated by Nicholas.", + "Thus, Pelzel fairly discloses a game board that, if bent, will, through its resiliency, unroll to a flat position.", + "Appellant's argument, therefore, is unpersuasive.", + "We find this argument unpersuasive for the reasons discussed above--namely, Pelzel is capable of performing the recited functions.", + "This argument is unpersuasive because the reason to modify or combine references need not be found in the references themselves.", + "See KSR Int 7 Co. V. Teleflex Inc., 550 U.S. 398, 415-21 (2007) (setting forth that the motivation to modify or combine reference teachings may arise in the interrelated teachings of multiple prior art references, the effects of demands known to the design community or present in the marketplace, the background knowledge possessed by a person having ordinary skill in the art, the existence at the time of invention of a known problem for which there was an obvious solution encompassed by the claims, and common sense).", + "These facts are similar to the instant situation, as Pelzel discloses a bendable and resilient game board and the Examiner proposes to use Bennet's resilient plastic material to make Pelzel's game board.", + "Thus, to show that the holding in Leshin is inapplicable to this case, Appellant must establish that, prior to the invention, it was not known to use a resilient plastic material to make a bendable and resilient game board.", + "Appellant has not convincingly established this fact, and Appellant's argument is therefore unpersuasive.", + "We additionally find Appellant's argument that the *new use as a game board\" yields patentability to be unpersuasive because the claims are not drawn to a method of using a board game, but rather to the game board itself.", + "It is well established that claims directed to an apparatus (such as a game board) must be distinguished from the prior art in terms of structure rather than function. See, e.g., Schreiber, 128 F.3d at 1477-78.", + "It would have been obvious to a skilled artisan to look to the teachings of Bennet's s plastic material, which provides the same function. See Bennet, 2:55-3:4.", + "We find Appellant's argument to be unpersuasive because, as discussed above, we agree with the Examiner that the selection of a similar material for the intended use (here, unrolling via its resilience) would have been obvious. See Leshin, 277 F.2d at 199.", + "We disagree.", + "In our view the Examiner articulated sufficient reasoning with rational underpinnings as to why a skilled artisan would have combined the prior art references to achieve the claimed invention.", + "Appellant's conclusory argument fails to apprise us of error in the Examiner's rationale.", + "Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of claim I as being unpatentable over Pelzel and Bennet.", + "We find this argument persuasive.", + "Although the Examiner asserts that the \"sheet being bendable by hand \u00b7 . without permanent deformation so as to return due to its resilience to a flat shape when released\" recitation of claim 1 to be functional language, the Examiner has not made findings that the Jackman apparatus is capable of performing these functions. See Non-Final Act. 5.", + "Baker does not satisfy this limitation, as the Baker mat (strip 10) is formed of *felt, composition, or the like\" (see Baker, 2:29-34), and, the Examiner did not make a finding that Baker discloses a resilient material. See Non-Final Act. 6.", + "\"However, 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.\" In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).", + "The Examiner has not articulated any reasoning with rational underpinnings as to why a skilled artisan would substitute the felt material of Baker's mat for that of Jackman's 's rolls, and therefore has failed to satisfy the requirements for a prima facie obviousness rejection.", + "Nor does the Examiner's reliance on Bennet satisfy the resiliency requirement.", + "Although Bennet discloses a resilient material, the Examiner has not presented a colorable reason with rational underpinnings why a skilled artisan would be motivated to form Jackman's rolls 50, 51 of the plastic material disclosed by Bennet.", + "Although it may be obvious to select a material on the basis of its suitability for the intended use (see Leshin, 277 F.2d at 199), the Examiner does not propose, nor does our review of Jackman reveal, any reason why a skilled artisan would intend rolls 50, 51 to **return[] to [a] flat relaxed state after being coiled, rolled or bent.\" See Bennet, 2:66-3:1.", + "The Examiner has, therefore, failed to set forth a prima facie rejection, and, accordingly, we reverse the rejection of independent claim I as being unpatentable over Jackman and Baker or Bennet.", + "Because claims 2 and 3 depend from claim 1, and the Examiner's application of the references to those claims does not remedy the foregoing error for claim 1, we likewise reverse the Examiner's s rejection of claims 2 and 3.", + "We find this argument to be persuasive.", + "Although merely including functionally unrelated printing on a substrate does not render a claimed invention patentable (see In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (citing In re Miller, 418 F.2d 1392 (CCPA 1969))), the recitation at issue here is structural (\"retaining structure comprising barriers\") and the Examiner's attempt to categorize it as being mere printing is in error.", + "Liversidge is not relied upon by the Examiner in any manner that would remedy the deficiency noted above with respect to the proposed combination of Jackman and Baker or Bennet in rendering obvious the subject matter of claim 1, from which claim 4 directly depends.", + "The rejection of claim 4, therefore, is reversed." + ] +} \ No newline at end of file diff --git a/opinion_split/2014007143_DECISION.json b/opinion_split/2014007143_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..57f307eaae2e4970bd6d68e079da706acad6e126 --- /dev/null +++ b/opinion_split/2014007143_DECISION.json @@ -0,0 +1,61 @@ +{ + "appellant_arguments": [ + "Appellant first argues that \"Kuhns fails to teach or suggest a spring `coupled between first ends of the first and second segments, the first and second segments extending away from the spring\"\" because \"the portion of the fastener 105 between the barbs 107, 108 does not flex and does not constitute a spring.\" \" App. Br. 4.", + "Furthermore, according to Appellant, *such flexing would be unnecessary as the barbs themselves flex.\" Id.; see also Reply Br. 2-4.", + "Appellant next argues that \"Kuhns fails to teach or suggest a method comprising the steps of *moving the fastener relative to the housing to secure a portion of tissue on a first side of the fastener with only the first free end**, because \"the expansion of the first and second barbs . \u00b7 \u00b7, as depicted in Figures 20 - 211 [sic], is not analogous to *moving the fastener relative to the housing to secure a portion of tissue on a first side of the fastener. .. App. Br. 6-7; see also Reply Br. 5.", + "Finally, Appellant argues that \"the fastener 105 of Kuhns is not moved relative to the shaft 92 or second slider 70 to cause the barbs 107, 108 to engage the tissue.\" App. Br. 8.", + "Appellant contends that \"the Examiner's s assertion that the barb 108 moves relative to the second slider 70 is unfounded as the barb 108 must be axially separated from the second slider 70 in order to permit any movement thereof.\" Id.", + "Continuing, Appellant argues \"Kuhns does not move the fastener 105 relative to the shaft 92 or second slider 70 to deploy each of the barbs 107, 108.", + "Rather, Kuhns is directed to the movement of the second slider 70 relative tot [sic] he [sic] fastener 105 to cause a deployment thereof.\" Id.", + "Appellant argues that the limitations within the second \"wherein\" clause \"are structural as they dictate a size, shape, and orientation of the fastener such that the fastener may be inserted through a housing in the claimed manner. \" App. Br. 11.", + "Appellant continues: A fastener formed with a different structure, as is the case with Drews, would be incapable of being operated in the claimed manner.", + "That is, the device of Drews is formed such that the base 4 is positioned proximally of the free ends of the first and second legs 6a, 6b.", + "The modification proposed by the Examiner seeks to position the attachment device 2 so that the base is positioned distally of the free ends of the first and second legs 6a, 6b in order to meet the limitation of \"wherein the fastener is insertable through a housing which holds the fastener in an insertion configuration with the free ends of the first and second segments are positioned proximally of the spring,' as recited in claim 38.", + "However, it is noted that this configuration would require that the base 4 be inserted into the mass 68 prior to the legs 6a, 6b and would impede the required application of torque to the base 4 to permit movement of the legs 6a, 6b from the first to the second configuration. Id. (citations omitted)." + ], + "examiner_findings": [ + "Claim 20 is rejected under 35 U.S.C. \u25cf 102(b) as being anticipated by Kuhns (US 7,485,124 B2, iss. Feb. 3, 2009).", + "Claim 38 is rejected under 35 U.S.C. \u25cf 102(b) as being anticipated by Drews (US 7,556,647 B2, iss. July 7, 2009).", + "The Examiner finds Kuhns to disclose all of the elements of independent claim 20, including, inter alia, a fastener (fastener 105)3 having two segments (barbs 107, 108), each having a free end (free ends of barbs 107, 108), and positioned proximally to a spring (\"[tip] 106 and halves of [barbs] 107, 108 connected to [tip] 106\"). Final Act. 2; see also id. at 4.", + "The Examiner also finds Kuhns to disclose all of the recited method steps. Id. at 2 (citing Kuhns, Figs. 19-23).", + "That is, the Examiner considers the flexing portions of barbs 107, 108 to be part of Kuhns's spring.", + "The Examiner finds that Drews discloses all of the elements of independent claim 38. Final Act. 2-5 (citing Drews, Figs. 14, 34-36).", + "More specifically, the Examiner finds Drews to disclose a fastener (attachment device 2) having first (leg 6b) and second (leg 6a) segments, each extending from a first end to a free end, and a spring (\"curved portion which biases the two legs back towards one another after the base torque applied in fig. 35 has been removed\") coupled between the segments. Id. at 2-3.", + "The Examiner further finds that \"[the claim is not drawn to the combination of the fastener and the housing.", + "Rather, the claim is drawn only to a fastener which is capable of being used with a housing.\" Id. at 5.", + "Thus, the Examiner finds the second \"wherein\" clause of claim 38 (\"wherein the fastener is insertable \u00b7 . \u00b7 into a second portion of tissue\" (App. Br. 20)) to be \"a recitation of intended use,\" and, because the Drews fastener is capable of such use, \"the fastener of Drews meets this functional limitation.\" \" Final Act. 3.", + "The Examiner answers by reiterating that only a fastener, and not the combination of a fastener and a housing, is claimed, and stating: The examiner is not proposing any modification to the prior art of Drews.", + "\u00b7 \u00b7 \u00b7 [It is the examiner* s position that the fastener of Drews meets all of the structural limitations of the claim and is capable of being inserted into a housing in the claimed manner.", + "Appellant argues that the limitations of the last 9 lines of claim 38 are structural as they dictate a size, shape, and orientation of the fastener, but fails to point out any structural limitations within the claim which are not met by the fastener of Drews. Ans. 7-8." + ], + "ptab_opinion": [ + "Boris Reydel (Appellant\") appeals under 35 U.S.C. \u25cf 134 from the August 13, 2013 Final Office Action (\"Final Act.\") rejecting claims 20 and 38.2", + "We have jurisdiction over this appeal under 35 U.S.C. .5 6(b).", + "Appellant's \"invention relates to an endoscopic tissue-fastening device and related fastener and methods for use, and more particularly, a device which allows segments of the fastener to be independently attached to the tissue.\" Spec. I 1.", + "Independent claims 20 and 38 are reproduced below from the Claims Appendix of the Appeal Brief:", + "20. A method for securing tissue, comprising guiding a housing to a target region in a living body, the housing releasably holding a fastener in an insertion configuration with first and second free ends of first and second segments of the fastener positioned proximally of a spring, wherein the spring is coupled between first ends of the first and second segments, the first and second segments extending away from the spring; moving the fastener relative to the housing to secure a portion of tissue on a first side of the fastener with only the first free end; moving, after the first free end has been secured, the fastener relative to the housing to secure a portion of tissue on a second side of the fastener with the second free end; and detaching the fastener from the housing.", + "38. A fastener comprising: a first segment extending from a first end to a tissue piercing free end; a second segment extending from a first end to a tissue piercing free end, wherein the first segment secures tissue independently of the second segment; and a spring coupled between the first ends of the first and second segments; wherein the fastener is insertable through a housing which holds the fastener in an insertion configuration with the free ends of the first and second segments are positioned proximally of the spring, the fastener being movable relative to the housing from the insertion configuration to an initial deployment configuration in which only the first segment extends distally from the housing so that the free end of the first segment may be inserted into a first portion of tissue, the fastener being movable relative to the housing from the initial deployment configuration to a second deployment configuration in which the second segment extends distally from the housing so that the free end of the second segment may be inserted into a second portion of tissue.", + "We find this argument to be unpersuasive because Appellant does not address the spring of Kuhns as determined by the Examiner, which is \"[tip] 106 and halves of [barbs] 107, 108 connected to [tip] 106.\" See Final Act. 2.", + "Appellant's arguments do not apprise us of any error in this interpretation, and are, therefore, unpersuasive.", + "We find Appellant's arguments to be unpersuasive.", + "As noted by both the Examiner and Appellant, retraction of Kuhns slider 60 releases barb 107 from its constrained position. See, e.g., App. Br. 6-7; Ans. 6.", + "This release causes barb 107 to fixedly engage with tissue 126. See Kuhns, 17:45-50.", + "As neither slider 60 nor shaft 92 moves with barb 107, barb 107 moves relative to slider 60 and shaft 92. See id. at Figs. 18-22.", + "Thus, the Kuhns fastener moves relative to the housing to secure a portion of tissue.", + "Appellant\". s arguments fail to apprise us of any Examiner error.", + "Moreover, Appellant's argument is inconsistent with how \"moving the fastener\" is used in the application.", + "A comparison of steps 2 and 3 of figure 1 appears to show staple segment 310 being deployed by keeping staple 300 in place while moving tube 100 downwardly away from staple 300.", + "We find this argument unpersuasive for the reasons presented above with respect to Kuhns's barb 107.", + "Accordingly, we sustain the Examiner's rejection of claim 20 as being anticipated by Kuhns.", + "It is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, and in order to satisfy the functional limitations in an apparatus claim, the prior art apparatus must be capable of performing the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).", + "The second \"wherein\" clause defines the fastener as being \"insertable through a housing\" and **movable relative to the housing\" (App. Br. 20), and thus describes how the fastener is used rather than defining any structure of the fastener.", + "As such, we find this language to be a recitation of intended use.", + "We find Appellant's argument that this language is structural unpersuasive because Appellant has not convincingly explained how the recited use \"dictate[s] a size, shape, and orientation of the fastener\" (see App. Br. 11); the claim does not define any particular size or shape of the housing, and thus the requirement that the fastener be \"insertable through a housing\" does not provide any limitation of the size or shape of the fastener.", + "Furthermore, whether or not the fastener could be inserted through a housing would depend on the size and shape of the housing, but it appears the housing could have a wide range of sizes so long as large enough to receive the fastener.", + "It also seems the fastener could have a range of sizes relative to a given housing, so long as the fastener fits inside the housing.", + "Nor do we find persuasive Appellant's assertions that the Drews fastener would be incapable of such use.", + "Appellant asserts that orienting the Drews fastener such that the free ends are positioned proximal to the spring would require the base to be inserted into the subject prior to the legs, but Appellant has not convincingly set forth why this would necessarily be so.", + "We note that Appellant does not define (or even use) \"proximal\" in the Specification, but even construing the term to mean positioned towards or in the direction of the user-end of the insertion tool (as intimated by Appellant), Appellant has not convincingly identified or explained what recited structure is purportedly missing from the Drews fastener that would make it incapable of being used as claimed.", + "Accordingly, we sustain the Examiner's rejection of claim 38 as being anticipated by Drews." + ] +} \ No newline at end of file diff --git a/opinion_split/2014007394_DECISION.json b/opinion_split/2014007394_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9381ba72729a38cc2d7ff2eabbc853b2bade67e1 --- /dev/null +++ b/opinion_split/2014007394_DECISION.json @@ -0,0 +1,69 @@ +{ + "appellant_arguments": [ + "Appellants argue that Byron discloses a flow passage 23 having a conductive sleeve 26 surrounding the flow passage 23 rather than a capillary tube and a thermally conductive material as recited in claim 1. Appeal Br. 5-6.", + "Second, the Appellants argue that forming helical grooves in the thermally conductive material into which the heating wire is wound is not merely a matter of obvious design choice.", + "Instead, Appellants argue that the arrangement provides uniform spacing of the heating wire and allows the thermally conductive material to be enlarged to promote even, uniform heating of the capillary tube without imposing a large electric load upon the source of electrical energy. Appeal Br. 6-7.", + "Finally, Appellants argue that the transfer tube 10 of Li does not vaporize and/or cause the solvent to evaporate. Appeal Br. 7.", + "Instead, argue Appellants, in Li the transfer tube 10 forms hanging droplets of liquid stream, and the carrier solvent is evaporated as the droplets land on the plate of the collection device 20. Id.", + "This, Appellants claim, is not the function or operation as recited in claim 1.", + "Appellants argue that \"the transfer tube 10 of Li does not vaporize and/or cause the solvent to evaporate.\" Appeal Br. 7.", + "Appellants assert that instead the transfer tube 10 forms hanging droplets of liquid stream and the carrier solvent is evaporated as the droplets land on the plate of the collection device 20. Id.", + "Appellants argue that the threaded exterior of the thermally conductive material is not obvious because *the arrangement provides uniform spacing of the heating wire about the thermally conductive material, such that a more even, uniform application of heat to the thermally conductive material is provided, which is not taught or suggested by either Byron or Li.\" Appeal Br. 6-7.", + "Appellants argue claim 10 separately on the basis that the additional reference, Kelly, fails to remedy the deficiencies of the Byron and Li references. Appeal Br. 8-9.", + "Appellants make only one substantive argument concerning the relative masses of the capillary tube and thermally conductive material, namely, that the thermally conductive material can be enlarged to promote even, uniform heating of the capillary without imposing a large electric load upon the source electrical energy. Appeal Br. 9-10.", + "Appellants make the same arguments in favor of the patentability of claim 19 as they made for claim 1. Appeal Br. 10-13.", + "Appellants also urge that the Examiner errs because neither Byron nor Li teaches or suggests forming the thermally conductive material from two half cylinders as claimed in claim 19. Appeal Br. 13.", + "Appellants argue that the Examiner's reliance on Kelly in the rejection of claim 20 does not cure the alleged deficiencies with the rejection of claim 19. Appeal Br. 14.", + "Appellants argue that electrically non-conductive thermal masses are not shown or suggested by either of the references relied on." + ], + "examiner_findings": [ + "Claims 1-5, 8, 9. 11-13, 15-19, 21-23, and 25-32 stand rejected under 35 U.S.C. 6 103(a) as being unpatentable over Byron and Li.!", + "Claims 10 and 20 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Byron, Li, and Kelly.", + "The Examiner points out that Byron discloses a heating device that heats material in a capillary tube. Ans. 2.", + "The Examiner finds that Li \"teaches a device that generating [sic] droplet in which the device comprises a capillary tube 10 and a thermally conducted material 16c in thermal contact with [the] capillary tube wherein the material 16c is wrapped with a helically extending heating wire 24 which has electrical leads attached to it.\" Final Act. 2, Ans. 2.", + "The teaching of Li is used by the Examiner only for replacing Byron's heating means with a heating wire wrapped helically around the thermally conductive material. Final Act. 2, Ans. 2.", + "The Examiner found that it was a matter of design choice to form threads on the exterior of the conductive material in order to securely wrap the coil around the conductive material, and that Byron's device, as modified by Li, would still function properly with such an arrangement. Final Act. 2.", + "The Examiner repeats this position in his Answer and further explains that \"It would have been a matter of design choice to provide thread grooves to hold the heating coil since the task of heating the material would still be carried out as intended by the heating device of Byron et al. \" Ans. 4.", + "The Examiner finds that the mass of the thermally conductive material is a matter of design choice depending on the materials used. Final Act. 3.", + "The Examiner's Answer repeats this finding (Ans. 3) and elaborates, saying that because the prior art device (Byron as modified by Li) generates an aerosol, the masses of the pieces that make up the device do not matter. Ans. 4.", + "The Examiner finds *it is widely understood that temperatures of heating devices will vary depending on its [sic] operating conditions and so it would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the device withstand a slight temperature variation.' Ans. 5.", + "The Examiner has rejected these claims, finding that the device of Byron as modified by Li *would function properly, since the purpose of the prior art device is to produce aerosol, which it would do so [sic] with or without the endcaps.\" Ans. 5.", + "The Examiner rejects claim 31 on the same basis that claim 1 was rejected, and without further comment. Final Act. 2-3; Answer 2-3." + ], + "ptab_opinion": [ + "We select claim 1 as representative, and the remaining claims stand or fall with claim 1. 37 C.F.R. 8 41.37(c)(1)().", + "We address these issues in turn, although not in the order Appellants present them.", + "One of ordinary skill in the art would appreciate that these metals are thermally conductive.", + "In view of the foregoing, we are not persuaded that Byron does not disclose \"a capillary tube and a thermally conductive material as recited in claim 1,\" as Appellants argue. Appeal Br. 6.", + "One of ordinary skill in the art, reviewing Li, would recognize Li teaches heating the flowing stream while in the transfer tube 10 to cause **evaporation of the solvent from the hanging droplet 30.\" Li I 68.", + "Accordingly, Appellants are incorrect in their assertion that \"the transfer tube 10 of Li does not vaporize and/or cause the solvent to evaporate.\" Appeal Br. 7.", + "For the same reason, Appellants' arguments that Li does not function or operate as the arrangement recited in claim 1 and that therefore it would not be obvious to combine Li with Byron (id.) are not persuasive.", + "One of ordinary skill in the art would appreciate from Li Figure 3A that the heating coils can be uniformly spaced, and the emphasis in Li on heating the capillary tube 10 until just below the solvent boiling point would suggest that hot spots in the capillary are to be avoided. See Li 11 66, 68, 73, and 77.", + "(para. 85) would suggest about 1.3 mm per turn, producing a helical shape for the heating wire.", + "As noted above, Byron teaches tightly wrapping the heater wire around a thermally conductive material, as does Li, with Li providing a drawing showing uniform spacing and a specific disclosure of what that spacing can be in practice.", + "Thus, the modification of adding grooves to the device of Byron, as modified by Li, provides no unexpected results or change in function to the device, which already includes uniform spacing of the helically wrapped heating wire.", + "We find that the Examiner's conclusion that it would have been an obvious design choice to provide helical grooves on the outside of the thermally conductive material is supported by articulated reasoning with rational underpinning.", + "As we have found no such deficiency, no error has been shown in the rejection of claim 10.", + "One of ordinary skill in the art would recognize that the cross section of the capillary tube cannot be larger than the area of the hole in which it is received and could readily calculate that, per unit of length, the cross-sectional area of the stainless steel support tube is more than 40 times the cross-sectional area of the hole down its middle.", + "Therefore the relative masses of the capillary (made of silica) and the thermally conductive material around it (made of stainless steel) would exceed the claimed minimum ratio of 10.", + "Given that Li made the design choice defined in claim 11, we agree that the relative masses of the capillary and the support tube recited in claim 11 is a matter of obvious design choice.", + "Accordingly, we are not persuaded of Examiner error in finding the relative masses of the capillary and surrounding thermally conductive material a matter of design choice.", + "We find them unpersuasive for the same reasons.", + "This argument does not respond to the Examiner's rejection, which found the claimed arrangement an obvious design choice. Final Act. 3.", + "For this reason the argument is unpersuasive.", + "Accordingly, we have not been apprised of error and affirm the rejection of claim 19.", + "Because we do not agree with those deficiencies, we likewise sustain the rejection of claim 20.", + "Appellants have not claimed any special or surprising result from the about 5 range, only that this results naturally from having a certain thermal mass surrounding the capillary. Spec. 5.", + "We have not been shown error in the Examiner's finding.", + "The Examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness.", + "The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. 8 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious.", + "The Supreme Court in KSR International Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 8 103 should be made explicit.", + "The Federal Circuit has stated that *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.\"", + "In this case the Examiner has merely stated that if end caps were added, the device would still be operative. Ans. 4-5.", + "This is not a sufficient basis to support a conclusion that it would have been obvious to make the claimed combination, and we reverse the Examiner's rejection of claims 26 and 27.", + "Accordingly, the rejection of claim 30 is reversed.", + "The Examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness, as discussed above.", + "Here the Examiner has not made even a conclusory statement about the subject matter added by claim 31.", + "Accordingly, we do not sustain the rejection of claim 31." + ] +} \ No newline at end of file diff --git a/opinion_split/2014007560_DECISION.json b/opinion_split/2014007560_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8f1a52d3ba159dbc148e2c7cb484434b3fd83029 --- /dev/null +++ b/opinion_split/2014007560_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellant contends that the Examiner's combination of Flanders and Perez Carballo does not meet the limitation *wherein the grip means are effective to permit a pair of said packages to be engaged via stacking or flanking and then to be lifted in engagement together without slipping relative to each other.\" Appeal Br. 5.", + "In support of this contention, Appellant argues that neither reference discloses engaging packages with each other through gripping means. Id." + ], + "examiner_findings": [ + "The Examiner finds that *Flanders discloses the invention substantially as claimed\" except for the *grip means provided on said first interfacing surface\" in independent claim 24. Final Act. 3-4.", + "The Examiner finds that Perez Carballo discloses the recited grip means and concludes it would have been obvious \"to add grip as taught by Perez Carballo to the container of Flanders in order to keep the packages from sliding around. \" Id. at 5.", + "The Examiner responds that this claim limitation is functional but the rejection meets the claim language because \"[a]dding grip to the same place on two or more packages would mesh up.\" Ans. 4.", + "The Examiner asserts in the Answer that grip can be added to the top surface of Flanders' container and to a small overhang near the top and bottom of the side walls of Flanders' container, but does not assert that grip can be added to the bottom. See Ans. 4 (Examiner's annotations to Fig. 1 and Fig. 3 of Flanders).", + "The Examiner rejects claim 55 based on the same combination of Flanders and Perez Carballo. Final Act. 3.", + "The Examiner rejects dependent claims 30, 35, and 56 based on the combination of Flanders, Perez Caraballo, and Brink. Final Act. 7." + ], + "ptab_opinion": [ + "For the following reasons, we do not sustain the rejection.", + "We initially note that in certain circumstances functional language may be used to add limitations to an apparatus claim. See K-2 Corp. V. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999); Wright Med. Tech., Inc. V. Osteonics Corp., 122 F.3d 1440, 1443-44 (Fed. Cir. 1997).", + "Functional language adds a structural limitation to an apparatus claim if the language describes something about the structure of the apparatus rather than merely listing its intended or preferred uses.", + "In this case, the language deemed functional by the Examiner is more than a listing of intended or preferred uses for the apparatus and the Examiner must show that the limitation is satisfied by the proposed combination of Flanders and Perez Caraballo.", + "The Examiner does not provide a rational basis for the conclusion that grip means located on the top surface but not the bottom surface of Flanders' container can provide the capability \"to permit a pair of said packages to be engaged via stacking.\" \"", + "The small overhangs near the top and bottom of the sides of Flanders' container, thus, do not define the holding volume and are not the recited first interfacing surface.", + "In the absence of grip means on a vertical interfacing surface, the Examiner has not shown that the combination of Flanders and Perez Caraballo results in a package with the capability \"to permit a pair of said packages to be engaged via I flanking.\"", + "The Examiner, thus, does not establish by a preponderance of the evidence that the combination of Flanders and Perez Caraballo results in a package with the capability of engaging a pair of packages by either \"stacking or flanking.\" \"", + "Because the rejection is based on an erroneous factual finding, the conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that \"\"[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand. \").", + "We do not sustain the rejection of claim 24 and claims 27- 29, 31-34, 36, 41-43, 51-53, 58, and 59 which are dependent on claim 24.", + "As noted above, the Examiner's finding of grip means on a vertical interfacing surface capable of engaging a pair of containers by flanking is not supported by a preponderance of the evidence.", + "Therefore, we do not sustain the rejection of claim 55 for the same reasons as claim 24.", + "The Examiner does not rely on Brink to cure the deficiencies of Flanders and Perez Caraballo noted above. Id.", + "Therefore, we do not sustain the rejection of claims 30, 35, and 56." + ] +} \ No newline at end of file diff --git a/opinion_split/2014008089_DECISION.json b/opinion_split/2014008089_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..512d6446b40c93ef74c119a4693d43ed0a3472b9 --- /dev/null +++ b/opinion_split/2014008089_DECISION.json @@ -0,0 +1,88 @@ +{ + "appellant_arguments": [ + "Appellants contend that the cited references fail to suggest any correlation between glycosylation specificity and the recited type III AFP.", + "Specifically, Chapman discloses only glycosylated type III AFP and is silent regarding any underglycosylated type III AFP.", + "Further, Ng and Gentzsch are silent regarding any type III AFP.", + "Accordingly, from reading the cited references, one of ordinary skill in the art would not know whether any protein mannosyl transferase mutant could be used to underglycosylate type III AFP, and/or which protein mannosyl transferases would be specific to glycosylation of type III AFP. Br. 5.", + "Appellants argue that they have unexpectedly found that, as shown in Examples 5-6 and Tables 3-4 of the present specification, the recited pmt I-deficient mutant strain results in underglycosylation of type III AFP compared to non-mutant parent strain.", + "Thus, in view of the data disclosed in the present specification, the underglycosylation of type III AFP resulted from the deletion of pmt 1 was unexpected in view of the cited references and the status of art at the time of the invention. Br. 5.", + "Appellants contend that one of ordinary skill in the art would not have expected that underglycosylated type III AFP would have increased ice recrystallization inhibitory activity as compared to glycosylated type III AFP.", + "As discussed in page 4 of the original specification, for example, removing pendant disaccharides of AFP found in northern cods and Antarctic notothenioids resulted in loss of AFP activity, but when a naturally glycosylated AFP from carrots was produced without its surface glycans, its activity was not affected.", + "See De Vries (Science, 172, 1152, 1971), and Worrall (Science, 282, 115-17, 1998).", + "Moreover, the present inventors found that the activity of a heterologously expressed AFP from rye grass did not depend on its glycosylation.", + "See Page 4 of the original specification.", + "Further, the cited references fail to suggest any correlation between glycosylation and AFP's ice recrystallization inhibitory activity because the cited references are silent regarding any underglycosylated AFP. App. Br. 6.", + "In particular, Appellants argue that they have presented data of unexpected, superior results not found in the cited references. App. Br. 8-9." + ], + "examiner_findings": [ + "Claims 1, 6-7, 12, and 14-16 are rejected under 35 U.S.C. S 103(a) as being unpatentable over Chapman in view of Ng and Gentzsch.", + "Claims 1, 6-7, 12, and 14-16 are rejected under 35 U.S.C. S 103(a) as being unpatentable over Chapman in view of Tanner and Gentzsch.", + "Claims 1, 6-7, 12, and 14-16 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-9 of US Patent 7,297,516 (hereinafter *516 patent\") in view of Ng and Gentzsch.", + "Claims 1, 6-7, 12, and 14-16 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 11 of US Patent 7,560,249 (hereinafter *249 patent\") in view of Ng and Gentzsch.", + "Claims 1. 6-7, 12, and 14-16 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-9 of US Patent 7,297,516 (*516 patent\") in view of Tanner and Gentzsch.", + "Claims 1, 6-7, 12, and 14-16 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 11 of US Patent 7,560,249 (hereafter **249 patent*) in view of Tanner and Gentzsch.", + "The Examiner finds that \"[t]he type III AFP polypeptide of Chapman is 100% identical to SEQ ID NO:1 herein\" and that \"[the difference between the method of Chapman and the claimed invention is that Chapman's Saccharomyces cerevisiae is not deficient in pmtl and/or pmt2.\" Ans. 2.", + "The Examiner relies on Ng and Gentzsch to provide the motivation for using a S. cerevisiae modified to delete pmtl and pmt2 genes from proteins to prevent protein misfolding. Ans. 2-3; Ng 172.", + "In particular, Ng teaches it is possible that most heterologous proteins can become O-glycosylated when produced in yeast and that O-glycosylation can result in misfolding and compromised activity and stability. Ans. 3.", + "Ng teaches a solution for overcoming the problem of O-glycosylation, which is the deletion of pmt genes in a S. cerevisiae expression host, noting the deletion may be any of the six pmt genes or combination thereof, which deletion promotes proper folding (p. 6, paragraph 71; p. 7, paragraph 72).", + "Ng teaches that using a pmt-deleted yeast as an expression host improves yields and activity of a heterologously expressed protein where yeast expression has shown success (p. 1, paragraph 12).", + "Ng discloses a comparison of heterologous protein expression in S. cerevisiae strains individually deleted in each of pmt1 -pmt6 (p. 4, paragraph 57; p. 12, paragraph 152), where O-glycosylation of the heterologous protein was shown to be dependent on pmtl and pmt2, but not on pmt3-pmt6 (p. 12, paragraph 152, middle to bottom).", + "Gentzsch teaches a pmtl deletion, a pmt2 deletion, and a pmtl -pmt2 deletion of S. cerevisiae (p. 28, column 2, paragraph 2.1); teaches the polypeptides encoded by pmtl and pmt2 function as a heterodimer having O-mannosyl-transferase activity in the O-glycosylation of polypeptides (p. 128, abstract); and teaches that disruption of each of these genes leads to \"a dramatic decrease of mannosyltransferase activity in vitro. \" Ans. 3.", + "The Examiner concludes that, At the time of the invention, it would have been obvious to one of ordinary skill in the art to combine the teachings of Chapman, Ng, and Gentzsch to express type III AFP using a pmtl -pmt2-deleted S. cerevisiae.", + "One would have been motivated to do this in order to determine if the type III AFP expressed using pmtl-pmt2-deleted S. cerevisiae has increased activity and/or stability, particularly as Ng teaches \"it is possible that most heterologous proteins can become O-linked glycosylated\" when produced in yeast and that using a pmt-deleted yeast as an expression host improves yields and activity of a heterologously expressed protein where yeast expression has already shown success.", + "One would have had a reasonable expectation of success to express type III AFP using pmtl I-pmt2-deleted S. cerevisiae because of the results of Chapman, Ng, and Gentzsch.", + "Therefore, the method of claims 1, 6-7, 12, and 14-16 would have been obvious to one of ordinary skill in the art at the time of the invention. Ans. 4.", + "In response to this argument, the Examiner notes that **claims 1, 6, 7, 12, and 14-16 are not limited to a S. cerevisiae that is deficient only in pmtl and/or pmt2.", + "Rather, claim 1 is broadly and reasonably interpreted to encompass a S. cerevisiae that is deficient in at least pmtl and/or pmt2 (and any additional pmt3- pmt6).\" Ans. 18.", + "The Examiner further finds that Contrary to appellant's position, in view of the state of the art, one would have expected type III AFP to be O-glycosylated by a pmt.", + "As noted above, Ng teaches \"it is possible that most heterologous proteins can become 0- linked glycosylated\" when produced in yeast[].", + "Indeed, all of the recombinant proteins analyzed in Ng and Tanner and appellant's cited references of Gentzsch et al. (Glycobiology 7:481-486, 1997) and Strahl- Bolsinger (Biochemica et Biophysica Acta 1426:297-307, 1999) were 0- glycosylated by pmtl, pmt2, a combination of pmtl -pmt2, or by pmt4 when expressed in S. cerevisiae, which supports Ng's noted teaching that most heterologous proteins can become O-linked glycosylated when expressed in yeast.", + "Also, although it is acknowledged that Chapman's 's expression system successfully expresses type III AFP with ice recrystallization inhibitory activity, as noted above, Ng recognizes that using a pmt-deleted yeast as an expression host improves yields and activity of a heterologously expressed protein even when yeast expression has already shown success.", + "As such, in view of the teachings of the prior art, one would have expected type III AFP to be O-glycosylated by a pmt when recombinantly produced by S. cerevisiae. Ans. 16-17." + ], + "ptab_opinion": [ + "In making our determination, we apply the preponderance of the evidence standard.", + "See, e.g., Ethicon, Inc. V. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office).", + "*The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. *KSR Int'l 7 Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).", + "Because the rejection of these claims turn on the same issues as rejection I and is addressed fully in the response to rejection 1. we address these claims as part of rejection 1.", + "We agree with the Examiner's fact finding, statement of the rejection and responses to Appellants' arguments as set forth in the Answer.", + "We find that the Examiner has provided evidence to support a prima facie case of obviousness and find no error in the Examiner's indicated rationale in support of the present obviousness rejection.", + "We provide the following additional comment to the Examiner* s argument set forth in the Final Rejection and Answer.", + "We are not persuaded.", + "We agree with the Examiner, that one would have looked to the relevant prior art of Ng to determine the effect of decreasing O-glycosylation on the ice recrystallization inhibitory activity of type III AFP.", + "In view of these references, one would have expected increased ice recrystallization inhibitory activity of type III AFP produced in a pmt-deficient strain ofS. cerevisiae.", + "The references of Ng and Tanner each correlate aberrant O-glycosylation with reduced activity of a heterologous protein.", + "For example, as noted above, Ng teaches 0- glycosylation can result in misfolding and compromised activity and Tanner teaches a drawback of undesirable O-glycosylation on fungal-derived recombinant products is that biological activity can be affected.", + "Also, Ng correlates using a pmt deletion strain with higher activity of a heterologous recombinant protein.", + "For example, as noted above, Ng teaches that using a pmt-deleted yeast as an expression host improves activity of a heterologously expressed protein even where yeast expression has shown success.", + "Therefore, in view of the prior art of record, one would have expected that type III AFP has reduced O-glycosylation in a pmt-deficient S. cerevisiae mutant and would have expected that reducing O-glycosylation of type III AFP would increase its ice recrystallization inhibitory activity. Ans. 20-21; See also, Ans. 4.", + "In particular, Chapman discloses that the type III AFP polypeptide (HPLC-12) is 100% identical to SEQ ID NO: 1, as claimed.", + "Chapman further discloses that when the SEQ ID NO: I peptide is used as an additive it provides, improved properties of modification of ice crystal growth processes influencing size and shape characteristics of ice in particular in regrowth thereby e.g. minimising potential freezing damage e.g. by preventing or inhibiting ice recrystallisation of the product upon freezing, said use occurring in a manner known per se for antifreeze peptides to obtain higher specific modification activity in particular antifreeze activity. Chapman Abstract, emphasis added.", + "Chapman discloses that, \"HPLC 12 appeared to be the only fraction of the 12 AFP-type III fractions active in recrystallisation inhibition at the concentrations tested.\" Chapman, p. 4, II. 13-15.", + "Thus, Chapman discloses the type III AFP has increased ice recrystallization inhibitory activity.", + "Ng discloses that heterologous proteins expressed in yeast are inappropriately modified by O- linked glycosylation.", + "In turn, the modification can have negative consequences on the maturation and activity of the protein.", + "The inventors have established that coupling expression using an endogenous signal sequence with specific mutant strains deficient in O-linked glycosylation, the activity of heterologous proteins expressed in yeast can be drastically improved. Ng 171.", + "Ng discloses that, *[i] yeast, O-linked glycosylation begins in the ER through the action of a family of genes called protein mannosyltransferases (PMT).\" Ng *68.", + "*Since there are 6 PMT genes in yeast that are non-redundant and exhibit differences in substrate specificity, deletion strains of any of the six genes may provide the needed inhibition of aberrant O-glycosylation.", + "In addition, mutations can be combined to further promote proper folding.\" \" Ng 171.", + "Thus, Ng discloses inhibition of aberrant O-glycosylation in yeast using pmt deletion, and therefore deletion of pmt genes is a result effective variable which can be optimized by those of ordinary skill in the art to achieve proper protein folding and increase protein yields.", + "\"[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.\" \" In re Peterson, 315 F.3d 1325, 1329-1330 (Fed. Cir. 2003).", + "Ng further discloses that pmt 1 and /or pmt 2 deletions, in particular, stabilize, *improve yields and activity of proteins,' and prevent misfolding of proteins, i.e., increase the number of properly folded proteins. Ng, abstract, 11 12, 71, 72, 152; Ng claim 8; Ans. 3.", + "It would have been obvious to one of ordinary skill in the art at the time of the invention that prevention of type III AFP protein misfolding in yeast with specific pmt mutant strains deficient in O-linked glycosylation (including pmt 1 and pmt 2) over glycosylated type III AFP, would result in a higher active protein yield and thus increased recrystallization inhibitory activity.", + "Compare, Spec. Table 3, p. 28, showing increases in non-glycosylated AFP protein yield, consistent with the teachings of Ng and Gentzsch.", + "Therefore, one of ordinary skill in the art would have expected increases in properly folded proteins (including type III AFP), protein yield and protein activity in view of the disclosure of Chapman, Ng, and Gentzsch.", + "Expected beneficial results are not evidence of nonobviousness. See, In re Skoner, 517 F.2d 947, 9502 (CCPA 1975).", + "Appellants have not shown the unexpected results of increasing ice recrystallization inhibitory activity of type III AFP in view of the closest prior art.", + "*[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.\" In re Baxter- Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); Bristol-Myers Squibb Co. V. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).", + "Additional arguments not made are waived.", + "I Rejection 1 is affirmed for the reasons of record.", + "Tanner similarly teaches that A drawback of undesirable O-glycosylation on fungal-derived recombinant products is that biological activity can be affected by glycosylation (column 2, lines 40-44).", + "To avoid undesirable O- glycosylation, Tanner teaches using genetically modified fungal cells, including Saccharomyces cerevisiae, with genetic modification to reduce 0- glycosylation (column 2, lines 47-56; column 3, lines 18-19), e.g., by deletion of pmtl gene (column 3, lines 20-22; column 4, lines 31- 33).", + "I We note that Appellants previously argued that Chapman was not prior art to the present application because it had been antedated by a Declaration under 37 C.F.R. 1.131. Non-Final Action dated Aug, 23, 2013, p. 8.", + "These arguments have not been presented again in the Brief, and are, therefore, waived. Ans. 5.", + "For the reasons similar to those discussed above with respect to rejection 1, we find that the Examiner has presented a prima facie case of obviousness and rejection 2 is affirmed for the reasons of record.", + "For the reasons discussed above with respect to rejections 1 and 2, we are unpersuaded by Appellants' evidence of unexpected results as there is no comparative evidence with respect to the closest prior art.", + "Rejections 3-6 are affirmed for the reasons of record." + ] +} \ No newline at end of file diff --git a/opinion_split/2014008160_DECISION.json b/opinion_split/2014008160_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d5a7031561c810eb213574b6508c05ad90f4e9da --- /dev/null +++ b/opinion_split/2014008160_DECISION.json @@ -0,0 +1,176 @@ +{ + "appellant_arguments": [ + "Appellant challenges the rejection of claim 19 as obvious in view of the principal reference to Dobson, asserting that Dobson shows \"a hand tool, not a socket driver configured for being driven by power means.\" Br. 9.", + "In support, Appellant relies on the declaration of Dr. Taha (filed May 25, 2011) and a declaration of Mr. Steven Self (filed May 25, 2011). Id.", + "Dr. Taha states in a conclusory fashion that \"Dobson is a low torque hand driven or operated device.\" Taha Dec. 3.", + "Appellant next contends that the Examiner must be relying on inherency or personal knowledge in finding that Dobson is configured to be driven by power means. Br. 9-10.", + "Appellant's own declaration about which end of Dobson receives torque (whether from a hand operated device or a power device) is not credible in light of Abel and Cheng. Br. 11-12 (citing Second Declaration of James W. Taylor, Jr., paras. 10-11 (filed May 18, 2012)).", + "Appellant argues that that Evans fails to recite or suggest at least *each inner flat wall of the plurality of inner flat walls being coupled with another inner flat wall of the plurality of inner flat walls by a one of the plurality of rounded inner corners, as recited in claim 19.\" Br. 14.", + "Next, Appellant asserts that Evans fails to recite or suggest at least, **wherein the plurality of inner flat walls and the plurality of rounded inner corners increase the ability of the plurality of hollow shaped socket insert adapters to receive the electrical, hydraulic, or pneumatic torque force via the socket driver and to transmit the torque force to the given nut or bolt to be driven,\" as recited by claim 19. Br. 14-15.", + "Specifically, Appellant argues that Evans does not discuss using arcuate recesses to increase the ability of the Evans wrench to receive high torque. Br. 15.", + "Appellant also alleges there is no motivation to modify Dobson in light of Evans as the Examiner found would have been obvious. Br. 15.", + "In response to the rejection of claim 19 over Evans, Dobson, and Abel, Appellant first argues that Dobson does not show a socket driver configured to be driven by a power tool. Br. 15.", + "Next, Appellant argues that Figure 5 of Evans does not show inserts with rounded inner corners (Br. 16) and that modifying Evans would defeat Evans' ability to use his wrench in difficult to reach places. Br. 17.", + "Appellant argues further that providing rounded corners is an adaptation for high torque applications and that Evans does not have a goal of high torque applications. Br. 17.", + "Appellant argues that claim 29 is patentable for the same reasons as argued in connection with claim 19. Br. 18.", + "Appellant argues that the dependent claims are patentable for the same reasons that the claims from which they depend are patentable.", + "Appellant argues that Rogers, cited in two additional grounds of rejection against claims 23 and 32, does not cure the alleged defects in the rejection of claims 19 and 29, respectively, from which these two claims depend. Br. 19.", + "Appellant makes the argument that claim 28 is patentable for the same reasons as claim 29 [sic] from which it depends. Br. 19.", + "Appellant does not contend that the Specification contains any disclosure relating to the strength of human beings or the torque force human beings can apply.", + "Instead Appellant contends that one of ordinary skill in the art would know the limits of human strength. Br. 21.", + "Importantly, Appellant argues as if the claim limitation read: \"greater than a torque force that can be applied manually by the strongest human being. \"", + "Appellant relies on the Declaration of Dr. Taha that ratchet box wrenches (such as that disclosed in Cronan) are designed for low or mid- range torque values, i.e. from 8 ft./lbs. to 432 ft./lbs. Br. 21 (citing Taha Dec., pp. 5-6).", + "Dr. Taha opines that **[hJuman arm/hand strength in hand tool usage will be of low torque limits. That is, roughly in the range of 200 ft[.]/lbs. and less. In most cases, hand wrenches are designed to operate with human force inputs of 100 ft[.]/Ibs[] or less.\" Taha Dec., p. 3, para. 3.a.", + "Appellant likens this case to Orthokinetics, Inc. V. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986), where the court found the challenged claim to be \"as accurate as the subject matter permits since automobiles are of different sizes.\"", + "Appellant first urges error in that claim 40 was not singled out for rejection. Br. 21.", + "Beyond the general assertion of patentability of claim 40 because its parent claim, claim 19, is asserted to be patentable, Appellant has not challenged the rejection of claim 40 over Dobson in view of Cronan and evidentiary reference Abel found in the Final Action, page 3.", + "Nor has appellant challenged the rejection of claim 40 under Dobson in view of Cronan, Evans, and evidentiary reference Abel found in the Final Action on page 6.", + "Appellant next urges error in rejecting claim 40 over Evans in view of Dobson because Evans does not suggest a torque force greater than can be applied manually by a human being. Br. 22.", + "Appellant challenges the rejection of claims 43 and 44, asserting Cronan's insert 34 (Cronan, Fig. 8) does not have rounded outer corners to match the socket driver (Cronan, Fig. 4). Br. 23.", + "Appellant argues, \"Even if both a socket driver and a socket insert had rounded inner corners, there is therefore nothing that would require the socket insert to have rounded outer corners to match the inner rounded corners of the socket driver.\" Br. 25.", + "The inventor's Declaration states that he believes that the outside of an insert need not be congruent with the driver in which it is received. Taylor Declaration filed May 18, 2012, para. 16.", + "Appellant also argues that the Examiner must be relying on inherency.", + "Appellant cites Figure 2 of Evans and asserts that the Examiner has not found that Evans teaches rounded outer corners. Br. 26.", + "Next, Appellant urges that the one sharp outer corner in Evans prevents the Examiner's proposed combination from meeting the limitation that \"each outer flat wall of the plurality [be] coupled with another outer flat wall of the plurality of outer flat walls by a given one of the plurality of rounded outer corners.\" Br. 26 (citing Br. 34-35 (Claims App.)).", + "Appellant next argues that there is no motivation to modify Dobson in view of Evans. Br. 27.", + "Appellant asserts there is no teaching in Evans that \"'s arcuate recesses \"are designed for high torque applications.\" Br. 27.", + "Appellant next argues that because Evans does not state that its arcuate recess are designed for high torque applications, the functional description of the plurality of outer flat walls and plurality of outer rounded corners to *increase the ability \u00b7 \u00b7 to receive \u00b7 \u00b7 \u00b7 torque force\" would not be met by the proposed modification of Dobson in view of Cronan and Evans. Br. 27 (quoting Br. 34 (claim 35, Claims App.); claim 44 is similar).", + "Appellant further relies on his own declaration and that of Dr. Taha. Br. 27.", + "Appellant first argues this rejection should be reversed because Evans does not teach *each outer flat wall of the plurality [of outer flat walls] being coupled with another outer flat wall of the plurality of outer flat walls by a given one of the plurality of rounded outer corners.\" Br. 28.", + "Appellant next argues that Evans modified in view of Dobson fails to show **rounded outer corners configured to increase the ability of the plurality of hollow-shaped socket insert adapters to receive \u00b7 . torque force'. , . because Evans is not directed at achieving high torque.\" Br. 28.", + "No new argument is offered to support this conclusion, and the Examiner found that \"the insert of the combination applied also [would] have rounded outer corners which would also meet the narrative functional language of increase the ability to receive and transfer the force.\" Ans. 18.", + "Appellant next argues that there is no motivation to modify Evans in view of Dobson because the arcuate recesses in Evans are intended for *reverse slippage of the wrench head,\" citing Evans 3:62-65. Br. 28.", + "Appellant contends that the inserts of Evans are unsuitable for high torque work, and therefore that the combination of Evans and Dobson does not render claims 43 and 44 obvious. Br. 28.", + "Finally, Appellant complains the Examiner has not explained how the modification of Evans inserts \"to rounded outer corners that are configured for high type torque work would still be consistent with Evans design goals of [sic] \"allow slippage of the wrench head 14.\" Br. 29 (citing Evans 3:63- 65)." + ], + "examiner_findings": [ + "Claim 40 stands rejected under 35 U.S.C. 8 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as his invention.", + "Claims 19-23, 25-32, 34-38, 40, 43, and 44 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Dobson, Cronan, and Abel.", + "Claims 19-23, 25-32, 34-38, 40, 43 and 44 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over Dobson, Cronan, Abel, and Evans.", + "Claims 23 and 32 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Dobson, Cronan, Abel, Evans, and Rogers.", + "Claims 19-23, 25-32, 34-38, 40, 43, and 44 stand rejected under 35 U.S.C. 9 103(a) as being unpatentable over Evans, Dobson, and Abel.", + "Claims 23 and 32 stand rejected under 35 U.S.C. 6 103(a) as being unpatentable over Evans, Dobson, Abel, and Rogers.", + "Claim 28 stands rejected under 35 U.S.C. S 103(a) as being unpatentable over Evans, Dobson, Abel, and Cronan.", + "The Examiner found that Dobson meets most of the limitations of claim 19 (Final Act. 3; Ans. 3), reproducing Dobson's Figure 3 showing the socket end of Dobson's 's tool 10 with nut 16 inside so as to be driven by tool 10. Id.", + "This means that the hexagonal shank, the left portion as viewed in Figure 2, is the end through which torque is provided to tool 10 in order to turn nut 16.", + "As the Examiner noted, the left end of tool 10 shown in Figure 2 of Dobson is identical to the corresponding end of the tool shown in Abel. Final Act. 5.", + "As further support for the Examiner's finding, Figures 1-3 of Cheng show a similar chuck of a power tool engaged with an identical hexagonal shank. Final Act. 12.", + "However, contrary to the Appellant's contention, the Examiner relies on two evidentiary references, Abel and Cheng, which show and describe a hexagonal shank with an annular recess identical to Dobson's and cooperation of such a shank with a quick release chuck in a power tool or hand tool driver. Final Act. 5, 10.", + "The Examiner found that Dobson, when viewed in conjunction with Abel and Cheng, shows a socket driver *configured to receive and to be rotatively driven by a torque force from at least one of electrical, hydraulic or pneumatic means\" as required by claim 19.", + "The Examiner found that Dobson discloses rounded inner corners for relieving stress (and thus increasing the transmissible torque) (see, e.g., Dobson, col. 1, 11. 28-37), and the only relied-on teaching from Evans is to provide nested inserts with rounded corners to match the socket driver. Final Act. 4; Ans. 14.", + "The Examiner responds that \"providing rounded corners does no[t] eliminate the gripping teeth 78, only the corners would be rounded to relieve stress but the apex of flat walls would still define teeth.\" Ans. 15.", + "In response, the Examiner finds that \"the tool of Evens [sic], whether or not intended for high torque[,] would be improved by Dobson in preventing marring the work piece, which may occur with soft work pieces (made of brass) even in low torque transfer.\" \" Ans. 15-16.", + "The Examiner rejects this claim under 35 U.S.C. 8 112, second paragraph, because *[t]he torque that can be applied by human being is not defined or clearly described in the specification as originally filed to set a closed boundary to what defines or encompasses said torque force of said electric, hydraulic or pneumatic means and since different human beings can apply different torque forces.\" Final Act. 2.", + "The Examiner replies that claim 40 was included in the numerous rejections of claim 19, from which it depends. Ans. 18.", + "Dobson was relied upon for teaching a *nut setter that is capable of being driven by an electric, hydraulic or pneumatic means.\" Final Act. 8.", + "This finding is without limitation as to the applied torque and therefore includes electric, hydraulic, or pneumatic instruments that are able to apply torque greater or less than a given human being may be able to do. Final Act. 18.", + "The Examiner found that Cronan shows an insert in Figure 8 that has rounded outside corners. Answer 3-4, and 19.", + "The Examiner found it obvious to modify Dobson in light of Cronan to provide Dobson's 's insert with Cronan's 's rounded inside corners in order to protect workpieces (such as hex head 16 (Dobson, Fig. 3)) from stress. Answer 3-4, 19.", + "The Examiner responds that the embodiment of Figure 3 in Evans shows all outer corners to be rounded. Answer 19.", + "The Examiner finds that Dobson discloses rounded inner corners \"to reduce stress.\" Ans. 19." + ], + "ptab_opinion": [ + "We address the issues presented on appeal in the order in which they appear in Appellant's Brief.", + "1. Whether claim 19 is patentable over Dobson in view of Cronan and evidentiary reference Abel", + "We find that the Examiner's determination that Dobson's tool is configured to receive and be rotatively driven by a torque force from at least one of electrical, hydraulic, or pneumatic means is supported by a preponderance of the evidence.", + "For the reasons that follow, the evidence submitted by Appellant does not persuade us otherwise.", + "Dr. Taha's declaration is not convincing.", + "Dr. Taha does not explain how he came to that conclusion or what structural features, if any, support his conclusion.", + "Dr. Taha identifies no structural feature which would prevent the tool of Dobson from being \"configured to receive and to be rotatively driven by a torque force from at least one of electrical, hydraulic, or pneumatic means\" as required by claim 19. Br. 29 (Claims App.).", + "Nor does Dr. Taha address the limitation in claim 19 that the claimed socket driver is configured to be driven by *a torque force.\"", + "\" Claim 19 does not include a limitation that the torque force be greater than a specified torque force.", + "Indeed, claim 19 does not specify how much torque the socket driver is configured to receive, and one of ordinary skill in the art would recognize that electrical, hydraulic, and pneumatic tools could provide a range of torques from a little torque to a large torque.", + "The declaration of Steven Self is not persuasive at least because it is not directed to any particular language in claim 19.", + "In particular, Mr. Self identifies no structural feature which would prevent the tool of Dobson from being \"configured to receive and to be rotatively driven by a torque force from at least one of electrical, hydraulic, or pneumatic means\" as required by claim 19. Br. 29 (Claims App.).", + "Nor does Mr. Self address the limitation in claim 19 that the claimed socket driver is configured to be driven by \"a torque force.\"", + "The declarations of Mr. Self and Dr. Taha do not persuade us that Dobson's tool 10 is not \"configured to receive and to be rotatively driven by a torque force from at least one of electrical, hydraulic, or pneumatic means\" as required by claim 19.", + "The Examiner found Appellant's opinion \"erroneous\" (Final Act. 12), and we agree.", + "Indeed, Appellant admits later in his brief that the end of Dobson's tool having central bore 14 receives hex head 16. Br. 25:3-4 (arguing that **Fig(ure] 3 of Dobson \u25a0 \u25a0 \u00b7 shows hex head 16 \u00b7 \u00b7 clearly \u00b7 . \u00b7 disposed within central bore 14\").", + "Therefore Dobson's 's hexagonal shank must be the part that receives torque, and the central bore is the part that engages the work piece.", + "Accordingly, we find that the socket of Dobson (the right hand portion shown in Figure 2) engages the work piece (fastener hex heads), and the hexagonal shank (the left hand portion shown in Figure 2) is engaged by the tool which causes the socket to rotate.", + "In light of these findings by the Examiner, with which we agree, and the explicit teachings of the cited references, we do not agree with Appellant's characterization that the Examiner is taking official notice or relying on personal knowledge. Cf. Br. 13.", + "Appellant has not persuaded us this finding was in error.", + "Therefore, we sustain the rejection of claim 19 as unpatentable over Dobson, Cronan, and evidentiary reference Abel.", + "2. Whether Claim 19 is patentable over Dobson in view of Cronan and Evans and evidentiary reference Abel", + "This argument is not persuasive because the Examiner relied on Dobson for teaching rounded corners (Final Act. 6) and Evans for teaching socket inserts nested within each other with corners corresponding to that of the socket. Id.", + "Appellant's argument thus does not address the findings of the Examiner that formed the basis of the rejection.", + "In addition, claim 19 does not require that all inner flat walls be coupled with another flat wall by a rounded corner.", + "Rather, claim 19 requires only a plurality of flat walls (two or more), each of which is coupled with another by one of a plurality of rounded corners, and Evans shows two flat walls coupled to each other by a rounded corner at least in Figures 1 and 2.", + "This argument does not address the combination found by the Examiner to render claim 19 obvious.", + "Appellant's 's argument fails to address the Examiner's combination and so does not persuade us the Examiner erred.", + "There is no argument in the Brief supporting this allegation, and we do not address it.", + "See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential) (\"lif an appellant fails to present arguments on a particular issue \u00b7 \u00b7 the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection\").", + "Accordingly, we sustain the rejection of claim 19 as unpatentable over Dobson, Cronan, Abel, and Evans.", + "3. Whether Claim 19 is patentable over Evans in view of Dobson and evidentiary reference Abel", + "We have considered this argument above and find it not persuasive.", + "In view of the Examiner's Answer, we are not persuaded that providing rounded corners to relieve stress would defeat the function or advantages of Evans' tool.", + "Moreover, claim 19 merely recites that the walls and rounded inner corners increase the torque transmitting ability of the tool set, and does not require any particular level of torque.", + "Appellant's declaration that the inserts of Evans are not for high torque applications is not persuasive because there is not claim limitation that defines or requires a high level of torque.", + "Accordingly, we are not persuaded that the Examiner erred in rejecting claim 19 as obvious over Evans in view of Dobson and Abel.", + "Therefore, we sustain the rejection of claim 19 as unpatentable over Evans, Dobson, and Abel.", + "4. Whether claim 29 is patentable for same reasons as claim 19", + "We have not been persuaded of any error in the rejection of claim 19, and likewise find none in the rejection of claim 29 based on the arguments presented in connection with claim 19.", + "In particular, we note that claim 29, like claim 19, does not recite any claim limitation that defines or requires a high level of torque.", + "In view of the foregoing, we sustain each of the rejections under 35 U.S.C. S 103(a) of independent claim 29.", + "5. Whether dependent claims 20-23, 25-28, 30-32, 34-38, 40, and 43-44 are patentable at least because of dependencyfrom from one of claims 19 or 29", + "As we find no error in Examiner's rejection of claims 19 and 29 (the only independent claims), we likewise find no error in this basis for rejecting the dependent claims.", + "Accordingly, we sustain each of the rejections under 35 U.S.C. 8 103(a) of dependent claims 20-23, 25-28, 30-32, and 34-38.", + "We further address below additional arguments directed to the separate patentability of dependent claims 40, 43, and 44.", + "As we find no error in the rejection of claims 19 and 29, we do not find the argument that claims 23 and 32 are patentable persuasive.", + "Therefore, we sustain the two additional grounds of rejection under 35 U.S.C. $ 103(a) of dependent claims 23 and 32 based on Dobson, Cronan, Abel, Evans, and Rogers and separately based on Evans, Dobson, Abel, and Rogers.", + "Whether Appellant meant that claim 28 depends from 29 (which it does not) or from claim 19 (which it does), we have been shown no error in the rejection of claim 28 for the same reasons we found no error in the rejection of the claim from which it depends.", + "Therefore, we sustain the rejection of claim 28 as unpatentable over Evans, Dobson, Abel, and Cronan.", + "6. Whether claim 40 is indefinite", + "Instead, the limitation is: *greater than a torque force that can be applied manually by a human being\", a point made by the Examiner. Final Act. 2, (citing Br. 34 (Claims App.) (emphasis added)); see also Ans. 17.", + "Appellant's argument is thus not commensurate in scope with the claim and so is not persuasive.", + "Here, Appellant cannot meet the Orthokinetics test, because his own declarations assert that the upper limit of human strength in a hand tool application is less than 200 ft./lbs. Br. 21.", + "Thus, the subject matter admitted of more precise claiming, but such claims are not pending in this appeal.", + "For these reasons, Appellant has not demonstrated error in the rejection of claim 40 as being indefinite and we sustain the rejection of claim 40 under 35 U.S.C. 8 112, second paragraph.", + "7. Whether claim 40 is independently patentable over Dobson in view of Cronan and/or Evans and evidentiary reference Abel", + "We are not persuaded of Examiner error given the explicit reference to claim 40 in the Final Action in at least six different places. Final Act. 2, 3, 5. 6, 7. and 9.", + "For the reasons discussed above, we have found no error in the Examiner's rejection of claim 19 in view of these references and for the same reasons find no error in the rejection of claim 40 over these references, and we sustain the rejections of claim 40 under 35 U.S.C. 8 103(a) as unpatentable over Dobson, Cronan, and Abel and over Dobson, Cronan, Evans, and Abel.", + "8. Whether claim 40 is independently patentable over Evans in view of Dobson and evidentiary reference Abel", + "Regardless of the breath of claim 40, we find no error because Evans was not relied upon for such a teaching.", + "Accordingly, the alleged failure of Evans to disclose a tool configured to receive and be rotatively driven by a torque force greater than a torque force that can be applied manually by a human being does not address the Examiner's rejection of claim 40 which is based on finding the Dobson teaches a tool configured to be driven either by hand or by power means.", + "Accordingly, we sustain the rejection of claim 40 under 35 U.S.C. 6 103(a) as unpatentable over Evans, Dobson, and Abel.", + "9. Whether claims 43 and 44 are patentable over Dobson in view of Cronan and evidentiary reference Abel", + "This argument does not address the Examiner's rejection.", + "This declaration is not persuasive because it does not address the Examiner's finding that it would be obvious \"to modify the invention of Dobson et al. with the plurality of insert adapters as taught by Cronan [and] \u00b7 \u25a0 \u00b7 to modify the combination of Dobson et al. and Cronan with inserts having rounded inner corners as taught by Dobson to reduce stress and provide a context surface with an enhanced mechanical advantage.\" Ans. 4.", + "We find no such reliance.", + "Because Cronan shows an insert with rounded outer corners to match the driver and Dobson teaches rounding the inner corners to reduce stress, we are not persuaded of error.", + "In view of the foregoing, we sustain the rejection of claims 43 and 44 as unpatentable over Dobson, Cronan, and Abel.", + "10. Whether claims 43 and 44 are patentable over Dobson in view of Cronan and evidentiary reference Abel in further view of Evans", + "Because we agree with the Examiner's finding concerning Evans' Figure 3, we are not persuaded the Examiner erred.", + "This argument is not persuasive because claims 43 and 44 do not require all flat walls to be coupled by rounded outer corners.", + "So long as two or more flat walls are joined by rounded outer corners, this claim limitation is met.", + "That Evans may have provided curved inserts for a different purpose does not undermine the Examiner's combination.", + "The Supreme Court, in KSR Int 7 Co. V. Teleflex Inc., 550 U.S. 398 (2007), rejected the rigid requirement of a teaching or suggestion or motivation to combine known elements in order to show obviousness.", + "KSR, 550 U.S. at 415.", + "The Court noted that an obviousness analysis \"need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\" \" Id. at 418.", + "Moreover, the Court instructs us that **familiar items may have obvious uses beyond their primary purposes.\" Id. at 420.", + "For over a half century, the Court has held that a *patent for a combination which only unites old elements with no change in their respective functions \u00b7 \u00b7 \u00b7 obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. Great Atlantic & Pacific Tea Co. V. Supermarket Equipment Corp., 340 U.S. 147, 152- 153 (1950).", + "This is a principal reason for declining to allow patents for what is obvious.", + "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 415-16.", + "Thus, Appellant's argument is unconvincing.", + "Reducing stress in the driver and driven components would allow more torque to be transmitted between them without deforming either, as would be readily apparent to one of ordinary skill in the art.", + "Accordingly, we are not persuaded the Examiner erred.", + "The reliance on these declarations is misplaced.", + "The Appellant's second declaration (filed May 18, 2012) addresses the Evans reference, but not the combination proposed by the Examiner, Therefore it is not persuasive.", + "Dr. Taha's declaration provides no explanation for his conclusion that there is no reason to modify Dobson with the claimed inserts and says nothing about Evans", + "Dr. Taha's assertion that rounded corners are a high torque modification undermines Appellant's arguments about Evans because Evans shows rounded inside and outside corners.", + "If rounded corners are in fact a high-torque adaptation as Dr. Taha states (Taha Dec. ' 3a.) , then Evans teaches the claimed structure as shown in Evans's Figure 3.", + "Because the structure of Evans when combined with Dobson and Cronan as the Examiner found obvious, would achieve the claimed function, we are not persuaded that the Examiner erred.", + "For these reasons we are not persuaded by Dr. Taha's unsupported conclusion, and we sustain the rejection of claims 43 and 44 as unpatentable over Dobson, Cronan, Abel, and Evans.", + "11. Whether claims 43 and 44 are patentable over Evans in view of Dobson and evidentiary reference Abel", + "We have already addressed Appellant's effort to read *each of the plurality of []walls\" as \"all the walls, *, and find it not persuasive. Br. 26.", + "Moreover, we have already found, above, that claim 19 and claim 29 are not limited to any particular torque.", + "Accordingly, on the record presented we are not persuaded of Examiner error.", + "We have already addressed the issue of motivation to combine prior art teachings as illuminated by the KSR decision.", + "We refer back to that discussion and find no error in the Examiner's modification of Evans in view of Dobson.", + "As we found above, the claims are not limited to any particular torque, and therefore we find this argument not persuasive.", + "We have reviewed all the evidence, and we find the combination relied on by the Examiner compliant with the requirements of KSR.", + "\"It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.\" In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).", + "The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).", + "Appellant has not persuaded us of error, and we sustain the rejection of claims 43 and 44 as unpatentable over Evans, Dobson, and Abel." + ] +} \ No newline at end of file diff --git a/opinion_split/2014008346_DECISION.json b/opinion_split/2014008346_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..37cf11d81fef574fb7d30937ff15172263138ab1 --- /dev/null +++ b/opinion_split/2014008346_DECISION.json @@ -0,0 +1,28 @@ +{ + "appellant_arguments": [ + "According to Appellant, \"Chatley retrieves data in response to download requests to balance loading geographically.\"", + "App. Br. 5." + ], + "examiner_findings": [ + "REJECTIONS Claims 1-3, 5-12, and 14-18 stand rejected under 35 U.S.C. 6 103(a) as being unpatentable over Gladwin et al. (US 2007/0079082 A1; published Apr. 5, 2007) (\"Gladwin\") in view of Chatley (US 2009/0144422 A1; published June 4, 2009).", + "Claims 4 and 13 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Gladwin, Chatley, and Serqey (US 2006/0152761 Al; published July 13, 2006).", + "ANALYSIS The Examiner finds the combination of Gladwin and Chatley teaches the claim I limitations.", + "In particular, the Examiner finds Gladwin teaches data slices stored in dispersed storage locations and relies on Chatley for the disputed limitation: [DJetermining a plurality of dispersed storage units for storing the plurality of data slices, by determining a corresponding geographical location associated with each of the plurality of dispersed storage units, and selecting each of the plurality of dispersed storage units based on the corresponding geographical location, so that the plurality of data slices corresponding to the data block are not stored in a single geographical location (emphasis added).", + "The Examiner additionally finds Chatley s load balancing includes storing the requested files in geographic locations.", + "The Examiner further finds rationale to combine Gladwin and Chatley for the benefit of storing, accessing, and manipulating data in a data communications network while balancing loads on a plurality of geographically distributed storage nodes as taught by Chatley.", + "The Examiner finds Gladwin teaches slices of data stored in dispersed storage units and relies on Chatley for the different geographic locations associated with the dispersed storage units." + ], + "ptab_opinion": [ + "We are not persuaded by Appellant's argument Chately does not teach the disputed limitation because Chatley is related to retrieval of information in response to a request.", + "Instead, we agree with the Examiner's findings because, while Chately relates to retrieval of information, that information is stored information and is stored in geographic locations.", + "We are not persuaded by Appellant s argument Chatley teaches away from the claimed invention because \"Chatley stores complete copies of each file to be downloaded in each geographical location - the direct opposite of the feature described in Claim 1.\"", + "Final Act. 6-7; Ans. 3-4, We agree with the Examiner the storing of complete data copies, rather than slices of data, is simply an alternative and Appellant presents no persuasive evidence that would discourage one of ordinary skill in the art to follow Chatley s teaching of different geographic locations, discussed above.", + "In view of the above, we are not persuaded by Appellant s arguments and, instead, agree with the Examiner s findings.", + "Appellant s arguments assert an unreasonably narrow teaching of the cited references and Appellant s argue the references individually whereas the rejection is based on the combination of the references.", + "The Examiner s findings are reasonable because the skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" since the skilled artisan is \"a person of ordinary creativity, not an automaton.", + "On this record, Appellant does not present sufficient evidence that the combination of the cited references was \"uniquely challenging or difficult for one of ordinary skill in the art\" or *represented an unobvious step over the prior art.\"", + "Nor have Appellant provided objective evidence of secondary considerations, which our reviewing court guides \"operates as a beneficial check on hindsight.\"", + "In view of the above, we sustain the rejection of claim 1, and independent claim 10 as it recites a similar limitation and is not argued separately.", + "Therefore, we also sustain the rejection of these claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2014008426_DECISION.json b/opinion_split/2014008426_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9b05bde0bfb026a65dee09dab082099cb63049b3 --- /dev/null +++ b/opinion_split/2014008426_DECISION.json @@ -0,0 +1,104 @@ +{ + "appellant_arguments": [ + "Appellants contend that *under the conditions in Britton et al. such corrosion would not be expected to be a problem.\" (Reply Br. 2; see App. Br. 8 (*HCI gas is not corrosive at the temperatures used in [Britton et al]\" citing the Gilbeau Declaration 10 in support).)", + "\"It is not disputed that the solvent used in Britton et al is in contact with water which forms by reaction of glycerol with HCI, which is included in aqueous HCI or which is distilled off.", + "\u25a0 \u25a0 \u25a0 Such disclosure by no means suggests that a water-HCI mixture exists in the vessel, given Britton et al's disclosure that the water of reaction is removed substantially as formed. (App. Br. 11.)", + "In other words, Appellants contend that because the reaction temperatures in Britton are such that corrosiveness of HCI gas is not an issue and water is removed from the reaction chamber, one would not look to other references for finding vessels that resist corrosion (see App. Br. 9).", + "Appellants point to the Gilbeau Declaration as evidencing that not all the reaction vessels disclosed in Steen would be considered resistant to aqueous hydrogen chloride.", + "Appellants assert that this undermines the Office's position that any one of the reaction vessels in Steen would be suitable reaction vessel in Britton (App. Br. 9; see Gilbeau Dec. 9 8 (some metals *surprisingly do not in fact resist a reaction medium made of organic compounds and chlorinating agent contradict the statement that *all of the known corrosion resistant materials would be expected to be suitable for the reaction of Britton' and show that unique and surprising properties are provided by enameled steel\").", + "Specifically, the \"results of resistance tests showing that several alloys and metals which show low corrosion rates in boiling - 1-1.5 % HC1 aqueous solution (Monel 400, a Ni-Cu alloy; Hastelloy C 276, a Ni-Cr-Mo alloy; Alloy 33, a Fe-Cr-Ni-Mo alloy; Titanium grade 2, unalloyed titanium; Titanium grade 26, a Ti-Ru alloy and Duplex SAF 2507, a Fe-Cr-Ni-Mo alloy).\" (Gilbeau Dec. I 8.)", + "Appellants contend because Britton's 's \"process continuously removes water from the reaction zone would lead one of ordinary skill in the art to avoid adding the extra water of associated with aqueous HCI\" into the reaction chamber (App. Br. 12).", + "Appellants contend that Britton \"neither discloses or suggests relating a residence time to a ratio of the volume of liquid medium in the reactor to the flow rate by volume of reactants\" (App. Br. 13).", + "Appellants contend that Britton **neither discloses or suggests relating a residence time to a ratio of the volume of liquid medium in the reactor to the flow rate by volume of glycerol, let alone the residence time of this claim\" (App. Br. 13).", + "Appellants contend that Britton `*neither disclosure nor suggestion of a particular reaction time associated with a batch process, let alone the presently-recited reaction time of from 1 h to 10 h\" (App. Br. 13)." + ], + "examiner_findings": [ + "FF6. The Examiner finds that Britton \"doles] not disclose any details of the vessel used to carry out their reaction.\" \" (Final Act. 6.)", + "The Examiner finds that Britton discloses \"a process for preparing glycerol dichlorohydrin (dichloropropanol) comprising reacting glycerol with hydrogen chloride (chlorinating agent)\" (Final Act. 5; Ans. 2; FFI- FF4.)", + "The Examiner recognizes that \"Britton et al. differ from the claimed invention in that Britton et al. doles] not disclose any details of the vessel used to carry out their reaction.", + "However, since Britton et al. use hydrogen chloride/hydrochloric acid in their reaction the skilled artisan would be motivated to use a vessel that is resistant to corrosive materials\" (Final Act. 6; FF1-FF4).", + "The Examiner concludes that because \"hydrogen chloride/hydrochloric acid is known to be corrosivel, the skilled artisan would have been motivated to use corrosive resistant materials in order to avoid contamination of the desired product\" (Final Act. 6).", + "The Examiner further articulated that because hydrochloric acid is a known corrosive **t]he skilled artisan would have been motivated to use corrosive resistant materials in order to avoid contamination of the desired product\" (Ans. 4).", + "The Examiner further reasoned that one of ordinary skill in the art would have been motivated to look to reactor vessels that are corrosion resistant because one of the byproducts of Britton's 's reaction is the production of hydrochloric acid (see Ans. 4).", + "As explained by the Examiner, if water is not present in the reaction mixture of Britton then why does Britton teach employing solvents that are able to withstand hydrolysis during the reaction and distilling steps.", + "\u00b7 \u00b7 \u00b7 This disclosure implies that water is expected to be present during the reaction and distillation steps.", + "In fact, Britton teaches that water forms in the reaction mixture.", + "\u00b7 \u00b7 The presence of this water along with hydrogen chloride [gas] forms hydrochloric acid, which is present in the reaction vessel prior to being distilled out portionally.", + "Thus, the vessel walls of Britton are subject to hydrochloric acid exposure. (Ans. 8.)", + "The Examiner explains that \"the materials used in the comparisons of Gilbeau are not known to be materials which are as resistant to hydrochloric acid as those disclosed by Steen and Smidt.\" (Ans. 12).", + "The Examiner notes that based on what is known about hydrochloric acid \"the results shown by Gilbeau are not unexpected\" (id. at 15).", + "As explained by the Examiner, \"Britton places not [sic] limits on the water content \u00b7 \u00b7 \u00b7 and 4% or higher reads upon the amounts disclosed in the examples of Britton\" (Ans. 15.)", + "As explained by the Examiner, *in example 1 Britton discloses the hydrogen chloride (a reactant) is continuously added for approximately 35 hours (flow rate) at the end of which time no more water (a liquid medium) is distilled from the reaction mixture\" (Ans. 16).", + "As explained by the Examiner, **Example 4 [of Britton] conducts a digestion for 3 hours, so there is a suggestion that the batch reaction took at least 3 hours\" (Ans. 16)." + ], + "ptab_opinion": [ + "Claims 1 and 8-20 are on appeal and can be found in the Claims Appendix of the Appeal Brief.", + "Claim 1 is representative of the claims on appeal, and reads as follows: 1. A process for producing dichloropropanol, wherein glycerol is reacted with at least one chlorinating agent in a reactor made of or coated with enameled steel, the chlorinating agent comprises substantially anhydrous hydrogen chloride or is an aqueous solution ofhydrogen chloride with a hydrogen chloride content higher than or equal to 4 % by weight, and a carboxylic acid, a carboxylic acid anhydride, a carboxylic acid chloride, a carboxylic acid salt or a carboxylic acid ester is present in the reaction as a catalyst. (App. Br. Claims Appendix)", + "Appellants seek review of the Examiner's rejection of claims 1 and 8-20 under 35 U.S.C. 8 103(a) as unpatentable over Britton2 in view of Steen3 and Smidt, and further in view of C. F. Boehringer, Griesheim-Elektron, 6 Solvay, Jakobson, and Wang.' 9", + "The issue is: Does the preponderance of evidence of record support the Examiner's conclusion that the combination of references renders obvious the use of \"a reactor made of or coated with enameled steel\" in the production of dichloropropanol as claimed?", + "We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art as set out in the Answer mailed July 17, 2014 and Final Action mailed Jan. 14, 2014.", + "For emphasis only we highlight the following:", + "FFI. Britton teaches that it was known to react glycerol with hydrogen chloride in the presence of a suitable catalyst such as acetic acid to form glycerol dichlorohydrin and two molecules of water, the known processes either allow the water of reaction to accumulate, favoring equilibrium conditions long before complete reaction can be obtained, or drive the water out of the reaction mixture by conducting the reaction at elevated temperatures, i. e., approximately 1209 C. or higher. (Britton col. 1, 11. 4-13.)", + "FF2. Glycerol dichlorohydrin is also known as dichloropropanol (see Final Act. 5).", + "FF3. Britton teaches including *an inert, water immiscible organic solvent in which the dichlorohydrin product is soluble\" in the organic solvent mixture. (Britton col. 1, II. 30-35.)", + "FF4. Britton teaches that \"(i] carrying out the reaction, glycerol and the solvent are mixed together in a suitable reaction vessel, together with a catalyst such as formic or acetic acid, and hydrogen chloride reacted therewith at temperatures varying with the particular solvent employed, to produce glycerol dichlorohydrin and water.\" (Britton col. 1, II. 48-54.)", + "FF5. Britton teaches continuous distillation of the reaction mixture.", + "This distillate, hence forth termed the \"acid fraction\", on standing forms two layers, one comprising the organic solvent and the other the aqueous hydrochloric acid.", + "The organic solvent layer may be separated therefrom in any convenient manner and returned to the reaction zone, and serves as an extractant to, remove the greater portion of the dichlorohydrin product from the aqueous hydrochloric acid solution, which tends to dissolve the same. (Britton col. 2, 11. 15-24.)", + "FF7. Steen discloses a process for producing molybdenum trioxide in a reactor vessel using a hydrochloric gas reaction.", + "The process \"comprises the steps of contacting a solid bed of material containing molybdenum in an hexavalent oxidized form with a recycling gaseous stream consisting essentially of hydrogen chloride at a temperature between about 150% C. and 500 C.\" (Steen col. 9. II. 1-5.)", + "FF8. Steen discloses that many different types of reactors can be employed to carry out the reaction (see Steen col. 4, II. 2-14).", + "The reactor can be made of any materials resistant to gaseous hydrochloric acid and oxidation at the above stated temperatures; for example, nickel and nickel alloys, special steels, or various ceramic materials (bricks or quartz for example), ordinary enamelled steel may be used, or glasses which have a high softening point such as Vycor and Pyrex (trademarks). (Steen col. 4. II. 15-21),", + "FF9. Smidt discloses a process for the production of carbonyl compounds.", + "Smidt explains that the process can be carried out in all apparatus suited for the conversion of gases with solid catalysts such as for example, tube system or fluidized bed reactor.", + "Of course care must be taken that the parts of the apparatus which come into contact with the catalyst are corrosion resistant.", + "Suitable corrosion resistant materials, for example, are enamel, glass, porcelain, stone ware, synthetic resins, rubber, titanium, tantalum, Hastelloy and the like. (Smidt col. 4, 1. 73 to col. 5, 1. 6.)", + "\"If the claim extends to what is obvious, it is invalid under . 103.\" KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398, 419 (2007).", + "\"Where a skilled artisan merely pursues *known options' from *a finite number of identified, predictable solutions,' , the resulting invention is obvious under Section 103.\" In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421).", + "\"[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp.", + "If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense.", + "In that instance the fact that a combination was obvious to try might show that it was obvious under , 103.\" KSR, 550 U.S. at 421.", + "Britton discloses the production of glycerol dichlorohydrin (a.k.a. dichloropropanol) using a suitable reaction vessel (FF1-FF4).", + "Because Britton is silent with respect to the reaction vessel itself the Examiner reasonably turned to other references that also use hydrogen chloride gas in the reaction process (FF7-FF9).", + "Steen and Smidt each teach several suitable reaction vessels that can be used in chemical reactions utilizing hydrogen chloride gas in the process (FF8 & FF9).", + "A skilled artisan would have reasonably expected success in carrying out Britton's 's process in an enameled steel reaction vessel, a corrosion-resistant material, as disclosed in Steen or Smidt would.", + "Steen discloses that each of the disclosed reactors are made of materials resistant to gaseous hydrochloric acid (FF7 & FF8).", + "In other words, Steen discloses multiple materials that are suitable in carrying out reactions using hydrogen chloride gas, and any one of the reactors made with the materials disclosed in Steen would have been obvious to use in Britton's reaction.", + "Accordingly, we agree with the Examiner's position that the combination of references renders claim 1 obvious.", + "Selecting a suitable reaction vessel from the list of materials disclosed in Steen and Smidt would have been obvious because each of the materials is suitable to carry out a reaction requiring hydrogen chloride gas (FF8 & FF9).", + "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. V. Interchemical Corp., 325 U.S. 327 (1945).", + "Because any one of the materials disclosed in Steen and Smidt is taught as suitable for hydrochloric gas processing this renders each of the vessels equally obvious for use in the Britton's 's process and thereby sufficiently supports a finding of obviousness.", + "Furthermore, as the list in Steen and Smidt is small, the ordinary artisan would have readily recognized enameled steel as one of the suitable materials for use in a reaction vessel that is exposed to hydrogen chloride gas in the reaction process.", + "We have reviewed Appellants' contention that the Examiner erred in rejecting the claims as obvious.", + "We are not persuaded and adopt the Examiner's s findings of fact and reasoning regarding the scope and content of the prior art as set out in the Answer and Final Office Action, and agree that claim 1 would have been obvious over the combination of Britton, Steen, and Smidt in addition to the other listed references.", + "We address Appellants' arguments below.", + "We are not persuaded.", + "As recognized by both Appellants and the Examiner, Britton does not disclose any particularities with respect to the reaction vessel, stating simply that any suitable reaction vessel would suffice (FF4 & FF6; see App. Br. 4 (\"Britton et al discloses using *a suitable reaction vessel***).", + "Because there are no details with respect to the reaction vessel, it would have been reasonable for an ordinary artisan to consult other references that similarly disclose reaction procedures using hydrogen chloride gas, as the Examiner has done here (FF7 & FF8).", + "We are also not persuaded by Appellants' contention that there is no suggestion that water-HCI mixture exists in the reaction vessel (see App. Br. 11).", + "Britton explains that the distillate, in other words the product that is removed from the reaction chamber, contains both aqueous hydrochloric acid and organic solvent (FF5).", + "This disclosure in Britton provides sufficient evidence to support the Examiner's position that hydrochloric acid is present in the reaction chamber at least for some period of time even ifit is periodically or continuously removed because it would be expected that some water is always present as more dichloropropanol is formed during the reaction process.", + "We recognize, but are not persuaded by, the resistance testing as shown in the Gilbeau Declaration.", + "We agree with the Examiner's position that *aqueous hydrochloric acid attacks most metals and that the rate of reaction depends on acid concentration\" (Ans. 12; see Kirth-Othermer-2, 18 (*[m]ost metals react with aqueous HCI. \u00b7 . \u00b7 Tantalum and zirconium exhibit the highest corrosion resistance to HCI\").", + "The art also recognizes that ceramic and glass materials as being resistant to hydrochloric acid as evidenced by Kirk- Othemer-2.", + "\"Glass and ceramic-coated equipment is widely used for handling hydrochloric acid.", + "The glass lining is normally 0.5-1.0mm (20-40 mil) thick and can be applied to various base metals\" (Kirth-Othermer-2, 19).", + "Even if some of the suggested reactor materials disclosed in Steen and Smidt are not resistant to hydrochloric acid under the conditions tested in the Gilbeau Declaration or under the conditions used in Britton's 's reaction, some of materials disclosed in Steen are in fact resistant, such as the enameled steel vessel, as well as the glass and ceramic vessels taught by Steen and Smidt (FF8 & FF9).", + "0 'Farrell states that \"[o]bviousness does not require absolute predictability of success.", + "\u00b7 \u00b7 \u00b7 all that is required is a reasonable expectation of success.\" \" In re 0 O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).", + "Here, the Examiner has sufficiently articulated a reason why in the absence of any disclosure about the reaction vessel in Britton, one of ordinary skill in the art would have looked to other references such as Steen and Smidt to find materials that are suitable for carrying out reactions with hydrogen chloride gas and a skilled artisan would have reasonably expected that selecting enameled steel, a corrosion-resistant material, for use in Britton would have been successful (see Ans. 2-4).", + "Whether or not some of the materials disclosed in Steen and Smidt are indeed upon further testing found not to be as resistant to degradation by hydrogen chloride as initially thought and disclosed in the references, such observation does not detract from the reasonableness of the Examiner's obviousness rejection as articulated in the rejection.", + "On balance, the totality of the evidence presented favors a finding of obviousness.", + "Furthermore, just because some of the materials tested in the Gilbeau Declaration are somewhat reactive with hydrochloric acid does not mean that reactors made of those materials are not suitable for carrying out Britton's reaction with a reasonable expectation of producing dichloropropanol.", + "It is important to note that the claims do not recite any limitation with respect to reactivity to the reactor material.", + "There is insufficient evidence on this record to establish that the use of an enameled steel reactor in producing dichloropropanol provides some unexpected benefit other than resistance to hydrochloric acid which was already known and recognized in the references.", + "Accordingly, for the reasons discussed, we are not persuaded that the Examiner failed to make out a prima facie case of obviousness.", + "We are also not persuaded that the evidence advanced by Appellants shows any unexpected results that outweighs the evidence of prima facie obviousness.", + "We affirm the rejection of claim 1 under 35 U.S.C. 8 103(a) as being obvious.", + "As claims 8, 10-14, and 18-20 have not been argued separately, they fall together with claim 1. 37 C.F.R. 8 41.37(c)(1)(iv).", + "We are not persuaded.", + "Additionally, we note that as long as the hydrogen chloride gas, glycerol and catalyst are present, more water would accumulate as the reaction proceeds.", + "We are not persuaded.", + "We are not persuaded." + ] +} \ No newline at end of file diff --git a/opinion_split/2014008625_DECISION.json b/opinion_split/2014008625_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8824bbee00f07affbc70d0b95952c3459248df36 --- /dev/null +++ b/opinion_split/2014008625_DECISION.json @@ -0,0 +1,44 @@ +{ + "appellant_arguments": [ + "First, Appellant argues that Faccin does not teach or suggest a T-SN sending to a GW a modify bearer request indicating that the T-SN does not support dual IP protocol addressing, as recited in independent claim 1. App. Br. 7-12, Reply Br. 2-5.", + "In particular, Appellant argues although Faccin's \"general embodiment\" discloses a serving node sending a modify bearer request to a gateway, the modify bearer request does not indicate that the serving node does not support dual IP addressing. App. Br. 7-8, Reply Br. 2.", + "Further, Appellant argues Faccin's \"connectivity embodiment\" disclosing a serving node sending to a UE a bearer request indicating that only single version bearers are supported by the network does not cure the noted deficiencies of Faccin because the bearer request is not a modify bearer request, which is sent to a gateway. App. Br. 8-9, Reply Br. 2-4 (citing Faccin 11 504-509),", + "Additionally, Appellant submits the Examiner has not articulated, and there is no reason, why the ordinarily skilled artisan would combine the two cited embodiments of Faccin. Id.", + "Second, Appellant argues the combination of Faccin and Xi does not teach or suggest the gateway sending to the T-SN a modify bearer response including information about the new PDN bearer type, as recited in claim 1. App. Br. 10-12, Reply Br. 4-5,", + "In particular, Appellant argues Xi discloses a first gateway sending a bearer request response to a second gateway, as 3 KSR Int 7 Co. V. Teleflex, Inc., 550 U.S. 398, 416 (2007).", + "opposed to the first gateway sending a bearer response to a serving node, the modify bearer response including information regarding the new PDN type. App. Br. 11 (citing Xi 11 69, 71, 74)." + ], + "examiner_findings": [ + "Rejections on Appeal The Examiner rejects the claims on appeal as follows: Claims 1. 2, 6, 9. and 12-14 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over the combination of Faccin and Xi.", + "Claims 3-5, 7, 8, 10, 11, and 15 stand rejected under 35 U.S.C. 8 103 (a) as being unpatentable over the combination of Faccin, Xi, and Fox.", + "Claims 16-18 stand rejected under 35 U.S.C. 8 103 (a) as being unpatentable over Faccin.", + "Claim 19 stands rejected under 35 U.S.C. 8 103 (a) as being unpatentable over the combination of Faccin and Olsson.", + "The Examiner's rationale for the proposed combination is that *one of ordinary skill in the art would have been motivated to perform such a modification given the benefit of allowing the UE to connect to IPv4v6, IPv4, and/or IPv6 systems.\" \" Ans. 4-5." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. $ 134(a) from the Examiner's Final Rejection of claims 1-19. App. Br. 1.", + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We affirm.", + "Appellant 's Invention Appellant's invention is directed to a method and system for improving session continuity in an infrastructure network by allowing a user equipment (UE) having a dual address bearer (IPv4v6) to be handed over to a serving node that does not support dual addressing. Spec. I 13.", + "In particular, upon receiving a request area update (RAU) from the UE (10), a target serving node (TSN) modifies the request, and sends to a gateway (GW) a modified bearer request indicating that the TSN (11) does not support dual internet protocol (IP). Id. at I 29, Fig. 2.", + "In return, the GW (13) sends to the TSN (11) a modified bearer response containing information about the new PDN bearer type to thereby allow the communication session to proceed. Id.", + "Representative Claim Independent claim 1 is representative, and reads as follows: 1.", + "A method for signaling in an infrastructure network comprising a Source Serving Node (S-SN), a Target Serving Node (T-SN), and a first gateway (GW), wherein at least one Packet Data Network (PDN) bearer is established for a User Equipment (UE), comprising: sending, by the T-SN, a modify bearer request to the first GW, said bearer request indicating that the T-SN does not support dual Internet Protocol (IP) addressing for a PDN bearer being handed over from the S-SN to the T-SN; on the basis of the received modify bearer request, initiating, by the first GW, a modify bearer procedure where a new PDN bearer type for single IP addressing is defined; and sending, by the first GW, a modify bearer response to the T-SN, said bearer response comprising information about the new PDN bearer type, and said bearer response being separate and distinct from the bearer request.", + "Prior Art Relied Upon Olsson et al. US 2010/0111060 A1 May 06, 2010 Xi et al. US 2010/0202351 A1 Aug. 12, 2010 Faccin et al. US 201 2011/0171953 A1 July 14, 2011 Fox et al. US 2012/0202491 A1 Aug. 09, 2012", + "ANALYSIS We consider Appellant's arguments seriatim as they are presented in the Appeal Brief, pages 7-16, and the Reply Brief, pages 2-10.2", + "These arguments are not persuasive.", + "At the outset, we note Appellant's arguments are tantamount to an attack against the cited embodiments of Faccin individually, and not an argument against the combination proffered by the Examiner.", + "As correctly noted by the Examiner, and undisputed by Appellant, Faccin's general embodiment teaches a serving node sending a bearer request to a gateway. Ans. 16.", + "Likewise, it is undisputed that Faccin's connectivity embodiment teaches a bearer request indicating that only a single IP version is supported by the network. Id.", + "Because the cited embodiments of Faccin disclose known prior art elements that perform their ordinary functions to predictably result in a serving node transmitting to a gateway a bearer request indicating that only a single IP version is supported (i.e., not both) by the network, we therefore agree with the Examiner that the proposed combination is proper, and it is supported by sufficient rational underpinning.' Id. at 16-17.", + "This argument is not persuasive.", + "As correctly noted by the Examiner, Faccin discloses a gateway sending a modify bearer response to a serving node. Ans. 3 (citing Faccin, Fig. 8B, item 8-24).", + "Further, Xi discloses a gateway sending to another gateway bearer response including the address of the sending gateway. Ans. 5 (citing Xi I 74), 17.", + "We agree with the Examiner that the combination of Faccin and Xi would predictably result in a gateway sending to a serving node a bearer response including the address of the sending gateway.", + "As correctly noted by the Examiner, Appellant merely contends that Xi's disclosure of including the gateway address in the bearer response does not teach information about a new PDN bearer type. Ans. 17.", + "However, Appellant has not attempted to explain how the claimed information is distinguished from the disclosed address information in the bearer response.", + "Therefore, on the record before us, Appellant has not shown error in the Examiner's finding that Xi's disclosure of including in the bearer response address information of a gateway teaches a new PDN bearer type included in the modify bearer response.", + "Consequently, we affirm the Examiner's rejection of claim 1.", + "Regarding the rejections of claims 2-19, because Appellant has either not presented separate patentability arguments or has reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claims 2-19 fall therewith. See 37 C.F.R. $ 41.37(c)(1)(iv) (2013)." + ] +} \ No newline at end of file diff --git a/opinion_split/2014008815_DECISION.json b/opinion_split/2014008815_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..def7f9c40fc9d346eabb4504a4f797560a8e58c2 --- /dev/null +++ b/opinion_split/2014008815_DECISION.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "Appellants' invention is directed to customer relationship management (CRM) systems that **enhance the quality of service provided by service providers as well as improve customer experience and satisfaction\" (Spec. I 1).", + "1. A method comprising: storing, by a processor, information associating each multimedia item, of a plurality of multimedia items, with one or more respective personality characteristics of a plurality of personality characteristics; selecting, by the processor, one or more multimedia items of the plurality of multimedia items; receiving, by the processor and from a customer, respective ratings of the selected one or more multimedia items; identifying, by the processor, a personality type for the customer based on: the one or more respective personality characteristics associated with each of the selected one or more multimedia items, and the respective ratings for the selected one or more multimedia items; and providing, by the processor, data identifying the personality type for display to the customer.", + "Appellants contend Ali is directed to receiving and determining personal preferences and not personality characteristics for a user \"regarding particular programs and then using these preferences to predict the user's opinion of other programs\" (App. Br. 9-10).", + "Appellants then contend Wood discloses assessing users based on questions or scenarios associated with a personality test that can be provided via multimedia (App. Br. 11).", + "Appellants then conclude Wood does not disclose \"receiving a user's ratings of videos and identifying a personality type for the user based on the ratings and personality characteristics associated with the video,\" as required by claim 1 (App. Br. 14).", + "Thus, Appellants assert, Ali and Wood, alone or in combination, do not teach or suggest Appellants' claimed invention as Ali identifies a user's preferences and Wood identifies a user's s personality type (id.).", + "Further, Appellants contend the Examiner has not discussed how combining Ali and Wood would result in Appellants' invention (App. Br. 15).", + "With respect to claim 8, Appellants contend neither Ali nor Wood, alone or in combination, disclose selecting another multimedia item associated with a second personality characteristic (App. Br. 16-17).", + "Appellants assert Ali identifies and augments correlation scores for predicting a rating for an item which has no relevance to the claimed *selecting another multimedia item\" (App. Br. 17).", + "Further, Appellants argue Wood groups questions into separate scales of two letter possibilities to create 16 possible combinations, which does not disclose the selected \"other multimedia item is associated with a second personality characteristic\" (App. Br. 17-18).", + "With respect to independent claim 17, Appellants assert substantially the same arguments as those presented with respect to claim 1 (App. Br. 19- 20)." + ], + "examiner_findings": [ + "The Examiner rejected claims 1, 2, 4-6, 8 ,9, 12, 13, and 16-20 under 35 U.S.C. & 103(a) based upon the teachings of Ali (US 2002/0199194 Al; Dec. 26, 2002) and Wood (US 2002/0045154 A1; Apr. 18, 2002).", + "The Examiner rejected claims 3, 10, and 11 under 35 U.S.C. 9 103(a) based upon the teachings of Ali, Wood, and Gargi (US 6,918,132 B2; July 12, 2005).", + "The Examiner rejected claims 7, 14, and 15 under 35 U.S.C. $ 103(a) based upon the teachings of Ali, Wood, and Carmony (US 2008/0154899 AI; June 26, 2008).", + "We note, particularly, the Examiner relies on Ali for all of the claimed limitations, including the step of receiving, from a customer, ratings of selected multimedia items (Ans. 3; Ali 11 28, 31, 34, 90; see also 11 14, 80).", + "However, the Examiner finds Ali does not provide a personality type based on personality characteristics, but finds Wood discloses this feature (Ans. 3; Wood 11 43, 45, 75, 170, 285)." + ], + "ptab_opinion": [ + "We do not agree.", + "We agree with and adopt the Examiner's findings as our own (Final Act. 3-22; Advisory Act. 2-4; Ans. 2-6).", + "Thus, Appellants are attacking the references separately and not as a combination.", + "Further, we find no error in the Examiner's findings.", + "We also note the Examiner has provided persuasive argument and reasoning for the combination in the Final Action and Answer (Final Act. 5; Ans. 3-4).", + "We are not persuaded the Examiner's reading of the claims on the cited combination of references is overly broad, unreasonable, or inconsistent with Appellants' Specification.", + "Thus, we find the weight of the evidence supports the Examiner's ultimate legal conclusion of obviousness, and sustain the Examiner's rejection of independent claims 1 and 9, which Appellants argue are patentable for the same reasons, and dependent claims 2, 4-6, 12, 13, and 16 argued therewith (App. Br. 16).", + "We agree at least with respect to Wood and the Examiner's proposed combination of Ali and Wood.", + "The portions of Wood the Examiner finds disclose these features (Final Act. 7-8; Ans. 4-5), and the Examiner's proposed combination are not persuasive.", + "That is none of the cited portions of Ali and Wood teach or suggest selecting another multimedia item \"associated with a second personality characteristic\" as claimed (id.).", + "Thus, we do not sustain the Examiner's s rejection of dependent claim 8.", + "We, therefore, sustain the Examiner': 's rejection of claim 17." + ] +} \ No newline at end of file diff --git a/opinion_split/2014008912_DECISION.json b/opinion_split/2014008912_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9e832b20efdb0a9dd8941cdcb79f651e593ca261 --- /dev/null +++ b/opinion_split/2014008912_DECISION.json @@ -0,0 +1,74 @@ +{ + "appellant_arguments": [ + "Claims 1-4, 6-10, 13-15, 39, and 41 Appellants contend that \"Beatty and Bruder fail to describe determining the position of the catheter using an algorithm that minimizes differences between the measured electrical signals and the predicted signals\" (Br. 14).", + "More particularly, Appellants argue that \"Bruder determines the location of electrical heart activity and not the location of a catheter\" (id. at 15).", + "Appellants contend that \"Bruder's s algorithm does not minimize differences between (1) the electrical signals measured in response to the current flow and (2) the predicted signals determined from the spatial information, as recited in claim 1.", + "Rather, Bruder's algorithm compares signals from electrical heart activity with heart activities originating at known positions\" (Br. 15).", + "Appellants contend that *one of ordinary skill in the art would not have been motivated to combine Bruder with Beatty.", + "As such, the Appellant argues that this rejection is a hindsight reconstruction\" (Br. 15).", + "Claims 16, 17, 42, and 44-50 Appellants contend that \"the examiner's s office action does not discuss a 'transformation,' *a first reference frame,' or 'a second reference frame' at all\" (Br. 16).", + "Appellants argue that \"Bruder's algorithm is not a transformation based on the measured electrical signals, the spatial information about the regions of different conductivity in the distribution of materials, and the positions in the second reference frame for the multiple locations at which the electrical signals are measured\" (Br. 17).", + "Claims 18-21, 23-27, 29, 30, 33-36, and 40 Appellants similarly argue that \"Bruder determines the location of electrical heart activity and not the location of a catheter\" (Br. 18), \"Bruder's algorithm compares signals from electrical heart activity with heart activities originating at known positions\" (id.), and *one of ordinary skill in the art would not have been motivated to combine Bruder with Beatty. As such, the Appellant argues that this rejection is a hindsight reconstruction\" (id. at 19).", + "Claims 37 and 38 Appellants similarly argue that \"the examiner's office action does not discuss a transformation, *a first reference frame,' or *a second reference frame' at all\" (id. at 20), and that \"Bruder's algorithm compares signals from electrical heart activity with heart activities originating at known positions\" (id.).", + "Claims 51 and 52 Appellants similarly argue that \"the examiner's office action does not discuss a 'transformation, *a first reference frame,' or *a second reference frame' at all\" (id. at 21), and that \"Bruder's algorithm compares signals from electrical heart activity with heart activities originating at known positions\" (id. at 22),", + "B. 35 U.S.C. 5 103(a) over Beatty, Bruder, and Fuimaono Appellants contend that claims 5, 22, and 43 are *allowable at least for the reasons discussed in\" claims 1, 18, and 16, respectively (id. at 22).", + "C. 35 U.S.C. 8 103(a) over Beatty, Bruder, and Ben-Haim Appellants contend that claims 11, 12, 31, 31, 32, 38, and 48 are *allowable at least for the reasons discussed in claim I\" (id.).", + "D. 35 U.S.C. 8 103(a) over Beatty, Bruder, and Guck Appellants contend that \"[c]laim 28 is allowable at least for the reasons discussed in claim [18]* (id. at 23)." + ], + "examiner_findings": [ + "The Issues A. The Examiner rejected claims 1-4, 6-10, 13-21, 23-27, 29, 30, 33- 37, 39-42, 44-47, and 49-52 under 35 U.S.C. 6 103(a) as obvious over Beatty2 and Bruder* (Ans. 2-4).", + "B. The Examiner rejected claims 5, 22, and 43 under 35 U.S.C. a 103(a) as obvious over Beatty, Bruder, and Fuimaono\" (Ans. 4-5).", + "C. The Examiner rejected claims 11, 12, 31, 32, 38, and 48 under 35 U.S.C. & 103(a) as obvious over Beatty, Bruder, and Ben-Haims (Ans. 5).", + "D. The Examiner rejected claim 28 under 35 U.S.C. 6 103(a) as obvious over Beatty, Bruder, and Guck6 (Ans. 6).", + "A. 35 U.S.C. 5 103(a) over Beatty and Bruder The Examiner finds that Beatty teaches a method comprising the steps of securing multiple sets of current injecting electrodes to an organ (electrodes within the heart are secured to the heart), (see passive and active electrodes 44, fig. 2) causing current to flow among the multiple sets of current injecting electrodes to generate a field in the organ in response to current flow. measuring the field at each of one or more additional electrodes (see fig. 2, see col. 3, lines 53-58) determining expected signal measurements of the field using a pre-determined model of the field and determining a position of each of the one or more additional electrodes in the organ based on the measurements made by the additional electrodes and the determined expected signal measurements of the field (col. 5, line 66 col. 6, lines 62). (Ans. 3.)", + "The Examiner acknowledges that Beatty fails to teach *an algorithm that minimizes differences\" but finds that Bruder teaches \"a data reduction correlation algorithm which inherently provides for an optimize minimization of differences between the compared values\" (Ans. 3-4).", + "The Examiner concludes that it would have been obvious to have modified Beatty such that the determination of the position of the catheter will be based on comparing the measured signals with stored signals using an algorithm that minimizes differences between both values in order to provide fast and accurate localization and monitoring ofheart activity (Bruder, col. 2, lines 13-16). (Id. at 4.)", + "As the Examiner explains, ItO should be noted, that an **algorithm** in the subject of computer science, is merely a step-by-step procedure calculation.", + "In this case **minimization algorithm\" as claimed, is a mathematical step-by-step procedure that minimizes the difference between two values iteratively.", + "See the examples provides by the appellant in his own specification paragraphs 0142, which provides for known minimization algorithms in computer science such as the Levenberg-Marquardt approach [and] the Gauss-Newton approach.", + "The algorithm provided by the secondary reference of Bruder is an algorithm which provides minimization between two values using a matrix and solving for [EJigen vectors.", + "The Examiner maintains that such algorithm can be applied to the values obtained by Beatty and solve for the variable as it would the [sic] known minimization algorithms provided by the appellant.", + "It would be a mere modification of using a mathematical procedure for another that results in the same output. (Ans. 8.)", + "As the Examiner explains, Beatty discloses obtaining known spatial information ofthe heart (see col. 6, lines 1-4).", + "Then, a[n] electrode is inserted which emits current in order to measure an electrical signals through different locations (see col. 6, lines 6-15).", + "Later such spatial information and correlated with the measurement locations in order to obtained [sic] the location of the catheter within the heart. (see col. 7, lines 26-28, see also, the sub-theme **Movable Electrode Location Process\" section starting at col. 110.", + "Although, Beatty does not specifically discloses the term \"transformation\" the information in Beatty is correlated in order to obtain a location of the electrodes and therefore catheter, which is considered a transformation of reference frames. (Ans. 9; see also FF 4-12.)" + ], + "ptab_opinion": [ + "The issue with respect to this rejection is: Does the evidence of record support the Examiner's s conclusion that Beatty and Bruder render the claims prima facie obvious?", + "We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 2-10; FF 1-16) and agree that the claims are obvious over Beatty and Bruder.", + "We address Appellants' arguments below.", + "We are not persuaded.", + "Beatty teaches that *[a] modulated electrical field delivered to an electrode on this therapy catheter can be used to show the location of the therapy catheter within the heart, \" \"the therapy catheter location can be displayed along with the intrinsic or provoked electrical physiology map, \" \"a location current may be delivered to a therapy catheter within the same chamber. The potential sensed from this current may be processed to determine the relative or absolute location of the therapy catheter within the chamber\" (FF 5), that *[wlith the distance from each electrode 84 to both excitation electrodes 88 computed from the measured voltage and the known location of the electrodes 84 relative to each other, the locations of each electrode 84 can be determined\" (FF 8), and that \"[the positions of the active electrodes 52 and the passive electrodes 48 relative to the heart 16 chamber walls are also determined at this point\" (FF 10).", + "Accordingly, Appellants' contention fails to account for Beatty's 's contributions to the combination of Beatty and Bruder (see Ans. 7) specifically teaching determining the location of the catheter.", + "In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Therefore, we agree with the Examiner that Beatty discloses a therapy catheter system can be introduced into the heart chamber. \u25a0 \u00b7 [T]he therapy catheter location can be displayed along with the intrinsic or provoked electrical activity of the heart to show the relative position of the therapy catheter tip to the electrical activity originating within the heart itself. (This is *determining the position of the catheter\" as claimed)[.] (Ans. 7 (emphasis removed).)", + "We do not find this argument persuasive.", + "As the Examiner notes, Beatty uses minimizing equations including the Levenberg-Marquardt approach (see Ans. 8; FF 12), where the Specification itself teaches that the Levenberg-Marquardt is a minimizing equation technique (FF 3).", + "Further, Bruder compares vectors and values in models so that surface potentials are calculated (FF 13-16), and Beatty uses a step-wise process such that the location vector is solved (FF 5, 12).", + "Therefore, because Bruder uses vector analysis to determine locations, the position is determined from predicted signals based on the function of the relative position.", + "Accordingly, we agree with the Examiner that Bruder discloses such algorithm in which two signals are compared and the algorithm minimizes the differences between both of them to determine the exact value, in this case, as applied to the claims, the exact location of a specific and desired signal (see algorithm col. 4, lines 19-35, the first signal measured by the electrodes and later stored, see col. 3, lines 39-57, and the second signal previously acquired, (*predicted\", as claimed, see col. 3, line[]17)D]. (Ans. 7-8.)", + "We find Appellants' arguments, lacking supporting evidence, insufficient to rebut the express teaching of Beatty and Bruder.", + "See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (\"[A]ttorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness\").", + "We are not persuaded.", + "As discussed above, Bruder compares vectors and values in models so that surface potentials are calculated and Beatty uses a step-wise process such that the location vector is solved.", + "While we are fully aware that hindsight bias often plagues determinations of obviousness, Graham V. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that *if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. \" KSR, 550 U.S. at 417.", + "In this case, we agree with the Examiner that the combined teachings of Beatty and Bruder regarding using *such algorithm as disclosed by Bruder\" would yield predictable results of *modifyling] the location procedure as disclosed by Beatty to determine the position of the catheter\" and **provid(ing] fast and accurate method of localizing a specific position based on an acquired signal\" (Ans. 8).", + "Further, Appellants provide no sufficient evidence of secondary considerations such as unexpected results that overcomes the prima facie case of obviousness based on the algorithm or mathematical step-by-step procedure of Bruder.", + "In re Geisler, 116 F.3d at 1470.", + "We are not persuaded.", + "Therefore, Beatty necessarily teaches ``transformation, \"a first reference frame,\" and \"a second reference frame\" in order to determine the registration and location of the catheter.", + "Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.", + "In re Best, 562 F.2d 1252, 1255 (CCPA 1977).", + "Appellants have provided no sufficient evidence or argument showing that the Examiner's s interpretation is incorrect.", + "We do not find this argument persuasive.", + "Appellants' contention fails to account for Beatty's contributions to the combination of Beatty and Bruder (see Ans. 9).", + "See In re Keller, 642 F.2d at 425; In re Merck & Co., 800 F.2d at 1097.", + "We are not persuaded for the reasons discussed above.", + "We are not persuaded for the reasons discussed above.", + "We are not persuaded for the reasons discussed above.", + "Having affirmed the obviousness rejection of claims 1, 18, and 16 over Beatty and Bruder for the reasons given above, we therefore affirm the rejection of claims 5, 22, and 43.", + "Having affirmed the obviousness rejection of claim I over Beatty and Bruder for the reasons given above, we therefore affirm the rejection of claims 11, 12, 31, 31, 32, 38, and 48.", + "Having affirmed the obviousness rejection of claim 18 over Beatty and Bruder for the reasons given above, we therefore affirm the rejection of claim 28." + ] +} \ No newline at end of file diff --git a/opinion_split/2014009052_DECISION.json b/opinion_split/2014009052_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..33cf7f1ef6444a0cdd84003f2e6883169a7f18f7 --- /dev/null +++ b/opinion_split/2014009052_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "The Appellants' claims require a roll for supporting a recording medium which is wrapped around the roll and has a side face perpendicular to the roll's rotational axis, and a displacement sensing unit which is positioned at a predetermined position at the side face and senses displacement of the recording medium per unit time at the predetermined position." + ], + "examiner_findings": [ + "The Examiner interprets the Appellants' claim term *side face\" as the face receiving printing (Final Act. 2-3, 6).", + "In apparent contradiction to the Examiner's claim interpretation, the Examiner states that \"Kamada et al. fails to teach the rotational axis of the roll is perpendicular to the side face\" (Final Act. 3) and asserts that substituting Chaussade's sensors (11) for Kamada's 's variable resistor (502)/arm (501) would have been obvious to one of ordinary skill in the art to \"reduce the mechanical elements of Kamada while providing an accurate determination of a radius of the roll\" (Final Act. 3)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. $ 134(a) from the Examiner's rejection of claims 1-8.", + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "The Invention The Appellants claim a near-end-of-roll detecting apparatus and a printer comprising the apparatus.", + "Claim 1 is illustrative: 1. A near-end of roll detecting apparatus for a roll of recording medium, comprising: a recording medium support unit that supports an outer circumferential surface of the recording medium that is biased downward in a vertical direction by the weight of the recording medium, such that a position of a center of the recording medium moves on a straight-line trace, associated with consumption of the recording medium; a displacement sensing unit that is provided at a position facing a predetermined position at a side face of the recording medium and senses displacement per unit time at the predetermined position at the side face of the recording medium when the recording medium is rotated by being pulled out of the recording medium support unit, associated with the consumption of the recording medium, wherein the rotational axis of the roll is perpendicular to the side face; and a calculating unit that calculates based on the displacement sensed by the displacement sensing unit, a radius of the recording medium at the time the displacement sensing unit senses the displacement.", + "The References Kamada US 5,566,906 Oct. 22, 1996 Chaussade US 2007/0091159 A1 Apr. 26, 2007", + "The Rejections Claims 1-8 stand rejected under 35 U.S.C. 8 103 over Kamada in view of Chaussade.", + "OPINION We reverse the rejections.", + "Kamada discloses a paper decurling device comprising a decurling roller (103) which, while paper dispensed from a roll is being transported past it, bends the paper in the direction opposite to its curl direction, and a controller (1 10) which, by temporarily interrupting the decurling roller (103)'s rotation, straightens the paper (col. 4, II. 10-12, 56-63).", + "The device includes a variable resistor (502) associated with the fulcrum of an arm (501) which rests on the roll's 's upper surface such that the arm (501) changes in angular position as the roll's 's diameter decreases due to paper from the roll being consumed (col. 5, 11. 18-20; Fig. 5).", + "As the arm (501)'s angular position changes, the variable resistor (502)'s resistance changes and is sent to the controller (1 10) which, in matching relation to the roll's decreasing diameter, controls the timing, frequency and duration of the paper transport\" s disruption at the decurling roller (103) to provide the proper degree of decurling for that roll diameter (col. 5, II. 21-25, 45-53).", + "Chaussade discloses a device for printing on a strip of paper (100) dispensed from a roll (101) which is on a spool (102) and rests on two cylinders (6) (I 1; Fig. 1).", + "The device includes light ray-emitting sensors (11) which face the side of the roll (101) at different vertical positions along the roll (101)'s radius between the spool (102) and the cylinders (6) (11 6, 24; Fig. 1).", + "Each time the spool (102) reaches one of the sensors (11) as the spool (102) moves downward due to paper from the roll (101) being consumed, the light ray emitted by that sensor (11) passes through the spool (102) to a facing receiver (11 B) which, in response to the light ray, sends an electrical signal to a control member (10) which causes the paper strip (100)'s drive member (9) to operate at a higher speed CI 24-25).", + "**When the lowest sensor 11 detects the spool 102, the control member 10 causes the drive member 9 to run at its highest speed and also issues a warning signal, e.g., by means of an indicator lamp or an audible signal, warning that the roll 101 is coming to its end and will need to be changed\" (I 26).", + "In both Kamada's and Chaussade's devices the face receiving printing is parallel to the roll's rotational axis, not perpendicular to it as required by the Appellants' claims (Kamada, Fig. 5; Chaussade, Fig. 1).", + "Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention.", + "See KSR Int 7 Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007).", + "The Examiner does not specify what mechanical elements of Kamada the argued substitution would reduce.", + "The Examiner apparently is referring to Kamada's arm (501).", + "The Examiner, however, has not established that one of ordinary skill in the art would have considered Chaussade's sensors (11) which detect the roll (101)'s diameter at discrete positions for increasing the paper (100)'s drive member (9)'s speed (11 24-26) to be a suitable substitute for Kamada's variable resistor (502)/arm (501) which senses the varying roll diameter to enable the proper degree of decurling to be achieved at each roll diameter (col. 5, II. 18-25, 45-53),", + "Nor has the Examiner established that Chaussade's spaced apart sensors (1 1) provide the alleged accurate determination of the radius of the roll.", + "Thus, the Examiner has not established a prima facie case of obviousness of the Appellants' claimed invention." + ] +} \ No newline at end of file diff --git a/opinion_split/2014009358_DECISION.json b/opinion_split/2014009358_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7013324391af8c4ce1a79fbe66ae5c944642faf5 --- /dev/null +++ b/opinion_split/2014009358_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "Appellants contend \"Bar-El distinguishes between the functional keys and a root key.\" (Reply Br. 2).", + "Appellants argue Kroot of Kocher \"will never be transmitted in a data block\" because \"the two devices will negotiate Kroot using a public key exchange.\" (App. Br. 6).", + "Appellants further argue the root key described in Bar-El \"is assumed to pre-exist in all provisioned devices.\" (App. Br. 6, citing Bar-El I 32).", + "According to Appellants, \"lilf the root key is assumed to pre-exist in all provisioned devices, then the provisioning device has no reason to include the root key in a data block and does not do so.\" (Id.)", + "Therefore, Appellants argue **neither Kocher nor Bar-El allows for a provisioning device to send a data block with the root key.\" (App. Br. 6).", + "Therefore, according to Appellants, because the Examiner has identified Kocher's Kroot as equivalent to the first secret element It follows then, that the Examiner's argument, viewed properly, is that the root key of Kocher is transmitted as part of the data block.", + "Put another way, if the key Kroot is a selected one of the plurality of first secret elements or shared key, it necessarily follows that it was received as contents of the data block.", + "Accordingly, Appellant has articulated the only sound reasoning based on the arguments set forth by the Examiner: that the combination of Kocher and Bar-El must allow for a provisioning device to send a data block to a provisioned device, wherein the data block includes the root key. (Reply Br. 3).", + "Appellants further argue because \"Kroot is derived through the negotiation between the devices[.] Therefore, the addition of the provisioning in Bar-El to transmit Kroot to the decrypting device would be unnecessary and expose the communication to risk of breach.' \" (App. Br. 9).", + "Further, Appellants argue the Examiner's position to rely on the functional key provisioning of Bar-El *would require a complete reconfiguration of the operation of Kocher\" because the public key negotiation *is not simply a value that can be inserted into a data block and forwarded to the decrypting device.\" \" (App. Br. 9)." + ], + "examiner_findings": [ + "The Examiner identifies Kocher's Kroot (root key) as the claimed first secret element, but finds Kocher *does not explicitly state the first secret element is one of a plurality of first secret elements provisioned to the target device in the message.\" (Ans. 2; see also Final Act. 3-4, citing Kocher col. 6, II. 4-18).", + "Therefore, the Examiner relies on Bar-El, which *shows that multiple functional keys may be used to reveal further cryptographic material down the chain.\" \" (Ans. 3; see also Final Act. 4, citing Bar-El I 15).", + "The Examiner admits both Kocher and Bar-El utilize a root key to decrypt an initial portion of the received data, but \"the rejection does not purport to transfer a root key[.]\" (Ans. 3; see also Ans. 4).", + "Accordingly the Examiner finds: it would have been obvious to one of ordinary skill in the art at the time of the applicant's invention to modify the system of Kocher by adding the ability for receiving a data block comprising a plurality of first secret elements as provided by Bar-El (see paragraph 15, functional keys included in message to target device).", + "One of ordinary skill in the art would have recognized that key provisioning techniques require additional security against exposing the key material to untrusted users (see Bar-El, paragraph 8). (Final Act. 4; see also Ans. 3-6).", + "The Examiner finds provisioning functional keys is an alternative technique for supplying the device with additional keys to further accomplish cryptographic functionality. (Ans. 4)." + ], + "ptab_opinion": [ + "We are persuaded by Appellants' arguments.", + "Having considered the Examiner's findings, we find the Examiner has failed to sufficiently explain how the combination of Kocher and Bar-El teaches or suggests the disputed limitation.", + "Specifically, the Examiner contends the rejection does not purport to transfer a root key as part of the data block, which we find is inconsistent with the Examiner's reliance on Kocher's Kroot throughout the remainder of the claim for the \"first secret element\" limitation. (See Final Act. 3: Ans. 2).", + "As Appellants point out, and we agree, Bar-El distinguishes between a root key and a functional key.", + "Therefore, the Examiner's reliance on the functional keys of Bar-El to teach or suggest \"receiving . \u00b7 \u00b7 a data block comprising a plurality of first secret elements\" is inconsistent with the Examiner's reliance on Kocher's Kroot to teach or suggest the *first secret element\" throughout the remainder of the claim, particularly because the Examiner's modification to Kocher simply *add[s] the ability for receiving a data block comprising a plurality of first secret elements as provided by Bar- E1.\" (See Ans. 5).", + "In other words, we agree with Appellants that the Examiner's reliance on Kocher's Kroot throughout the claim for the \"first secret element\" necessarily requires that Kroot is received as part of the data block.", + "Consequently, we are constrained by the record before us to find the Examiner erred in finding the combination of Kocher and Bar-El teaches or suggests the disputed limitation.", + "Accordingly, we do not sustain the Examiner's rejection of independent claim 1, and independent claims 14 and 22, which recite substantially the same limitation.", + "For the same reasons, we do not sustain the Examiner's rejection of dependent claims 2-13, 15-21, and 23-29." + ] +} \ No newline at end of file diff --git a/opinion_split/2014009600_DECISION.json b/opinion_split/2014009600_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..caa441a6b5639d1d6d6ef89679921e571458cf9a --- /dev/null +++ b/opinion_split/2014009600_DECISION.json @@ -0,0 +1,47 @@ +{ + "appellant_arguments": [ + "Appellants present the following principal arguments: i. [T]he discussion in Ruping regarding indices and Get Get_element relates to an \"Aggregate\" container class, not an interface class. (See, e.g., Ruping at page 4).", + "Ruping discloses an *interface class\" that describes behavior for a group of objects, but clearly states that \"[blehaviour as specified by an interface class is completely implemented in a corresponding implementation class.\" (Ruping at page 3) (bold emphasis added).", + "In addition, Ruping does not appear to mention anything about a language integrated query, a query operator, or using any of the classes disclosed therein in any manner by a query operator. App. Br. 7; see also Reply Br. 2.", + "The Aggregate operator [in Box] is not part of an interface class that provides a different operator with indexed access to elements of an input array.", + "The cited references do not teach or suggest an interface class that provides a query operator with indexed access to elements of an input array, and that includes a method for obtaining a count value representing a total number of elements in the input array. App. Br. 8; see also Reply Br. 3.", + "Regarding claim 9, Appellants argue *[t]he Examiner has not identified any disclosure in the cited references regarding a select operator that performs a projection on each element in a lazy input array and returns a lazy array based on the projection.\" App. Br. 12; see also Reply Br. 4.", + "Regarding claim 10, Appellants argue *[t]he Examiner has not identified any disclosure in the cited references regarding a take operator configured to take a specified number of elements from a lazy input array and return a lazy array containing only the taken elements.\" App. Br. 12; see also Reply Br. 4-5.", + "Regarding claim 11, Appellants argue \"[t]he Examiner has not identified any disclosure in the cited references regarding a skip operator configured to skip a specified number of elements in a lazy input array and return a lazy array containing elements positioned after the skipped elements.\" App. Br. 13; see also Reply Br. 5.", + "Regarding claim 12, Appellants argue \"[t]he Examiner has not identified any disclosure in the cited references regarding a reverse operator configured to reverse positions of elements in a lazy input array and return a lazy array containing elements with the reversed positions.\" App. Br. 13; see also Reply Br. 6.", + "Regarding claim 13, Appellants argue \"[the Examiner has not identified any disclosure in the cited references regarding a concatenate operator configured to concatenate a lazy input array with a second input array and return a lazy array comprising a concatenation of the input arrays.\" App. Br. 14; see also Reply Br. 6-7.", + "Regarding claim 14, Appellants argue \"[t]he Examiner has not identified any disclosure in the cited references regarding an operator configured to combine a lazy input array with a second input array using a pairwise function and return a lazy array representing the combination.' App. Br. 14; see also Reply Br. 7." + ], + "examiner_findings": [ + "The Examiner finds the combination of Box, Ruping, and Owens teaches all limitations of claim 1. Final Act. 3-4, 6.", + "The Examiner finds Box (and Owens) teaches this limitation, except for indexed access, for which the Examiner relies on Ruping. Final Act. 3- 4.", + "The Examiner reasons \"(ilt would have been obvious to a person of ordinary skill in art at the time [the] invention was made to incorporate the teaching of Ruping into the method of Box to have indexed access in order to perform the searches in an optimal manner.\" \" Final Act. 4.", + "The Examiner finds Box (and Owens) teaches this limitation. Final Act. 3." + ], + "ptab_opinion": [ + "We see no error in the Examiner's findings.", + "Nor do we see any error in the Examiner's 's legal conclusion of obviousness.", + "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference: nor is it that the claimed invention must be expressly suggested in any one or all of the references.", + "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).", + "As a preliminary matter, we adopt as our own the Examiner's finding that Owens teaches a lazy array, and conclusion that it would have been obvious to incorporate Owens's teaching into Box and Ruping. Final Act. 6; see also Ans. 2-3,", + "We adopt the Examiner's findings as our own.", + "Thus, Box teaches the disputed limitation, except for specifically teaching indexed access.", + "Thus, Ruping teaches indexed access.", + "We adopt the Examiner's reasoning as our own.", + "Regarding Appellants' argument (i), to the extent Ruping describes a container class, we find the argument does not address the combined teachings of the references.", + "Ruping is only relied on for indexed access, and the disputed limitation is taught when Box is modified in light of Ruping. See Ans. 3-4,", + "We adopt the Examiner's findings as our own.", + "Regarding Appellants' argument (ii), to the extent Box's 's operator is not part of an interface class, we still find this argument does not show any error in the Examiner's findings.", + "In short, given Box already teaches operating on an array with a query operator using an interface class as discussed above, in light of Box's teaching (Box p. 15) of returning a count value representing the total number of characters in an array of characters, providing a second method in the interface class for obtaining a count value representing a total number of elements in the lazy input array would have been a predictable use of prior art elements according to their established functions - an obvious improvement.", + "As the U.S. Supreme Court has explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.", + "If a person of ordinary skill can implement a predictable variation, 9 103 likely bars its patentability.", + "For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.", + "Sakraida [v. Ag Pro, Inc., 425 U.S. 273 (1976)] and Anderson 's-Black Rock(, Inc. V. Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative--a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int'l 7 Co. V. Teleflex, Inc., 550 U.S. 398, 417 (2007).", + "We, therefore, sustain the Examiner's rejection of claim 1. as well as claims 6-8, 15, and 16, which are not separately argued with particularity.", + "We do not see any error in the Examiner's findings and conclusions with respect to dependent claim 9-14.", + "We adopt as our own the Examiner's finding and reasons set forth in the Final Action on pages 7-11 and the Answer on pages 6-9,", + "We, therefore, sustain the Examiner's rejection of claims 9-14.", + "We, therefore, sustain the Examiner's rejection of claim 17 for the same reasons discussed above with respect to claim 1.", + "We, therefore, sustain the Examiner's rejection of claim 20 for the same reasons discussed above with respect to claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2014009818_DECISION.json b/opinion_split/2014009818_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..11ef0062101b06495ebf1dc1402098e8cd607985 --- /dev/null +++ b/opinion_split/2014009818_DECISION.json @@ -0,0 +1,62 @@ +{ + "appellant_arguments": [ + "Appellants argue claims 2-7 and 10-20 as a group. App. Br. 3-10.", + "Appellants argue claim 21 separately. App. Br. 3, 11-12.", + "With respect to claim 12, Appellants do not dispute the Examiner's findings with respect to any of the cited references or the rationale for combining the teachings of Corrion and Kenet.", + "Rather, Appellants contend that Benty is non-analogous art (App. Br. 5-8) and, even if considered analogous art, *no sufficient motivation has been made of record - nor do appellants believe that such motivation could be made of record to modify the Corrion Kenet et al. body monitoring apparatus according to Benty['s] 's] teachings\" (id. at 9-10).", + "Appellants acknowledge that Benty qualifies as analogous art ifit is **reasonably pertinent' to the problem faced by appellants (inspecting moles in people in high risk groups more frequently than the typical frequency of visiting a doctor). \" Id. at 6.", + "Appellants, however, only repeatedly allege that Benty is not reasonably pertinent to the problem faced by Appellants without further meaningful explanation.", + "Appellants acknowledge that *Benty \u00b7 \u00b7 . show[s] that hair could be moved to different locations by blowing air toward it\" and *that was never a disputed point.\" App. Br. 7.", + "As noted above, Appellants additionally contend that the Examiner's rationale for combining Benty's teachings with those of Corrion and Kenet is deficient. App. Br. 9-10.", + "Specifically, Appellants contend that \"there is no case of a simple substitution \u00b7 \u00b7 \u00b7 because the examiner has not provided any evidence of an air blower ever having been known to be used to reposition hairs while tracking mole evolution (and appellants have never seen such evidence).\" Id. at 9.", + "Specifically, Appellants point to column 15, lines 28-33 and column 17, line 36 to column 18,2 line 2 of Kenet cited by the Examiner at page 5 of the Final Action. Id.", + "Appellants contend that \"[i]n order to justify an obviousness rejection of claim 21, the examiner would at least need to identify in the applied prior art the calibration fixture recited as an element of the claim.\" \" App. Br. 11.", + "Appellants, however, do not dispute the Examiner's finding for that limitation with respect to claim 12. See id. at 4-10.", + "Appellants acknowledge that Kenet's *item 244 is an illumination source and item 240 is a stand or robot arm,\" \" and conclude that \"[n]either an illumination source [n]or a stand/robot arm is a calibration fixture, so the rejection is not justified. Id. at 11.", + "Rather, Appellants simply summarize the discussion in the Specification related to the \"calibration fixture,\" noting that Appellants' specification clearly states that a calibration fixture is placed between the skin of the user and the face of the mobile phone.", + "The calibration fixture thus sets a fixed distance between the camera and the skin and also provides color calibration and a light source for angular illumination of a mole. (Paragraph [00168].)", + "Appellants' Fig. 20 shows a calibration fixture as element 1030, Fig. 21 shows a calibration fixture as element 1040, and Fig. 25 shows a calibration fixture as element 5100. Id. at 12.", + "After this summary, however, Appellants *acknowledge that claim 21 does not recite all features of a calibration fixture that the specification discloses.\" Id.", + "When explaining the relevance of the summary of the Specification, Appellants note that this \"at the very least strengthen[s] appellants' arguments that neither the illumination source nor a stand/robot arm of calibration fixture of Kenet et al. properly disclose [sic.] a 'calibration fixture' as recited in claim 21.\" Id.", + "Claim 8 depends from claim 12, and Appellants do not argue that claim separately. See App. Br. 10-11.", + "Appellants rely on the alleged error in the rejection of claim 12 for the patentability of claim 8. Id." + ], + "examiner_findings": [ + "Claims 2-7 and 10-21 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over Corrion (US 2007/0053561 A1, pub. Mar. 8, 2007), Kenet (US 5,016,173, iss. May 14, 1991), and Benty (4,198,558, iss. Apr. 15, 1980).", + "Claim 8 is rejected under 35 U.S.C. 8 103(a) as being unpatentable over Corrion, Kenet, Benty, and Roth (US 2005/0233341 A1, pub. Oct. 20, 2005).", + "The Examiner cites the combined teachings of Corrion and Kenet for the majority of claim limitations, but acknowledges that these references fail to teach the *air blower\" recited in claim 12. Final Act. 3-6.", + "The Examiner cites Benty as teaching *an air blower for moving hair of the body area between different locations by blowing air toward the hair and wherein the hair covers different segments of the body area while being positioned at different locations.\" Id. at 6.", + "The Examiner reasons that \"it would have been obvious \u00b7 \u00b7 \u00b7 to modify the Corrion - Kenet apparatus to include the hair' blowing apparatus, as taught by Benty, in order . \u00b7 \u00b7 to blow hair, in various directions, away from a mole or region of interest on the skin.\" Id.", + "\" The Examiner cites Kenet as teaching the calibration fixture. Final Act. 4-5, 9 (citing Kenet, Fig. 2B (items 240 and 244)." + ], + "ptab_opinion": [ + "Appellants seek our review under 35 U.S.C. S 134 of the Examiner's final decision rejecting claims 2-8 and 10-21.", + "We have jurisdiction under 35 U.S.C. . 6(b).", + "I Appellants do not identify a real party-in-interest.", + "CLAIMED SUBJECT MATTER Claim 12 is the sole independent claim, and is reproduced below.", + "Claims 2-8, 10, 11, and 13-21 depend from claim 12.", + "12. A mole monitoring system comprising: a calibration fixture comprising an illuminator that is operational to illuminate a skin area that comprises a mole; a digital camera configured to acquire at least one image of a body area that is comprised in the illuminated skin area and which comprises the mole and the skin area around the mole; a processor configured to analyze the at least one image of the mole and to determine values for parameters of the mole; and an air blower for moving hair of the body area between different locations by blowing air toward the hair; wherein the hair covers different segments of the body area while being positioned at different locations; wherein the digital camera is further configured to acquire multiple images of the body area while the hair is positioned in different locations due to the blowing of air; and wherein the processor is further configured to: receive the multiple images; extract information of pixels from the multiple images based on an amount of hair information included in the pixels; and generate a synthetic image of the body area, in which different pixels are extracted from different images of the multiple images.", + "We select claim 12 as representative.", + "Claims 2-7, 10, 11, and 13-20 stand or fall with claim 12. See 37 C.F.R. 41.37(c)(1)(iv) (2015).", + "We are not persuaded that Benty is non-analogous art.", + "According to their Specification, one problem faced by Appellants is abnormal mole formation being undetected between doctor visits. Spec. I 7.", + "A further related problem identified in the Specification is that hair obstructs the view of the mole to be inspected. See, e.g., id. I 42 (*hair of the body \u00b7 \u00b7 \u00b7 may interrupt with clear imaging thereof (e.g. by blocking a line of sight between camera 2200 and the skin of body area 3000 that lies under the hair)\").", + "Moving hair in a number of ways (e.g., comb, blower, etc.) is reasonably pertinent to inspecting moles by providing a clear view of those moles when those moles are normally obstructed by hair. See, e.g., Kenet, 15:31-33 (noting that hair may interfere with the skin analysis).", + "Accordingly, Appellants' contentions in connection with whether Benty is non-analogous art are unpersuasive.", + "This is not persuasive because the Examiner does not rely on a *simple substitution\" as the basis for the combination. See Final Act. 6 (\"it would have been obvious \u00b7 \u00b7 . to modify the Corrion - Kenet apparatus to include the hair blowing apparatus, as taught by Benty, in order \u00b7 \u00b7 . to blow hair, in various directions, away from a mole or region of interest on the skin. \").", + "Appellants' additional contention that \"the Corrion - Kenet et al. combination already has a way to detect and eliminate hair in images to generate a synthetic image of a body area\" and, therefore, *[a] hair blower would have been a superfluous accessory\" is also unpersuasive. App. Br. 9.", + "Rather than providing evidence counter to the proposed Rather than providing evidence counter to the proposed modification, we find that this teaching of Kenet supports the Examiner's proposed modification of adding a blower.", + "For example, the cited portions of Kenet teach, in order to analyze an area of the skin covered by hair, that hair should be removed in some manner.", + "That Kenet does so by manipulating an image, rather than the hair itself, does not suggest that further improvement would not be achieved by first manipulating the hair, itself, to the extent possible, before further manipulating the image.", + "Claim 21 depends from claim 12, and further recites that \"the digital camera and the processor are embedded in a mobile phone, and wherein the calibration fixture is an element distinct from the mobile phone.\"", + "The calibration fixture is first introduced in claim 12.", + "Appellants, however, never explain why those elements cannot properly be considered a **calibration fixture.\"", + "Appellants never expressly propose a construction of \"calibration fixture\" in connection with their discussion of the Specification.", + "Consistent with portions of the Specification cited by Appellants, however, a light source is part of the calibration fixture. See, e.g., Spec. I 168 (\"The [calibration] fixture \u00b7 \u00b7 . provides light source for angular illumination of the mole. \").", + "Furthermore, claim 12 explicitly recites that the **calibration fixture compris[es] an illuminator that is operational to illuminate a skin area that comprises a mole.\" \" ", + "Moreover, even if the **calibration fixture\" required a structure that established a fixed distance, as Appellants note is described in the example in paragraph 168 of the Specification, Appellants offer no argument, and do not even allege, that the stand/robot arm (item 240) of Kenet would not accomplish that function.", + "Accordingly, we are not apprised of Examiner error.", + "We are not apprised of error in the rejection of claim 8 for the reasons set forth above.", + "As we have supplemented the Examiner's s findings in connection with whether Benty qualifies as analogous art, we designate our affirmance as a new ground of rejection to ensure Appellants have a fair opportunity to respond. See Reply Br. 3 (\"Given how important it is in the justification of an argument that Benty is supposedly analogous art, and in view of appellant's [sic] explicit statement that the examiner never explains why someone would have looked in the hair dryer/styling art in the first place to solve appellants' problem, the examiner should have indicated on the record in the Examiner's Answer why he thought that someone would look in the hair dryer/styling art. \")." + ] +} \ No newline at end of file diff --git a/opinion_split/2014009970_DECISION.json b/opinion_split/2014009970_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..70f3012b7075b445735fb8e2f5e43910a5cb0b36 --- /dev/null +++ b/opinion_split/2014009970_DECISION.json @@ -0,0 +1,28 @@ +{ + "appellant_arguments": [ + "Appellants challenge the Examiner': s finding that Oberg discloses \"the at least one first valve and the at least one second valve [being] located [at the] wheel[s],\" as recited in independent claim 1. Appeal Br. 19-22; see also Final Act. 3.", + "Appellants argue that Oberg only shows the location of the valves in a block diagram and *[n]o aspect of a block diagram can be said to teach a location of valves, it simply shows them as a part of the functioning system.\" Id. at 20.", + "Appellants further argue that there is no textual support for the Examiner's finding that the valves are located at the wheels in Oberg. Id. at 22,", + "In reply, Appellants argue that the Examiner is ignoring the requirement that the valves be \"located at the wheel\" in finding that valve assemblies on a brake line are necessarily located at the wheel. Reply Br. 11-14.", + "Appellants further argue that, in Figure 1 of Oberg, \"a length of brake line is clearly shown separating the valve 6 from the brake cylinder and still further from the wheel d.\" Id. at 12." + ], + "examiner_findings": [ + "In the Answer, the Examiner reasons that Oberg discloses the claimed location of the valves because Oberg teaches that each of the valve arrangements is coupled to a brake line of a wheel or brake cylinder. Ans. 5, 6.", + "The Examiner also rejects independent claim 1 over Wachi or Frank, and Oberg." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We REVERSE.", + "Appellants have the better position.", + "Although the Specification does not provide an express definition for *located at the vehicle wheel,\" the Specification states that each valve assembly is located directly adjacent a braking chamber 5 of a wheel. See Spec. p. 4, II. 20-22 (stating *each wheel and its associated brake chamber 5 is provided with its own respective brake unit 20 attached thereto\") and p. 5, 11. 30-32 (stating \"the presence of the inlet and outlet valves directly adjacent the brake chamber 5, results in a system which enables very precise control\").", + "As to extrinsic evidence, the term \"at\" is *used as a function word to indicate presence or occurrence in, on, or near.\" See higc/www.nerian-wordetoreany.lon.com (last visited Aug. 28, 2016).", + "Considering the evidence as a whole, we construe the phrase \"the at least one first valve and at least one second valve are located at a vehicle wheel\" to mean that at least one first valve and at least one second valve are located in, on, or near the vehicle wheel.", + "Oberg discloses that each valve assembly 6 is located on a brake line for a respective wheel (see Oberg, col. 1, 11. 10-13, col. 3, 11. 8-14, and col. 4, 11. 10-17; Fig. 1), but is silent regarding the location of the valve assembly relative to each wheel.", + "As such, Oberg fails to teach a valve assembly 6 that is located in, on, or near the vehicle wheel, and thus, the Examiner's finding that Oberg teaches \"the at least one first valve and at least one second valve are located at a vehicle wheel\" is not supported by a preponderance of the evidence.", + "We do not agree with the Examiner that a valve assembly located generally on a brake line is necessarily located in, on, or near a vehicle wheel.", + "We therefore do not sustain the Examiner'. s rejection of independent claim 1, and claims 2-5, 7 and 8 depending therefrom.", + "Rejections II and III suffer from the same deficiency as the Examiner's s rejection based on Pannbacker and Oberg, namely, that the Examiner errs in finding that Oberg discloses a first valve member and second valve member located at a vehicle wheel.", + "The Examiner's reliance on Wachi or Frank does not cure this deficiency.", + "Therefore, we do not sustain the Examiner's rejections of claims 1 and 5-9 as unpatentable over Wachi and Oberg, and we do not sustain the Examiner's rejections of claims 1, 2, and 5-9 as unpatentable over Frank and Oberg." + ] +} \ No newline at end of file diff --git a/opinion_split/2014009984_DECISION.json b/opinion_split/2014009984_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..609d9d5fc53cff9297b2f6a39a5e75e51a68e741 --- /dev/null +++ b/opinion_split/2014009984_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "Appellant's invention relates to \"method and apparatus for transferring data packets between a first network and a second network. *, Spec. p. 1, 11. 6-7.", + "More specifically, the invention is directed to a particular node arrangement including at least two primary nodes that each use inter- node ports to connect to each other and each use second ports to connect to a secondary node coupled to the second network.", + "The second ports are arranged into respective link aggregation groups.", + "The method comprises the step of switching a packet to the second network using the respective second ports or to the other primary node using the inter-node port dependent on an identified service identifier associated with said packet. Abstract.", + "Claim I is illustrative of the claimed invention and reads as follows: 1. A method of transferring data packets between a first network and a second network using a node arrangement having at least two primary nodes connected to the second network, each primary node being connected to the first network using a respective first port and to a secondary node coupled to the second network using respective second ports arranged into respective link aggregation groups, the primary nodes connected by respective inter-node ports, the method comprising: determining a service identifier associated with a packet received at a said primary node from the first network; and switching the packet to the second network using the respective second ports or to the other primary node using the inter-node port dependent on a service identifier associated with said packet.", + "Appellants contend that Parry lacks the recited secondary node, respective second ports and inter-node ports of independent claims 1, 6, and 10. App. Br. 9-11.", + "Appellants explain that while the Examiner identified node 24a as a secondary node, the Examiner fails to explain how the primary node 22 is coupled to the secondary node in accordance with the recited limitations. App. Br. 9.", + "Further, If, indeed, the dotted line connections between nodes 24a and 28 constitute *internode ports\", then such \"inter-node ports\" do not fulfill the requirements of Appellant's claim language, since they do not connect the primary nodes (node 24a was specifically identified as a secondary node). App. Br. 11.", + "Additionally, Appellant contends that in Parry does not perform the recited step of **switching the packet to the second network using the respective second ports or to the other primary node using the inter-node port dependent on a service identifier associated with said packet\" because Parry does not include an inter-node port. App. Br. 11-12.", + "See also App. Br. 13 (\"It is clear 0 that the path which is taken by any given data packet is not determined based on the service identifier associated with the packet. \"); Reply Br. 5." + ], + "examiner_findings": [ + "The Examiner rejected claims 1, 6, 9, 10, and 12-14 under 35 U.S.C. I 102(e) as anticipated by Parry et al. (US 7,697,528 B2, pub. Apr. 13, 2010). Final Act. 2-6.", + "The Examiner rejected claims 2-5, 7 and 8 under 35 U.S.C. 8 103(a) as unpatentable over Parry and Kuo et al. (US 7,209,435 B1; pub. Apr. 24, 2007). Final Act. 6-11." + ], + "ptab_opinion": [ + "Based on the record before us, we are persuaded the Examiner erred in rejecting claims 1, 6, 9, 10, and 12-14 as anticipated by Parry.", + "We find Appellants' arguments persuasive.", + "Namely, the Examiner fails to sufficiently explain how Parry teaches each limitation of claims 1, 6, and 10.", + "For example, the Examiner inconsistently finds that node 24a is both a primary node as well as a secondary node and does not identify how Parry satisfies the claimed connections between the primary nodes and between the primary nodes and the secondary node. See, e.g., Ans. 3.", + "In order for us to sustain the Examiner's rejection here, we would need to resort to impermissible speculation or unfounded assumptions or rationales to supply deficiencies in the factual bases of the rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).", + "Similarly, we agree with Appellants that the Examiner does not sufficiently explain how Parry teaches *switching the packet to the second network using the respective second ports or to the other primary node using the inter-node port dependent on a service identifier associated with said packet. \"", + "While Parry describes using a service ID (I-SID) associated with a frame to allocate the frame to a port in the Link Aggregation Group, each port results in the same destination.", + "In other words, Parry does not switch a frame to either the secondary node or the other primary node based on a service identifier, as required by the claim. See, e.g., Fig. 5.", + "Accordingly, we do not sustain the rejection of ofindependent claims 1, 6, 10, as well as dependent claims 9 and 12-14, as anticipated by Parry.", + "Each of claims 2-5, 7, and 8 depend from directly or indirectly from claim 1 or 6.", + "As discussed above, we are persuaded that the Examiner erred in rejecting independent claims I and 6.", + "Kuo does not cure the deficiencies of Parry.", + "As such, we also do not sustain the rejection of claims 2-5, 7, and 8 as unpatentable over the combination of Parry and Kuo." + ] +} \ No newline at end of file diff --git a/opinion_split/2015000129_DECISION.json b/opinion_split/2015000129_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..2b217b3655afdbdea0014b9840b6f25cab4bb6e7 --- /dev/null +++ b/opinion_split/2015000129_DECISION.json @@ -0,0 +1,38 @@ +{ + "appellant_arguments": [ + "ISSUE Did the Examiner err in rejecting the claims because Massey does not disclose selecting an advertisement for delivery based on evaluated cognitive load?", + "Appellants argue that Massy discloses a truncation of an advertisement and a speed up/slow down of an advertisement based on cognitive load but does not disclose selecting an advertisement based on cognitive load.", + "In Appellants view, it is the same advertisement that is presented either in full text mode or truncated mode." + ], + "examiner_findings": [ + "The Examiner finds that Weber teaches selecting advertisement for delivery based on occupant data [22].", + "The Examiner, however, finds that Massey teaches determining the cognitive load of the occupant and selecting a message (full text, abridge text etc.) based on the determined occupant load. (Fin. Act. 4-5)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. S 134 of the Examiner's final decision rejecting claims 1-20.", + "We have jurisdiction over the appeal under 35 U.S.C. 6 6(b).", + "We AFFIRM.", + "BACKGROUND Appellants' invention is directed to a method and apparatus for context adjusted consumer capture (Spec. 1).", + "Claim 1 is illustrative: 1. A computer implemented method comprising: obtaining the identities of one or more vehicle occupants; obtaining data relating to a current vehicle environment; evaluating a driver cognitive load, via a vehicle computing system; selecting an advertisement for delivery based on data retrieved respective to identified occupants, data relating to the vehicle environment and evaluated cognitive load; and providing the selected advertisement for delivery based on the driver cognitive load being below a suitable threshold.", + "The Examiner relies on the following prior art reference as evidence of unpatentability: Torkkola US 7,292,152 B2 Nov. 06, 2007 Massey US 7,365,651 B2 Apr. 29, 2008 Weber US 2005/0024189 A1 Feb. 03, 2005 Divine US 2013/0030645 A1 Jan. 31. 2013 Conner US 2013/0054132 A1 Feb. 28, 2013 Schwarz US 2013/0066720 A1 Mar. 14, 2013", + "Appellants appeal the following rejection(s):", + "Claims 1, 7-11, and 15-18 under 35 U.S.C. 8 103(a) as unpatentable over Weber in view of Massey.", + "Claims 2-4, 6, and 14 under 35 U.S.C. 6 103(a) as unpatentable over Weber, Massey, in view of Divine.", + "Claim 5 under 35 U.S.C. 8 103(a) as unpatentable over Weber, Massey, Divine, in view of Torkkola.", + "Claims 12 and 19 under 35 U.S.C. 8 103(a) as unpatentable over Weber, Massey, in view of Schwarz.", + "Claim 13 under 35 U.S.C. $ 103(a) as unpatentable over Weber, Massey, Schwarz, and in view of Conner.", + "Claim 20 under 35 U.S.C. 8 103(a) as unpatentable over Divine, Weber, in view of Massey.", + "FACTUAL FINDINGS We adopt all the Examiner's findings as our own.", + "Final Act. 3-6.", + "Additional findings of fact may appear in the Analysis that follows.", + "ANALYSIS We are not persuaded of error on the part of the Examiner by Appellants\" argument that the prior art does not disclose selecting advertisement based on cognitive load.", + "Weber discloses that the occupant data may be used to recommend that lodging should be acquired or that the occupant stop for food [21].", + "Although Weber teaches selecting advertisements based on occupant data, Weber fails to teach that this occupant data is cognitive load.", + "The argument is not persuasive because the Examiner relies on Weber for teaching selecting an advertisement based on occupant data.", + "Massey is relied on for teaching that occupant data used to select the advertisement may be the cognitive load of the occupant.", + "In any case, we agree with the Examiner's response to this argument found on page 5 of the Answer that the full text and abridged text disclosed in Massey would have different content and as such are different advertisements.", + "We note that the claim does not require that the advertisements be for different products.", + "In view of the foregoing, we will sustain the Examiner's rejection of claim 1.", + "We will also sustain the Examiner's rejection of the remaining claims because the Appellants do not present separate arguments for the patentability of these claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2015000647_DECISION.json b/opinion_split/2015000647_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f9f21b768b00c752a5b7d401cef24bd4ed09b0b6 --- /dev/null +++ b/opinion_split/2015000647_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Independent Claims 1. 12 Appellants contend the Examiner erred rejecting independent claims 1 and 12 because Takagishi does not disclose *a reference layer that supplies spin torque to the field generation layer; wherein the reference layer is configured to satisfy conditions (Hest \u25a0 Hx + Hd-en) > 0 and (Hext + Hk \u00b7 Ha-ef) > 0.\" as recited in independent claim 1 and similarly recited in independent claim 12.", + "App. Br. 5-9: Reply Br. 2-3, Appellants argue that Takagishi does not disclose a composition ratio of a multilayer film and does not take into account that it is necessary to realize both the velocity factor v and the saturation factor s as described in the Specification. App. Br. 7.", + "Appellants also argue that it is inappropriate to use (Co/Pt)n or (Co/Pd)n for a reference layer as disclosed by Takagishi. App. Br. 6.", + "Appellants further argue that it would be impossible to uniquely extract Co/Ni, change the composition ratio thereof, or find predetermined conditions for s or v based on Takagishi's disclosure. App. Br. 8." + ], + "examiner_findings": [ + "The Examiner did not rely on (Co/Pt)n and (Co/Pd)n to teach the claimed conditions, but rather used (Co/Ni)n. Final Act. 3, 4 (citing Takagishi, Fig. 2, \" 58, 59); see also Ans. 5." + ], + "ptab_opinion": [ + "ANALYSIS We have reviewed the Examiner's rejections and the evidence of record in light of Appellants' arguments the Examiner has erred.", + "We disagree with Appellants' arguments and 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; and (2) the findings and the reasons set forth in the Examiner's Answer.", + "We concur with the conclusions reached by the Examiner and further highlight specific findings and argument for emphasis as follows.", + "Appellants' argument that it is inappropriate to use (Co/Pt)n and (Co/Pd)n for a reference layer (see App. Br. 6) is not responsive to the Examiner's findings.", + "Although we agree with Appellants that Takagishi does not inherently disclose a 1:1 ratio between Co and Ni (compare Reply Br. 2 with Ans. 6) no such ratio is recited in claims 1 and 12.", + "Takagishi's (Co/Ni)n is the same multilayer structure disclosed by Appellants and Appellants have not persuasively refuted the Examiner's finding that this composition satisfies the conditions (Hea \u25a0 Hk + Hd-en) > 0 and (Hext + Hk \u25a0 Ha-eff) > 0. Final Act. 4; Ans. 5, 6; Spec. 20-21.", + "With respect to Appellants' argument that it would be impossible to extract Co/Ni, change the composition ratio thereof, or find predetermined conditions for s or v based on Takagishi's disclosure, this is mere attorney argument and not evidence.", + "\"Attorney's argument \u00b7 \u00b7 \u25a0 cannot take the place of evidence.\" In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation omitted); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements are insufficient to rebut a prima facie case).", + "Similarly, Appellants argument that \"the spin injection layer of Takagishi always contains Cu\" (Reply Br. 2; see also App. Br. 6) does not provide sufficient evidence or reasoning to persuade us the Examiner erred in finding \"Takagishi merely teaches that Cu within a spin injection layer is an option rather than a requirement\" (Ans. 5).", + "Therefore, we do not find Appellants' arguments persuasive and we find the preponderance of the evidence supports the Examiner's finding that Takagishi discloses \"a reference layer that supplies spin torque to the field generation layer; wherein the reference layer is configured to satisfy conditions (Hesi \u25a0 Hk + Ha-eff) > 0 and (Hea + Hk \u25a0 Hd-et) > 0,\" as recited in independent claim I and similarly recited in independent claim 12.", + "Accordingly, we sustain the Examiner's rejection of independent claims 1 and 12.", + "Remaining Claims 2, 3, 5, 7, 8, and 13-15 Appellants have not presented separate substantive, persuasive arguments with respect to claims 2, 3, 5, 7, 8, and 13-15. See App. Br. 9.", + "Any arguments made by Appellants with respect to these claims merely repeat the same or similar arguments already raised or merely recite the language of the particular claim and assert the cited prior art reference does disclose the claim limitation.", + "Without independent arguments, however, such contentions fail to constitute a separate issue of patentability.", + "See 37 C.F.R. S 41.37(c)(1)(iv) (\"A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. \"); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (\"[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. \").", + "Accordingly, we sustain the Examiner's rejection of claims 2, 3, 5, 7, 8, and 13-15." + ] +} \ No newline at end of file diff --git a/opinion_split/2015000990_DECISION.json b/opinion_split/2015000990_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..52657e0d4a1458140db7e4f7189647a8a3afb52e --- /dev/null +++ b/opinion_split/2015000990_DECISION.json @@ -0,0 +1,38 @@ +{ + "appellant_arguments": [ + "Appellants argue, inter alia, that Jordan's disclosure does not anticipate claim 31 because the water injector 46 is initially attached to the dishwasher at an angled position in which the water injector is separated from the line end of the water hose and it is only after attachment that the water injector 46 is rotated to the upright, final position where water injector 46 can receive the water hose 48. Appeal Br. 10 (citing Jordan Fig. 5, col. 5, II. 8-38).", + "As Appellants emphasize, the water injector 46 must be rotated after being attached to tub 14 in order for the conduit 74 to even contact the water hose 48. Appeal Br. 10.", + "In doing so, Appellants highlight that the Examiner has failed to establish that Jordan discloses structure that performs or is inherently capable of performing the function required--positioning the water-carrying hose end such that attaching the water chamber to the assembly base concomitantly attaches the water carrying hose end to the connection pipe of the water chamber. See also Reply Br. 2-5.5" + ], + "examiner_findings": [ + "In rejecting claim 31, the Examiner relies on Jordan's disclosure for an assembly base [tub 14], water chamber [water injector 46], and water- carrying hose [water hose 48]. Final Act. 6; Jordan Fig. 5.", + "As to the holder structured to position the water-carrying hose end, the Examiner relies on arcuate ribs 28 and 30 forming a curved channel 32. Final Act. 6; Jordan Fig. 5, col. 4, II. 2-3.", + "As described in Jordan, the water injector 46 is connected to the tub 14 and then rotated in a counter-clockwise position to a vertical position thereby, in the view of the Examiner, causing hose 48 to fit onto conduit 74. Final Act. 6; Jordan Fig. 5.", + "In maintaining the rejection, the Examiner reasons that the language describing how the holder is structured, including use of \"attaching\" and *automatically connects,\" merely describes a method of assembly and is not, accordingly, a structural limitation.", + "Alternatively, the Examiner finds that \"the combined act of placing the water injector 46 at the angled position and rotating it to its vertical position would broadly and reasonably meet the limitation of *attaching* it to the assembly base.\" Ans. 4-5,", + "The Examiner relies on the legal principles that apparatus claims cover what a device is, not what it does, and that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Ans. 4 (citing Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990); Schreiber, 128 F.3d at 1477-78.", + "In the obviousness rejection of claims 21 and 28 over Jordan in view of Schmidt, the Examiner relies on Jordan as detailed above. Final Act. 7-8; Ans. 8-9." + ], + "ptab_opinion": [ + "Upon consideration of the evidence and Appellants' arguments, we are persuaded that the Examiner has erred reversibly in finding that Jordan anticipates claims 16-20, 22-27, and 31-35 and, in relying on Jordan in the same manner, has also failed to meet the burden of establishing that claims 21 and 28 are unpatentable for obviousness over Jordan in view of Schmidt.\"", + "We are, therefore, constrained to reverse the Examiner's rejections.", + "In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (\"[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. \").", + "In order to anticipate, a \"reference must disclose each and every element of the claimed invention, whether it does so explicitly or inherently\" with the elements **arranged or combined in the same way as in the claim.\" \" In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (internal citations and quotations omitted).", + "We begin our analysis by determining the meaning of the claims, giving terms the broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).", + "In the instant appeal, the critical issue is the proper meaning of the language describing how the holder is structured with respect to positioning the water-carrying hose end.", + "Having considered the language of the claim, we determine the phrase above recites a relation between elements that must be met, that is, positioning the water-carrying hose end such that when the water chamber is attached to the assembly base the water-carrying hose end is connected to the connection pipe of the water chamber.", + "It follows that the required relation between elements must be such that if the water chamber is attached to the assembly base then the connection of the water carrying hose to a connection pipe of the water chamber is also made.", + "In reviewing the Specification carefully, we find nothing contrary to this interpretation, particularly where assembly is described, in reference to Figure 1, as including a pre-positioning of hose end pieces 17 of the hose lines 15 in their connection position on the holder 23 when the heat exchanger 9 is still separate from the dishwashing machine and that connection pipes 13 of the heat exchanger 9 are automatically inserted into pre-positioned hose end piece 17 when the heat exchanger 9 is assembled onto the washing chamber. Spec. I 29.", + "While the claims are by no means limited to the embodiment illustrated in Figure 1, the relation between elements required by the claims must be met by an anticipatory reference, or be obvious in view of the applied prior art.", + "Although claims directed to an apparatus must be distinguished from the applied prior art in terms of structure rather than function, in order to satisfy the relational limitations in such apparatus claims, the Examiner has the burden of showing that the apparatus taught or suggested by the applied prior art is inherently capable of performing the claimed function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); Typhoon Touch Techs., Inc. V. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011).", + "With this in mind, we turn to the Examiner's rejection grounded on the cited prior art.", + "On this record, the Examiner has failed to establish that Jordan discloses the holder structure, albeit defined functionally, that is required by claim 31.", + "Likewise, we are of the opinion that the Examiner has failed to establish that claim 16, which recites *a holder structured to position the line end of the water-carrying line in a connection position for automatic connection to the connection pipe when the water chamber is attached to the assembly base, \" is anticipated by Jordan.", + "While the Examiner further relies on different elements in Jordan in the alternative to those discussed above (Final Act. 4), the Examiner similarly fails to establish that the elements are arranged in the same way as in the claim, that is, to provide the required relation between elements in the structure necessary for the functional limitation.", + "As to the alternatives, a flange 90 is relied on as *an assembly base, a locking flap 84 is relied on as a holder, and elongated body 50 (of water injector 46) and tub 14 are, depending on the interpretation, relied on as a *water chamber\" (Final Act. 4), however, we discern no reasonable basis for the structure with elements in relation to one another as required by the functional limitation in the Examiner's proffered alternatives. 6", + "Accordingly, to sustain the Examiner's rejection, we would be required to rely on conjecture, which we will not do.", + "In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (\"The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not \u00b7 \u00b7 resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. \").", + "Likewise, we decline to scour the record in the first instance for facts that might support the rejection, as our primary role is review, not examination de novo.", + "It follows that we are unable to sustain the obviousness rejection as the Examiner--having erred as to the independent claims' functional limitations\" meaning and import--likewise failed to set forth the requisite basis for modification of the cited prior art to meet the functional limitations of the base claim from which claims 21 and 28 depend." + ] +} \ No newline at end of file diff --git a/opinion_split/2015001049_DECISION.json b/opinion_split/2015001049_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..e85c34b4925a26516ed90872e0826d2bbe91fcd6 --- /dev/null +++ b/opinion_split/2015001049_DECISION.json @@ -0,0 +1,24 @@ +{ + "appellant_arguments": [ + "Appellants argue that pawl 68 and pawl 69 are mounted on separate axes because *pawl 68 is mounted on and rotates around positioning pin 68a and pawl 69 is mounted on and rotates around positioning pin 69a.\" Appeal Br. 11.", + "Appellants argue that Funai does not disclose a stopping pawl and a positioning pawl that are rotatably mounted on the same first rotational axis, as recited in claim 1. Id.", + "Appellants argue that Kawakami suffers from the same deficiencies as Funai because pawls 68, 69 are not rotatably mounted on the same rotational axis. Appeal Br. 13; Reply Br. 7-8." + ], + "examiner_findings": [ + "Claims 1-6 and 8-11 are rejected under 35 U.S.C. 8 102(b) as anticipated by Funai (US 2008/0022803 A1, pub. Jan. 31, 2008).", + "Claims 1-6 and 8-11 are rejected under 35 U.S.C. , 102(b) as anticipated by Kawakami (US 7,665,382 B2, iss. Feb. 23, 2010).", + "Regarding claim 1, the Examiner found that Funai discloses a shift positioning mechanism including a wire take-up member 63, stopping pawl 68, and positioning pawl 69 each mounted on a first rotational axis (pivot axis 68a, 69a in Figure 6). Final Act. 3-4.", + "Regarding claim 1, the Examiner found that Kawakami discloses a shift positioning mechanism with stopping pawl 68 and positioning pawl 69 that are mounted on a first rotational axis (pivot axis of 68a, 69a) as shown in Figure 5. Final Act. 7." + ], + "ptab_opinion": [ + "The Examiner has not established by a preponderance of evidence that Funai rotatably mounts a stopping pawl and a positioning pawl on the same rotational axis.", + "The Examiner's finding that pawls 68, 69 are \"mounted on\" the same rotational axis because \"[the axial centerline of the hole through [mounting plate] 67 is a rotational axis\" (Ans. 2) is an unreasonably broad interpretation of *first rotational axis, *, as recited in claim 1.", + "Funai discloses pawls 68, 69 are mounted on separate rotational axes.", + "Contrary to the Examiner's stated finding, there is no disclosure in Funai that mounting plate 67 rotates. Reply Br. 5-6.", + "Pawls 68 and 69 are mounted rotatably on different axes (pins 68a, 69a) and do not rotate on or about a rotational axis of mounting plate 67 in any manner.", + "Thus, we do not sustain the rejection of claims 1-6 and 8-11 as anticipated by Funai.", + "The Examiner's findings are not supported by a preponderance of evidence, and the Examiner's interpretation of *first rotational axis\" is unreasonably broad.", + "Kawakami discloses pawls 68, 69 rotatably mounted on different rotational axes, i.e., positioning pins 68a, 69a.", + "Thus, we do not sustain the rejection of claims 1-6 and 8-11 as anticipated by Kawakami." + ] +} \ No newline at end of file diff --git a/opinion_split/2015001087_DECISION.json b/opinion_split/2015001087_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7b8d3f3c6b0e89f66725c574b5c55f83db9da38b --- /dev/null +++ b/opinion_split/2015001087_DECISION.json @@ -0,0 +1,77 @@ +{ + "appellant_arguments": [ + "Appellants argue the Examiner' s objection to the title of the Specification should not be sustained. (App. Br. 11.)", + "Appellants argue Kragh does not disclose \"providing an electronic privacy level register that identifies for each participating Subscriber what the approved privacy levels are as selected from the set of different privacy levels with respect to each participating Publisher,\" as recited in claim 1.", + "Specifically, Appellants argue \"claim 1 describes a register that indicates security levels for each Subscriber relative 3 We note it appears the Examiner may have withdrawn this objection in any event.", + "By comparison, Kragh merely describes authorization for one healthcare facility to have access and nowhere describes a central repository with all the information for each Subscriber and each Publisher.' \" App. Br. 13.", + "Appellants further contend that Kragh's personal health journal *is clearly distinct from a register containing information for *each participating Subscriber.' (Claim 1).\" Id.", + "Appellants argue claim 21 recites *two distinct servers that carry out different functions,\" but the Examiner *does not distinguish between the two and relies on the same structure to disclose the separately claimed elements.\" App. Br. 14-15.", + "Appellants further argue that \"li]f the two servers were in fact one server, then there would be no communication between them.\" Reply Br. 6-7.", + "Appellants argue Kragh does not disclose *automatically selectively electronically forwardling healthcare data related to a healthcare topic]\" as recited in claim 26. App. Br. 16.", + "Appellants refer to their arguments for claim 26 and contend, without further elaboration, \"Kragh merely teaches a single sharing protocol and fails to teach or suggest *sharing protocols for Subscribers \u25a0 \u25a0 \u25a0 and Publishers. \"\" App. Br. 17; Reply Br. 8-9.", + "Appellants argue that the permission level in Kragh is an \"access\" permission\" rather than a \"publish\" permission. App. Br. 17.", + "Appellants argue Kragh does not disclose this limitation because it discloses *each healthcare facility has a permission level granted by a patient.", + "Merely having permission to access data records clearly cannot be reasonably interpreted as *retain(ing] its own repository of electronic patient data records.\" App. Br. 18; Reply Br. 9-10.", + "Appellants further argue Kragh teaches away from independent maintenance because it teaches a central repository. Id. at 18-19.", + "Appellants argue Kragh teaches access rights but does not teach allowing **Publishers . \u00b7 \u00b7 [to] publish data for those topics at their privacy entitlement level.\" App. Br. 19-20; Reply Br. 10.", + "Appellants argue \"Kragh does not describe a level of access granted wherein de-identified data is shared.\" App. Br. 21.", + "Appellants argue \"Kragh describes accessing patient records for a particular patient and does not describe *select[ing] a topic of interest \u00b7 \u00b7 [and] request[ing] a publication of data related to the topic. *** App. Br. 22.", + "Appellants argue Kragh requires patient permission and thus does not disclose *automatically electronically forward[ing] healthcare publication data,\" as recited in claim 24. App. Br. 22-23.", + "Appellants argue Kragh fails to disclose a \"compatibility correlation matrix\" and fails to disclose *any mechanism to prevent unauthorized access and relies merely on express grant of authority.\" App. Br. 23; Reply Br. 13." + ], + "examiner_findings": [ + "The Examiner has rejected claims 1-16 and 21-33 under 35 U.S.C. $ 102(e) as being anticipated by Kragh (US 2005/0010442 A1; published Jan. 13, 2005).", + "As the Examiner points out, Kragh teaches that a patient (i.e., publisher) may grant privileges for another party (i.e., subscriber) to access some or all of the patient's personal health journal.", + "As the Examiner points out (Ans. 6), Appellants\" Specification expressly contemplates that the Administrative Server and Message Flow Server may be combined.", + "The Examiner cites paragraphs 43 and 47 of Kragh as teaching this limitation.", + "The Examiner finds the tabs in Kragh's Figure 3 disclose the recited topics and further cites Kragh's 's Paragraph 32 as disclosing that Publishers can only publish data for those topics at their privacy entitlement level." + ], + "ptab_opinion": [ + "We do not reach Appellants\" argument because review of an examiner's objection to the title of a specification is by petition and not by appeal to the Board.", + "We are not persuaded.", + "The Examiner finds, and we agree, Kragh's patients disclose the recited publishers and Kragh's doctors and medical facilities disclose the recited subscribers.", + "The Examiner further finds, and we agree, Kragh's 's permission levels disclose the recited privacy levels.", + "The Examiner also finds, and we agree, Kragh discloses a register that identifies for each participating subscriber what the approved privacy levels are as selected from the set of different privacy levels with respect to each participating publisher.", + "We find that Kragh's 's permission levels must be stored in a repository that identifies which subscribers have access (and what level of access) to Kragh 's patient's personal health journal; otherwise, as one example, Kragh's care manager would not be able to access limited information *to which the care manager 50 will have been given privileges\" (Kragh I 42).", + "Appellants' arguments that certain portions of Kragh's system do not teach the recited register (Reply Br. 4-6) do not persuasively address Kragh's disclosure that a patient can grant limited privileges to others which must be stored in Kragh's system for such privileges to be used.", + "For the reasons discussed above, we sustain the Examiner's decision to reject independent claim 1 and dependent claims 2-5 and 12, which Appellants do not separately argue.", + "We are not persuaded.", + "We are also not persuaded that the two cannot communicate if combined into a single physical node.", + "In particular, Appellants have not persuasively addressed why the portions of the single node acting as each recited server would not be in communication with each other.", + "For the reasons discussed above, we sustain the Examiner's s decision to reject independent claim 21 and dependent claims 22 and 23, which Appellants do not separately argue.", + "We are persuaded the Examiner has not adequately shown Kragh discloses this limitation.", + "The Examiner has not adequately explained how these portions disclose *automatically selectively electronically forwardling healthcare data related to a healthcare topic]\" as recited in claim 26.", + "For the reasons discussed above, we are constrained to reverse the Examiner's decision to reject independent claim 26 and claims 27-30 depending therefrom.\" 4", + "Appellants' argument does not persuade us of Examiner error because it is without elaboration.", + "In particular, although Appellants refer to their arguments regarding claim 26, we observe the limitations of claim 26 are not substantially similar to the limitations of claim 31.", + "In addition, Appellants do not persuasively address the portions of Kragh cited by the Examiner.", + "4 Because we determine the issue discussed above is dispositive as to the Examiner's rejection of claims 26-30, we do not reach Appellants' other arguments regarding independent claim 26.", + "For the reasons discussed above, we sustain the Examiner's decision to reject independent claim 31 and dependent claims 32 and 33, which Appellants do not separately argue.\"", + "5 In the event of further prosecution, the Examiner may want to consider whether independent claim 31 and its dependent claims 32 and 33 recite patent ineligible subject matter (i.e., transitory signals) under 35 U.S.C. 6 101.", + "We are not persuaded.", + "Appellants have not persuasively addressed why such privileges do not disclose the additional limitation of claim 2.", + "In particular, we observe that a limited access permission for a subscriber as disclosed in Kragh (id. I 43) would also function to control what data the publisher can publish to that subscriber (i.e., if a subscriber does not have access to a portion of the personal health journal, a publisher cannot publish data in that portion to that subscriber).", + "For the reasons discussed above, we sustain the Examiner's s decision to reject dependent claim 2.", + "We are not persuaded.", + "Appellants' argument that each healthcare facility in Kragh would not retain its own repository is not persuasive because the Examiner finds Kragh's healthcare facilities are subscribers, not publishers.", + "In addition, we note that \"the question whether a reference teaches away' from the invention is inapplicable to an anticipation analysis.\"", + "For the reasons discussed above, we sustain the Examiner's decision to reject dependent claim 4.", + "We are persuaded of error because the Examiner has not adequately shown Kragh discloses the additional limitations of claim 6.", + "In particular, the Examiner has not adequately explained how paragraph 32 of Kragh discloses \"Publishers can only publish data for those topics at their privacy entitlement level.\"", + "For the reasons discussed above, we are constrained to reverse the Examiner's decision to reject dependent claim 6 and dependent claims 7-11 further depending directly or indirectly therefrom.", + "We are persuaded by Appellants' argument.", + "We have reviewed the portions of Kragh cited by the Examiner (Ans. 10-11), and find that none discloses a privacy level that *allows only patient de-identified data to be shared between a Publisher and Subscriber,\" as recited in claim 13.", + "For this reason, we are constrained to reverse the Examiner's decision to reject dependent claim 13 and dependent claim 14 further depending therefrom.", + "We are persuaded by Appellants' argument.", + "We have reviewed the portions of Kragh cited by the Examiner (Ans. 11; Final Act. 3-4) and find that they do not disclose the additional limitations of dependent claim 15.", + "In particular, the Examiner has not adequately explained how the cited portions of Kragh disclose \"a request for publication of data related to the topic\" as recited in claim 15.", + "For the reasons discussed above, we are constrained to reverse the Examiner's decision to reject dependent claim 15 and dependent claim 16 further depending therefrom.", + "As discussed above, the Examiner has not adequately shown Kragh discloses a similar limitation of independent claim 26.", + "The Examiner's 's explanation of the rejection of claim 24 does not cure this deficiency.", + "Accordingly, we are constrained to reverse the Examiner's decision to reject dependent claim 24.", + "We are not persuaded.", + "Appellants have not persuasively addressed why such privileges do not disclose the additional limitations of claim 25.", + "We determine Kragh's permission levels must be configured to prevent unauthorized Subscriber access to Publisher patient healthcare data if the requesting Subscriber has a mismatch in privacy level; otherwise, Kragh's system could not implement limited access privileges granted to another person (see Kragh I 43).", + "For the reasons discussed above, we sustain the Examiner's decision to reject dependent claim 25." + ] +} \ No newline at end of file diff --git a/opinion_split/2015001601_DECISION.json b/opinion_split/2015001601_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0d243d3bbe11f87cb0c972d3f70f0d850b817bc5 --- /dev/null +++ b/opinion_split/2015001601_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "The Appellants argue that Linehan does not disclose an account identification container and the authorization request, as recited in claim 1." + ], + "examiner_findings": [ + "The Examiner finds that authorization token 254 disclosed in Linden is the account identification container and further finds that capture request message 256 is the authorization request (Non-Final Act. 4-5)." + ], + "ptab_opinion": [ + "Appellants seek our review under 35 U.S.C. 6 134 of the Examiner's non-final decision rejecting claims 1-3, 5-7, 9-14 and 16-18.", + "We have jurisdiction over the appeal under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "Claim I is illustrative: 1. A non-transitory computer-readable medium having executable components stored on a system comprising at least one buyer computer, at least one seller computer and a commerce gateway for purchasing a product from the at least one seller computer using a virtual payment account associated with the at least one buyer computer, the commerce gateway maintaining virtual payment accounts, interfacing with credit processing servers and authorizing and settling product purchases using the virtual payment accounts maintained by the commerce gateway, wherein the executable components purchase said product by: (i) in response to said at least one seller computer receiving a request from said at least one buyer computer to purchase said product, said at least one seller computer returning a purchase order to said at least one buyer computer; (ii) in response to said at least one buyer computer receiving said purchase order, said at least one buyer computer identifying said virtual payment account as a payment source for the purchase of said product and transmitting an authentication request to said commerce gateway requesting authentication of said virtual payment account as a payment source for the payment of the purchase of said product, wherein said at least one buyer computer identifies said virtual payment account as a payment source for the purchase of said product by retrieving a digital certificate associated with said virtual payment account and wherein said digital certificate is included in said authentication request transmitted to said commerce gateway; (iii) in response to said commerce gateway receiving said authentication request, said commerce gateway determining whether said virtual payment account is associated with said at least one buyer computer and if said virtual payment account is valid; (iv) in response to determining that said virtual payment account is associated with said at least one buyer computer and that said virtual payment account is valid, said commerce gateway transmitting an account identification container to said at least one buyer computer; (v) in response to said at least one buyer computer receiving said account identification container, said at least one buyer computer transmitting a purchase confirmation including said account identification container to said at least one seller computer; (vi) in response to said at least one seller computer receiving said purchase confirmation, said at least one seller computer transmitting an authorization request to said commerce gateway; (vii) in response to said commerce gateway receiving said authorization request, said commerce gateway determining whether said virtual payment account may be used to pay for said product; (viii) in response to said commerce gateway determining that said virtual payment account may be used to pay for said product, said commerce gateway transmitting a transaction authorization from said commerce gateway to said at least one seller computer and settling the purchase of said product by charging said virtual payment account for a cost associated with the purchase of said product; and (xi) in response to said at least one seller computer receiving said transaction authorization, said at least one seller computer arranging for said product to be provided to a buyer associated with said at least one buyer computer.", + "Appellants appeal the following rejections: 1. Claims 1-3 and 12-14 under 35 U.S.C. 9 103(a) as unpatentable over Linehan (US 6,327,578 B1, iss. Dec. 4, 2001) and Elgamal (US 6,138,107, iss. Oct. 24, 2000).", + "2. Claims 5-7, 9-11 and 16-18 under 35 U.S.C. 8 103(a) as unpatentable over Linehan, Elgamal, and Lent (US 6,324,524 B1, iss. Nov. 27, 2001).", + "ISSUE Did the Examiner err in rejecting the claims because authorization token 254 is not an account identification container and capture request message 256 is not an authorization request?", + "We agree.", + "According to the steps recited in claim 1, an account identification container is transmitted by the commerce gateway to the buyer computer in response to determining that the virtual payment account is associated with the buyer computer and is valid.", + "In response to receiving the account identification container, the buyer's s computer transmits a purchase confirmation to the seller's computer.", + "The seller's computer responds by transmitting an authorization request to the commerce gateway.", + "Only after the commerce gateway determines that the virtual payment account may be used to pay for the product does the commerce gateway transmit a transaction authorization to the seller computer.", + "Therefore, claim 1 requires that an authorization request is sent to the commerce gateway after the commerce gateway sends the account identification container to the buyer computer and after the buyer computer transmits a purchase confirmation.", + "The transaction is authorized several steps after the purchase confirmation is transmitted.", + "We find that token 254 disclosed in Linehan is an authorization token that includes the payment amount, order description, timestamp, a random nonce plus a merchant identifier, the reference number, and the buyer's credit or debit card number (col. 6, II. 27-32), The issuer's gateway signs the authorization token 254 on behalf of the issuing bank and the signed token is sent to either the consumer or the buyer (col. 6, II. 31-33), Ifthe buyer receives the token, the buyer forwards authorization token 254 to the seller (col. 6, 11. 33-38).", + "The merchant validates that a payment is authorized by verifying the issuer' 's signature and digital certificate and the contents of authorization token 254 (col. 6, II. 33-43).", + "After this process, the merchant completes the transaction (col. 6, II. 48-50), Therefore, authorization token 254 is used to complete the transaction.", + "After completion of the sale, the merchant sends a capture request message 256 to an acquirer bank to capture the transaction and get paid (col. 6, 11. 48-55).", + "We find that authorization token 254 disclosed in Linehan is not an account identification container which is included in a purchase confirmation which is sent by the buyer computer to the seller before authorization is requested, as recited in claim 1, but rather an authorization of the completed transaction.", + "By contrast, authorization takes place in the claimed method after the purchase confirmation is sent to the seller and after the seller sends an authorization request.", + "As such, token 254 is not the account identification container as recited in claim 1.", + "In addition, the capture request message cannot be considered an authorization request, as recited in claim 1, because the capture request message is sent after the transaction has been completed to capture the details of the completed transaction.", + "In view of the foregoing, we will not sustain the rejection of claim 1 and the remaining claims dependent therefrom." + ] +} \ No newline at end of file diff --git a/opinion_split/2015002120_DECISION.json b/opinion_split/2015002120_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5f88684eb5aec750a68383fc6789967f18bada90 --- /dev/null +++ b/opinion_split/2015002120_DECISION.json @@ -0,0 +1,41 @@ +{ + "appellant_arguments": [ + "Appellants contend that the Examiner mischaracterized Datta's teachings such that the Examiner's *reasoning for modifying Datta , \u00b7 \u00b7 has no rational underpinning\" (App. Br. 6-7).", + "Appellants argue that Datta teaches a balance *between the need to sufficiently adhere a fastener 52 to the outer cover 40 when the fastener 52 is a discrete component, but . \u00b7 \u00b7 also minimize the amount of adhesive 80 that bleeds through the fastener 52 to minimize the deadening of loops 66\" (App. Br. 6).", + "Appellants argue that Datta \"does not teach a 'desire' to have two areas of the fastener component 52 with different engagement properties, but teaches a `desire' to minimize any negative effects of the adhesive 80 on a fastener 52, such as deadening the loops 66\" (App. Br. 7).", + "Appellants argue that if Datta's 's fastener is modified as the Examiner suggests, such that \"a portion of the fastener 52 of Datta is embossed and \u00b7 \u25a0 \u25a0 the loop fastener 52 of Datta is formed from the outer cover,\" there would have been no motivation to apply adhesive in two zones, or to apply adhesive that would result in two zones having the claimed peak shear force for disengagement (App. Br. 7-8).", + "Appellants contend that claim 47 is non-obvious in view of the cited references for the same reasons discussed for claim 40 (App. Br. 6)." + ], + "examiner_findings": [ + "The Examiner has rejected claims 40 and 42 under 35 U.S.C. , 103(a) as obvious in view of Datta, Itou, and Peck (Final Act.6 3-6, Ans. 2).", + "The Examiner finds that Datta discloses a disposable absorbent article comprising a fastening system comprising \"a male component 54 and a female component 52 , \u00b7 \u00b7 [having] a first area 81 and a second area 82\" (Final Act. 3).", + "According to the Examiner, Datta discloses *the desire for the first area to have a peel-off force (i.e. a peak shear force) that is less than that of the second area, while the first area maintains some ability to engage with the male fasteners\" (id. at. 4).", + "The Examiner finds that Datta does not disclose that the peak shear force to disengage the male component *from the first area is reduced by no less than 5% and no more than 70% of a peak shear force to disengage the male component from the second area,\" but reasons that it would have been obvious to one of ordinary skill in the art to optimize the shear force to disengage the male component from the first and second (id. at 3-4).", + "The Examiner acknowledges that Datta does not disclose *embossing a surface of the female component wherein the first area comprises continuous bonded areas that define a plurality of discrete unbonded areas\" (Final Act. 3-4).", + "The Examiner finds that Itou discloses *an embossed non- woven fabric suitable for a loop fastener member of a surface fastener composed of a hook fastener member and a cooperating loop fastener member\" (id. at. 4).", + "The Examiner finds that the Itou discloses \"a non- woven fabric suitable for use as a loop fastener member of disposable products, which is thin, flexible, low in production costs, having loop engaging elements resistant to being pulled out from its base\" (id.).", + "The Examiner concludes that, in view of Itou, it would have been obvious to one of ordinary skill in the art to modify Datta \"by embossing a surface of the female component wherein the first area comprises continuous bonded areas that define a plurality of discrete unbonded areas\" (id. at 5).", + "The Examiner reasons that the motivation would have been to provide \"a non-woven fabric suitable for use as a loop fastener member of disposable products, which is thin, flexible, low in production costs, [and] having loop engaging elements resistant to being pulled out from its base even when subjected to a pulling force by the hook engaging elements, thereby ensuring the mechanical strength\" (id.).", + "II. The Examiner has rejected claims 41 and 43-53 under 35 U.S.C. $ 103(a) as obvious in view of Datta, Itou, Peck, and Stokes (Final Act. 6- 13, Ans. 2).", + "For the rejection of these claims, the Examiner relies on Datta, Itou, and Peck as discussed above for claim 40 and further relies on Stokes as disclosing additional limitations.", + "With respect to claim 47, the Examiner relies on the combination of Datta, Itou, and Peck as discussed above for independent claim 40 and finds that they do not disclose \"a male component disposed on the bodyfacing surface of the article, the male component adapted for direct releasable engagement with the backsheet\" (Final Act. 10).", + "The Examiner finds that Stokes teaches this limitation, and concludes that it would have been obvious to one of ordinary skill in the art to modify Datta in view of Itou and Peck **with the male component disposed on the bodyfacing surface of the article \u00b7 . , as taught by Stokes\" (id.).", + "The Examiner relies on Stokes solely for the purpose of disclosing the claimed location for the male component." + ], + "ptab_opinion": [ + "We agree with Appellants that the Examiner has not adequately explained how one of ordinary skill in the art, in view of the cited references, would have arrived at the disposable absorbent article of claim 40.", + "Although we agree with the Examiner that Datta discloses a female component comprising first area (zone 82) and second area (zone 81) wherein the shear force is reduced in the first area as compared to the second area, this reduction in shear force is an unintended consequence of the application of the different amount of adhesive 80 to hold the female loop fastener 52 against the substrate (FFs I & 2).", + "Accordingly, the Examiner has not explained why one of ordinary skill in the art would seek to apply this differential disengagement profile to an embossed article, let alone optimize the *peak shear force to disengage the male component from the first area \u00b7 \u25a0 \u00b7 by no less than 5% and no more than 70% of a peak shear force to disengage the male component from the second area, \", as required by claim 1.", + "And although embossing the non-woven web outer cover, as disclosed in Itou, would result in first and second areas in the female component, i.e., embossed and non-embossed regions (FF 3), the Examiner has not explained why the embossed regions, i.e. those with heat fused fibers, would disengage the male component with a shear force between 5% and 70% of the shear force of the non-embossed region.", + "The Examiner has not directed us to any teaching that suggests that any engagement loops are even accessible in the embossed area of Itou's product (FF 3).", + "Moreover, even if loops in the embossed areas were accessible to the hook fastener, the Examiner has not sufficiently articulated why one of ordinary skill in the art would want to adjust the disengagement shear force in this area as required by the claim.", + "Thus, we agree with Appellants that the Examiner has not adequately explained how the cited references would have made obvious the disposable absorbent article of claim 40, and we reverse the rejection of independent claim 40 and dependent claim 42.", + "For the same reasons as discussed above for claim 40, we find that the Examiner has not adequately articulated how the combination of Datta, Itou, Peck, and Stokes would have made obvious the limitations of independent claim 40, from which claims 41 and 43-46 depend.", + "Specifically, the Examiner has not articulated why one of ordinary skill would have looked to adjust the embossed areas so that the male hook component would disengage with a shear force that is between 5-70% of the shear force in the non-embossed region.", + "Thus, we also reverse this rejection.", + "We agree with Appellants that the Examiner has not adequately articulated how the combination of the cited references would have made obvious the disposable absorbent article of claim 47.", + "We also note that although Stokes discloses a female component that comprises bonded and unbonded areas, Stokes discloses that the *degree of bonding or fusing within the bonding areas [is] desirably \u00b7 \u00b7 \u00b7 sufficient to render the nonwoven web non-fibrous within the bonded areas, leaving the fibers or filaments within the unbonded areas to act as *loops' for receiving and engaging hook elements\" (Stokes, col. 3, 11. 30-35, emphasis added).", + "Thus, Stokes does not cure the deficiencies of Data, Itou, and Peck with respect to the limitation of the reduction in the disengaging shear force in the first area.", + "Thus, we reverse the rejection of independent claim 47 and dependent claims 48-53 as being obvious in view of Datta, Itou, Peck, and Stokes." + ] +} \ No newline at end of file diff --git a/opinion_split/2015002254_DECISION.json b/opinion_split/2015002254_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..34fa357fe0420f8864f3e7b9fc10b8742aa47ba6 --- /dev/null +++ b/opinion_split/2015002254_DECISION.json @@ -0,0 +1,100 @@ +{ + "appellant_arguments": [ + "Instead, Appellants argue that the rejection is improper because *claims 7-11 do not amount to a monopoly on the concept of processing insurance\" (Reply Br. 2).", + "Appellants argue that \"[the claims recite a specific way to request a reinspection, by selecting a graphical user interface, that does not pre-empt all means of such a request\" (Reply Br. 2-3 (citing DDR Holdings LLC V. Hotels.com, L.P., 773 F.3d 1245 (Fed Cir. 2014)).", + "Obviousness Appellants argue claims 2-11 as a group (Appeal Br. 4-5).", + "In their Reply Brief, Appellants contend that \"[the Examiner concedes that Obora does not disclose the claimed graphical user interface\" and instead relies on *paragraphs 0266-0269 in Aquila for disclosure of the claimed graphical user interface\" (Reply Br. 3).", + "Based on this contention, Appellants now argue that because \"Aquila discloses the network as being the Internet \u00b7 \u00b7 \u00b7 \u00b7 [t]he means for initiating the audit process may include entering a URL, not the selection of a graphical user interface as required by the claims\" (id. (citing Aquila 1 71))." + ], + "examiner_findings": [ + "REJECTIONS Claims 2-11 are rejected under 35 U.S.C. $ 101 as directed to non- statutory subject matter.", + "Claims 2-11 are rejected under 35 U.S.C. S 103(a) as unpatentable over Obora (US 2005/0246206 AI, pub. Nov. 3, 2005) and Aquila (US 2002/0035488 A1, pub. Mar. 21, 2002).", + "ANALYSIS Non-statutory subject matter In rejecting claims 2-11 under 35 U.S.C. S 101, the Examiner concludes that the claims, considered as a whole, are directed to an abstract idea of \"processing an insurance estimate\" without additional elements that transform it into a patent-eligible application of that idea (see Ans. 3-5).", + "In rejecting claims 2-6 under 35 U.S.C. S 101, the Examiner found independent claim 2 is *directed to the system for performing the method steps [of independent claim 7, and] is rejected for substantially the same reasons, in that the generically recited computer components in the system claim adds nothing of substance to the underlying abstract idea\" (Ans. 4).", + "And, to address this deficiency, the Examiner turns to Aquila as disclosing a *user send[ing] the request for re-inspection through the audit sub-system interface\" (id. 5- 7(citing Aquila 11 125, 266-269))." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. S 134(a) from the Examiner's final rejection of claims 2-11.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "CLAIMED INVENTION Appellants' claimed invention relates to \"a method and system for reviewing insurance estimates\" (Spec. 1).", + "Claims 2 and 7 are the independent claims on appeal.", + "Claim 7, reproduced below, with added bracketed notations and paragraphing, is illustrative of the subject matter on appeal:", + "7. A method for processing an insurance estimate, comprising:", + "[a] creating an insurance estimate of a vehicle at an estimating station that generates at least a portion of said insurance estimate with a program that is operated by the estimating station;", + "[b] reviewing the insurance estimate at a reviewer station;", + "[c] requesting a reinspection by selecting a graphical user interface displayed by the reviewing station;", + "[d] transmitting the request to a reinspection station; and,", + "[e] reviewing the insurance estimate of the vehicle at a reinspection station.", + "Appellants do not appear to dispute the Examiner's finding that claim 7 is directed to an abstract idea.", + "Under 35 U.S.C. $ 101, an invention is patent-eligible ifit claims a *new and useful process, machine, manufacture, or composition of matter.' \" 35 U.S.C. . 101.", + "The Supreme Court, however, has long interpreted . 101 to include an implicit exception: \"laws of nature, natural phenomena, and abstract ideas\" are not patentable.", + "See, e.g., Alice Corp. Pty. Ltd. V. CLS Bank Int 'I. 134 S. Ct. 2347, 2354 (2014).", + "In determining whether claim 1 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice.", + "Id. at 2355 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)).", + "In accordance with that framework, we first determine whether the claim is \"directed to\" a patent-ineligible abstract idea.", + "If so, we then consider the elements of the claim both individually and as an ordered combination - to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea.", + "Id.", + "This is a search for an *inventive concept\" an element or combination of elements sufficient to ensure that the claim amounts to *significantly more\" than the abstract idea itself.", + "Id.", + "Here, we agree with the Examiner that claim 1 is directed generally to *processing an insurance estimate\" (Ans. 4).", + "This concept amounts to a method of organizing human activity, which, like the concept of risk hedging in Bilski, falls squarely within the realm of abstract ideas.", + "See Alice Corp., 134 S. Ct. at 2356; Bilski, 561 U.S. 593, 611 (2010); see also Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1339 (Fed. Cir. 2013) (claim to maintaining an *insurance transaction database containing information related to an insurance transaction decomposed into a plurality of levels\" and \"allowing an authorized user to edit \u00b7 \u00b7 and to update the information related to the insurance transaction\" held to be an abstract idea).", + "We also find that \"processing an insurance estimate\" is a fundamental economic concept because it directly affects the solvency of both the insured and the insurer.", + "We next consider whether additional elements transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea on generic computer components.", + "We conclude that it does not.", + "Independent claim 7 is directed to *[a] method for processing an insurance estimate\" and includes steps which **creat[e] an insurance estimate, *, \"review[s] the insurance estimate, \" *request[s] a reinspection by selecting a graphical user interface, \" *transmit[s] the request.\" \" and \"review[s] the insurance estimate.\"", + "Here, considering each of the claim elements in turn, we find them all to be directed to well-understood, routine, conventional activities previously known to the industry.", + "And, when viewed as a whole, the computer components (e.g., *estimating station,\" \" *reviewer station,\" \" \"reinspection station\") of Appellants' method add nothing that is not already present when the steps are considered separately.", + "At the outset, we find the use of a graphical user interface is also well-known and conventional and disagree with Appellants' contention that independent claim 7 is like those at issue in DDR Holdings.", + "In DDR Holdings, the Federal Circuit found that the claims were directed to patentable subject matter because they *specify how interactions with the Internet are manipulated to yield a desired result--a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.\"", + "DDR Holdings, 773 F.3d at 1258.", + "Significantly, the Federal Circuit identified this limitation as differentiating from claims that \"recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operations\" and were, thus, found directed to patent-ineligible subject matter.", + "Id. at 1258-59, Here, independent claim 7 does not purport to improve the functioning of the computer system itself.", + "Nor does it effect an improvement in any other technology or technical field.", + "Instead, independent claim 7 amounts to nothing significantly more than an instruction to implement the abstract idea of \"processing an insurance estimate\" using generic computer components.", + "This is insufficient to transform an abstract idea into a patent-eligible invention.", + "We also note that Appellants' preemption argument does not alter our 6 101 analysis.", + "Preemption concerns are fully addressed and made moot where a patent's claims are deemed to disclose patent ineligible subject matter under the two-part framework described in Mayo and Alice.", + "Ariosa Diagnostics, Inc. V. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).", + "\"While preemption may signal patent ineligible matter, the absence of complete preemption does not demonstrate patent eligibility.\"", + "Id.", + "In view of the foregoing, we sustain the Examiner's 's rejection of independent claims 7-11 under 35 U.S.C. S 101.", + "Appellants do not provide any response to the Examiner's rejection of claims 2-6 under 35 U.S.C. S 101.", + "However, as the Examiner points out, there is no meaningful distinction between independent claim 7 and independent claim 2.", + "In view of the foregoing, we sustain the Examiner's rejection of independent claims 7-11 under 35 U.S.C. $ 101.", + "We select independent claim 7 as representative.", + "The remaining claims stand or fall with independent claim 7.", + "See 37 C.F.R. 8 41.37(c)(1)(iv).", + "We are not persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 7 under 35 U.S.C. 6 103(a) because the combination of Obora and Aquila does not disclose or suggest *requesting a reinspection by selecting a graphical user interface displayed by the reviewing station,' \" as recited by limitation [c] of independent claim 7 (see Appeal Br. 4-5; see also Reply Br. 3).", + "Instead, we agree with, and adopt the Examiner's findings and rationale as set forth at pages 5-7 of the Answer.", + "In making this determination, we note that Obora is directed \"a method and system of reinspecting individual insurance claims from the initial claim filing to post-completion of the final settlement, as well as overall management and control of the reinspection process\" (Obora I 2).", + "Obora discloses that its *insurance claim appraisals are each contained within a respective electronic workfile, each of the workfiles holding all pertinent data for processing an insurance claim\" (id. I 7).", + "Obora further discloses that its *insurance claim workfiles includes a loss estimate section, an appraisal section and a reinspection section, the reinspection section contains data on a reinspection of an insurance claim estimate\" (id. I 8; see also id. TI 20, 23).", + "Obora also discloses that its *reinspection tool is preferably stored in a computer readable medium residing on a second computer.", + "The second computer is in communication with the first computer over the wide area network\" (id. I 8; see also id. 11 20-21).", + "In this regard, Obora discloses that its *system 10 includes a communications server 12 in communication with various remote computers 14, including those located at vendors, body shops, salvage yards, insurance companies, and other terminals which may be used in an insurance processing environment\" (id. 1 19), which enables *insurance company managers, claims office personnel, and reinspectors and others involved in the insurance claims process\" to access insurance claim workfiles (id. 11 20- 21).", + "Obora discloses a remote terminal 14 for use by a reinspector includes several customizable databases for storing predetermined exception rules 63, calculations 65, status reminders 67, and report forms 68 for each insurance company utilizing the system 10.", + "The exception rules 63, as explained in greater detail below, are guidelines for determining whether an appraisal meets with a particular insurance company's practice.", + "(Id. I 26).", + "Obora further discloses report forms database 68 preferably contains electronic forms customized to each insurance company's standards for the reinspector to use in preparing reports to appraisers and repair shops on their performance.", + "The report forms database 68 may also contain forms for the reinspector to prepare and send directly to an insurance company concerning the performance of appraisers/repair shops performing work for the insurance company.", + "(Id.).", + "Obora also discloses that its communications server routes the assignment of each claim to the **appropriate appraiser/adjuster or body shop who will handle the claim (at step 72)\" and *also routes a copy of the assignment to the responsible reinspector who will handle the reinspection of the claim (at step 74)\" (id. I 28; see also id. at Fig. 6).", + "*[W]hen an assignment is completed by the appraiser or shop, the completed workfile is uploaded to the communications server (at step 80).", + "The communications server routes this completed workfile to the responsible reinspector's mailbox and performs an electronic appraisal review 82 of the workfile (at steps 82, 84)\" (id. I 28; see also id. at Fig. 6).", + "Following the electronic appraisal review 82 of the workfile, the \"results of the electronic appraisal review are routed to the responsible reinspector's mailbox in a report format (at step 88)\" (id. I 32) and the reinspector selects a workfile, i.e., insurance claims, to review and reinspect at the user interface on the reinspector's terminal 14 (id. 11 30-35).", + "We also note that Aquila is directed to insurance claim processing system which administers, tracks and manages insurance claim processing (Aquila I 3).", + "Aquila's 's system includes *[an] audit sub-system applies insurance carrier specific business rules, government regulations, and comprehensive trending analysis to detect and rectify any inconsistencies and irregular processing of claims, by auditing internal processes or user or service providers submitted data\" (id. ' 23).", + "More particularly, Aquila discloses that \"[alecording to certain business rules, the audit sub-system 240 can remove claims from the automated process and refer them back to the insurance carrier for personal attention\" (id. I 267).", + "Aquila also discloses that \"the audit sub-system 240 and the automated audit process can be initiated by a human participant such as a[n] insurance carrier appraiser after a certain amount of human auditing has already taken place.", + "In one embodiment, claim data can be sent directly to the audit sub-system 240 directly\" (id. I 269).", + "Initially, we note that the Examiner does not concede that Obora fails to disclose a **graphical user interface;\" (Ans. 5-7); but instead, the Examiner acknowledges that \"Obora et al. does not explicitly disclose the limitation that the request for reinspection is given from a graphical user interface displayed by the reviewing station\" (id. at 5).", + "Furthermore, Obora discloses that its **system 10 includes a communications server 12 in communication with various remote computers 14, including those located at vendors, body shops, salvage yards, insurance companies, and other terminals which may be used in an insurance processing environment\" (id. I 19), which enables *insurance company managers, claims office personnel, and reinspectors and others involved in the insurance claims process\" to access and update insurance claim workfiles (id. \" 20-21, 34-35).", + "Obora further discloses that its system includes a graphic user interface not only permits a user to enter and retrieve information from a workfile, but also permits the user to execute tasks involved in reinspection processing such as manipulating a plurality of claim workfiles, opening a specific work file and working on estimate data or correspondence related to the open file.", + "(Id. ' 38).", + "Thus, Appellants' argument is not persuasive to show error in the Examiner's rejection of independent claim 7.", + "In view of the foregoing, we sustain the Examiner's rejection of independent claim 7 under 35 U.S.C. 6 103(a).", + "We also sustain the Examiner rejection of claims 2-6 and 7-11 which were not separately argued, and as such, fall with independent claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2015002266_DECISION.json b/opinion_split/2015002266_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0aad6172c19a1f93491f45b292a5e410fe376177 --- /dev/null +++ b/opinion_split/2015002266_DECISION.json @@ -0,0 +1,50 @@ +{ + "appellant_arguments": [ + "An apparatus for removing carpet comprising: a base; a hoist engaged with the base, wherein a pulling line speed of the hoist is greater than or equal to about 33 feet per minute; a resilient line with first and second ends, wherein the first end is removably engaged with the hoist; a carpet gripping means removably engaged with the second end of the resilient line; and at least one friction surface engaged with a bottom surface of the base for holding the base in position.", + "The Appellant argues claims 1-4, 7-10, and 12-17 in two groups: 1) claims 1-4, 7, 9, 10, and 12-17, and 2) claim 8 (App. Br. 6-10).", + "The Appellant argues that compared to hoists, winches provide power and torque which are large and pulling line speeds which are slow and variable (versus substantially constant for hoists) (App. Br. 6-7).1", + "The Appellant provides web site pages which show that winches and hoists are different products (App. Br. 7).", + "Claim 8 requires a carpet gripping means which comprises a top plate, a bottom plate, at least one tack strip and an least one nut and bolt assembly, \"wherein the top plate comprises a top pull plate and the bottom plate comprises a bottom restrictor plate, and wherein the top pull plate and bottom restrictor plate are removably engaged with each other via the at least one nut and bolt assembly.\"", + "The Appellant asserts that the Appellant's s Specification and Figures 1 and 2 indicate that \"during carpet removal, the top pull plate will be disposed on one side of the carpet to be removed, and the bottom restrictor plate will be disposed on the opposite side of the carpet from the top pull plate\" (App. Br. 9).", + "The Specification states that \"Ti]n certain embodiments, the top plate comprises a top pull plate which acts to engage and pull the carpet to be removed, and the bottom plate comprises a bottom restrictor plate which acts to restrict the carpet to be removed from disengaging from the top pull plate\" (Spec. 6:18-20).", + "Claim 11, which depends from claim 8, requires that \"the bolt of the at least one nut and bolt assembly passes through the bottom restrictor plate, the carpet being removed and the top pull plate, and wherein the nut of the nut and bolt assembly engages with the bolt on the surface of the top pull plate opposite the bottom restrictor plate.\"" + ], + "examiner_findings": [ + "The Reference Barrett US 5,456,794 Oct. 10, 1995", + "Claims 1-4 and 7-17 stand rejected under 35 U.S.C. & 103 over Barrett.", + "The Examiner asserts that \"the nut and bolt assemblies of BARRETT are removable, so are capable of performing the intended use limitation of being capable of being passed through a carpet work being processed by the stripping device\" (Ans. 5)." + ], + "ptab_opinion": [ + "The Appellant appeals under 35 U.S.C. & 134(a) from the Examiner's rejection of claims 1-4 and 7-17.", + "We have jurisdiction under 35 U.S.C. & 6(b).", + "The Appellant's claim a carpet gripping device.", + "Claim 1 is illustrative: 1.", + "We affirm the rejection as to claims 1-4, 7-10, and 12-17 and reverse is as to claim 11.", + "We, therefore, limit our discussion to one claim in the first group, i.e., claim 1, and claim 8.", + "Claims 2-4, 7, 9, 10, and 12-17 stand or fall with claim 1.", + "See 37 C.F.R. \u25cf 41.37(c)(1)() (2012).", + "Barrett discloses a carpet stripping device comprising a base (20), a winch (62) engaged with the base, a winch cable (63) engaged at one of its ends with the winch, a carpet gripping device (90) engaged with the other end of the winch cable, and a friction surface (50) for holding the base in position (col. 4, 11. 36-43, 66-67; col. 5, 11. 13-19, Fig. 6).", + "\"Speed' \"controller 82 allows a user to vary the winch speed for maximizing the stripping process\" (col. 5, 11. 9-11).", + "\"A person of ordinary skill is also a person of ordinary creativity, not an automaton.\"", + "KSR Int'l Co. 17. Teleflex Inc., 550 U.S. 398, 421 (2007).", + "In making an obviousness determination one *can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\" KSR, 550 U.S. at 418.", + "A winch is \"[a] stationary motor-driven or hand-powered hoisting machine with a drum around which a rope or chain winds as the load is lifted\".", + "2 i.e., \"[a] machine having a drum on which to coil a rope, cable, or chain for hauling, pulling, or hoisting. ~3", + "Because a winch is a hoisting machine, Barrett's is disclosure that the winch speed is variable to maximize the carpet stripping process (col. 5, 11. 9-11) would have led one of ordinary skill in the art, through no more than ordinary creativity, to use either a winch or a hoist to achieve the desired maximized carpet stripping speed.", + "Thus, we are not persuaded of reversible error in the rejection of claim 1 and claims 2-4, 7, 9. 10, and 12-17 that stand or fall therewith.", + "Barrett's s carpet gripping device (90) comprises upper (92) and lower (94) jaw elements (each of which corresponds to the Appellant's bottom restrictor plate) (col. 5, 11. 15-16; Fig. 4).", + "The upper jaw element (92) is attached by nuts and bolts to a plate (93) (which corresponds to the Appellant's top pull plate) comprising grasping teeth (98) (col. 5, 11. 29-33).", + "The lower jaw element (94) is attached by nuts and bolts (projecting fasteners 96) to a plate (which corresponds to the Appellant's s top pull plate) comprising grasping teeth (95) (col. 5, 11. 25-27).", + "During patent prosecution, claims are to be given their broadest reasonable interpretation consistent with the Specification, as the claim language would have been read by one of ordinary skill in the art in view of the Specification.", + "See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983); In re Herz, 537 F.2d 549, 551 (CCPA 1976); In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976).", + "Limitations, however, are not to be read from the Specification into the claims.", + "See In re Prater, 415 F.2d 1393, 1405 (CCPA 1969).", + "The Appellant's Specification does not define \"bottom restrictor plate\" such that it excludes Barrett's is upper and lower jaw elements 92 and 94.", + "The Appellant's s interpretation of claim 8 improperly reads those embodiments into the claim.", + "Hence, we are not convinced of reversible error in the rejection of claim 8.", + "Barrett's bolts do not pass through the carpet (12) and the nuts do not engage the bolts on the surface of the grasping teeth-containing plates (93, 95) opposite the jaw elements (92, 94) (Fig. 5).", + "The Examiner does not establish that the broadest reasonable interpretation, consistent with the Specification, of the Appellant's claim requirement of a bolt which passes through the carpet encompasses a bolt that can be removed from the device and inserted through the carpet.", + "Also, the Examiner does not address the claim requirement that the nut of the nut and bolt assembly engages with the bolt on the surface of the top pull plate opposite the bottom restrictor plate.", + "The Examiner, therefore, has not established a prima facie case of obviousness of the device claimed in the Appellant's claim 11." + ] +} \ No newline at end of file diff --git a/opinion_split/2015002970_DECISION.json b/opinion_split/2015002970_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..48970385bdac747ab6b825590e6961ec12badc39 --- /dev/null +++ b/opinion_split/2015002970_DECISION.json @@ -0,0 +1,42 @@ +{ + "appellant_arguments": [ + "BACKGROUND Appellants' invention relates to \"methods for producing alpha-olefins (u-olefins), and in particular for selectively isomerizing an a-olefin to a mixture of beta-olefins (B-olefins) and ethenolyzing at least a portion of the B-olefin to an a-olefin.\" Spec. I 1.", + "Claim 1, the sole independent claim, is representative: 1. A method for producing alpha-olefins comprising: converting a first alpha-olefin of either a 1-octene or a 1- nonene, each without polar impurities, to isomers of beta- olefins of either 2-octene or 2-nonene, respectively, with a homogeneous catalyst complex to achieve a greater than 90% conversion of the first alpha-olefin to the isomers of beta- olefins, and ethenolyzing at least a portion of the isomers of beta-olefins to propylene and a second alpha-olefin having one less methylene group than the first alpha-olefin. Appeal Br. 14 (emphasis added).", + "First, Appellants argue that combining the process of Nguyen with the teachings of Lin or Schrodi *would render Nguyen unsatisfactory for its intended purpose,' which, according to Appellants, is *to produce internal alkanes from 1-alkenes.\" Appeal. Br. 6-7.", + "Appellants also argue that Nguyen teaches that 1-alkenes are available from refineries, and does not teach that I-alkenes may be formed from the process disclosed by Nguyen. See id. at 7.", + "Second, Appellants argue that the combination of Nguyen, Lin, and Schrodi would *change the principle of operation of Nguyen,\" which, according to Appellants, *is isomerization.\" Appeal Br. 8-9; Reply Br. 6 (citing a dictionary definition of the terms isomerization and isomer).", + "Appellants argue that \"[i] contrast to Nguyen, Lin is directed toward preparation of alpha-olefins by ethenolysis.\" Appeal Br. 9 (citing Lin, Title).", + "Moreover, Appellants argue that *Lin explicitly teaches that *strong isomerization activity,' as in the unmodified Nguyen process, is not useful in the ethenolysis process.\" \" Id.", + "Finally, Appellants argue that Nguyen, Lin, and Schrodi do not teach the limitation of claim 1 requiring \"greater than 90% conversion of the first alpha-olefin to the isomers of beta-olefins.\" Id. at 10-12.", + "In particular, Appellants argue that even with *close to 100% isomerization,\" conversion of *up to 70% or more of the internal alkenes\" to 2-alkenes does not overlap with requirement of *greater than 90% conversion. \" Id. at 11.", + "Appellants argue that there is only one example (Example 3) in Nguyen that specifically indicates the proportion of 2-alkene in the mixture of internal alkenes, and the proportion is only \"59% of a 96% isomerization.' Id. at 12.", + "Noting that claim 42 of Nguyen is directed to \"forming internal olefin comprised of at least about 60 mole-% of 2-alkene(s),\" Nguyen 12:41-42, Appellants argue that the difference between the claimed value and the disclosed value of 59% is 1%; therefore, \"the clear meaning and/or required correspondence' between the specification and claims for \"70% or more of the internal alkenes' is 70% 2-alkene plus 1% 2-alkene.\" Reply Br. 8." + ], + "examiner_findings": [ + "I. Claims 1, 2, and 7-10 are rejected under 35 U.S.C. . 103(a) as being unpatentable over U.S. Patent No. US 6,355,855 BI (issued Mar. 12, 2002) [hereinafter Nguyen] in view of U.S. Patent No. 5,055,628 (published Oct. 8, 1991) [hereinafter Lin] and Int'l Pub. No. WO 2008/046106 A2 (published Apr. 17, 2008) [hereinafter Schrodi]. Final Action 5-8.", + "II. Claim 6 is rejected under 35 U.S.C. 5 103(a) as being unpatentable over Nguyen, Lin, and Schrodi, and further in view of Guisheng Li et al., Ring-substituted Cyclopentadienyltitanium Complexes (CiLCR'R/An)TICE: Efficient Catalyst Precursors for Stereoselective Conversion of ofTerminal Olefins to (2E)-alkenes, 72 J. Molecular Catalysis L15 (1992) [hereinafter Li]. Final Action 8-10.", + "The Examiner finds that Nguyen teaches the step in claim 1 of \"converting a first alpha-olefin \u00b7 \u00b7 to isomers of beta-olefins,\" including all its limitations, and that Lin and Schrodi teach the step of **ethenolyzing at least a portion of the isomers of beta-olefins.\" See Final Action 5-8.", + "In particular, the Examiner finds that Nguyen teaches the use of a homogeneous catalyst to achieve greater than 90% conversion of the a- olefin to the isomers of the B-olefins. See id. at 6 (citing Nguyen 3:64-67 (\"In most cases the 2-alkene will account for at least about 50%, particularly at least about 60% and up to 70% or more of the internal alkenes formed. \").", + "The Examiner finds that Nguyen teaches that conversion to internal alkenes may be \"close to 100%, \" and that the 2-alkene content of this internal alkene mixture may be *70% or more,\" \" which **suggests no upper limit for the 2- alkene content of the internal olefin product.\" Answer 6-7.", + "In light of these findings, the Examiner determines that at the time of invention, it would have been obvious to one of ordinary skill in the art to modify the process of Nguyen to ethenolize the 2-alkenes to produce propylene and a 1-alkene having one less methylene group than the 1-alkene fed to isomerization, as taught by Lin and evidenced by Schrodi, because Lin teaches that the alpha-olefins produced are useful products. Final Action 7-8 (internal citations omitted).", + "The Examiner further determines that it is within the level of one of skill in the art to have modified the process of Nguyen by utilizing the product of Nguyen in the process of Lin because Lin teaches that \u00b7 \u00b7 \u00b7 a feedstock such as a product of Nguyen can be further processed to produce different products such as propylene and a smaller alpha-olefin. Answer 6.", + "Moreover, in the context of rejecting dependent claim 6, the Examiner found that *Li also discloses high conversion rates, over 90%, for the isomerization of I-octene and I-nonene\" when using a homogeneous catalyst complex. Final Action 9 (citing Li Tbls. 1, 2)." + ], + "ptab_opinion": [ + "Appellants argue the claims as a group. See Appeal Br. 6-12.", + "Therefore, consistent with the provisions of 37 C.F.R. 5 41.37(c)(1)(iv) (2013), we limit our discussion to independent claim 1, and all other claims stand or fall together with claim 1.", + "We find this argument unpersuasive of reversible error.", + "The Examiner cites Lin and Schrodi to establish a reason for using the reaction products of Nguyen to produce 1-alkenes.", + "Appellants have not shown that Nguyen teaches away from the further processing steps taught by Lin or Schrodi. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (Teaching away requires a reference to *criticize, discredit, or otherwise discourage the solution claimed. \")", + "We find this argument unpersuasive of reversible error.", + "According to the Examiner's rejection, see Final Action 6-8, Lin and Schrodi relate to the second step of \"ethenolysing at least a portion of the isomers,\" which occurs after the first step of \"converting a first alpha-olefin \u00b7 \u00b7 \u00b7 to isomers of beta- olefins\" as recited in claim 1. See Appeal Br. 14.", + "Thus, Appellants have not shown how the teachings of Lin and Schrodi regarding the second step teach away from the use of isomerization in the production of beta-olefins in the first step.", + "We do not find this argument persuasive of reversible error.", + "By its literal terms, the range of \"at least about 60 mole-% of *2-alkene(s)\" specified by claim 42 of Nguyen constitutes a range of 60-100%, and claim 42 specifies a much broader set of reaction conditions and potential catalysts than reflected in Example 3.", + "Moreover, the Examiner's conclusion of obviousness is based on the fact that Nguyen teaches a range (*up to 70% or more\" of a conversion \"close to 100%) that overlaps the range of \"greater than 90% conversion\" specified in claim 1.", + "Appellants have not pointed to any evidence that the prior art teaches away from the range of *greater than 90%, \" that the catalysts taught by Nguyen are incapable of conversion rates within the range required by claim 1, or any other factual evidence sufficient to show that that a person of ordinary skill in the art would not have considered the range of *70% or more\" disclosed by Nguyen to include *greater than 90% conversion.' \"", + "Appellants have not directed our attention to factual evidence disputing this finding, which supports the Examiner's determination that a person of ordinary skill in the art would have understood Nguyen as teaching a range that includes greater than 90% conversion.", + "Therefore, by a preponderance of the evidence on this appeal record, we are not persuaded that the Examiner reversibly erred in rejecting claim 1.", + "For the same reasons, we find no reversible error in the Examiner's decision to reject claims 2 and 6-10, which depend from claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2015003443_DECISION.json b/opinion_split/2015003443_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..b5469753210850a0d6b8ca100167f335cc6ef22b --- /dev/null +++ b/opinion_split/2015003443_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "Appellants argue, relying principally upon a \"Declaration of David R. Sigler Under 37 C.F.R. 5 1.132*! filed September 20, 2013 (hereinafter \"Sigler Declaration\" or \"Sigler Decl. \"), that the tops of the raised areas 15 of Urech define the spherical base weld face surface 7 and as such, the raised areas 15 **cannot at the same time 'project outwardly' from the base weld face surface 7 as stated in claims 1 and 6.\" Appeal Br. 10 (citing Sigler Decl. I 19).", + "Appellants assert that this difference in structure is apparent from the disparities in function. See id. at 11-13." + ], + "examiner_findings": [ + "THE REJECTION Claims 1, 2, 6-8, and 10 are rejected under 35 U.S.C. & 103(a) as unpatentable over Urech (US 4,591,687, issued May 27, 1986).", + "In response, the Examiner relies on an annotated version of Figure 2 of Urech, appearing at page 4 of the Answer, and takes the position that *each of the individual ridges project[s] outwardly from the surface[ ] of the face (contour of bottom of ridges shown by dashed line make the spherically domed weld face in which ridges extend up and out from the face.' Ans. 5 (citing Urech, Figs. 2 and 6).", + "As to Appellants' arguments that the grooves of Urech do not provide the same functional attributes, the Examiner states that any functional attributes are a recitation of the intended use and that Urech is capable of performing these functions. See id. at 11." + ], + "ptab_opinion": [ + "THE INVENTION Appellants' claimed invention relates to welding electrodes for electrical resistance welding.", + "Claims 1 and 6 are independent.", + "Claim 1 is illustrative of the claimed subject matter and is reproduced below: 1. A welding electrode comprising a body with a round, spherically domed weld face for contact of the spherically domed face with a workpiece in an electrical resistance welding operation, the spherically domed weld face comprising concentric circular rings of ridges that are separated by surfaces of the spherically domed weld face such that the concentric circular rings of ridges are spaced from each other radially from a center of the spherically domed weld face, the concentric circular rings of ridges being positioned to contact and impress into a workpiece surface with each of the individual ridges projecting outwardly from the surfaces of the spherically domed weld face that are adjacent thereto, the concentric circular rings of ridges having height dimensions in the range of twenty micrometers to two hundred micrometers and spacings between ridge heights in the range of eighty micrometers to fifteen hundred micrometers, and wherein the material of the concentric circular rings of ridges is susceptible to degradation in welding operations.", + "ANALYSIS Claim 1 requires, inter alia, a spherically domed weld face that contacts a workpiece, and ridges that project outwardly from the surfaces of the spherically domed weld face.", + "Claim 1 requires, \"a round, spherically domed weld face for contact \u00b7\u00b7\u00b7 with a workpiece,\" and claim 6 requires, \"a domed weld face configured at one end of the body to contact a sheet metal workpiece surface.\" Br. 15-16 (Claims App.).", + "The Examiner does not point to any disclosure or provide any technical reasoning that establishes that what is regarded as a spherical weld face in Urech, i.e., an arc extending along the bottoms of the plurality of ridges, would, or is capable of, contacting the workpiece, as required by the claims.", + "To the contrary, Urech discloses that \"the material of sheets 25 and 26, in the vicinity of the axis of the electrode, penetrates to a depth of about 50% of the depth of the groove into grooves 11 and 12.\" Urech, col. 17, 11. 21-24; Figs. 2 and 3.", + "Urech also discloses that \"raised areas of the electrodes press into the relevant workpiece-parts while parts of the set-back areas come into contact with workpiece-material.\" Id. at col. 10, 11. 18-22 (emphasis added).", + "As such, the Examiner-defined spherical weld face at the innermost extent of the ridges does not, in the intended use of the electrode, contact the surface of the workpiece, as claimed, nor has the Examiner established by a preponderance of the evidence that it is capable of doing so.", + "Accordingly, the rejection of claims 1, 2, 6-8, and 10 is not sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2015003687_DECISION.json b/opinion_split/2015003687_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..cef5c7da2f3935443f0f04445b01714484ee5eab --- /dev/null +++ b/opinion_split/2015003687_DECISION.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [ + "Claims 21-28 Appellants argue the Examiner erred in finding the prior art teaches \"digital fingerprints based on the content of a continuity counter, packetized identifier and first bits of a payload of packets,' \" as recited in independent claims 21 and 25 and their respective dependent claims 22-24 and 26-28. App. Br. 10-12, 15; Reply Br. 5-6.", + "Moreover, Appellants argue the Examiner's withdrawal of the rejection of claim 17, which also includes the foregoing disputed limitation, is inconsistent with the Examiner's maintaining the same rejection (based upon the same references) of claims 21-28, and that the Examiner fails to explain the basis for rejecting claims 21-28. Reply Br. 2.", + "Moreover, as Appellants argue, Reply Br. 5, those paragraphs of Rodriguez disclose fingerprinting of video frames based on the (video) content of pictures or frames, whereas Appellants\" claims require fingerprints based on a **continuity counter,\" *packetized identifier, and \"first bits of a payload of packets. \"", + "Claim 29 Appellants argue the prior art cited by the Examiner fails to teach \"a packet loss petition message including digital fingerprints of several packets correctly received before and after the lost packet,\" and *search for a copy of the lost packet on the basis of the digital fingerprints.\" App. Br. 6, 22.", + "As Appellants argue, however, Reply Br. 8, the \"ACK\" message in McLaren acknowledges receipt of packets and only results in the retransmission of a lost packet when the ACK message is not received by the first computer. McLaren I 23." + ], + "examiner_findings": [ + "THE REJECTION ON APPEAL Claims 21-29 stand rejected under pre-AlA 35 U.S.C. , 103(a) as unpatentable over Hamazaki (US 2007/0223535 A1; pub. Sept. 27, 2007), Rodriguez et al. (US 2009/0328237 A1; pub. Dec. 31, 2009) (\"Rodriguez\") and McLaren et al. (US 2011/0134930 A1; pub. June 9, 2001) (\"McLaren\"). Final Act. 2-7.2", + "In the Final Action, the Examiner's rejection of claims 21 28 is based explicitly upon the Examiner's s stated reasons for rejecting claim 17. Final Act. 6-7.", + "In rejecting independent claim 21, the Examiner simply states \"[cllaim 21 is analyzed and interpreted as a *customer device\" as [sic] the apparatus to perform the steps of claim 17.\" Final Act. 6: see also id. 7 (rejection of claim 25 also citing claim 17).", + "The Examiner nevertheless maintains the rejection of claim 21, asserting that the \"limitations within the claim[]** were not \"ignored\" and that it was *given the broadest reasonable interpretation in light of the specification.\" Ans. 3.", + "In initially rejecting claim 17, the Examiner appears to rely on Rodriguez's paragraphs 22-28 for this limitation, Final Act. 4, but the Examiner has withdrawn that rejection.", + "The Examiner finds both of the foregoing limitations of claim 29 in McLaren's 's paragraph 23. Ans. 4.", + "With respect to the \"packet loss petition message,\" the Examiner finds \"McLaren clearly discloses that the ACK message returned from the 2nd computer to the first computer is an acknowledgement that a data packet was lost, which results in a subsequent retransmission of the lost packet. This is interpreted [as] 'petitioning' for a lost packet as recited in the claims.\" Ans. 4." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejections in light of the arguments raised in the Briefs, on the record before us.", + "For the reasons set forth below, we do not sustain the Examiner's rejections.", + "Appellants' arguments persuade us of error.", + "The Examiner provides no further analysis of claim 21 in the Final Action.", + "Although the Examiner states, **[f]urther discussion is listed below,\" \" id., none of that discussion pertains to limitations recited in claim 21 and there is no further analysis of that claim.", + "Claim 25 is not mentioned in the Answer.", + "We cannot discern, on the record before us, the Examiner's basis for rejecting independent claims 21 and 25 (and their dependent claims), and particularly the Examiner's basis for finding the limitation \"digital fingerprints based on the content of a continuity counter, packetized identifier and first bits of a payload of packets,\" which appears in each of claims 17, 21, and 25.", + "We discern no finding in the record as to how these elements are disclosed, taught, or suggested by the cited passage in Rodriguez.", + "Accordingly, on the record before us, we cannot sustain the rejection of claims 21-28 under pre-AIA 35 U.S.C. 8 103(a) as unpatentable over Hamazaki, Rodriguez, and McLaren.", + "Moreover, the Examiner does not explain how the ACK message taught in McLaren \"includes digital fingerprints of several packets correctly received before and after the lost packet,\" as recited in the claim.", + "Appellants, therefore, persuade us of error, and we need not reach Appellants' remaining arguments.", + "Accordingly, on the record before us, we cannot sustain the rejection of claim 29 under pre-AIA 35 U.S.C. $ 103(a) as unpatentable over Hamazaki, Rodriguez, and McLaren." + ] +} \ No newline at end of file diff --git a/opinion_split/2015004068_DECISION.json b/opinion_split/2015004068_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..cae12e18805706a93cafa41ec05ce07105783ea5 --- /dev/null +++ b/opinion_split/2015004068_DECISION.json @@ -0,0 +1,25 @@ +{ + "appellant_arguments": [ + "Appellants first argue that Traversat fails to teach a cellular communication network and this is reinforced by the Specification's disclosure that cellular network implementations at the time the application was filed did not permit for terminal end-to-end communications. App. Br. 7-8.", + "Second, Appellants argue there can be no prima facie basis of obviousness because Traversat teaches rendezvous proxy 206 may permit communication across subnetworks, whereas Bantz's AHC facilitates communication only between devices within a single subnetwork 10. App. Br. 8-10; Reply Br. 1-3.", + "Appellants argue the Examiner does not address the limitation *all* recited in claims 1 and 22. App. Br. 10-12." + ], + "examiner_findings": [ + "The Examiner finds Traversat teaches a cellular phone is part ofa a peer-to-peer network. Ans. 4 (citing Traversat I 75).", + "Furthermore, the Examiner finds Bantz teaches a cellular peer-to-peer network that permits terminal end-to-end communications. Ans. 4 (citing Bantz, 2:63-3:9, Fig. 2).", + "The Examiner finds a person having ordinary still in the art would have combined Traversat's cellular phone on a peer-to-peer network and Bantz's cellular communication network to support wireless data communication within the coverage area of a cell base as a simple substitution. Ans. 5, 12.", + "In addition, the Examiner finds a person having ordinary still in the art would have combined Traversat's cellular phone on a peer-to-peer network and Bantz's cellular communication network to support wireless data communication within the coverage area of a cell base as a simple substitution. Ans. 5, 12.", + "The Examiner finds Traversat teaches a relay peer maintains information to other peers and the relay peer is selected from amongst all of the peers. Ans. 13." + ], + "ptab_opinion": [ + "We disagree with Appellants.", + "As for Appellants first argument, the cited portions of Bantz relied upon by the Examiner teaches a cellular peer-to-peer network that permits terminal end-to-end communications. See Bantz, 2:63-3:9, Fig. 2.", + "As for Appellants second argument, we note the test for obviousness is what the combined teachings of the references would have suggested to a person of ordinary skill in the art, not whether one reference may be bodily incorporated into the structure of another reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).", + "The Examiner, therefore, provides articulated reasoning with rational underpinnings to support the motivation to combine the teachings of Traversat and Bantz. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006).", + "We disagree with Appellants.", + "At the outset, Appellants argument lack rationale as to how Traversat and Bantz fail to teach the limitation \"all\" as recited in claims 1 and 22. Ans. 13; see also App. Br. 10-12.", + "Moreover, in its Reply Brief, Appellants do not rebut the Examiner's 's prima facie finding of Traversat teaching a relay peer that maintains information to other peers and the relay peer is selected from amongst all of the peers. Ans. 13; see generally Reply Br. 1-4,", + "Accordingly, for the reasons stated supra, we sustain the Examiner's rejection of claim I under 35 U.S.C. S 103(a).", + "Because Appellants have provided similar arguments against the rejections of claims 2-19, 22, 24-29, and 31-34 (see App. Br. 12), these claims fall with claim 1 for the same reasons as set forth above. See 37 C.F.R. 9 41.37(c)(1)(vii)." + ] +} \ No newline at end of file diff --git a/opinion_split/2015005097_DECISION.json b/opinion_split/2015005097_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..df2d34ee73b8eec0b0bba4d4ab565f260cc46e5f --- /dev/null +++ b/opinion_split/2015005097_DECISION.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [ + "According to Appellant, the application relates to a system that estimates a frequency spectrum for a digital signal using a predetermined template. Abstract.", + "Appellant asserts the Examiner errs in the rejection because \"[t]he frequency spectrum, as described in Sugar O. is not an estimation, but rather a plot of detected energy.\" Appeal Br. 17 (emphasis omitted).", + "Appellant further asserts the estimated frequency spectrum of Sugar is not in any way based on the signal type of the received signal. Appeal Br. 17.", + "Appellant, instead, relies on paragraph 28 of the Specification to implicitly support the disputed limitations of claim 38. Appeal Br. 5.", + "Specifically, Appellant states that paragraph 28 provides support for \"combining the estimated signal strength spectra data and the actual signal strength spectra data to obtain a combined signal strength spectra data,' as recited, for example, in claim 38. Appeal Br. 3." + ], + "examiner_findings": [ + "In rejecting claim 1. the Examiner finds that Sugar determines the type of class of a received signal and then estimates a frequency spectrum of the received signal based at least on the signal type of the received signal. Final Act. 5 (citing Sugar 11 9, 26-40, and 45).", + "More specifically, the Examiner finds that in Sugar the signal strength of the classified signal is estimated and displayed as a multi-line plot. Ans. 14-16 (citing Sugar 11 9, 45, 66-67 (see also summary spectrum information displayed at FIG. 4)." + ], + "ptab_opinion": [ + "Our review in this appeal is limited only to the above rejections and issues raised by the Appellant.", + "We have not considered other possible issues that have not been raised by Appellant and which are, therefore, not before us. See 37 C.F.R. 41.37(c)(1)(iv) (2014).", + "We have reviewed the Examiner's rejections and the evidence of record in light of Appellant's arguments that the Examiner has erred.", + "We disagree with Appellant's arguments and conclusions.", + "We adopt as our own, (1) the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken and (2) the findings and reasons set forth in the Examiner's Answer.", + "We concur with the conclusions reached by the Examiner and further highlight specific findings and argument for emphasis as follows.", + "We are not persuaded by Appellant's assertions.", + "Appellant does not provide sufficient evidence or a technical line of reasoning to persuade us the Examiner's findings constitute error.", + "Further, the Examiner correctly finds that the cited portions of Sugar illustrate and discuss displaying an estimated frequency spectrum that is based on the signal type of the received signal. Ans. 14-16.", + "Accordingly, we agree the combination of Sugar and Sugar '123 teaches or suggests the disputed limitations and we therefore sustain the Examiner's rejection of these claims.", + "Appellant does not make any other substantive argument regarding the rejection of independent claims 26, 38 and 42 or of any of the pending dependent claims. Appeal Br. 7.", + "Therefore, we likewise sustain the rejections of these claims under 35 U.S.C. & 103(a).", + "We sustain the Examiner's decision to reject independent claim 38 under . 112(a), as failing to comply with the written description requirement by impermissibly adding new matter to the original disclosure.", + "Here, Appellant does not dispute that the claims were newly added by amendment during prosecution. See Amendment filed May 22, 2013.", + "Appellant also does not dispute that the limitations in question are not expressly stated in Appellant's original disclosure.", + "While we do not disagree with Appellant's previous statement, we find that Appellant still fails to demonstrate that paragraph 28 provides support for all of the disputed limitations.", + "For example, Appellant's have not demonstrated that paragraph 28 describes determining signal strength spectra data differently for IEEE 802.11 type signals than for non-IEEE 802.11 type signals, nor does our review of paragraph 28 find descriptive support for this claim limitation.", + "Accordingly, Appellant fails to demonstrate support for the \"combining [of] the estimated signal strength spectra data [corresponding to one or more IEEE 802.11 signals] and the actual signal strength spectra data [corresponding to one or more non-IEEE 802.11 signals],\" as recited in claim 38.", + "We therefore find Appellant's Specification fails to reasonably convey to those skilled in the art that the inventor had possession of the subject matter at issue as of the filing date and the rejection of claims 38 is sustained.", + "Appellant provides similar arguments for independent claim 42 and thus we also sustain the rejection of claim 42.", + "Dependent claims 40, 41, 44, and 45 include the rejected limitations and we therefore also sustain the rejection of these claims.", + "Accordingly, based on the record before us, we sustain the Examiner's rejection of claims 38, 40-42, 44, and 45 for failing to comply with the written description requirement of 35 U.S.C. 112 (a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2015005118_DECISION.json b/opinion_split/2015005118_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4a68bfcc69ad924bbc5e385cf454fca5f04620be --- /dev/null +++ b/opinion_split/2015005118_DECISION.json @@ -0,0 +1,38 @@ +{ + "appellant_arguments": [ + "Appellants argue that Beckwith and DeLassus fail to teach forming microlayers (Br. 2-3).", + "Appellants contend that the disclosure on page 18 of the Specification establishes a meaning of microlayers where the microlayers are thinner than the bulk layers. Id.", + "Appellants argue that Beckwith and DeLassus would not have suggested ten or more layers in a multilayer film (Br. 3).", + "Appellants argue that the data in the Specification establishes unexpected results (Br. 3-8).", + "Appellants contend that comparative examples 1 to 4, 5, and 6 and examples 7, 8, 13, 15, and 17 all have similar total barrier layer thicknesses (id. at 3-4).", + "Appellants argue that Tables 7 and 8 on pages 45 and 46 of the Specification show that the oxygen transmission rate (OTR) of inventive examples 13 and 15 was significantly improved over the films of comparative examples 1 and 2 (Br. 4-5).", + "Appellants contend that Table 9 on page 47 of the Specification shows that microlayered examples 13, 14, and 15 showed substantially improved barrier performance despite having less oxygen scavenger material present (id. at 5).", + "Appellants contend that their evidence in the Specification is commensurate in scope with the claimed invention (id. at 5-6).", + "Appellants contend that the Specification includes examples falling within the description of passive oxygen barrier and active oxygen barrier (id. at 6)." + ], + "examiner_findings": [ + "FINDINGS OF FACT & ANALYSIS The Examiner finds that Beckwith teaches all the limitations of claim 1, except for the number microlayers being between 10 and 1000 (Ans. 2-3).", + "The Examiner finds that DeLassus discloses that the permeability is the sum of the layer thickness/permeability quotient of the layer and further, the thickness of the overall layer when increased reduces permeability (id. at 3).", + "The Examiner concludes that it would have been obvious to have 10 or more layers in the laminate of Beckwith in order to provide improved oxygen impermeability (id.).", + "The Examiner finds that the ratio of microlayer thickness to bulk layer thickness may be *about 1:1.1,\" which includes a 1:1 ratio (Ans. 4).", + "The Examiner finds that DeLassus teaches that thicker layers impart better oxygen impermeability to a barrier layer (Ans. 3).", + "The Examiner concludes that it would have been obvious to increase the number of barrier layers to 10 layers or more in order to improve the oxygen impermeability of the film. Id." + ], + "ptab_opinion": [ + "Appellants' disclosure on page 18 of the Specification does not constitute a definition of microlayers.", + "Rather, the Specification at page 18 discloses that \"generally\" the thicknesses of the microlayers will be less than the thicknesses of the bulk layers.", + "Moreover, the microlayers are described as being *any suitable thickness\" (Spec. 18).", + "In other words, the Specification discloses the bulk layer and microlayer may both have the same thickness.", + "The Examiner reasonably finds that the claimed microlayers includes Beckwith's layer thicknesses for the oxygen scavenging layers of the film (id. at 2).", + "Accordingly, Appellants' arguments regarding a particular meaning of microlayers is not persuasive.", + "Beckwith, however, teaches that there may be four active and passive barrier layers (Representative Example 7, I 87).", + "Appellants' argument does not specifically address or otherwise show error with the Examiner's findings and conclusion regarding what the teachings of Beckwith and DeLassus would have suggested to the ordinarily skilled artisan.", + "Appellants' claim 1 is broad in that it only recites \"a bulk layer\" and \"a plurality of microlayers wherein at least one of the plurality of microlayers comprises an active oxygen barrier composition \u00b7 \u00b7 \u25a0 at least one microlayer comprising a passive oxygen barrier composition.\"", + "Claim 1 includes any and all bulk materials or active or passive oxygen barriers.", + "Appellants\" examples relied upon to show unexpected results are limited to only a few particular materials (Spec. 34-36).", + "Although Appellants are correct that they do not need to test every embodiment within the scope of the claims, citing In re Kao, 639 F.3d 1057 (Fed. Cir. 2011), the court in Kao held that there must be adequate basis to support the conclusion that other embodiments falling within the claim behave in the same manner. Kao, 639 F.3d at 1068.", + "Appellants make no allegation that the evidence is adequate to support that embodiments outside the disclosed examples would behave in the same manner (Br. 7).", + "Appellants' evidence is not commensurate in scope with the claims.", + "On this record, we affirm the Examiner's & 103(a) rejection over Beckwith in view of DeLassus." + ] +} \ No newline at end of file diff --git a/opinion_split/2015005269_DECISION.json b/opinion_split/2015005269_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..b8f8647fd594c0f31049568ae7fa1f6d03dfe09b --- /dev/null +++ b/opinion_split/2015005269_DECISION.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "Appellant contends that Samson 's element 230 is a stent, \"which is used to open an artery, and hence cannot be used to obstruct the right common carotid artery as recited in claim 1. Appeal Br. 3.", + "Appellant also contends that Samson does not disclose *expanding\" element 230 or element 240. Id.", + "Appellant argues that Figure 9 of Barbut '057 illustrates that **oxygenated blood flows in the normal direction through the carotid arteries\" and is not reversed in the right carotid artery as recited in claim 1. Appeal Br. 4.", + "Appellant contends that the Examiner's modification of Solano with Barbut '551 \"would make no sense to the skilled artisan, since Solano seeks to reverse flow in the right carotid artery to remove debris from destroying a lesion \u00b7 \u00b7 whereas the arrangement in relied-upon figure 23 of Barbut [ '551] increases normal blood flow through the carotid arteries.\" Appeal Br. 5 (citing Solano, Abstract, Barbut '551, col. 12, 11. 15-29, col. 13, 1. 8, Fig. 23).", + "Appellant argues that these teachings would lead a skilled artisan away from combining Solano and Barbut *551. Id. at 6.", + "Appellant argues that Barbut *370 discloses placing a first balloon at a common carotid artery and a second balloon at the external carotid artery *to cause retrograde flow through an internal carotid artery.\" \" Appeal Br. 6.", + "Appellant contends that the rejection is based on improper hindsight because it would not have been obvious to relocate the balloon in Barbut *370 from the external carotid artery to the aorta based on Weil because \"Weil teaches occluding the aorta to increase blood flow to other parts of the body. \" Id. at 6-7." + ], + "examiner_findings": [ + "1) Claim 1 is rejected under 35 U.S.C. 8 102(e) as anticipated by Samson (US 6,673,040 B1, issued Jan. 6, 2004).", + "2) Claim 1 is rejected under 35 U.S.C. 102(e) an anticipated by Barbut '057 (US 6,555,057 B1, issued Apr. 29, 2003).", + "3) Claims 1 and 4-9 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Solano (US 4,921,478, issued May 1, 1990) and Barbut '551 (US 6,231,551 B1, issued May 15, 2001).", + "4) Claims 3-7 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Samson and Thramann (US 6,482,172 B1, issued Nov. 19, 2002).", + "5) Claims 8 and 9 are rejected under 35 U.S.C. 6 103(a) as unpatentable over Samson.", + "6) Claims 1 and 3-9 are rejected on the ground of nonstatutory obviousness-type double patenting over claims 1-3, 7, 8, 11-13, 17, and 18 of Barbut *370 (US 6,146,370, issued Nov. 14, 2000) and Weil (US 5,195,942, issued Mar. 23, 1993).", + "The Examiner finds that Samson discloses all the limitations of claim 1. Final Act. 4-5.", + "The Examiner specifically finds that Samson's elements 230 and 240 are the recited first constricting member. Id. at 4 (citing Samson, Fig. 2).", + "The Examiner responds that *stent 230 is delivered by passing through catheter 250\" and \"the expanded diameter of stent 230 is larger than the diameter of catheter 250.\" Ans. 4.", + "With respect to Samson's 's element 240, the Examiner submits that *stent delivery catheter 240 is clearly shown as a balloon in Figure 2.", + "The expansion of this balloon would also result in a partial obstruction of the right common carotid artery.\" Id.", + "The Examiner admits that Samson does not disclose how stent 230 is delivered, but directs us to a number of patents referenced in Samson that disclose using balloons to expand a stent. Id. at 4-5.", + "The Examiner finds that Barbut '057 discloses all the steps of claim 1. Final Act. 5 (citing Barbut '057, Fig. 9).", + "The Examiner does not directly address Appellant's assertion that Barbut '057 shows blood flowing in the normal direction but, relying on MPEP & 2112.01, asserts that \"the Office has provided a sound basis for believing that the method of Appellant's and the method of the prior art is the same.", + "Appellant has not provided evidence showing that Barbut '057 does not possess the characteristics of the claimed method.\" Ans. 5-6.", + "The Examiner finds that Solano discloses a method of locating and expanding a first constricting member in the right common carotid artery but not locating and expanding a second constricting member in the aorta downstream of the left common carotid artery. Final Act. 6 (citing Solano, Figs. 9A-9E).", + "The Examiner finds that Barbut '551 discloses \"placing and expanding a constricting member (410) in a cerebral artery and also placing and expanding a constricting member (304) in the descending aorta downstream of the left carotid artery for the purpose of aiding in increasing blood flow to the other cerebral arteries.\" Id. at 6-7.", + "The Examiner concludes it would have been obvious to modify Solano \"by inserting and expanding a second constrictor, as taught by Barbut '551, in order to provide the stated advantages.\" Id. at 7.", + "The Examiner responds that Barbut '551 does not teach away from Solano but *enhances the method taught by Solano 0 by increasing the flow of blood to the brain through arteries in the aortic arch that are not occluded.\" \" Ans. 6.", + "The Examiner rejects claims 3-7 based on Samson and Thramann and claims 8 and 9 based on Samson. Final Act. 7-9,", + "The Examiner finds that claim 1 of Barbut *370 *substantially discloses [c]laim[] I of the instant application, *, but fails to disclose **occluding the aorta downstream of the left common carotid artery.\" Final Act. 11.", + "The Examiner finds that Weil discloses it is \"well known to place an occlusive member in the aorta in order to provide the advantage of increasing the blood flow to other parts of the body.\" Id. (citing Weil, col. 3, 11. 10-37).", + "The Examiner concludes it would have been obvious to modify Barbut *370 by Weil *in order to enhance the effects of the flow reversal procedure.\" Id.", + "the effects of the flow reversal procedure in Barbut *370 would be enhanced by moving the balloon located in the external carotid artery to the aorta downstream of the left common carotid artery as taught by Weil." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "For the following reasons, we do not sustain this rejection of claim 1.", + "We understand the Examiner's 's assertion that Samson's stent 230 expands after it passes through guiding catheter 250, but the claim requires expanding the second constricting member to at least partially obstruct the right common carotid artery.", + "The Examiner does not offer persuasive technical reasoning as to how stent 230, which is a device for opening an artery, expands to partially obstruct the artery after it passes through guiding catheter 250.", + "In addition, the Examiner has not directed us to any portion of Samson where it is disclosed that stent delivery catheter 240 is expanded in the right common carotid artery.", + "The Examiner's finding that Samson anticipates claim 1 is not supported by a preponderance of the evidence.", + "We, therefore, do not sustain the rejection of claim 1 as anticipated by Samson.", + "For the following reasons, we do not sustain this rejection of claim 1.", + "The Examiner has not directed us to any disclosure in Barbut '057 of blood flow *reversed in the right internal carotid artery.\"", + "\" The Examiner's finding that Barbut '057 anticipates claim 1 is not supported by a preponderance of the evidence.", + "We, therefore, do not sustain the rejection of claim 1 as anticipated by Barbut '057.", + "Barbut '551, which teaches increasing normal blood flow in the right carotid artery, would enhance the method of Solano which is directed to reversing flow in the right carotid artery.", + "We, therefore, do not sustain the rejection of claim 1 as unpatentable over Solano and Barbut '551 because the rejection lacks a rational underpinning.", + "We do not sustain the rejection of claims 4-9 for the same reasons.", + "The Examiner does not rely on Thramann to cure the deficiencies in the rejection of claim 1 based on Samson as discussed above nor does the Examiner point to any additional disclosure in Samson that would cure the deficiencies in the rejection of claim 1. Id.", + "We, therefore do not sustain the rejection of claims 3-7 as unpatentable over Samson and Thramann or the rejection of claims 8 and 9 as unpatentable over Samson for the same reasons discussed above for claim 1.", + "We do not sustain the obviousness type double patent rejection of claims 1 and 3-9 over Barbut '370 and Weil because the rejection lacks a rational underpinning." + ] +} \ No newline at end of file diff --git a/opinion_split/2015005447_DECISION.json b/opinion_split/2015005447_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..47dbfc0fc42be0cc1963dca860cf2f45b97cbd7d --- /dev/null +++ b/opinion_split/2015005447_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Introduction Appellants explain that typical cellular network services charge for long distance calls \"at a much higher per-minute cost than the per-minute cost applied to regular calls within the subscriber's calling plan\" (Spec I 1), and that subscribers may prefer \"a network service that permits [a] mobile device to connect calls through [a VoIP (Voice over IP)] network at less expensive rates th[a]n would normally be incurred\" (Spec ' 22 (reference numbers omitted)).", + "Appellants argue the Examiner errs because Larsson *merely discloses that the third party VoIP [application] sends application data to a third party server over the Internet,\" which fails to \"disclose or suggest that the third party VoIP application includes functionality for identifying a local access number for connecting a local access call through a local access point of fan MNO] network to a VoIP network that establishes the call to a call destination using VoIP.\" (App. Br. 14)." + ], + "examiner_findings": [ + "Rejections? Claims 1-5, 15-18, 21, and 24 stand rejected under 35 U.S.C. $ 103(a) as obvious over Poczo (US 2007/0072605 A1; Mar. 29, 2007), Siu et al. (US 2010/0311391 A1; Dec. 9. 2010), and Larsson et al. (US 2006/0268838 A1; Nov. 30, 2006), (Final Act. 4-14.)", + "Claims 8 and 20 stand rejected as obvious over Poczo, Siu, Larsson, and Reed et al. (US 2009/0249076 AI; Oct. 1, 2009). (Final Act. 14-15.)", + "Claims 9. 12-14, 22, and 23 stand rejected as obvious over Storey (US 2007/0250711 Al; Oct. 25, 2007), Mehta et al. (US 2002/0131404 Al; Sept. 19, 2002), and Larsson. (Final Act. 15-20.)", + "Claim 11 stands rejected as obvious over Storey, Mehta, Larsson, and Reed. (Final Act. 20-21.)", + "The Examiner relies on Larsson for teaching or suggesting the dispositive requirement of claim 1. (Final Act. 6-7 (citing Larsson \" 19- 21, 24, 38, 49, 51).)", + "The Examiner The Examiner answers by pointing to Larsson figures 1 and 8 and paragraphs 20, 49, and 50 as teaching the disputed limitation. (Id. 8-9.)" + ], + "ptab_opinion": [ + "I Appellants identify as the real party in interest Verizon Communications Inc. and its subsidiary companies. (App. Br. 3.)", + "Claim 1 is representative: 1. A method comprising: receiving, at a first network device, a Voice over Internet Protocol (VoIP) service activation request associated with a customer requesting activation of a VoIP network service for a plurality of subscribers, wherein the service activation request identifies types of mobile devices associated with the plurality of subscribers; identifying, by the first network device, one or more second network devices based on the types of mobile devices associated with the plurality of subscribers; and sending, based on the received VoIP service activation request, a subscriber activation request from the first network device to the one or more second network devices that each stores a mobile application, to cause the one or more second network devices to attempt to upload the mobile application to mobile devices associated with the plurality of subscribers, wherein the mobile application includes functionality for identifying, upon initiation of a call from a mobile device of the mobile devices associated with the plurality of subscribers, a local access number for connecting a local access call through a local access point of a mobile network operator (MNO) network to a VoIP network that establishes the call to a call destination using VoIP. (App. Br. 27 (Claims App *x) (dispositive requirement emphasized).)", + "As discussed in Larsson's background section, Figure 1 is a block diagram showing a mobile device connecting a call from a mobile *radio access\" network to a third-party VoIP service and thereby \"obtaining higher quality radio access bearer service but not having to pay for it\" (I 26), which Larsson explains entails **send[ing] a QoS [Quality of Service] request that includes an access point name (APN) to be used\" (I 20).", + "Larsson's Figure 8, which is part of a **solution that overcomes these problems [described with respect to Figure 11\" (I 22), *is a diagram illustrating non-limiting example signaling between various GPRS/EDGE [General Packet Radio Service/Enhanced Data rates for Global Evolution] nodes\" (I 33), which Larsson explains entails \"an *attach* procedure by transmitting an Attach Request message that provides among other things its IMSI [International Mobile Subscriber Identity] (or other suitable identifier) to the SGSN [Serving GPRS Support Node]\" (I 49) and then, \"[w]hen a mobile station wants to start a VoIP session, it sends an Activate PDP [Packet Data Protocol] Context Request message to the SGSN (I 51).", + "Certainly Larsson teaches connecting wireless calls through an access point to a VoIP network.", + "Claim 1's dispositive requirement, however, is more specific.", + "We agree with Appellants that the relied-upon portions of Larsson are silent as to how or whether a mobile application identifies a local access number for connecting a local access call through an MNO's local access point as recited.", + "While the Examiner maps the above- mentioned disclosure to the disputed limitation, there is no explanation for how and/or why Larsson's above-discussed disclosure of connecting a wireless call to a VoIP network teaches or suggests the recited \"local\" features of the dispositive limitation.", + "We note, in an ex parte appeal, the Board *is basically a board of review--we review . \u00b7 \u00b7 rejections made by patent examiners.\" Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001).", + "\"The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner . , invite[s] the [BJoard to examine the application and resolve patentability in the first instance.\" Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999),", + "The Board's primary role is to make our decision based on the findings and conclusions presented by the Examiner. See 37 C.F.R. 8 41 41.50(a)(1).", + "We express no opinion as to the validity of the pending claims in view of additional explanation and/or references, and we leave any such further consideration to the Examiner,", + "Although the Board has authority to reject claims under 37 C.F.R. 8 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) 8 1213.02.", + "On the record before us, we do not sustain the rejection of claim 1, nor do we sustain the rejection of the other independent claims, 9 and 15, each of which include a commensurate version of the disputed limitation, nor do we sustain the rejection of the dependent claims, 2-5, 8, 11-14, 16-18, and 20-24." + ] +} \ No newline at end of file diff --git a/opinion_split/2015006073_DECISION.json b/opinion_split/2015006073_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..b75371936f9795bad2d22ddf3d72943f4bcf9ec2 --- /dev/null +++ b/opinion_split/2015006073_DECISION.json @@ -0,0 +1,73 @@ +{ + "appellant_arguments": [ + "Appellants argue claims 1-9 and 22 together.", + "Appellants contend that Varghese fails to disclose a predetermined baseline shear stiffness.", + "In support of this contention, Appellants argue that \"Varghese teaches a ibaseline image' (emphasis added) and not *a predetermined baseline shear stiffness,' as claimed.\"", + "Noting that step (f) *also calls for *quantifying a change in shear stiffness ... relative to a predetermined baseline shear stiffness, ** Appellants further contend that *no evidence can be found in Partridge making reference to tumor stiffness.", + "Hence, Appellant contends that the Examiner has incorrectly interpreted teachings found in Partridge.\" Appeal Br. 6.", + "In support of this contention, Appellants argue that \"Partridge can only be said to teach palpation in the context of size estimation and not quantifying shear stiffness.\" Id. at 7.", + "Next, Appellants contend that Manduca teaches away from the proposed combination with Varghese. See Appeal Br. 8-10.", + "In support of this contention, Appellants note that Varghese uses ultrasound elastography imaging and that Manduca states that ultrasound is \"undesirable for purposes of elasticity measurements. \" Id. at 9.", + "Appellants argue claims 10-14 together. See Appeal Br. 15.", + "After noting that claim 10 is a system claim, not a method claim (id. at 12), Appellants nonetheless \"assert[] that the arguments presented above with respect to claim I likewise apply to any commonality of claim elements.\" Id.", + "Appellants again argue that Varghese is directed to comparison of ultrasound signal values rather than imaging data produced by MRI. See Appeal Br. 13.", + "Appellants further argue that \"the Examiner failed to show some teaching, suggestion, or motivation in the prior art or knowledge of one of ordinary skill in the art that would have led one of ordinary skill to modify or combined the prior art teachings to arrive at the claimed invention.\" Appeal Br. 13.", + "In addition, Appellants contend that the \"proposed modification cannot render the prior art unsatisfactory for its intended purpose or change the principle of operation of a reference.\" Appeal Br. 14.", + "Appellants argue claims 15-22 together. See Appeal Br. 15.1", + "In contesting claim 15, Appellants essentially repeat the same arguments in support of the patentability of claims 1 and 10 which are addressed in the previous sections of this decision.", + "Appellants contend that \"Partridge does not disclose quantifying a change in shear stiffness relative to a predetermined baseline shear stiffness and, hence, cannot be said to teach or suggest performing such quantification timed relative to administration of chemotherapy.\" Appeal Br. 16.", + "In support of this contention, Appellants argue that \"the only description by Partridge alluding to the timing of tumor assessment is with reference to MRI volume changes.\" Id.", + "In addition, Appellants argue that because the Examiner referred to a system rather than a method, \"the Examiner failed to provide a proper suggestion or motivation for the combination.\" Appeal Br. 17.", + "Appellants argue that **Partridge does not teach quantifying such changes at a time interval less than 4 hours from treatment.\" Appeal Br. 18." + ], + "examiner_findings": [ + "The Examiner finds that Manduca discloses all of the limitations of independent claim 1 except for the step of *indicating a response of the tumor to the chemotherapy using a quantified change in shear stiffness\" and a method wherein *determining a stiffness entails quantifying a change in stiffness relative to a predetermined baseline stiffness.\" Non-Final Act. 6. 7.", + "The Examiner finds that Partridge teaches \"assessing an effectiveness of chemotherapy by way of palpation on a tumor following the administration of chemotherapy to a subject and indicating a response of the tumor to the chemotherapy.\" Id. at 6 (citing Partridge 1174-1781).", + "The Examiner further finds that Varghese teaches *acquiring a compression and baseline image for producing an elastogram.\" Id. at 7 (citing Varghese 2:26-31, 7:10-16).", + "Based on these findings, the Examiner determines that it would have been obvious \"to apply the assessment of Partridge et al to the elastic imaging of Manduca et al, as to provide an evaluation of therapy by way of high resolution imaging, and the baseline comparison of Varghese et al, as to provide accurate elastograms.\" Id.", + "Specifically, the Examiner finds that Manduca discloses *determining a stiffness within at least a portion of the region of interest. \" Non-Final Act. 6.", + "As noted by the Examiner, the rejection proposes the use of Varghese's baseline comparison technique with Manduca's 's determined stiffness. See Ans. 9.", + "As noted by the Examiner \"the limitation directed towards quantifying a change in stiffness is addressed by Varghese.\" Ans. 10.", + "The rejection proposes application of Partridge's assessment to Manduca's elastic imaging using Varghese's baseline comparison technique.", + "The Examiner responds to this argument stating that \"the Examiner intended to refer to the use of the system and not the system itself.\" Ans. 12.", + "Rather, the Examiner explains why it would have been obvious \"to have a time interval between the administration of chemotherapy and the MRE scan. \" Id. at 13." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We affirm-in-part.", + "We select independent claim 1 as the representative claim, and claims 2-9 and 22 stand or fall with claim 1.", + "Appellants' argument is not responsive to the rejection as articulated by the Examiner, which relies upon the combined teachings of Manduca and Varghese to meet this limitation.", + "Appellants do not explain why Varghese's 's baseline comparison technique could not be used with Manduca's determined stiffness.", + "Thus, Appellants do not apprise us of error.", + "Again, Appellants' argument is not responsive to the rejection as articulated by the Examiner.", + "As noted supra, the rejection proposes the use of Varghese's baseline comparison technique to quantify a change in stiffness relative to a predetermined baseline stiffness. See Non-Final Act. 7.", + "Appellants do not explain why Varghese does not teach quantifying a change in stiffness.", + "Although Appellants are correct that Manduca describes the use of ultrasound as *not directly suitable\" for elasticity measurements (see id. (quoting Manduca 239)), this is not indicative of error.", + "As discussed supra, the rejection, as articulated by the Examiner, does not propose replacing Manduca's MRI imaging with Varghese's ultrasound imaging.", + "Rather, the proposed rejection merely proposes applying Varghese's baseline comparison technique to Manduca's elastograms. See Non-Final Act. 7.", + "For these reasons, we sustain the Examiner's decision rejecting claim 1. and claims 2-9 and 22, which fall therewith.", + "We select independent claim 10 as the representative claim, and claims 11-14 stand or fall with claim 10.", + "Accordingly, we hold the Examiner's failure to address claim 10 as a system claim, as opposed to a method claim, as harmless error.", + "For reasons similar to those discussed supra, Appellants' argument is not responsive to the rejection as articulated by the Examiner, as the rejection does not propose the replacement of Manduca's 's imaging data with Varghese's ultrasound data.", + "This argument is foreclosed by KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching, suggestion, or motivation to combine known elements in order to show obviousness. KSR, 550 U.S. at 415.", + "The Court noted that an obviousness analysis \"need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\" Id. at 418.", + "Moreover, as quoted supra, the Examiner has articulated reasons for the proposed combination.", + "Appellants do not contest the Examiner's reasoning, and thus, do not apprise us of error.", + "However, Appellants do not explain why the proposed combination would render Manduca unsatisfactory for its intended purpose or explain what principle of operation would be changed by the proposed modification.", + "Accordingly, Appellants do not apprise us of error.", + "Moreover, as discussed supra, the allegedly discrediting teachings of Manduca (see id.) do not pertain to the proposed modification, because the rejection does not propose to replace Manduca's imaging data with Varghese's ultrasound data.", + "For these reasons, we sustain the Examiner's decision rejecting claim 10 and claims 11-14 which fall therewith.", + "We select independent claim 15 as the representative claim, and claims 16-22 stand or fall with claim 15.", + "These arguments are not persuasive for the reasons discussed supra.", + "We sustain the Examiner's decision rejecting claim 15, and claims 16-22, which fall therewith.", + "Appellants' argument is not responsive to the rejection as articulated by the Examiner. See Non-Final Act. 10.", + "Appellants do not explain why such modification would not meet the limitations at issue.", + "Although the Examiner referred to the system and not the method, we understand the rejection to be directed to the method.", + "Accordingly, we find the Examiner's misstatement in the Non-Final Action to be harmless error.", + "For these reasons, we sustain the Examiner's decision rejecting claim 23.", + "The Examiner does not directly respond to this argument. See Ans. 12-13,", + "The Examiner's reasoning does not explain why it would have been obvious for this time interval to be less than 4 hours from treatment as required by claim 24.", + "Thus, the Examiner fails to set forth a prima facie case of obviousness.", + "For this reason, we do not sustain the Examiner's decision rejecting claim 24." + ] +} \ No newline at end of file diff --git a/opinion_split/2015006085_DECISION.json b/opinion_split/2015006085_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..487217e2096018dc6fdd20527b529bfa5e99c1c5 --- /dev/null +++ b/opinion_split/2015006085_DECISION.json @@ -0,0 +1,77 @@ +{ + "appellant_arguments": [ + "The Appellants argue, inter alia, that \"such concept is specifically described in the specification as filed (e.g., at least at paragraph [0089].\" , App. Br. 22.", + "The Appellants submit that \"[a]t least in light of the above-quoted paragraph from Appellants' specification as filed, it should be clear that the Examiner has failed to set forth any evidence that claim 38 lacks written description support.\" Reply Br. 3." + ], + "examiner_findings": [ + "The Examiner relies upon the following as evidence of unpatentability: Lemelson US 4,347,472 Aug. 31, 1982 Kominami US 2003/0152088 A1 Aug. 14, 2003 Pollack US 2008/0039989 A1 Feb. 14, 2008 Pryor US 7,402,978 B2 July 22, 2008 Kelty US 2009/0021385 A1 Jan. 22, 2009 McLeod US 7,778,746 B2 Aug. 17, 2010", + "1. Claim 38 is rejected under 35 U.S.C. 8 112, first paragraph, for failing to comply with the written description requirement.", + "2. Claims 1, 2, 7, 8. 11, 21, 22, 25 and 39-41 are rejected under 35 U.S.C. .6 103(a) as being unpatentable over McLeod, Lemelson, Pryor and Pollack.", + "3. Claims 23, 24 and 36 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack and Kominami,", + "4. Claims 37 and 38 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack, Kominami and Kelty.", + "The Examiner's position is that \"Applicant's specification does not provide support for [the claim] limitation [alert that the preference specifying that the vehicle needs to be charged to allow travel of a corresponding distance by a certain time cannot be achieved (claim 38)].\" Final Act. 3.", + "The Examiner's position is clear: the Specification provides no description of said claim limitation.", + "According to the Examiner (Final Rej. 6), these steps are disclosed at col. 8, lines 53-63 of McLeod, which we reproduce below:", + "In so finding, the Examiner construed the claim phrase \"dynamic attribute\" to cover McLeod's disclosed \"energy rate (Sk Wh) information for on-peak and off-peak utility rates. \" See Ans. 6.", + "The combination of McLeod and Lemelson does not specifically teach that said received from the vehicle information includes charging preferences corresponding to a charging of the vehicle, wherein the one or more charging preferences are defined by an operator, which is disclosed in Pryor (selecting a charge mode by a user via a user interface 120 C. 3, L. 40-50, 65-68; C. 4, L. 6-30, 47-48, 58-64).", + "Furthermore, defining charging preferences by the user of the vehicle indicates the \"desired\" limitation.", + "It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the combination to include the recited limitations, as disclosed in Pryor, since the claimed invention is merely a combination of old elements . Final Rej. 5-6." + ], + "ptab_opinion": [ + "Jeffrey R. Ambroziak, et al. (Appellants) seek our review under 35 U.S.C. 8 134(a) of the Final Rejection of claims 1, 2, 7, 8, 11, 21-25, and 36-41.", + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "Claim 1, reproduced below, is illustrative of the subject matter on appeal.", + "1. An electrical charging system, comprising: a vehicle sensor; a communication device; a processor in communication with the vehicle sensor and the communication device; and a memory in communication with the processor, the memory storing instructions that when executed by the processor cause the processor to: (a) receive, from the vehicle sensor, information indicative of a presence of a vehicle in a parking space; (b) receive, from the communication device, information indicative of one or more charging preferences corresponding to a desired charging of the vehicle, wherein the one or more charging preferences are defined by an operator of the vehicle; (c) determine a first value of a dynamic attribute of an electric charge provider; (d) determine, based at least on the one or more charging preferences and the first value of the dynamic attribute, a charging schedule for the vehicle; (e) initiate a charging of the vehicle in accordance with the charging schedule; (f) retrieve a second value of the at least one dynamic attribute; and (g) repeat (d) and (e), utilizing the retrieved second value of the dynamic attribute as the first value of the dynamic attribute.", + "The following rejections are before us for review:", + "Did the Examiner err in rejecting claim 38 under 35 U.S.C. 8 112, first paragraph, for failing to comply with the written description requirement?", + "Did the Examiner err in rejecting claims 1, 2, 7, 8, 11, 21, 22, 25 and 39-41 rejected under 35 U.S.C. 8 103(a) as being unpatentable over McLeod, Lemelson, Pryor and Pollack?", + "Did the Examiner err in rejecting claims 23, 24 and 36 rejected under 35 U.S.C. & 103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack and Kominami?", + "Did the Examiner err in rejecting claims 37 and 38 rejected under 35 U.S.C. 6 103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack, Kominami and Kelty?", + "The rejection of claim 38 under 35 U.S.C. 5 112, first paragraph, for failing to comply with the written description requirement.", + "This argument is repeated in the Reply Brief (see Reply Br. 2).", + "As in the Reply Brief (Reply Br. 3), we reproduce para. 89 of the Specification (as filed on July 13, 2009):", + "[0089] In addition to computing and implementing a charging regimen to meet the user specified parameters, the ECS can communicate with the user/driver to alert the driver to potential problems.", + "For example, with reference to the example above, the ECS may determine that the cost of electricity will be below $.10/kWh for only two of the next eight hours.", + "The ECS may send a message to this effect to the user via a user specified node, such as a message on a dashboard display device, a message sent to a cell phone, an email account or the like.", + "The user may be enabled to reply so as to modify or override a predetermined parameter selection.", + "For example, the user may relax the maximum price for electricity attribute.", + "In addition, the predefined parameter selections may include directions for actions to be taken when the predetermined charging regime cannot be met.", + "Compliance with the written description requirement is a question of fact.", + "Ralston Purina Co. V. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).", + "We have carefully reviewed para. 89 of the Specification.", + "The term \"alert\" is indeed recited.", + "But it is recited in the context of the \"ECS [electric charging system] [] communicat[ing] with the user/driver to alert the driver to potential problems.' Para. 89.", + "This does not equate to or otherwise disclose an \"indication of the charging schedule compris[ing] an alert that the preference specifying that the vehicle needs to be charged to allow travel of a corresponding distance by a certain time cannot be achieved\" (claim 38) as claimed.", + "Having the ECS communicate with the user/driver to alert the driver to potential problems (para. 89) is not equivalent to having an alert as part of an indication of the charging schedule (claim 38).", + "\" \u00b7\u00b7\u00b7 [T]he specification must contain an equivalent description of the claimed subject\" matter.\"", + "Lockwood V. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997), \"What is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue.\"", + "Festo Corp. V. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002).", + "Para. 89 of the Specification provides inadequate written descriptive support for the claim limitation at issue.", + "Thus, the argument, which relies on para. 89 of the Specification, is unpersuasive as to error in the rejection.", + "That is a fact a preponderance of the evidence supports.", + "The remaining arguments have been considered but are unpersuasive as to error in the rejection.", + "Accordingly, the rejection is sustained.", + "The rejection of claims 1, 2, 7, 8, 11, 21, 22, 25 and 39-41 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over McLeod, Lemelson, Pryor and Pollack.", + "Independent claim 1 sets out the following steps: (c) determine a first value of a dynamic attribute of an electric charge provider; (d) determine, based at least on the one or more charging preferences and the first value of the dynamic attribute, a charging schedule for the vehicle; (e) initiate a charging of the vehicle in accordance with the charging schedule; (f) retrieve a second value of the at least one dynamic attribute.", + "The charging schedule for a specific vehicle 21 is based upon energy rate (SkWh) information for on-peak and off-peak utility rates, and the length of time to recharge.", + "The base station 17 processor 23 determines a charge initiation window from when off-peak hours start and end, and assigns vehicles 21 exhibiting the deepest state of discharge the earliest start time and those vehicles 21 exhibiting lesser degrees of discharge start times near the end of the window, thereby staggering the load placed on the electrical system.", + "Assuming arguendo that McLeod's disclosed \"energy rate (Sk Wh) information for on-peak and off-peak utility rates\" is encompassed by the claim phrase \"dynamic attribute\" as that claim phrase is reasonably broadly construed, the question is whether McLeod discloses or would lead one of ordinary skill in the art to (c) determine a first value of a [\"energy rate (SkWh) information for on-peak and off-peak utility rates\"] of an electric charge provider; (d) determine, based at least on the one or more charging preferences and the first value of the [\"energy rate (SkWh) information for on- peak and off-peak utility rates\"], a charging schedule for the vehicle; (e) initiate a charging of the vehicle in accordance with the charging schedule; (f) retrieve a second value of the [\"energy rate ($kWh) information for on-peak and off-peak utility rates\"].", + "In other words, claim 1 calls for determining a first value (e.g., \"energy rate (SkWh) information for ... [an] off-peak utility rate[ 1.\") \"determin[ing], based at least on [a] charging preference[] ] and the first value many a charging schedule for the vehicle,\" \"initiat[ing] a charging of the vehicle in accordance with the charging schedule,\" and \"retriev[ing] a second value. \"", + "In contrast, lines 53-63 of col. 8 of McLeod describe a scenario whereby, within \"a charge initiation window from when off-peak hours start and end, \" \"vehicles [] exhibiting the deepest state of discharge\" are charged first and vehicles with \"lesser degrees of discharge [are given] start times near the end of the window.\"", + "Arguably, in setting \"a charge initiation window from when off-peak hours start and end,\" McLeod necessarily performs, antecedent-wise, step (c) of claim 1; that is, (c) determin[ing] a first value of a [\"energy rate (SkWh) information for on-peak and off-peak utility rates\"] of an electric charge provider.", + "Also arguably, in setting \"a charge initiation window from when off- peak hours start and end,\" McLeod has determined a charging schedule for a vehicle based on said first value of the [\"energy rate (SkWh) information for on-peak and off-peak utility rates\"].", + "However, step (d) requires more.", + "It requires determining a charging schedule, \"based at least on the one or more charging preferences\" in addition to the first value of the [\"energy rate (SkWh) information for on- peak and off-peak utility rates\"].", + "\" The charging preference according to claim I is \"receive[d] from [a] communication device [and is] information indicative of one or more charging preferences corresponding to a desired charging of the vehicle, wherein the one or more charging preferences are defined by an operator of the vehicle,\" defined by an operator of the vehicle.\"", + "The Examiner has not adequately explained how one with an ordinary skill in the art would reach said step.", + "While McLeod discloses a \"charging schedule for a specific vehicle [] based [on] the length of time to recharge\" (see col. 8, lines 53-63), this is insufficient as evidence that McLeod discloses a charging schedule \"based at least on the one or more charging preferences\"; wherein said charging preferences are \"receive[d] from [a] communication device [and is] information indicative of one or more charging preferences corresponding to a desired charging of the vehicle, wherein the one or more charging preferences are defined by an operator of the vehicle.'", + "The Examiner appears to have recognized this because the Examiner states:", + "But the Examiner does not explain why one of ordinary skill would be led to modify McLeod to include user interfaces for selecting a charge mode by users as Pryor discloses.", + "McLeod discloses a \"charging schedule for a specific vehicle [] based [on] the length of time to recharge\" (see col. 8, lines 53-63).", + "Why one would modify or substitute that set schedule to accommodate a schedule under a user's control via an interface for selecting a charge mode is not adequately explained.", + "For the foregoing reasons, a prima facie case of obviousness for the subject matter of claim 1, and the claims dependent on claim 1, has not been made out by a preponderance of the evidence.", + "We reach the same conclusion as to the other independent claim (claim 39) and the claims depending therefrom \u00b7 which also calls for \"receiv[ing], from the communication device, information indicative of one or more charging preferences corresponding to a desired charging of the vehicle, wherein the one or more charging preferences are defined by an operator of the vehicle\" and \"determin[ing], based at least on the one or more charging preferences and at least one current value of a dynamic attribute of an electric charge provider, a charging schedule for the vehicle. \"", + "The rejection of claims 23, 24 and 36 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack and Kominami.", + "The rejection of claims 37 and 38 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over McLeod, Lemelson, Pryor, Pollack, Kominami and Kelty." + ] +} \ No newline at end of file diff --git a/opinion_split/2015006298_DECISION.json b/opinion_split/2015006298_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..074fdb11e9c536a9b4e44882fe2db5f7ca5f4627 --- /dev/null +++ b/opinion_split/2015006298_DECISION.json @@ -0,0 +1,124 @@ +{ + "appellant_arguments": [ + "Patent Owner provided three Declarations by Simon Bates, Ph.D. to support their arguments.", + "Patent Owner contends that amorphous ritonavir is not present in Dias's co-precipitate because the endotherm at the melting point of amorphous ritonavir was not observed. Appeal Br. 19-20.", + "To support this position, Patent Owner cites testimony from Dr. Bates Third Declaration.", + "Second, Dr. Bates acknowledged that amorphous ritonavir was produced by Dias: Further, in my opinion, the co-precipitated products of Martin and Dias contain regions of amorphous ritonavir (see, paragraph 14) and these regions would not have been understood or expected by a person having ordinary skill in the art in July 1998 to be *substantially pure** as that term is used in the *359 Patent.", + "First, a person having ordinary skill in the art in July 1998 would have expected the presence of residual solvent in the regions of amorphous ritonavir in the co-precipitated product of Martin and Dias, and therefore that the regions of amorphous ritonavir were not substantially pure. Second Bates Declaration I 17.", + "Dr. Bates testified the Dias is \"reporting the physical stability of the co-precipitated product, and not the ritonavir contained within the co-precipitated product.\" Second Bates Declaration I 16.", + "Patent Owner argues crystalline ritonavir would not have been detected in Dias's co-precipitate at the levels of ritonavir present. Appeal Br. 23-25.", + "Patent Owner's support for the argument comes from Hancock which has the following disclosure: As there is no long-range three-dimensional molecular order associated with the amorphous state, the diffraction of electromagnetic radiation (e.g., X-rays) is irregular compared to that in the crystalline state (Figure 4).", + "Diffraction techniques are perhaps the most definitive method of detecting and quantifying molecular order in any system \u00b7 \u00b7 . Conventional X-ray powder diffraction measurements can be used to quantify non-crystalline material down to levels of about 5% [footnote omitted] and with temperature and environmental control can also be used to follow the kinetics of phase transformations, or to quantify the presence of a crystalline drug in an amorphous excipient matrix [footnote omitted]. Hancock 5.", + "Patent Owner states: Therefore, even if the ritonavir mixture contained less than 10% of non-amorphous ritonavir, a person having ordinary skill in the art in July 1998 would have understood that the known limits of detection of PXRD [powder x-ray diffraction] would not be able to confirm the amounts of non-amorphous ritonavir in the ritonavir coprecipitates of the Dias Poster. Id. at 23.", + "Dr. Bates contends that the ritonavir described in Dias is not *substantially pure\" because \"a person having ordinary skill in the art in July 1998 would have expected the presence of residual solvent in the regions of amorphous ritonavir in the co-precipitates of \u00b7 \u00b7 \u00b7 [Dias].\" Third Bates Declaration I 12.", + "Dr. Bates also stated that Dias *notes that its co-precipitate is formed by solvent evaporation.", + "The presence of residual solvent may act as a plasticizer for the ritonavir thereby inducing crystallization.", + "This would render the ritonavir not substantially pure as recited in the claims of the *359 Patent.\" Id.", + "See also II 24-25 discussing Yoshioka.", + "Furthermore, Dr. Bates testified that the drying process in Dias was not controlled. Id. at I 22.", + "Dr. Bates argues that the DSC performed in Dias is qualitative (Third Bates Declaration I 13), no Tg for amorphous ritonavir was observed (id. at II 17-18), and thus the DSC cannot be used to determine whether substantially pure amorphous ritonavir is present (id. at II 18-20).", + "Dr. Bates also testified that the substrates on which the ritonavir was deposited *will impact the amorphous ritonavir.\" Id. at I 16.", + "Dr. Bates discussed problems with interpreting the data using DSC. Id. at I 20.", + "Dr. Bates and Patent Owner have conjectured that the absence of the Tg of substantially pure amorphous ritonavir indicates that it is not present.", + "Patent also argues that Dias is deficient because the authors did not disclose certain conditions used to make the amorphous ritonavir.", + "Dr. Bates testified: Dias do not disclose the conditions under which the co- precipitates therein were created, and also include language indicating that even were the conditions therein reproduced, there would not be a reasonable likelihood that *substantially pure\" amorphous ritonavir would be obtained.", + "I Dias [is] silent with respect to how the co- precipitates therein were formed.", + "They do not disclose, for example, the appropriate temperature range (to avoid degradation), solvent combinations and amounts (to avoid physical instability and recrystallization of an API out of its amorphous state), and design variables (such as drying conditions, necessary to remove excess solvent) necessary to make *substantially pure\" amorphous ritonavir, as that term is used in the *359 Patent.", + "In particular, Martin and Dias fail to disclose or suggest how the solvents in the co-precipitates therein are removed. Second Bates Decl. I 21.", + "Patent Owner contends that there is ambiguity surrounding the nature of the co-precipitates prepared. Appeal Br. 21.", + "Patent Owner discusses the dissolution data of the two PVP forms as summarized in Table 1 of Dias, commenting that contrary to the results, one would have expected that the PVP K30 co-precipitate would have a higher dissolution than the more viscous PVP K90 co-precipitate at the 1:1 ratio of drug to PVP. Id.", + "Patent Owner states that the **coprecipitates are not exhibiting the expected normalized intrinsic dissolution relationship and it appears the PVP and the ritonavir may be interacting in some manner to impact these results.\" \" Id.", + "Patent Owner contends that the Examiner has not established that Dias's co-precipitate comprise amorphous ritonavir in the recited amounts. Appeal Br. 30.", + "Patent Owner came forward with rebuttal arguments and evidence, such as the First, Second, and Third Bates Declarations.", + "Patent Owner argues that the x-ray diffraction data is not quantitative, the ritonavir is at levels below which the crystalline form could be detected, solvent is present, and the conditions to make the amorphous ritonavir are not fully disclosed.", + "Patent Owner's s expert opined that solvent may be present and that such solvent could lead to crystallization of the ritonavir." + ], + "examiner_findings": [ + "The claims stand finally rejected by the Examiner as follows:", + "1. Claims 1, 2, and 4-10 under 35 U.S.C. \u25cf 102(b) as anticipated by or, in the alternative, under 35 U.S.C & 103(a) as obvious over Martin Abstract, I as evidenced by Kempf 1,2 Norbeck, 3 and the Martin Poster.'' 4", + "2. Claims 1, 2, and 4-10 under 35 U.S.C. \u25cf 102(b) as anticipated by or, in the alternative, under 35 U.S.C & 103(a) as I Martin D. et al., Method of Preparing an Orally Bioavailable Solid Formulation of an Insoluble Protease Inhibitor as a Coprecipitate with PVP and other Excipients, 13(9):S351 Pharmaceutical and Analytical 7474 (1996). 2 Kempf. et al., ABT-538 is a potent inhibitor of human immunodeficiency virus protease and has high oral bioavailability in humans, 92 Pro. Natl. Acad. Sci. USA 2484-2488 (1995). 3 Norbeck et al., WO 97/01349, published January 12, 1997. 4 Martin et al., Method of Preparing an Orally Bioavailable Solid Formulation of an Insoluble Protease Inhibitor as a Coprecipitate with PVP and other Excipients, Abbott Poster (1996). obvious over Dias Abstract, as evidenced by Kempf I, Norbeck and the Dias Poster. 5", + "3. Claims 1, 2, and 4-10 under 35 U.S.C. \u25cf 102(b) as anticipated by the Dias Poster.", + "4. Claims 1, 2, and 4-10 under 35 U.S.C. \u25cf 102(b) as anticipated by the Martin Poster.", + "The Examiner rejected the claims over the disclosure in Dias of a co-precipitate of ritonavir and PVP.", + "The Examiner found that Dias expressly characterized ABT- 538 (ritonavir) as being present in the co-precipitates in an amorphous form, meeting the claims of claims 4-7 of of**amorphous ritonavir.' ~, RAN 12. See FF1-FF8.", + "With respect to the requirement that the claims have no more than about 10% of any other compound, the Examiner found that Dias stated that under storage conditions, as assessed by x-ray powder diffraction, there was no conversion to other polymorphic forms, indicating that no crystalline ritonavir is present. RAN 13, 20; FF8.", + "The Examiner's basis for finding that crystalline ritonavir is not present in more than an amount of about 10% in the amorphous ritonavir described in Dias is principally based on Dias's storage experiment.", + "In this experiment, Dias reported that the \"Results, shown in Figure 5, indicate that ABT-538 maintained its amorphous nature under the conditions studied.\" FF8.", + "With respect to the presence of 10% or less of crystalline ritonavir, the Examiner's basis, again, is the stability data described in FF8.", + "However, consistent with the Examiner's finding that the co- precipitation method was known in the art at the time of the invention (RAN 23), Dias indicates that the methods utilized were conventional: Thus, two methods of improving bioavailability of a high dose poorly soluble drug are: . increase solubility by changing solid state from crystalline to amorphous \u00b7 increase dissolution rates by increasing solubility . . .", + "The Examiner's basis for finding that Dias's co-precipitate meets the required quantities is the x-ray diffraction data of Figs. 4 and 5. RAN 12-13, FF8.", + "As to the solvent, Examiner had a reasonable basis to believe that such requirement was met based on the solvent evaporation technique utilized to remove solvent from the co-precipitate. FF3.", + "Thus, the Examiner provided evidence that the numerical limitations of claims 4-7 were met. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "The Examiner found that amorphous ritonavir is described in Dias based on Dias's explicit and repeated statements that amorphous ritonavir is formed when co-precipitated with PVP.", + "The Examiner's principal basis for finding that these values are anticipated by Dias is Dias's teaching that the amorphous ritonavir is stable and does not revert to the crystalline form.", + "The Examiner cited the x-ray diffraction patterns shown in Figs. 4 and 5 of Dias to support this finding.", + "As to the contention that Dias is not enabling, the Examiner found that co-precipitation with PVP was well-known prior to the filing date of the patent, a finding supported by the cited Yoshioka publication and Dias, itself." + ], + "ptab_opinion": [ + "We have not been directed to a document in these cases that is pertinent to the issues in this inter partes reexamination.", + "We refer to these as the First Bates Declaration (Jan 16 [no year given]), Second Bates Declaration (April 30, 2012), and Third Bates Declaration (August 13, 2013).", + "Based on his experience and education, we find that Dr. Bates is qualified to testify on the matters in his Declarations.", + "Summary We reverse grounds 1 and 2.", + "After reviewing the abstracts, we find that they do not fully support the anticipation or obviousness rejection as articulated by the Examiner. RAN 10, 12.", + "In addition, the Examiner did not adequately articulate a basis for determining that the claimed subject matter would have been obvious to one of ordinary skill in the art based on the abstracts.", + "We do not reach ground 4 (based on the Martin Poster).", + "As discussed at the oral hearing, ground 4 is weaker than ground 3 and essentially reiterates ground 3 (based on the Dias Poster) which is addressed in detail below.", + "The rejection of claims 1, 2, and 8-10 as anticipated by the Dias Poster is reversed (ground 3).", + "The rejection of claims 4-7 as anticipated by the Dias Poster is affirmed (ground 3).", + "We begin with claim interpretation because before a claim can be compared to the prior art, the words and scope of the claim must be properly interpreted.", + "We first turn to the patent specification to determine whether it provides guidance as to the meaning of *substantially pure. ++6", + "We adopt this definition of **substantially pure\" because it has been set forth with reasonable clarity and precision, providing explicit notice of its meaning. 7", + "Thus, substantially pure amorphous ritonavir can contain about 10% of other compounds, including the crystalline form of ritonavir.", + "This definition is consistent with the methods of preparing amorphous ritonavir described in the *359 Patent, which including preparing *substantially pure amorphous ritonavir\" by melting crystalline Form I (359 Patent, col. 3, 11. 36-39), adding a solution of crystalline Form I in a solvent to an anti-solvent (id. at col. 3, 11. 40-61), adding a solution of crystalline Form I to water (id. at col. 3, 11. 62-67, and lyophilization of a solution of ritonavir Form I (id. at col. 4, 11. 5-8).", + "Thus, we interpret the claim to be directed to the amorphous form of ritonavir where it has the state as defined in Hancock.", + "We therefore adopt its ordinary meaning as found in a general purpose dictionary to be \"a product of mixing or combining various elements or ingredients. ++9", + "Amorphous versus composition While amorphous ritonavir can contain other compounds, including ritonavir in crystalline form, amorphous ritonavir is not a composition because it is phase or state of matter unlike a composition which is a combination of elements or ingredients. See Hancock as reproduced above.", + "We have interpreted the claims to read on ritonavir in the amorphous form.", + "The amorphous form is a state of matter and not a composition. See \"Claim Interpretation\" section V. above.", + "Since Dias describes the amorphous ritonavir in the form of a composition, we reverse the anticipation rejection of claims 1, 2, and 8-10.", + "The issue in the rejection is whether Dias describes the presence of substantially pure amorphous ritonavir in the composition of PVP: ritonavir, where the amorphous ritonavir does not contain more than 10% of other compounds.", + "We begin with identifying the pertinent facts (findings of fact or \"FF\") in Dias necessary to determine whether the claimed subject matter is anticipated.", + "Patent Owner's s argument is not supported by a preponderance of the evidence.", + "First, Dias expressly states in several places throughout the poster that amorphous ritonavir was produced. FFI, FF4-FF8.", + "Despite the absence of the melting point endotherm, Dias still concluded that the amorphous form was present.", + "Patent Owner has not provided evidence to doubt the credibility of Dias.", + "Dr. Bates discussion on the absence of the glass transition temperature (Tg) for ritonavir as casting doubt on the presence substantially pure ritonavir (Third Bates Declaration I 18) has little merit in view of his explicit admission that amorphous ritonavir is present.", + "This statement is not supported by sufficient evidence.", + "As indicated above, Dias expressly refers to the reversion of the amorphous form to the crystalline form (FF8), providing evidence that Dias is in fact looking at the stability of the amorphous form and asking whether it reverts to the crystalline form.", + "Dias does not identify the presence of the crystalline form in the x-ray diffraction data, indicating confidence in his data.", + "While Dr. Bates provided testimony on Dias, we have not been directed to where in his declaration he commented on the level of detection argument.", + "This passage is not precisely on point because it refers to the detection of **non-crystalline material, ~ i.e., the amorphous state, down to levels of 5% in a material apparently comprising crystalline material, while the experiments in Dias were apparently to detect small amounts of crystalline ritonavir in material largely made of amorphous ritonavir.", + "Nonetheless, Hancock characterizes x-ray diffraction as *perhaps the most definitive method of detecting and quantifying molecular order in any system.", + "Hancock also states that it can be used to \"quantify the presence of a crystalline drug in an amorphous excipient matrix.\" Id.", + "Consistent with Hancock's statements, the Dias authors utilized the technique to detect crystalline ritonavir in amorphous ritonavir and concluded that the amorphous form of ritonavir was stable and that it did not revert to the crystalline form. FF8.", + "We credit this evidence over the declaration evidence.", + "Thus, while Patent Owner - without expert testimony - asserted that the levels of ritonavir would have been too low to detect crystalline ritonavir (Appeal Br. 23), the Dias authors clearly did not believe this to be the case because they used x-ray powder diffraction to look for the reversion of amorphous ritonavir to the crystalline form during the 2 week trial and reported none.", + "Dias therefore used x-ray diffraction in the same way described in Hancock.", + "Patent Owner does not have adequate factual support for this statement.", + "As explained above, Dias used the technique to detect crystalline drug in amorphous drug, and did not find any that reverted over the two week period.", + "We consider the Dias authors to be at least of ordinary skill in the art, and thus contrary to Patent Owner's unsupported statements that the ordinary skilled worker would have understood the levels of the crystalline form to be outside of the detection levels of x-ray diffraction, the Dias authors used it for that very purpose.", + "Dr. Bates testimony is not supported by adequate factual underpinnings.", + "Dr. Bates does not explain why the \"slow evaporation\" utilized in Dias (at p. 2, col. 1) would not eliminate all the solvent.", + "Dr. Bates states that residual solvent may induce crystallization and stability, but the stability experiments did not show reversion of amorphous ritonavir into the crystalline form, undermining Dr. Bate's rationale that instability-inducing residual solvent is present.", + "It is not necessary to rely on the DSC data in finding that the amorphous ritonavir was substantially pure, because the Examiner also found that the x-ray diffraction stability test provided evidence of its purity. RAN 13-14, 20.", + "We have discussed this issue above, and remain unpersuaded by Dr. Bates' testimony. See Section B(1).", + "However, as already discussed, Dr. Bates acknowledged that amorphous ritonavir is present. Second Bates Declaration I 17.", + "Consequently, the preponderance of the evidence in this record does not support Patent Owner's contention that Dias is not enabled to make substantially pure ritonavir since such methods were known in the art as established by Dias and Yoshioka.", + "Patent Owner did not identify testimony on this issue by Dr. Bates.", + "Patent Owner's argument is not persuasive.", + "First, Patent Owner did not provide evidence that PVP K30 would have been expected to have a higher dissolution rate than the PVP K90 grade.", + "Second, Dias commented on the behavior of the PVP K90 co-precipitate, stating that \"it behaved differently than the PVP K30 grade in that the intrinsic dissolution rate increased then dropped.\" Dias, p. 3, col. 1.", + "Dias said the drop off \"could be explained\" by the formation of a viscous pellet surfaces on contact with water retarding the dissolution rate. Id.", + "Thus, Dias noted the behavior of the PVP K90 and did not comment that it was unusual because it had higher dissolution rate than PVP K30.", + "With respect the argument that the ritonavir and PVP are *interacting in some manner\" to impact the dissolution results (Appeal Br. 21), we observe that it was known prior to the invention that PVP can inhibit drug crystallization so an \"interaction\" of some kind is entirely expected. Yoshioka 983 (see quoted passage above; also at 986 (col. 2): \"The use of PVP in amorphous dry coprecipitates with indomethacin significantly inhibits indomethacin crystallization at levels as low as 5% PVP and at temperatures as high as 70C.\") \")", + "As mentioned, Dr. Bates mentioned that the solvent can cause crystals to form; however, Dias did not report crystal formation consistent with the absence of solvent. FF8.", + "In considering the entirety of the evidence before us, including the Declarations and the Hancock publication, we conclude that a preponderance of the evidence supports the conclusion that Dias describes a composition with about 90% or more, 95% or more, and 97% or more of amorphous ritonavir.", + "SUMMARY The issue in the rejection over Dias is whether a preponderance of the evidence supports the Examiner's finding that Dias anticipates the compositions claims comprising substantially pure amorphous ritonavir.", + "While Patent Owner appears to challenge that amorphous ritonavir is formed in the co-precipitates because the glass transition temperature of the amorphous form was not observed, its own expert admits that amorphous ritonavir is present.", + "We find that the evidence is inadequate to support these contentions.", + "Specifically, the Dias authors utilized x-ray diffraction to determine whether crystalline ritonavir was present in their stored samples, providing evidence that at least one of ordinary skill in the art would have believed that the method was capable of detecting the crystalline form had it been present.", + "However, Patent Owner's s expert did not provide a strong factual basis to establish the presence of solvent in the co-precipitate.", + "Dias reported that the amorphous form was stable, and did not revert to the crystalline form, undermining the argument that instability-inducing solvent was present.", + "For the foregoing reasons, the rejection of claims 4-7 as anticipated by the Dias Poster is affirmed." + ] +} \ No newline at end of file diff --git a/opinion_split/2015006653_DECISION.json b/opinion_split/2015006653_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f90f75bdf8175be613298424aa3f899945dea019 --- /dev/null +++ b/opinion_split/2015006653_DECISION.json @@ -0,0 +1,80 @@ +{ + "appellant_arguments": [ + "The Appellants contend that Cheng teaches away from a golf ball core comprising a blend of two highly neutralized acid polymers because Cheng **only uses one or the other [HPF 1000 or HPF 2000] as a primary material [in a blend] and makes clear that the second material is different.\" Appeal Br. 10.", + "The Appellants contend that injection molding is not limited to blends of polymers having the same or similar Vicat softening temperatures.", + "In the Reply Brief, the Appellants also contend that the Examiner's rejection is based on impermissible hindsight because it is based on the Appellants\" own disclosure.", + "The Appellants support this contention by asserting primarily that Cheng suggests a modification to combine HPF 1000 or HPF 2000 with a second material, e.g., Surlyn@.", + "The Appellants contend that the Examiner has not provided sufficient evidence demonstrating that the prior art recognized a difference between Vicat softening temperatures of two materials to be a result effective variable.", + "The Appellants have not provided further arguments for the rejection of claims 6 and 13.", + "The Appellants merely rely on the arguments presented for the Examiner's rejection of claim I for this ground of rejection." + ], + "examiner_findings": [ + "I. Claims 1, 4, 5, 11, 14-18, 21, and 22 are rejected under pre-AIA 35 U.S.C. . 103(a) as unpatentable over Boehm (US 2008/0171617 A1, pub. July 17, 2008) and Cheng (US 2010/0179001 AI, pub. July 15, 2010).", + "II. Claims 6 and 13 are rejected under pre-AIA 35 U.S.C. . 103(a) as unpatentable over Boehm, Cheng, and Sullivan (US 2008/0220906 A1, pub. Sept. 11, 2008).", + "The Examiner finds that Boehm teaches substantially all of the claimed features of independent claim 1, including an inner core for a golf ball including a blend of a first and a second highly neutralized acid polymer.", + "Among other things, the Examiner acknowledges that Boehm does not disclose that the absolute value of the difference between the specific gravities of the first and the second highly neutralized acid polymer is no more than 0.005.", + "The Examiner relies on Cheng to teach other highly neutralized acid polymers suitable for a golf ball's inner core, i.e., HPF 1000 and HPF 2000, and concludes that \"li]t would have been obvious to one of ordinary skill in the art \u00b7 \u00b7 . to select materials suitable for injection molding at the same temperature, to form the blend of first and second highly neutralized acid polymers, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. \"", + "Also, the Examiner finds that the absolute value of the difference between the specific gravities of HPF 1000 and HPF 2000 is no more than 0.005.", + "The Examiner reasons that one of ordinary skill in the art would select polymers to be blended in a golf ball' inner core as a design choice, because the polymers have the same intended use.", + "The Examiner acknowledges that the combined teachings of Boehm and Cheng do not teach \"the difference in Vicat softening temperatures being as narrow as 2 degrees C or 1 degree C,\" as called for by claims 21 and 22.", + "To remedy this deficiency, the Examiner concludes: It would have been obvious to one or ordinary skill in the art \u00b7 to select highly neutralized acid polymers having Vicat softening temperatures differing by no more than 2 degrees or 1 degree, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller.", + "Particularly, the Examiner suggests that blending materials having the claimed difference of Vicat softening temperatures might impact manufacturing processes related to injection molding." + ], + "ptab_opinion": [ + "The Appellants appeal under 35 U.S.C. 5 134 from the Examiner's decision rejecting claims 1, 4-6, 11, 13-18, 21, and 22.2", + "Claims 2, 3, 7-9, 19, and 20 are cancelled; and claims 10 and 12 are withdrawn.", + "We have jurisdiction over the appeal under 35 U.S.C. 8 6(b).", + "We AFFIRM-IN-PART,", + "Claimed Subject Matter Claim 1.", + "the sole independent claim, is representative of the subject matter on appeal and is reproduced below.", + "1. A golf ball comprising: an inner core layer; an outer core layer essentially enclosing the inner core layer; an inner cover layer essentially enclosing the outer core layer; and an outer cover layer essentially enclosing the inner cover layer, wherein the inner core layer includes a blend comprising a first highly neutralized acid polymer having a first Vicat softening temperature between about 50 'C and about 60 C and a first specific gravity and a second highly neutralized acid polymer having a second Vicat softening temperature between about 40 C and about 60 OC and a second specific gravity, wherein the absolute value of the difference between the Vicat softening temperatures is no more than about 5 OC and the absolute value of the difference between the specific gravities is no more than 0.005; wherein the outer core layer comprises polybutadiene rubber and is at least about 5 mm thick; wherein the inner cover layer comprises a first thermoplastic material and the outer cover layer comprises a second thermoplastic material, wherein said thermoplastic material of each of the inner cover layer and the outer cover layer independently comprises at least one of an ionomer resin, a polyamide resin, a polyurethane resin, and a polyester resin.", + "Rejections?", + "See Final Act. 5.", + "See id. at 8.", + "ANALYSIS Rejection I Claims 1. 4. 5. 11, and 14-18", + "See Final Act. 5.", + "See Final Act. 5.", + "Final Act. 6 (emphasis added) (citing In re Leshin, 277 F.2d 197 (CCPA 1960)).", + "See Final Act. 6 (citing DuPont Data Sheets).", + "The Appellants' contention is not persuasive because it fails to explain how Cheng's disclosure criticizes, discredits, or otherwise discourages the solution claimed.", + "Cheng discloses two polymers (HPF 1000 or HPF 2000) but this does not constitute a disclosure that HPF 1000 or HPF 2000 cannot be blended together, or that discourages blending.", + "See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (\"mere disclosure of alternative designs does not teach away\"); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).", + "Moreover, we note that the Examiner relies on Boehm's disclosure to explain that highly neutralized acid polymers can be blended together.", + "See Final Act. 5; see Ans. 4.", + "And, as pointed out by the Examiner, HPF 1000 or HPF 2000 are highly neutralized acid polymers.", + "Final Act. 6.", + "See Appeal Br. 10; see also Reply Br. 20-21.", + "The Appellants' contention is not persuasive because it fails to explain why a person having ordinary skill in the art would not have found it obvious to blend together HPF 1000 and HPF 2000.", + "Reply Br. 14.", + "Reply Br. 14 (citing Cheng, para. 15).", + "The Appellants' contention does not explain, persuasively, error in the Examiner's s reasoning.", + "See Final Act. 6.", + "Indeed, both Boehm and Cheng disclose the use of highly neutralized acid polymers as having the same intended use, i.e., as materials in the core of a golf ball.", + "See Final Act. 5-6; Boehm, para. 210 (Table IV, HNPIa/HNP2a); Cheng, para. 15.", + "We have considered the Appellants remaining contentions, in the Appeal Brief and the Reply Brief, and have determined that they are not persuasive.", + "For example, the Appellants' contentions directed to the Examiner's application of In re Aller, 220 F.2d 454 (CCPA 1955), and Titanium Metals Corp. V. Banner, 778 F.2d 775 (Fed. Cir. 1985), are not persuasive because we do not rely on the Examiner's application of Aller or Titamium Metals to sustain the Examiner' s rejection of claim 1.", + "See Appeal Br., passim, Reply Br. passim.", + "Rather we rely solely on the Examiner's rejection of claim 1 provided in the Final Office Action.", + "Thus, we sustain the Examiner's rejection of independent claim 1.", + "For the same reasons, we also sustain the Examiner's rejection of 4, 5, 11, and 14-18, which are not argued separately.", + "Claims 21 and 22", + "Final Act. 8; Appeal Br. 13, 14, Claims App.", + "Final Act. 8 (emphasis added).", + "As such, the Examiner appears to rely solely on case law, i.e., a holding of Aller, to bridge the gap between the claimed ranges and the references (i.e., Boehm as modified by Cheng).", + "See Reply Br. 23.", + "The Appellants\" contention is persuasive.", + "At the outset, we note that the discovery of an optimum value of a result effective variable is ordinarily within the skill of the art.", + "See In re Aller, 220 F.2d at 456; In re Boesch, 617 F.2d 272, 276 (CCPA 1980).", + "However, an exception has been found where the parameter optimized was not recognized to be a result-effective variable.", + "In re Antonie, 559 F.2d 618, 620 (CCPA 1977).", + "In this case, the Examiner does not establish that each of the claimed Vicat softening temperature ranges were recognized to be a result effective variable.", + "At best, the Examiner relies on the Appellants' Specification to support the conclusion of obviousness.", + "See Ans. 4.", + "See Ans. 4 (citing Spec. para. 19).", + "However, the suggestion of a potential impact upon manufacturing processes related to injection molding, which is supported only from the Appellants' Specification, is insufficient to support the Examiner's conclusion.", + "Thus, the Examiner's is rejection of claims 21 and 22 is not sustained.", + "Rejection II", + "Appeal Br. 11; see also Reply Br. 16.", + "For the same reasons we have sustained the rejection of claim 1, we likewise sustain the rejection of claims 6 and 13." + ] +} \ No newline at end of file diff --git a/opinion_split/2015007026_DECISION.json b/opinion_split/2015007026_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d0c62bac68ecb5eb9e2ea0cb54c35b4f92eae17f --- /dev/null +++ b/opinion_split/2015007026_DECISION.json @@ -0,0 +1,15 @@ +{ + "appellant_arguments": [ + "Subsequent to the filing of the Examiner's Answer, Appellants abandoned the *855 Application (see, Jan. 14, 2016 Notice of Abandonment) and the *641 Application (see, Apr. 6, 2016 Notice of Abandonment)." + ], + "examiner_findings": [ + "The claims stand rejected as follows:", + "Claims 1-3, 7, 9, and 10 on the ground of non-statutory obviousness- type double patenting over claims 1-6, 11, and 14 of US Patent Application No. 12/151,855 (\"the *855 Application*).", + "Claims 1-3, 7, 9, and 10 on the ground of non-statutory obviousness- type double patenting over claims 1-6 and 11-14 of US Patent Application No. 12/599,641 (\"the *641 Application\").", + "In the Examiner's Answer, the Examiner withdrew the rejection of Claims 1-4, 7, 9, and 10 on the ground of non-statutory obviousness-type double patenting over claims 1-5 and 10-13 of US Patent Application No. 12/989,411 (\"the *411 Application\") in view of the abandonment of the *411 Application. Ans. 11.", + "Upon reconsideration of the scope of the conflicting claims, the Examiner also withdrew the rejection of claim 4 on the grounds of non-statutory obviousness-type double patenting over the claims of the '855 and '641 Applications. Id." + ], + "ptab_opinion": [ + "In view of the abandonment of the *855 and '641 Applications, we reverse the Examiner's rejections of claims 1-3, 7, 9 and 10 of the present application on the grounds of non-statutory obviousness-type double patenting as moot." + ] +} \ No newline at end of file diff --git a/opinion_split/2015007259_DECISION.json b/opinion_split/2015007259_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8ce99b2f1f861fbf1d07497bd563d1b79ae3bdf9 --- /dev/null +++ b/opinion_split/2015007259_DECISION.json @@ -0,0 +1,149 @@ +{ + "appellant_arguments": [ + "According to Owner, the present appeal is related to inter partes Reexamination Control No. 95/002,222, which was requested for US 6,892,861 B2 (the **861 Patent\"), PTAB Appeal 2014-004459 (\"the *4459 Appeal\"). PO App. Br. 1.", + "Owner argues that the original claims provide adequate written description support for the new claims because the original claims' lack of any limiting language causes the original claims to be broad enough to encompass the situation in which the modernizing device is not removed:", + "[T]he ACP acknowledges that original claim 1 does not recite that the modernization device is removed once the modernization is complete.", + "In addition, the ACP notes that claim 11 specifically recites that the modernizing device is removed once the modernization is complete.", + "Accordingly, based on claim differentiation with respect to the original claims[,] which themselves provide a written description, there is no requirement that the modernization device operate once the modernization has been completed because claim 1 is broad enough to be construed in such a manner and does not require the modernization device to be removed. PO App. Br. 29.", + "\"the language *modifying* modifies the *at least one elevator component, and the language *using the modernizing device* modifies the term *modernization' and not the verb \"modifying.\"", + "There is no basis to construe this claim language in a manner to create confusion, as opposed to the reasonable broadest interpretation. \" PO App. Br. 30.", + "Owner argues that this rejection is improper for various reasons.", + "Owner first argues that the *Fortune Declaration is improper [and] should []be given [little or no] evidentiary weight.\" Id. at 5.", + "Owner also argues that claims 1 is not obvious over Schroder in view of Ovaska *857 because: (a) The term 'overlay' does not have a well-known meaning as asserted in the Fortune Declaration\" (id. at 10); (b) \"Ovaska *857's limited teaching of simple passive adaptors is not sufficient to make up the deficiencies of Schroder\" (id.at 12), and as such, **[]here is no motivation \u00b7 . \u00b7 to combine the teachings of Schroder and Ovaska** (id.).", + "Owner also argues that \"The RAN fails to show that one of ordinary skill in the art would have known to use destination signals [in the first instance] or how to modify the adapter of Ovaska *857.* Id. at 16.", + "Owner presents additional arguments in relation to dependent claims 2 and 3. Id. at 18-21.", + "Owner argues the nonobviousness of dependent claims 4 and 7 for the same reasons pertaining to claim 1. PO App. Br. 18.", + "Owner additionally argues that \"it is inappropriate to assume that the connection between the *matching computer' of Ovaska *204 with a drive line or car indicator line can be applicable to the adapter of Ovaska *857.\" Id.", + "Owner argues that Ichioka's interface does not constitute a modernizing device. PO App. Br. 20.", + "Owner further argues that this fact *is important because the three-way combination of [the cited art] fails to show or suggest 0 the combination of features[], including the feature of the input connected with *at least one car indicator line . \u00b7 receiving an indication signal. \" PO App. Br. 21.", + "Owner argues the nonobviousness of independent claim 10 for the same reasons pertaining to claim 1. PO App. Br. 18.", + "Owner additionally argues that the Examiner erred in finding, absent any supporting evidence, that \"it would be common sense to modernize one elevator control at a time so that the rest of the elevators remain operational. \" PO App. Br. 19 (citing RAN 27).", + "Owner argues that In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2011) stands for the proposition that **common sense, without more, cannot be relied [upon] in rejecting a claim. ~ PO App. Br. 19.", + "Owner additionally argues that the Examiner has failed to demonstrate that modernizing the elevators one at a time would have been common sense, specifically at the time of the invention. Id.", + "Owner argues the nonobviousness of independent claim 11 for the same reasons pertaining to claim 1. PO App. Br. 18.", + "Owner additionally argues that Ovaska *857 does not discuss modernizing a conveying cable, the elevator car, a drive, or the elevator control. PO App. Br. 20.", + "Owner argues the nonobviousness of new claims 16-33 for the same reasons pertaining to claim 1. PO App. Br. 21-22.", + "In separate sections of Owner's 's Appeal Brief, Owner then argues that claims 22-24 and 27 are not obvious for the reasons set forth in relation to claims 1-3. PO App. Br. 22.", + "Owner argues that claims 25 and 26 are not obvious for the reasons set forth in relation to claims 4 and 7. Id.", + "Owner argues that claims 16-18, 21, 28-30, and 33 are not obvious for the reasons set forth in relation to claims 1 and 16. Id. at 23.", + "Owner argues that claim 28 is not obvious for the reasons set forth in relation to claims 1 and 16. Id.", + "Owner argues that claims 17, 18, and 21 depend from claim 16 and are not obvious for the reasons set forth in relation to that claim. Id.", + "Owner argues that claims 29, 30, and 33 depend from claim 28 and are not obvious for the reasons set forth in relation to that latter claim. Id.", + "Owner argues that claims 17, 18, 29, and 30 are not obvious for the reasons set forth in relation to claims 2 and 3. Id.", + "Owner argues that claims 19 and 20 are not obvious for the reasons set forth in relation to claims 16, 4, and 7. Id. at 24.", + "Owner argues that claims 31 and 32 are not obvious for the reasons set forth in relation to claims 4, and 7. Id.", + "These arguments are not persuasive for the reasons set forth above in relation to claims 1-4, 7, 10, and 11." + ], + "examiner_findings": [ + "For reasons explained more fully below, the Examiner conducting the reexamination proceeding ultimately rejected original claims 1-4, 7, 10, and 11, as well as newly-added claims 16-33. PO App. Br. 2.", + "Claims 1-3, 10, 11, 22-24, and 27 stand rejected under 35 U.S.C. \u25cf 103(a) over Schroder, \"Advanced Dispatching,\" ELEVATOR World, 1990 (*Schroder\") in view of Ovaska (US 5,352,857, issued Oct. 4, 1994 (\"Ovaska *857*).", + "Claims 4, 7, 25, and 26 stand rejected under 35 U.S.C. .8 103(a) over Schroder in view of Ovaska *857 and Ovaska et al. (US 4,844,204; issued July 4, 1989) (\"Ovaska *204\").", + "Claim 7 stands rejected under 35 U.S.C. & 103(a) over Schroder in view of Ovaska '857 and Ichioka (US 4,724,931; issued Feb. 16, 1988) (\"Ichioka\").", + "Claims 16-18, 21, 28-30, and 33 stand rejected under 35 U.S.C. \u25cf 103(a) over Schroder in view of Ovaska '857 and Friedli (US 5,689,094; issued Nov. 18, 1997) (\"Friedli *094\").", + "Claims 19, 20, 31, and 32 stand rejected under 35 U.S.C. & 103(a) over Schroder in view of Ovaska *857, Friedli *094, and Ovaska *204.", + "Claims 16-33 stand rejected under 35 U.S.C. & 314(a).", + "Claims 16-33 stand rejected under 35 U.S.C. & 112, I 1.", + "Claims 16, 22, and 28 stand rejected under 35 U.S.C. & 112, I 2.", + "For several reasons, the Examiner rejects various combinations of new claims 16-33 under 35 U.S.C. & 314(a) for improper broadening.", + "New independent claims 16, 22, and 28, as compared to *465 patent claim 1, read in part: \"installing at least one floor terminal at each floor served by at least one of the plurality of [an] elevators controlled by the at least one existing [an] elevator control.", + "The new limitation is broader than claim 1 because it covers a plurality of elevators controlled by a single elevator control, as opposed to an elevator controlled by an elevator control.", + "The district court construed \"elevator installation, ~ consistent with the specification, to mean \"a group of elevators that convey passengers in a building, where each elevator is controlled by an elevator control\" and rejected Patent Owner's proposed interpretation that there could be one elevator control for the group of elevators. (Emphasis added.) (Request Ex. 3, pages 36-38.)", + "The district court construed \"elevator control\" to mean \"an existing device that controls the operation of the elevator - the identical elevator control that was in place before modernization,\" and rejected Patent Owner's proposed claim construction of\"a device for controlling the operation of the least one elevator.\" \" (Request, Ex. 3, pages 39-42.) ACP 5.", + "As noted by the Examiner, original claim 1 does encompass a single elevator controlled by a single controller.", + "The Examiner finds that \"new claim 16 is broader than original claim 1 because [claim 16] only requires receiving input of destination call reports or recognition of identification codes, whereas claim 1. as initially interpreted by the district court, requires both\" (emphasis added). RAN 6.", + "For similar reasons, the Examiner finds that independent claims 22 and 28 improperly broaden the scope of the original claim 1:", + "[N]ew independent claim 22, as compared to claim 1, recites: \"the [for] at least one floor terminal operative to receive an [of the] input of destination call reports [and for recognition of ofidentification codes of users]\" and \"connecting the at least one computing unit to said floor terminals for [at least one of] evaluating the destination call reports [and association of destination floors with recognized ones of the identification codes,] and for the output of at least one destination signal. ~", + "Thus, new claim 22 is broader than original claim 1 because it only requires receiving destination call reports and evaluating destination call reports, whereas claim 1, as initially interpreted by the district court, requires both receiving destination call reports and recognition of identification codes, and both evaluating destination call reports and associating destination floors with identification codes.", + "Additionally, new independent claim 28, as compared to claim 1, recites: \"the [for] at least one floor terminal operative to recognize [of the input of destination call reports and for recognition of] identification codes used to identify [of] users\" and \"connecting the at least one computing unit to said floor terminals for [at least one of evaluating the destination call reports and] association of destination floors with recognized ones of the identification codes and for the output of at least one destination signal. \"", + "In other words, new claim 28 is broader than original claim 1 because it only requires recognition of identification codes and association of destination floors with a recognized identification code, whereas claim 1, as initially interpreted by the district court, requires both receiving destination call reports and recognition of identification codes, and both evaluating destination call reports and associating destination floors with identification codes. RAN 6-7 (emphasis added).", + "Based upon these rationales, the Examiner rejects new claims 16-33 under 35 U.S.C. \u25cf 314(a). Id. at 7.", + "The Examiner determines that dependent claims 17, 18, 23, 24, 29, and 30 impermissibly broaden the original claims because these new claims are \"broader than original dependent claims 2 and 3.\" RAN 7; accord id. at 7, 8.", + "The Examiner reaches this conclusion based upon the fact that the new claims recite **stopping the communication of\" at least one existing electrical floor call or car call transmitter connection, whereas the original claims set forth \"interrupting\" these connections. Cf, e.g., original claims 2 and 3 with new claims 17 and 18.", + "The Examiner finds that claims 16-33 impermissibly broaden claim 1 because according to the Examiner, *[n]ew independent claims 16, 22 and 28 change 'connecting' to fresponsively connecting' in steps (b) and (c). 'Responsively connecting' represents a broadening over original claim 1 because it covers a connection that is only connected when it needs to respond, such as a wireless connection.\" RAN 9.", + "The Examiner finds (RAN 11-12 (citing ACP 11)) that newly added claims 16-33 lack adequate written description support for the full scope of the following newly added language (set forth with emphasis) that appears in the preamble of each if independent claims 16, 22, and 28: \"A method of modernizing an elevator installation having a plurality of elevators, \u00b7 \u00b7 \u00b7 the modernizing \u00b7 \u00b7 \u00b7 using at least one modernized device that is not required to operate once the modernization has been completed.\"", + "The Examiner takes the position that \"the *465 patent describes that the modernizing device is temporary and is removed once modernization is complete.\" ACP 11.", + "The Examiner finds that the claim language in question causes the newly added claims to now read on a wireless modernization device that may be left in place after the modernization. See id.", + "The Examiner reasons that *[nJowhere [does] the specification of the *465 patent describe that the modernization device may be left in place when modernization is complete. . Additionally, there is no wireless connection disclosed in the specification of the *465 patent.\" Id.", + "The Examiner finds claims 16, 22, and 28 to be indefinite for the following reason:", + "Examiner agrees with the Requester because, those claims add the limitation *modifying at least one elevator component in the elevator installation using at least one modernizing device that is not required to operate once the modernization has been completed\" in the preamble.", + "It is not clear what \"elevator component\" is being modified \"using the modernizing device. \" ACP. 12, (citing RAN 11).", + "As noted above, claims 1-3, among others, stand rejected as obvious over Schroder in view of Ovaska *857. PO App. Br. 4.", + "In rejecting these claims as obvious, the Examiner additionally relies upon Ovaska *204 for teaching these input signals to, as well as output signals from, the modernizing device. RAN 26; see also Request 36-43.", + "In further regard to claim 7, the Examiner additionally rejects claim 7 as obvious over Schroder, Ovaska *857, and Ichioka. E.g. RAN 12.", + "To the contrary, the Examiner specifically points to Ovaska '857 for teaching that the elevator installations can be modernized one at a time. See RAN 27.", + "The Examiner explains the modules modernized in Ovaska *857 specifically include door control and car panel (functions associated with the elevator car), as well as motor drive, elevator logic, floor signalization, and related functions.", + "\u00b7 \u00b7 \u00b7 Moreover, \"[the elevator-specific modules are not limited to those mentioned,\" and Ovaska '857 teaches that in a complete modernization, the rest of the components of the elevator installation may be modernized \u00b7 \u00b7 which includes those familiar to one of ordinary skill in the art, such as a conveying cable. RAN 28." + ], + "ptab_opinion": [ + "In the present appeal, we have jurisdiction under 35 U.S.C. \uc6a9\uc744 134 and 315.", + "We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).", + "We AFFIRM.", + "Pursuant to 37 C.F.R. & 41.77(a), we designate our affirmance of the obviousness rejections as NEW GROUNDS OF REJECTION PURSUANT TO 41.77(a).", + "We address each rationale individually.", + "The Examiner's stated reasons and Requester\" arguments, however, do not persuade us that the new claims are broader in any manner than original, independent claim 1.", + "The flaw in the Examiner's reasoning is that the Examiner is interpreting claim 1 unduly narrowly.", + "However, claim 1's breadth is not limited to such embodiments.", + "Claim 1 does not recite an elevator individually controlled by an elevator control.", + "Nor does it recite an elevator controlled by an elevator control that controls only that individual elevator.", + "Rather, claim 1 is written broadly enough so as to also encompass methods of installing a floor terminal at each floor where an elevator is controlled either by an individual elevator control or by a group elevator control.", + "As such, the newly added claims are narrower than claim 1 because the new claims only encompass the second noted embodiment--the embodiment in which an elevator is controlled by a group elevator control.", + "The Board is aware of, and has fully considered, the District Court's claim constructions.", + "However, precedent makes clear that the USPTO is not bound in reexamination proceedings by claim constructions produced by a court. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1301 (2007).", + "In reexamination proceedings, the Board is to give unexpired claims their broadest reasonable interpretation, consistent with the specification. In re Yamamoto, 740 F.2d 1569, 1571 (Fed Cir. 1984).", + "This standard differs from that followed by a district court.", + "\"In a district court context, [the Federal Circuit has] said that claims should be construed, if possible, to sustain their validity.\" Id. fn*.", + "From this statement, we infer the Examiner's position to be that all of the newly added dependent claims likewise present the same issue.", + "The Examiner appears to be confusing the breadth of the claimed functionality of a component used in a recited method, as exists in the present situation, with the breadth of affirmatively recited method steps.", + "That is, this is not a situation in which the claims originally set forth two affirmative method steps of receiving an input of destination call reports and recognizing identification codes used to identify users, and in which new claims were then added to omit one of these recited steps.", + "Such a hypothetical claim amendment would broaden the claims.", + "However, in the present case, original method claim 1 sets forth a step of installing a floor terminal that has the functionality or capability of at least one of inputting destination call reports and the separate functionality of recognizing identification codes. See claim 1, limitation a.", + "That is, claim 1 is generic to--or reads on--any one of the following three steps: (1) installing a floor terminal that is capable of inputting destination call reports; (2) installing a floor terminal that is capable of recognizing identification codes; and (3) installing a floor terminal that is capable of both inputting destination call reports and recognizing identification codes.", + "Claim 16 does not broaden the affirmative method step of claim is installing a floor terminal.", + "Claim 16 instead narrows the specifically recited functionality of the floor terminal being installed.", + "That is, claim 16 only reads on installing a floor terminal that is capable of inputting destination call reports.", + "Stated another way, the language does not change from an original claim providing all three functionalities A, B, and C to proving only one functionality A.", + "The present situation instead can be analogized to an original Markush claim containing three elements A, B, and C, and a later added claim containing only a single element A.", + "As such, the Examiner has not demonstrated the elimination of functionality broadens new claim 16 beyond that of original claim 1.", + "The same deficiency applies to the Examiner's reasoning in relation to the elimination of functionality in claim 22 and 28, as well.", + "For the purposes of the impermissible-broadening analysis, we need not decide whether the act of \"stopping\" is broader than \"interrupting.\"", + "Even if we were to assume for the sake of argument this to be true, the Examiner still would not have established a prima facie showing of improper broadening.", + "This is because the Examiner is improperly comparing the challenged new claims to original dependent claims 2 and 3, which depend from independent claim 1--not comparing the new claims to the broader original claim 1, itself.", + "That is, the Examiner, at most, may have demonstrated that the new claims have an intermediate claim scope relative to original independent claim 1 and dependent claims 2 and 3.", + "As such, the Examiner has not established that the new claims are broader than every claim of the original patent. See Tilloston, 831 F.2d at 1037 n.2 (explaining that the relevant test is whether a new claim \"is broader in scope than the original claims\" (in the plural), thereby indicating that impermissible broadening occurs when the new claim is broader than all of the original claims).", + "We disagree.", + "Presuming that some objective distinction exists between the respective claim terms \"a connection\" and \"a responsive connection,\" ~ the former, original term is broader than the latter, new term.", + "\"The doctrine of claim differentiation create[s] a presumption that each claim in a patent has a different scope. The difference in meaning and scope between claims is presumed to be significant [t]o the extent that the absence of such difference in meaning and scope would make a claim superfluous.' \" Free Motion Fitness, Inc. V. Cybex Int 7, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005)(internal quotation marks omitted).", + "In the present situation, the new claims' inclusion of the adjective \"responsive\" modifying connection indicates that the unmodified recitation of \"connection\" in claim 1 is broader.", + "That is, claim 1 appears to encompass \"unresponsive connections\" as well as \"responsive connections.' ~", + "For the preceding reasons, the Examiner has not established that any of the new claims are broader in scope of than all of the original claims.", + "Accordingly, we do not sustain the rejection of claims 16-33 under 35 U.S.C. & 314(a) for improperly broadening the scope of the original claims.", + "Owner's argument is unpersuasive.", + "\"The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.' In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).", + "The Specification`s lack of disclosure cannot be excused merely because the original claims are broad enough to encompass the newly claimed subject matter.", + "\"[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention.\" Purdue Pharma L.P. 12. Faulding Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000).", + "Rather, the Specification must provide some guides or *blaze marks\" that disclose the claimed invention \" \u00b7 specifically, as something [A]ppellants actually invented.\" Ariad Pharm., Inc. V. Eli Lilly & Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010) (en banc).", + "Because we find the language of independent claims 16, 22, and 28 to lack adequate written description support in the original Specification, we need not address the Examiner's further finding (see ACP 11) that dependent claims 17, 18, 23, 24, 29, and 30 present additional language that also lacks adequate written description support. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection); see also Beloit Corp. 14 Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single dispositive issue of numerous resolved by the presiding officer; there is no need for the Commission to decide all issues decided by the presiding officer).", + "While claim 16's preamble may not be the model of clarity, we agree with Owner that claim 16 is not unreasonably ambiguous when read in the following manner:", + "That is, we deem it reasonably clear that claim 16 is to be interpreted as follows:", + "16. A method of modernizing an elevator installation having a plurality of elevators, at least one of the plurality of elevators controlled by at least one existing elevator control by way of at least one call report, the modernization converting an up-down modifying at least one elevator component in the elevator installation[, the modernization] using at least one modernizing device that is not required to operate once the modernization has been completed, the method comprising \u00b7 \u00b7", + "Accordingly, we do not sustain the Examiner's indefiniteness rejection under 35 U.S.C. .8 112, 92.", + "Initially, we observe that our reviewing court has sustained the District Court's independent determination that claims 1-3 are invalid for obviousness. Inventio AG Memorandum Opinion, affd 649 F.3d 1350 (Fed. Cir. 2011).", + "Our reviewing court's decision is binding upon this Panel in the present appeal. See Soverain Software LLC 12. Victoria 's Secret Direct Brand Management, LLC, Case No. 12-1649; -1650 (Fed. Cir. 2015) (finding of obviousness binding on subsequent parties); see also U.S. Ethernet Innovations LLC 12. Texas Instruments Inc., No. 15-1510, Fed. Cir., 2016 U.S. App. LEXIS 7398. (Federal Circuit U.S. Court of Appeals turned away an appeal of a Texas federal judge's holding of patent invalidity on the basis of issue preclusion.).", + "Because the District Court's conclusion was based upon different evidence than that considered by the Examiner, we designate our affirmance of the obviousness rejection of claims 1-3 as constituting new grounds pursuant to 37 C.F.R. \u25cf 41.77(b).", + "Regardless, though, because this issue has already been resolved, we need not address Owner's present arguments regarding the combination of only Schroder and Ovaska *857, as they relate to claims 1-3. See Gleave, 560 F.3d at 1338 (not reaching other rejections after upholding an anticipation rejection); see also Beloit Corp., 742 F.2d at 1421 (ITC can decide a single dispositive issue of numerous resolved by the presiding officer; there is no need for the Commission to decide all issues decided by the presiding officer).", + "This argument is unpersuasive or any error in the obviousness rejection of claims 4 and 7 for the reasons set forth above in relation to claim 1.", + "This argument is unpersuasive because Owner presents insufficient evidence or explanation for why such an assumption would be inappropriate. Id.", + "As such, Owner's conclusory and unsupported attorney argument does not rebut the Examiner's conclusions adequately.", + "These arguments are unpersuasive of error.", + "As explained above, the District Court has already found that the prior art relied upon in rendering claim 1 obvious, does teach a modernizing device.", + "Furthermore, Owner's argument that the combination does not teach \"at least one car indicator line \u00b7 \u00b7 \u00b7 receiving an indication signal,\" constitutes mere conclusory attorney argument unsupported by facts or evidence. PO App. Br. 21.", + "Owner's arguments regarding claim 10's dependency from claim 1 are unpersuasive of error for the reasons set forth above.", + "Owner's arguments regarding Zurko are also unpersuasive.", + "First, Zurko's holding regarding the use of common sense was overturned by the Supreme Court. See KSR Int 'I Co. V. Teleflex, Inc., 550 U.S. 398, 403 (2007) (cautioning that \"[r]igid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court's case law\").", + "More importantly, though, Owner is incorrect in arguing that the Examiner's reliance on common sense was otherwise unsupported.", + "Owner does not address the Examiner's findings in this regard.", + "Owner's arguments regarding claim 11's dependency from claim 1 are unpersuasive of error for the reasons set forth above.", + "Owner's arguments regarding Ovaska's 's alleged shortcomings are also unpersuasive.", + "Owner does not argue persuasively why any of the claimed modernizing steps would not have been implied by this disclosure, or at least rendered obvious to undertake in light of Ovaska '857's disclosure that all of the components may be modernized." + ] +} \ No newline at end of file diff --git a/opinion_split/2015007900_DECISION.json b/opinion_split/2015007900_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..78abb591fb1ef0da3260ff7dda6bfc02e7b9b1db --- /dev/null +++ b/opinion_split/2015007900_DECISION.json @@ -0,0 +1,56 @@ +{ + "appellant_arguments": [ + "Appellants contend that independent Claim 1 explicitly recites the *computer processor of the server\" performs the identifying of the automobile head unit associated with the received request, and that such server is **distinct and separate\" from both the remote automobile head unit and the remote device sending the request. App. Br. 10.", + "Appellants argue in view of the plain language of independent Claim 1, the identification of the associated head unit is performed not by the mobile device sending the request, but rather, the identification is performed by the server receiving the request from the mobile device. Id.", + "Appellants concede that a \"network\" may comprise a plurality of network devices and \"servers.\" Reply Br. 5.", + "However, Appellants argue the Examiner provides no evidence that the Bose \"network\" is interchangeably equivalent to a \"server, \" nor does the Examiner provide evidence that Bose' network possesses the functionality of the claimed \"server.\" Id.", + "Appellants argue the Examiner admits that Banerjee teaches the client performs the identification, not the server. Id. at 6.", + "Appellants contend the claims recite that the server, separate and distinct from both the automobile head unit and the remote device of the authenticated user, identifies the remote automobile head unit associated with the request received from the remote device.", + "Appellants argue that in each of Bose and Banerjee, the sending client, not the receiving server, identifies the remote automobile head unit. Reply Br. 6.", + "Appellants contend Claims 14-22 are patentable in view of the foregoing arguments in favor of independent Claim 1. App. Br. 14-15,", + "Appellants contend Claims 28-30 are patentable in view of the foregoing arguments in favor of independent Claim 1. App. Br. 15-16,", + "Appellants contend Zhang fails to cure the deficiencies of Bose and Banerjee. App. Br. 17." + ], + "examiner_findings": [ + "The Examiner relies upon the prior art as follows:", + "1. Claims 1, 3-9, 11, 13-22, and 28-30 stand rejected under 35 U.S.C. $103(a) as obvious over Bose and Banerjee. Final Act. 3-10.", + "2. Claims 2, 10, and 12 stand rejected under 35 U.S.C. $103(a) as obvious over Bose, Banerjee, and Zhang. Final Act. 11-12,", + "The Examiner finds that Bose does not teach identifying a remote automobile head unit associated with the request, but finds such identification to \"be obvious, if not inherent.\" \" Final Act. 4.", + "The Examiner finds Bose discloses \"a mobile unit may connect to a remote unit via a network.\" Id.", + "To exemplify the obviousness of such network connection, the Examiner finds Banerjee teaches that a client connects to a server via a proxy wherein the proxy authenticates the client device and allows the client to communicate with server.", + "In addition, the client's request to the proxy also identifies the destination server. Id.", + "The Examiner finds Bose teaches a three-party system comprising a mobile terminal connected via a network to a second communications device. Ans. 4.", + "The Examiner finds the network teaches the claimed \"server.\" Id.", + "The Examiner finds Banerjee also teaches a three-party system wherein a client is equivalent to the claimed *remote device,\" \" the proxy is equivalent to the claimed \"server,\" and the destination server is equivalent to the remote automobile head unit. Id.", + "The Examiner finds Banerjee teaches a client sends a request to a proxy to connect to a destination server wherein the request identifies the destination server and includes authentication data. Id.", + "The Examiner finds the proxy forwards the request to the destination server.", + "Moreover, the Examiner finds the proxy must be able to identify a destination server in order to forward the request to that server. Id. at 5.", + "With respect to Bose, the Examiner finds it \"would be obvious, if not inherent, that a mobile unit would connect to the remote unit only if the mobile unit provides some type of identification of the remote unit.", + "Otherwise, how would the mobile unit make such a connection to the remote unit if the mobile unit doesn't 't identify the remote unit it wishes to connect to?\" Ans. 4.", + "With respect to Banerjee, the Examiner similarly finds that the **client request to proxy includes identification of the destination server.", + "The Examiner stands on the findings made in respect of Claim 1. Ans. 6.", + "The Examiner stands on the findings made in respect of Claim 1. Ans. 6.", + "The Examiner stands on the findings made in respect of Claim 1. Ans. 6." + ], + "ptab_opinion": [ + "The claims relate to provision of network and web-based communications to an automobile.", + "See Abstract.", + "Claims 1, 14, and 28 are independent.", + "An understanding of the invention can be derived from a reading of exemplary Claim 1, which is reproduced below with some formatting and emphasis added: 1.", + "A method for electronically providing services to an automobile head unit comprising: receiving, by a computer processor of a server, a request from a remote device, the remote device associated with an authenticated user and distinct and separate from the server; identifying, by the computer processor of the server, a remote automobile head unit associated with the request, the remote automobile head unit distinct and separate from the server and distinct and separate from the remote device of the authenticated user, wherein the identifying of the remote automobile head unit is based at least in part on the request and on one or more of the authenticated user and the remote device; and in response to the request, causing the identified remote automobile head unit to operate according to preferences that are stored on the remote device and associated with the authenticated user or another authenticated user, the causing of the identified remote automobile head unit to operate according to the stored preferences including electronically providing, by the computer processor of the server, services or information to the identified remote automobile head unit based on one or more of: the request, the authenticated user, the another authenticated user, and the remote device.", + "Specification (filed Jan. 31, 2013, \"Spec.\") for their respective details.", + "Banerjee et al., US 2006/0031571 A1 Feb. 9, 2006", + "Zhang et al., US 2007/0005206 A1 Jan. 4, 2007", + "Bose et al., US 2011/0271183 A1 Nov. 3, 2011", + "The claims stand rejected as follows:", + "We have reviewed the rejections of Claims 1-22 and 28-30 in light of Appellants\" arguments that the Examiner erred.", + "We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 9-18.", + "Identifying, by the computer processor of the server, a remote automobile head unit associated with the request.", + "We agree with Appellants.", + "\" Thus, the Examiner has not found any teaching, in either Bose or Banerjee, where the identification of the remote automobile head unit is performed by the receiving server, as claimed.", + "Therefore, we reverse the Examiner's rejection of claims 1, 3-9, 11, and 13.", + "Therefore, we reverse the Examiner' rejection of claims 14-22.", + "Therefore, we reverse the Examiner's rejection of claims 28-30.", + "Therefore, we reverse the Examiner's rejection of claims 2, 10, and 12." + ] +} \ No newline at end of file diff --git a/opinion_split/2015008130_DECISION.json b/opinion_split/2015008130_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f58531430b90fd50335f5a76abd54a30b923f710 --- /dev/null +++ b/opinion_split/2015008130_DECISION.json @@ -0,0 +1,45 @@ +{ + "appellant_arguments": [ + "Appellants contend *if the general idea of right control is assumed, arguendo, to be abstract, the specific assignment of rights in the manner claimed is not only not fundamental, but is novel.\" App. Br. 7.", + "With regards to limitation [a] of claim 10, Appellants acknowledge \"that the steps of generally storing data are generic functions . \u00b7 \u25a0 but [argue] all of the solution activity involving assignment of control rights in a specific, novel and useful fashion is neither well-understood, routine nor conventional.' Reply Br. 6.", + "Appellants dispute the Examiner's finding because Goertzel's *access rights are assigned to a user based on the characteristics of the location at which the user is logging in \u00b7 \u00b7 \u00b7 The rights are not assigned to a site.\" Id. at 12." + ], + "examiner_findings": [ + "REJECTIONS\" The following rejections are before us for review: Claims 10-24 stand rejected under 35 U.S.C. 5 101.", + "Claims 10-24 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Goertzel (US 6,308,273 B1, iss. Oct. 23, 2001), San Miguel (US 2003/0101086, pub. May 29, 2003), Grainger (US 2002/0111824 A1, pub. Aug. 15, 2002), and Vainstein (US 8,065,713 BI, iss. Nov. 22, 2011).", + "Independent claims 15 and 20 recite similar limitations and are rejected based on the same findings as in claim 10." + ], + "ptab_opinion": [ + "ANALYSIS Rejection under 35 U.S.C. 5 101 We are not persuaded the Examiner erred in asserting that claims 10- 24 are directed to non-statutory subject matter.", + "In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two-step framework, described in Mayo* and Alice.", + "We first determine whether the claims at issue are directed to a patent-ineligible abstract idea.", + "*If so, we then ask, *[w]hat else is there in the claims before us. \", Id. (quoting Mayo, 132 S. Ct. at 1297).", + "In other words, the second step is to search for an *inventive concept\" an element or combination of elements sufficient to ensure that the claim amounts to *significantly more\" than the abstract idea itself. ld.", + "To that end, we find that Appellants' claimed invention is directed to assigning permissions that are granted to a site or user with respect to an electronic document, or more succinctly, *access rights.\"", + "The implementation of this concept is recited in the limitations of each of the independent claims.", + "This concept is further supported by various portions of the Specification. See, e.g., column 10, lines 10-16 (*an administrator may limit or expand user access and functionality rights with respect to any information or functionality\"); column 10, lines 47-51 (\"administrator may define an unlimited number of document levels. By selecting document level 'Procedures' for example, a user is presented with a table of contents 46 including a plurality of procedure documents to which that user has been granted access\").", + "We thus find that the concept of *access rights,\" \" permissions granted to a user or to an application, to read, write and erase files in the computer (i.e., editorial rights), is a long-standing business practice, and a patent ineligible abstract concept.", + "While the Supreme Court has not precisely defined *abstract idea, \" the Federal Circuit since Alice has invalidated patents encompassing a broad range of abstract ideas.", + "We conclude that claims 10-24 are comparable to other communication-based patents that have been held to be abstract after Alice. See, e.g., Content Extraction & Transmission V. Wells Fargo Bank, N.A., 776 F.3d 1343, 1345 (Fed. Cir. 2014) (holding claims drawn to the \"basic concept of data recognition and storage\" abstract); Ultramercial, Inc. V. Hulu, LLC, 772 F.3d 709, 715 (Fed. Circuit 2014) (holding the *process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea\").", + "Turning to the second step of the analysis, we look for additional elements that can \"transform the nature of the claim\" into a patent-eligible application of an abstract idea.", + "On this record, we are not persuaded that claim 10 adds an inventive concept sufficient to transform the nature of the claim into a patent-eligible application of the abstract idea.", + "Initially, we note the claim steps do not recite a specialized algorithm that could move the claims from the abstract to the concrete, and simply executing an abstract concept on a computer does not render *a special purpose computer,\" as argued by Appellants. See Reply 5 (referring to the inclusion of \"computer-implemented\" in the preamble of claim 10).", + "Limitations [b], [c], and [d] of claim 10 merely recite assigning control and access rights \"by a computer.\" See App. Br., Claims App 1.", + "The use of access rights associated with documents is nothing more than programming conventional software or hardware to apply rules governing access to that document--a routine, conventional practice.", + "The introduction of a generic element, such as a computer (processor) or storage medium (database), into a method, apparatus, or article claim, has been deemed insufficient by the Supreme Court to transform a patent-ineligible claim into one that is patent-eligible, and it fails to do so in this claim as well. See Alice, 134 S. Ct. at 2358; see also Ultramercial, 772 F.3d at 712- 713, 717 (determining that representative claim 1 is patent ineligible although it recites \"a fourth step of restricting general public access\").", + "In DDR Holdings, the Federal Circuit found that the challenged patent was valid because it \"speciflied] how interactions with the Internet are manipulated to yield a desired result--a result that overrides the routine and conventional\" aspects of the technology. DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014).", + "Here, claim 10 instead applies conventional computer technology to assign access rights to a document.", + "Accordingly, the recited claim limitations, both individually and as an ordered combination, fail to transform the nature of the claim into a patent-eligible application.", + "Thus, independent claim 10 does not recite any limitation that, in practical terms, limits the scope of the claim so it does not fully cover the abstract idea itself.", + "For the foregoing reasons, we sustain the Examiner's rejection of claims 10-24 under 35 U.S.C. S 101.8", + "As our analysis elaborates substantially on the underlying basis as to why claims 10-24 are not directed to statutory subject matter under 35 U.S.C. 8 101, we exercise our discretion and denominate it a NEW GROUND of rejection, pursuant to our authority under 37 C.F.R. 8 41.50(b).", + "During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Amer. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted).", + "We are persuaded by Appellants' argument because the Examiner's interpretation of the claim language is not consistent with the Specification.", + "Limitations [b] and [c] of claim 10 however, call for assigning control rights (ability to modify and delete a document) to a site or location (acting as the \"owner\"), rather than restricting user access to resources from *less trusted locations\" (Goertzel, col. 2, II. 8-10), as proffered by the Examiner. See Ans. 9-10.", + "Because the Examiner's finding and interpretation of limitations [b] and [c] is inconsistent with the plain language of the claim in light of the Specification, we do not find the preponderance of the evidence supports the rejection of claim 10 under 35 U.S.C. 8 103(a).", + "The Examiner does not rely on the teachings of San Miguel, Grainger or Vainstein to remedy this deficiency.", + "Therefore, we do not sustain the rejection of independent claim 10.", + "As such, we do not sustain the rejection of claims 15 and 20 for the same reasons.", + "We also do not sustain the rejection of dependent claims 11-14, 16-19, and 21-24, Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (*dependent claims are nonobvious if the independent claims from which they depend are nonobvious\")." + ] +} \ No newline at end of file diff --git a/opinion_split/2015008194_DECISION.json b/opinion_split/2015008194_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..19cace036a2dce5959631a5f9688a66588e302a4 --- /dev/null +++ b/opinion_split/2015008194_DECISION.json @@ -0,0 +1,46 @@ +{ + "appellant_arguments": [ + "Appellants argue there is no clear motivation for one skilled in the art to use the compound having a boron atom disclosed by Mont in the polyvinyl butyral (PVB) interlayer of Burk.", + "According to Appellants, Mont discloses some boron atom-containing buffer components in PVB interlayers but the Examiner does not provide a reason for one skilled in the art to specifically use one of the boron atom-containing buffer components of Mont in the interlayer of Burk.", + "Appellants argue Examples 1-57 and Comparative Examples 1-6 in the Specification demonstrate the inclusion of a compound having a boron atom in the first layer results in unexpected and superior results in the suppression of bubble formation and bubble growth as well as improving sound insulation.", + "Final Act. 4-5, Appellants acknowledge *each of Asanuma et al. and Papenfuhs et al. merely discloses that a carboxylic acid-modified polyvinyl acetal resin is sometimes used in an interlayer film.\"", + "Instead, Appellants\" arguments for this rejection are premised on the superior effects achieved by the claimed invention as allegedly demonstrated by Examples 1-57 and Comparative Examples 1-6 of the Specification." + ], + "examiner_findings": [ + "I. Claims 1-3, 5-9, 12, and 15 rejected under 35 U.S.C. 8 103(a) as unpatentable over Burk et al. (US 2,526,728, issued October 24, 1950) (\"Burk\") and Mont et al. (US 4,027,069, issued May 31, 1977) (\"Mont\").", + "II. Claims 1, 4-9, 12, and 15 rejected under 35 U.S.C. 8 103(a) as unpatentable over Burk, Asanuma et al. (US 2010/0143720 Al, published June 10, 2010) (\"Asanuma\"), and Papenfuhs et al. (US 7,312,275 B2, issued December 25, 2007) (*Papenfuhs\").", + "The Examiner found Burk teaches an interlayer that differs from the claimed invention in that Burk does not teach the addition of I Appellants present arguments addressing independent claim 1 for both Rejections I and II.", + "a compound having a boron atom to the central layer of the interlayer.", + "The Examiner found Mont teaches as known to add a borate buffering agent to a PVB interlayer sheet comprising plasticizer for the purpose of stabilizing the sheet against viscosity degradation resulting from aging or exposure to elevated temperatures.", + "The Examiner determined it would have been obvious to one having ordinary skill in the art to incorporate a borate buffering component into the interlayer of Burk for the reasons taught by Mont." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6.", + "We AFFIRM.", + "OPINION Prior Art Rejections' Rejection I After review of the respective positions provided by Appellants and the Examiner, we AFFIRM for the reasons presented by the Examiner.", + "We add the following for emphasis.", + "We refer to the Examiner's Final Action for a statement of the rejection.", + "We are unpersuaded by these arguments for the reasons presented by the Examiner.", + "Accordingly, we select claim 1 as representative ofthe subject matter before us on appeal for these rejections.", + "Claims 2-9, 12, and 15, as respectively rejected, stand or fall with representative claim 1.", + "The Examiner has provided a reasonable basis to combine the teachings of the cited art and arrive to the claimed invention.", + "While Appellants argue that there is no guidance for selecting the borate buffer components from the several buffer components listed by Mont (App. Br. 9), one skilled in the art would have expected all of Mont's buffer components would have resulted in stabilizing the interlayer sheet against viscosity degradation resulting from aging or exposure to elevated temperatures.", + "Given that both Burk and Mont are directed to PVB interlayers (Burk col. 2, 11. 9-12; Mont col. 2, 11. 57-59), Appellants have not adequately explained why the borate buffer components of Mont would not be suitable for use in the PVB interlayer of Burk.", + "Appellants have not adequately explained why one skilled in the art would not have been capable of incorporating Mont's borate buffer components into the interlayer of Burk with a reasonable expectation that they would result in the benefits disclosed by Mont.", + "We find this evidence unavailing for the reasons presented by the Examiner.", + "Moreover, Appellants rely on Examples (such as Examples 18-20) to demonstrate unexpected results that are not representative of the claimed invention because the amount of plasticizer in the first layer is less than the claimed amount of 55 parts by weight or more for each 100 parts of polyvinyl acetal.", + "Further, the Examples that do fall within the claimed amount of plasticizer only test sample amounts of 55, 60, and 70 parts for each 100 parts of polyvinyl acetal.", + "Spec. 78-84, Appellants have not adequately explained why these limited sample amounts of plasticizer are representative of the entire scope of the range of the amounts of plasticizer encompassed by the claims.", + "Appellants must establish that the showing relied upon actually demonstrates unexpected results, In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); Freeman, 474 F.2d 1318, 1324; Klosak, 455 F.2d 1077, 1080, and is reasonably commensurate in scope with the degree of protection sought by a claim, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).", + "On this record, Appellants have not adequately shown, much less explained, why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims.", + "Accordingly we affirm the Examiner's rejection of claims 1-3, 5-9, 12, and 15 under 35 U.S.C. $ 103 (a) for the reasons presented by the Examiner and given above.", + "Rejection II We also AFFIRM this rejection for the reasons presented by the Examiner.", + "We refer to the Examiner's Final Action for a statement of the rejection.", + "Appellants have not refuted the Examiner's determination that it would have been obvious to one of ordinary skill in the art to modify the polyvinyl acetal resin(s) taught by Burk with a carboxylic acid, as taught by Asanuma or Papenfuhs.", + "App. Br. 9-10; Spec. 78-84, We are unpersuaded by the showing in the Specification for the reasons presented by the Examiner.", + "Moreover, of the Examples relied upon by Appellants for evidence of superior results, only Example 4 involves a carboxylic acid-modified polyvinyl acetal resin.", + "Appellants have not adequately explained why this single Example 4 is representative of the entire scope of carboxylic acid-modified polyvinyl acetal resins claimed.", + "Thus, on this record, Appellants have not adequately shown, much less explained, why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims.", + "Accordingly we affirm the Examiner's rejection of claims 1, 4-9, 12, and 15 under 35 U.S.C. 8 103(a) for the reasons presented by the Examiner and given above." + ] +} \ No newline at end of file diff --git a/opinion_split/2016000057_DECISION.json b/opinion_split/2016000057_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..1968a5d5f3de34dc25f203d52e63d7996e6b8bfa --- /dev/null +++ b/opinion_split/2016000057_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellants argue that the combination of Schmaus and Koenig is improper, and that the combination does not yield the claimed invention. See Appeal Br. 7.", + "Specifically, Appellants maintain that \"[the primary focus and goal of Koenig is to provide an antimicrobial formulation which is *essentially free of an antimicrobial active, ... and ask why, then, one would be motivated to combine triclosan, \"contemplated by Koenig as only used in trace amounts, \" with the 1,2-decanediol of Schmaus. Id. at 8 (quoting Koenig 6:34-39).", + "In Appellants' view, combining Schmaus and Koenig in the manner claimed would *destroy[] the respective purposes of each of the references.\" Id.", + "Appellants also argue that the Specification provides evidence of *synergistic antimicrobial activity\" of the claimed compositions, whereas Schmaus does not indicate any such synergy. Appeal Br. 7.", + "Appellants argue claim 5 exclusively by referring back to their arguments for claim 1. See Appeal Br. 9." + ], + "examiner_findings": [ + "Claims 1, 3, 4, 6-8, 10-12, and 14-16 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Schmaus? and Koenig.3 Ans. 4.4", + "Claim 5 stands rejected under 35 U.S.C. 8 103(a) as unpatentable over Schmaus, Koenig, and Dale.\" Ans. 8.", + "With respect to illustrative claim 1, the Examiner finds that Schmaus teaches antimicrobial compositions of 1,2-decanediol for inhibiting growth of germs that cause body odor. Final Act. 3-4 (citing Schmaus Abstract, 99 17-18).", + "Only \"extremely small amounts\" of 1, 2-decanediol are needed to achieve the antimicrobial effect, from 0.00002-20% by weight, but preferably 0.02-5%. Id. at 4 (citing Schmaus I 35).", + "Schmaus further discloses combining its composition with additional antimicrobial agents for greater efficacy. Id. (citing Schmaus 99 32-33).", + "The Examiner finds that Koenig teaches antimicrobial compositions combining a proton-donating agent, such as acetic acid, 6 combined with an alkyl phosphate anionic surfactant. Id. at 5 (citing Koenig 4:49-5:25).", + "The Examiner acknowledges that Koenig states that its preferred compositions do not require additional *antimicrobial actives\" known in the art, such as triclosan, 7 but finds that Koenig teaches alternative embodiments that do incorporate additional antimicrobial actives, particularly in amounts from about 0.1-0.25% by weight. Id. at 5-6 (citing Koenig 4:34-37, 6:24-53, 9:22-34).", + "The Examiner finds that it would have been obvious for the ordinarily skilled artisan to have combined Schmaus and Koenig to produce a composition as recited in claim 1. Final Action 6.", + "The motivation to do so would have come from the \"commonality of utility\" between the compositions disclosed in the references, i.e., compositions \"suitable for disinfecting both hands and hard surfaces are disclosed as being particularly effective in providing antimicrobial effect against common bacteria including staphyloccous [sic] epidermis.\" Id. at 6." + ], + "ptab_opinion": [ + "These arguments fail because they focus on Koenig's preferred embodiments, rather than the full disclosure.", + "As noted above, the Examiner recognizes that Koenig's preferred compositions do not require additional antimicrobial actives (e.g., triclosan).", + "But Koenig also expressly teaches that *antimicrobial soaps and lotions of the present invention may also optionally contain a variety of other components which may assist in providing the desired cleaning and antimicrobial properties.\" Koenig 9:23- 25.", + "These can include *antimicrobial actives.\" though Koenig advises such soaps and lotions typically *will contain a high percentage of water to reduce the possibility of skin irritation.\" \" Id. at 9:29-34,", + "Accordingly, we are unpersuaded that combining Schmaus and Koenig would destroy the purpose of the references.", + "Instead, consistent with the Examiner's reasoning, the combination advances the common goal of **provid(ing] a desired antimicrobial effect while avoiding undesirable skin irritation.\" Ans. 11.", + "We, however, agree with the Examiner (see Ans. 9-10) that page 34 of the Specification, to which Appellants direct us (see Appeal Br. 7; Reply Br. 3), provides insufficient objective data supporting synergy.", + "Rather, page 34 of the Specification reports that certain mixtures (listed in Table 2) \"had a synergistic antimicrobial activity,\" and that the \"synergistic activity was confirmed via calculation of synergy indices with Kulls' equation \" Spec. 34:17-19.", + "Table 2 lists the *[s]ynergistically active ratios\" of antimicrobial agents (see id. at 35), but Appellants have not directed us to any data supporting the assertion of synergy itself (such as, for example, the results of the calculations).", + "Further, as the Examiner also notes (see Ans. 10), Appellants have not demonstrated why any such synergy (if substantiated) would amount to evidence of unexpected results, rather than expected benefits (e.g., additive antimicrobial effect).", + "Having considered Appellants' arguments, we are unpersuaded that the Examiner erred in rejecting claim 1.", + "Claims 3, 4, 6-8, 10-12, and 14- 16, which are not argued separately, fall with claim 1. See 37 C.F.R. 8 41.37(c)(1)(v) (2011).", + "As we affirm the Examiner's rejection of claim 1, we likewise affirm the Examiner's rejection of claim 5." + ] +} \ No newline at end of file diff --git a/opinion_split/2016000308_DECISION.json b/opinion_split/2016000308_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d6c1a2e0ed9bf3f38956f3972eb7097d7d204e5f --- /dev/null +++ b/opinion_split/2016000308_DECISION.json @@ -0,0 +1,40 @@ +{ + "appellant_arguments": [ + "First, Appellant argues that Tack's pressure elements are not individually moveable because \"control bars 10a, 10b \u00b7 \u00b7 connect two visors to each other preventing an individual movement of the pressure plates inside the visors.\" Reply Br. 3.", + "Appellant also identifies spring connections 28 as preventing individual movement of the pressure plates. Reply Br. 3-4.", + "Second, Appellant argues that Tack does not teach that its pressure plates are adjacently arranged transversely of the dragging direction, but rather are arranged consecutively in the dragging direction. Reply Br. 4-5.", + "Appellant goes on to argue that the consecutive arrangement is \"not optional,\" \" such that Tack teaches away from the transverse arrangement. Id. at 5.", + "Third, Appellant argues that Steinkuhler teaches using water jets but does not teach using pressure elements. Reply Br. 5-6.", + "In a related argument, Appellant asserts that Steinkuhler's use of water jets rather than penetrating bodies somehow renders Steinkuhler *not applicable\" to Tack. Reply Br. 6.", + "Fourth, Appellant argues that Tack's pressure elements are not \"received\" in the visor by means of the hinge connections and spring connections that the Examiner asserts correspond to the claimed guide means. Reply Br. 7.", + "Instead, Appellant argues, Tack's hinges only allow rotation of the pressure plates and do not allow for a substantially free and substantially perpendicular translation of the pressure plate. Id." + ], + "examiner_findings": [ + "The Examiner asserts that Tack's pressure solids 20 (which include pressure plates 21, on which disc-shaped penetrating bodies 22 are mounted) correspond to the claimed individually moveable pressure elements that are received in the visor by guide means--Tack's *unnumbered hinge connection and spring connection 28 that allows the pressure plate 21 to revolve around axis 29 so that the pressure bodies 22 *are more capable of following the profile of the soil. ~ Ans. 2-3 (quoting Tack, 14:5-6); see Tack, 11:33-12:2, 12:24-26, Figs. 4a, 7.", + "The Examiner acknowledges that Tack fails to disclose moveable pressure elements that are adjacently arranged transversely to the dragging direction. Id. at 3.", + "Therefore, the Examiner relies on Steinkuhler's teaching of a similar visor or hood of a dredger drag head comprising several *roof parts\" 34 that are adjacently arranged transversely of the dragging direction to *account for unevenness of the waterbed.\" Id. (citing Steinkuhler, 4:36-40, 5:57-6:3, Fig. 4).", + "According to the Examiner, \"[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the drag head of Tack such that the penetrating elements (20) are adjacently arranged transversely of the dragging direction, as taught by Steinkuhler, in order to enhance the ability of the pressure elements to follow any unevenness on the waterbed and further allow for adaptation to the waterbed.' Id. at 4.", + "But, as the Examiner points out, Steinklihler's water jets are an *alternate type\" of penetrating body, Ans. 9. because they loosen the soil underneath the drag head. Steinkuhler, 1:43-49." + ], + "ptab_opinion": [ + "I We have jurisdiction under 35 U.S.C. 5 6(b).", + "We affirm.", + "Appellant does not separately argue the claims on appeal. Reply Br. 10-21.", + "Therefore, for purposes of this appeal, we select claim 17 as representative of the appealed claims and decide the appeal on the basis of claim 17 alone. 37 C.F.R. 41.37(c)(1)(iv).", + "Appellant raises a number of arguments in response to this rejection.", + "We address each in turn.", + "We disagree.", + "The control bars limit, but do not eliminate, angular deviation of one visor in relation to an adjacent visor. Tack, 12:26-27, Fig. 5.", + "The control bars do not appear to otherwise affect the movement of the pressure plates within the visors.", + "But Figure 6 of Tack shows a plurality of pressure plates each capable of movement about its own axis 29. Tack, Fig. 6.", + "This argument is not persuasive.", + "Appellant does not identify any teaching in Tack that could be characterized as disparaging the claimed transverse arrangement of pressure elements.", + "See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (*the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. \").", + "However, we understand the Examiner to be relying on Tack, not Steinkuhler, as teaching pressure elements; the Examiner relies on Steinkuhler as teaching transverse arrangement of \"roof parts\" water jets--to compensate for an uneven waterbed. See Ans. 2-4.", + "Appellant fails to explain how Steinkuhler's arrangement of its water jets renders Steinkuhler's teaching ofits arrangement of its roof parts inapplicable to Tack.", + "We do not find this argument persuasive.", + "Tack itself characterizes the motion of pressure plates 21 around axes 29 as *translation substantially perpendicular to the soil surface. \" See Tack, 14:11-14 (stating that spring connection 28 is **executed in such a way that the pressure plate 21 with penetrating bodies 22 can perform a translation substantially perpendicular to the soil surface 50M).", + "To the extent that Appellant is arguing that Tack's 's hinges and springs do not allow *substantially free\" movement, Appellant has not explained what *substantially free\" means in light of the Specification, or why the movement of Tack's 's pressure plates would not be considered substantially free.", + "In sum, Appellant has not apprised us how the Examiner erred in concluding that claims 17, 19-29, 31, and 33 are unpatentable over Tack and Steinkuhler." + ] +} \ No newline at end of file diff --git a/opinion_split/2016001244_DECISION.json b/opinion_split/2016001244_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3bf281a6b48f1cd6b93af951c4115480b8f70483 --- /dev/null +++ b/opinion_split/2016001244_DECISION.json @@ -0,0 +1,56 @@ +{ + "appellant_arguments": [ + "Appellants request that \"the provisional nonstatutory double patenting rejection be held in abeyance until all of the other rejections have been overcome, upon which time [Appellants] will submit a terminal disclaimer to overcome the double patenting rejection, if necessary.\" (App. Br. 3).", + "Appellants present the following principal contentions: Appellants contest limitation L of claim 1: a plurality of conductive connections between common electrodes configured to allow a charge to leak through the connections, each conductive connection including a normally- on device that has a first resistance when the touch screen is powered on and second resistance when the touch screen is powered off. (App. Br. 3).", + "Appellants also contest the similar limitation recited in claim 12: a plurality of conductive connections between common electrodes, each conductive connection including a thin film transistor (TFT) that has a connection between two of the common electrodes and is configured to be in an off state when the touch screen is powered on.", + "Appellants submit that none of the cited references teach these limitations. (App. Br. 3. 7).", + "Appellants additionally contest the combinability of the references: **Furthermore, there would have been no motivation for one skilled in the art to combine the teachings of Hotelling-1, Hotelling-2, and Treu because the combination would be rendered inoperable.\" (Id.).", + "Contested Limitation L In support of the argument regarding contested limitation L of claim 1, Appellants contend: Treu teaches a semiconductor device that uses a standard normally-on transistor.", + "As described in paragraph [0023], Treu's normally-on transistor is non-conductive in an *off* state when a voltage is applied to the gate (e.g., device is powered on).", + "One skilled in the art would understand that a non-conductive connection is configured to prevent, not allow, a charge from leaking through.", + "Accordingly, the transistor in Treu cannot read on a \"connection --. configured to allow a charge to leak through when the touch screen is powered on\" (emphasis added), as required by the claims. (App. Br. 4).", + "Appellants' argument regarding the combinability of the cited references is premised on bodily incorporating the **normally on\" transistor described in Treu (I 23) into the Figure 4B circuit of Hotelling-2 (replacing TFT S3), without making necessary circuit accommodations to take into account the specific \"polarity\" or type (p-channel or n-channel) of TFT device.\" 2" + ], + "examiner_findings": [ + "Rejections A. Claims 1 and 12 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of copending Application No. 13/312,940 in view of Treu et al. (US 2011/0227095 A1; pub. Sept. 22, 2011) hereinafter referenced as \"Treu\" (now US 8,530,904, iss. Sept. 10, 2013; therefore, this rejection is no longer provisional).", + "B. Claims 1-16 are rejected as being unpatentable over Hotelling et al. (US 2010/0194707 Al; pub. Aug. 5, 2010), hereinafter \"Hotelling-1,\" in view of Hotelling et al. (US 201 2011/0050585 A1; pub. Mar. 3, 2011), hereinafter \"Hotelling-2,\" and Treu (US 2011/0227095 A1).1", + "The Examiner (Final Act. 9-10) relies on Treu (I 23) to teach or suggest the claimed **normally-on device that has a first resistance when the touch screen is powered on and second resistance when the touch screen is powered off.\" (Claim 1).", + "The Examiner finds and concludes: The combination of Hoteling-1 and Hotelling-2 does not specifically disclose each conductive connection including a normally-on device that has a first resistance when the touch screen is powered on and second resistance when the touch screen is powered off.", + "However, normally-on devices are well known in the art.", + "For example, Treu discloses an electrical characteristic of a normally-on device as a transistor ([0023] and normally-on transistor 110, fig. 1; wherein \"normally-on\" transistor used herein refers to a depletion mode transistor being in a conductive, i.e., *on\" state when no voltage is applied to the gate and turns into a non-conductive, i.e., \"off\" state when a voltage is applied to the gate so in each state the transistor has different resistance).", + "Therefore, one of ordinary skill in the art at the time of the invention was made would have substitute[d] Hotelling-2's transistor with Treu's normally-on transistors, and the result of the substitution would have resulted [in a] high/low resistivity connection depending on power [being] appl[ied] or not to the normally-on transistor and would have resulted using the display in multiple functionality modes. (Final Act. 9-10)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We Affirm.", + "We address nonstatutory double patenting rejection A separately, infra.", + "Based on Appellants' arguments, we decide the appeal of rejection B of claims 1-16 on the basis of representative claim 1.", + "Because Appellants advance no arguments on appeal traversing the nonstatutory double patenting rejection (that is no longer provisional), we pro forma sustain the Examiner's rejection A of claims 1 and 12 on the ground of non-statutory obviousness-type double patenting.", + "Rejection B of Representative Claim 1 under 8 103 We have considered all of Appellants' arguments and any evidence presented.", + "We give the contested claim 1 term \"normally-on device\" the broadest reasonable interpretation consistent with the Specification.", + "Turning to Appellants' Specification (I 72) for context, we find a **normally-on device\" is described, as follows: A device with a characteristic curve such as 1901 can be a normally-on device, such as a depletion-type transistor, for example.", + "We find Appellants' aforementioned description (Spec. I 72) of\"a normally-on device, such as a depletion-type transistor \u00b7 \u00b7 \u00b7 [that] can be on, i.e., electrically conductive, when no voltage is applied to the device [or] \u00b7 \u00b7 \u00b7 switch(ed] off [when] a voltage [is] applied to the device\" is essentially identical to Treu's description (I 23) of a **'normally-on* transistor [that] refers to a depletion mode transistor being in a conductive, i.e., *on' state when no voltage is applied to the gate and turns into a non-conductive, i.e., *off state when a voltage is applied to the gate.", + "Thus, we find Appellants' argument regarding limitation L (App. Br. 4) directly contradicts Appellants' own supporting description ofa a *normally-on device\" in the Specification (I 72).", + "For at least this reason, and based upon a preponderance of the evidence (Treu 9 23; Spec I 72), we find Appellants' argument regarding contested limitation L is not persuasive.", + "We further find that both a normally-on device and a normally-off device (with both devices functioning essentially as switches, either conducting from source to drain (in an ON state), or presenting a high- impedance from source to drain (in a non-conducting OFF state)) would have a first resistance (from source to drain) when the touch screen is powered on and a second resistance (from source to drain) when the touch screen is powered off, assuming that powering on the touch screen responsively results in a control voltage being applied (or not applied) to the gate of the voltage-controlled device (TFT).", + "Combining the teachings of We note Appellants' claim I fails to positively recite any particular relationship between the touch screen being powered on and a gate voltage being responsively applied to control the **normally-on device.'", + "If we assume powering on the touch screen responsively causes a control voltage to be applied to the gate of a normally-on device (TFT), in order to switch offthe normally-on device (corresponding to a high impedance or non- conductive state from source to drain), then we agree with Appellants' contention that physically \"Irjeplacing Hotelling-2's transistor [S3, Fig. 4B] with Treu's normally-on transistor would prevent touch sensing capability in Hotelling-2 when the touch screen is powered on and render it inoperable.\" \" (App. Br. 4).", + "However, our agreement with Appellants on a single point of argument (App. Br. 4) does not conclude our inquiry regarding the ultimate question of whether claims 1 and 12 are obvious under S 103 over the cited combination of Hotelling-1, Hotelling-2, and Treu.", + "We must also consider the Examiner's additional underlying factual findings, including the level of ordinary skill in the art, as relied upon to support the ultimate legal conclusion of obviousness.\"", + "In reviewing the record, we find Treu (11 20, 23) evidences it would have been well within the level of skill of a person having ordinary skill in the art to have understood the source and drain of a TFT are interchangeable, with appropriate circuit modifications to accommodate either a p-channel device or an n-channel device, as associated with either a \"normally-on device\" (claim 1) or a normally-off device.\" 4", + "Our reviewing court provides applicable guidance: [i]f the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level.", + "Applying this guidance here, we find Appellants' arguments regarding inoperability do not fully address the Examiner's specific findings.", + "(Final Act. 9-10, 13-14), To the extent that alternative circuit *logic* would have been required to implement an operable circuit ifa *normally on\" transistor (as described in Treu I 23) was incorporated into the Figure 4B circuit in Hotelling-2 (replacing transistor S3), we find paragraph 20 of Treu evidences such necessary \"inverted\" logic would have been well within the level of ordinary skill of an artisan (emphasis added):", + "Buttressing the Examiner's findings (Final Act. 9-10), we also find the required circuit modifications would have been well within the ordinary level of skill of an artisan, because there are only two arrangements regarding the respective \"polarities\" of the source and drain of a TFT in a circuit.\"", + "Our reviewing court guides: Where \"the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option,\" a solution that is obvious to try may indeed be obvious.", + "Here, because there are only two arrangements regarding the respective \"polarities\" of the source and drain of a switching TFT device, and because we find an artisan would have known how to accommodate the respective circuit arrangements (Treu 920), we conclude the Examiner's proffered substitution would have been *obvious to try.", + "Further, given the evidence provided by the Examiner (e.g., Treu I 23; Final Act. 9), we find any required *inverted** circuit logic to implement such change to provide an operable circuit would have been well within the level of ordinary skill of an artisan at the time of Appellants' invention.", + "On this record, we find an artisan possessing an ordinary level of skill in the art would have been able to accommodate the requisite circuit modifications by using known methods (Treu I 20) to realize a predictable result, i.e., an operable circuit.", + "We do not find persuasive Appellants additional contentions that Hotelling-1 and Hotelling-2 are incompatible (regarding claim 12) because the proffered combination \"would only add extra components or parts.\" (App. Br. 6-7).", + "We find both Hotelling-I and Hotelling-2 share common inventors and are each directed to analogous art (e.g., sharing the title \"Integrated Touch Screen*\").7", + "Moreover, inventor Shih Chang Chang (a named inventor of record in this instant appeal) appears to be the same Shih Chang Chang inventor of record, as listed in Hotelling-1 and Hotelling-2. 8", + "Therefore, on this record, and by a preponderance of the evidence, we are not persuaded the Examiner erred: (1) by concluding the contested **normally-on device\" of Treu (I 23) (corresponding to the **normally-on device\" recited in claim 1) would have been an obvious modification of Hotelling-I and Hotelling-2 to an artisan possessing an ordinary level of skill in the art, or (2) by improperly combining the cited references under 35 U.S.C. . 103.", + "Accordingly, we sustain the Examiner's rejection B of representative claim 1, and rejection B of independent claim 12 for essentially the same reasons articulated by the Examiner (Final Act. 9-10), as further discussed above.", + "The remaining claims rejected under rejection B (not separately argued), fall with representative claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2016001625_DECISION.json b/opinion_split/2016001625_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..37e746012481849afd9a92c570155dd4714663a0 --- /dev/null +++ b/opinion_split/2016001625_DECISION.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "Appellants identify the real party in interest as Siemens Aktiengesellschaft (Appeal Br. 3).", + "Appellants' invention is directed to a method for controlling a power production entity, includes generating a plurality of electric power signals by a plurality of power production entities, measuring a plurality of power levels of the plurality of power signals, modifying the plurality of power signals, supplying the plurality of modified power signals at a common node, and adjusting an operation voltage of at least one power production entity of the plurality of power production entities based on the plurality of measured power levels such that a power loss of the power signals caused by the modifying and/or supplying is minimized.", + "The independent claims recite the method described above, a system for controlling a power production entity using that method, and an electric power facility comprising that system.", + "Independent claim 14 is representative and is reproduced below from the Claims Appendix of the Appeal Brief (emphasis added): 14. A method for controlling a power production entity, the method comprising: generating a plurality of electric power signals by a plurality of power production entities; measuring a plurality of power levels of the plurality of power signals; modifying the plurality of power signals; supplying the plurality of modified power signals at a common node; and adjusting an operation voltage of at least one power production entity of the plurality of power production entities based on the plurality of measured power levels such that a power loss of the power signals caused by the modifying and/or supplying is minimized.", + "Appellants' arguments are directed to limitations recited in independent claim 14 and common to the remaining independent claims (see Appeal Br. 6-7; Reply Br. 2-4).", + "In this instance, with regards to independent claim 1, Appellants argue that Cardinal '817 does not disclose a method with the following step: adjusting an operation voltage of at least one power production entity of the plurality of power production entities based on the plurality of measured power levels such that a power loss of the power signals caused by the modifying and/or supplying is minimized. (Appeal Br. 7).", + "Thus, according to Appellants, the claimed method requires adjustment of the operation voltage of the power production entity based on the plurality of measured levels of the plurality power signals (id.)." + ], + "examiner_findings": [ + "I. Claims 14, 17, 18, 20, 22, 24, and 27-33 are rejected under 35 U.S.C. . 102(e) as being anticipated by Cardinal '817.2", + "II. Claims 15, 16, 19, 21, 25, and 26 are rejected under 35 U.S.C. , 103(a) as being unpatentable over Cardinal '817.", + "III. Claim 23 is rejected under 35 U.S.C. 8 103(a) as being unpatentable over Cardinal *817 in view of Cardinal *994.3", + "The Examiner finds that this limitation is described in Cardinal *817 at I 27 which, according to the Examiner: explicitly teaches managing distribution of reactive power production (Q1-Q3) among the power production entities (generators 201-203; Fig. 5).", + "That is, managing which power production entity (201-203) produces how much reactive power (Q1-Q3), hence the power commands 251-253) which adjusts the operation voltage of the power production entities. (Ans. 2, emphasis in original)." + ], + "ptab_opinion": [ + "Accordingly, our discussion will focus on the anticipation rejection of claim 14 over Cardinal '817.", + "\"A prior art reference anticipates a patent claim under 35 U.S.C. 9 102(b) ifit discloses every claim limitation.\"", + "In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. V. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)).", + "The Examiner does not dispute this claim construction (see Ans. 2-5).", + "After reviewing the findings and arguments set forth by the Examiner in the Final Action and the Answer, and Appellants* arguments as set forth in the Appeal Brief and the Reply Brief, we determine that the preponderance of the evidence supports Appellants' contention that the Examiner has not adequately demonstrated that Cardinal '817 discloses minimizing power loss by adjusting an operation voltage of at least one power production entity based on the plurality of measured power levels, as recited in claim 14, essentially for the reasons set forth by Appellants.", + "We add the following for emphasis.", + "While Cardinal *817 discloses that its system incorporates an algorithm whose technical effect is minimizing electrical losses for the windfarm system (Cardinal *817 I 13), there is no teaching that this algorithm adjusts an operation voltage of at least one power production entity based on the measured power levels, as recited in claim 14.", + "Moreover, the disclosure of 27 of Cardinal '817 does not disclose adjusting operation voltages of any type.", + "In FIG. 7 and ' 46, Cardinal '817 discloses that the power loss- minimizing algorithm sends reactive power commands to the individual generators.", + "However, Cardinal '817 clearly distinguishes between voltages and reactive power commands (see, e.g. I 13).", + "Thus, it is not clear that Cardinal '817 discloses adjusting an operation voltage of an individual power production entity based on the plurality of measured power levels to minimize power losses.* 4", + "The Examiner has not demonstrated that the preponderance of the evidence of record supports a finding that Cardinal '817 teaches **adjusting an operation voltage of at least one power production entity of the plurality of power production entities based on the plurality of measured power levels such that a power loss of the power signals caused by the modifying and/or supplying is minimized\" as recited in claim 14.", + "In re Hughes, 345 F.2d 184, 188 (CCPA 1965) (If a prior art reference is subject to two interpretations, then it is ambiguous and will not support an anticipation rejection).", + "Accordingly, we determine that Appellants have demonstrated reversible error in the anticipation rejection of independent claims 14, 27, and 31.5", + "With regard to Rejections II and III which relate to various dependent claims, the Examiner has not made additional findings sufficient to overcome the lack of teachings in Cardinal '817 about the adjustment of operational voltages based on measured power levels to minimize power loss.", + "Accordingly, we also reverse these rejections." + ] +} \ No newline at end of file diff --git a/opinion_split/2016001861_DECISION.json b/opinion_split/2016001861_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5456f342408820e539fc063e61e8536ea12df125 --- /dev/null +++ b/opinion_split/2016001861_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "Appellants contend that the Examiner erred in rejecting claim 16 because: Craft teaches no address that includes a first part and a second part, where the first part can be used to reach a data processing system over a data network and the second part can be used to identify a WPAR in that data processing system.", + "Amended claim 16 calls for receiving the packet from a second data processing system into the WPAR's host data processing system. App Br. 12, Appellants' emphasis omitted, panel emphasis added.", + "Problems exist where the examiner argues \"218 shows WPARI having a network address of 1.1.1.11, WPAR2 has a network address of 1.1.1.12, etc. Craft clearly uses the network aliasing feature disclosed by Appellant to have each WPAR appear as a distinct data processing system [Thus, by Craft disclosing each WPAR having a distinct network IP address, Craft's WPAR meets Appellant's definition ofa a data processing system. I\" (Examiner's Answer, pp. 8-9), and where the examiner argues \"Craft clearly discloses exchanging data from an application in one WPAR to another application and exchanging such data with a packet using an IP destination address (at least paragraph 18)\" (Examiner's Answer, p. 9).", + "First problem is that the WPARs are located in the same data processing system, and therefore their inter-communications are not really identifyling] the first data processing system to the second data processing system over a data network.", + "Second, Craft does not teach or suggest that WPAR-to-WPAR communication use the WPAR identifiers; therefore, such WPAR-to-WPAR communications do not occur using the combined address as in claim 16.", + "And lastly, the WPARs are not themselves qualified as the first data processing system and the second data processing system for the reasons described above. Reply Br. 3, emphasis added." + ], + "examiner_findings": [ + "The Examiner rejected claims 16-35 under 35 U.S.C. 6 102(b) as being anticipated by Craft et al. (US 2007/0233897 A1).", + "The Examiner responds to Appellants' Appeal Brief arguments by providing additional analysis that finds \"by Craft disclosing each WPAR having a distinct network IP address, Craft's WPAR meets Appellant's definition of a data processing system.\" Ans. 9, emphasis added.", + "As support for this finding, the Examiner points to selected paragraphs of Appellants Specification as being definitional. Ans. 8." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. .6 6(b).", + "We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief) that the Examiner has erred.", + "As to Appellants' above contention, we agree.", + "We agree with Appellants \"Craft teaches no address that includes a first part and a second part, where the first part can be used to reach a [second] data processing system over a data network and the second part can be used to identify a WPAR in that data processing system.\" App. Br. 12, emphasis added.", + "We disagree with Examiner's finding that it is reasonable to treat the *WPAR* and \"data processing system\" limitations of claim 16, as indistinct limitations, i.e., as being interchangeable.", + "However, the Examiner's selection of definitional paragraphs omits those paragraphs which contradict the Examiner's ultimate finding that the WPAR and data processing system are indistinct.", + "We conclude that the claim limitations *data processing system\" and *workload partition (WPAR)\" are not interchangeable for purposes of the rejection.", + "Rather, an artisan reading Appellants' disclosure as a whole would recognize the terms are distinct with the term *data processing system\" being directed to hardware, and the term \"workload partition\" being directed to software.", + "(1) Appellants have established that the Examiner erred in rejecting claims 16-35 as being anticipated under 35 U.S.C. 8 102(b).", + "(2) On this record, claims 16-35 have not been shown to be unpatentable." + ] +} \ No newline at end of file diff --git a/opinion_split/2016002983_DECISION.json b/opinion_split/2016002983_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..fe55abee82bc580d741f759d0fb57b0f3c7a60b5 --- /dev/null +++ b/opinion_split/2016002983_DECISION.json @@ -0,0 +1,26 @@ +{ + "appellant_arguments": [ + "Appellants, on the other hand, argue that paragraphs 12 and 18 in Suzuki describe a \"drug discovery screening device for irradiating excitation light on samples placed on a well plate, and executing image processing based on fluorescent signals from the samples\" but there is no evidence that such processing teaches or suggests the algorithms which are **adapted to determine [a] value for said at least one parameter describing microbial activity of said individual biological organisms\" as recited in claim 60.\" Reply 3-7; App. Br. 6-7; see Suzuki 11 12, 18." + ], + "examiner_findings": [ + "Claims 60, 62, 63, 66, and 69-83 are rejected under 35 U.S.C. & 103 as being unpatentable over Suzuki in view of Maiya. Final Act. 3.4", + "Claims 64 and 65 are rejected under 35 U.S.C. , 103 as being unpatentable over Suzuki in view of Maiya, and Klug. Final Act. 6.", + "Claims 67 and 68 are rejected under 35 U.S.C. 8 103 as being unpatentable over Suzuki in view of Maiya, and Greenberger. Final Act. 7.", + "In rejecting claim 60, the Examiner finds that paragraph 12 of Suzuki *states that an image analysis device is used to analyze each image to evaluate cell response during drug discovery screening.\" \" Final Act. 3.", + "In the Answer, the Examiner further finds that paragraph 12 as well as paragraph 18 of Suzuki describe \"a prior art image processing unit (Figure 6:15) \u00b7 \u00b7 \u00b7 used to evaluate images and determine which cells exhibit a change in activity when treated with a drug candidate.\" Ans. 5.", + "Reasoning that \"[cjomputers use algorithms when running image processing software,\" the Examiner finds that the image processing unit shown in Figure 6:15 of Suzuki teaches or suggests **algorithms adapted to determine [a] value for said at least one parameter describing microbial activity of said individual biological organisms\" as recited in claim 60. Id.", + "In the Answer, the Examiner additionally cites Maiya paragraphs 40, 41, and 44 for teaching \"using a computer to interpret images obtained by a camera.\" \" Ans. 5.", + "The Examiner, without further elaboration, concludes that this particular teaching *inherently requires the provision of an image analysis device comprising algorithms adapted to characterize the imaged cell.\" Id." + ], + "ptab_opinion": [ + "We reverse.", + "The prior art reference Suzuki at the cited portions describes a device *executing image processing based on fluorescent signals from the samples\" without specifying what the \"processing\" entails. See Suzuki 99 12, 18.", + "The Examiner has not provided a sufficient explanation as to why the prior art *image processing \u00b7 + \u00b7 for displaying\" teaches or suggests algorithms *adapted to determine [a] value for said at least one parameter describing microbial activity of said individual biological organisms\" as recited in claim 60.", + "For example, the Examiner has not explained which particular microbial activity as defined by the Specification is taught by the prior art.", + "Nor has the Examiner explained what \"value\" is determined by the prior art processing unit and for which parameter describing that particular activity as required by claim 60.", + "The Examiner has not explained why the prior art program for observation inevitably includes **algorithms adopted to determine [a] value for said at least one parameter describing microbial activity of said individual biological organisms\" as recited in claim 60.", + "For example, the Examiner has not explained which parameter describing what particular microbial activity for which Maiya's program would inevitably determine a value as recited in claim 60.", + "The Examiner, on the current record, has not met the initial burden of establishing unpatentability based on an inherent or explicit disclosure of the claimed subject.", + "See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (\"[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. \")." + ] +} \ No newline at end of file diff --git a/opinion_split/2016003375_DECISION.json b/opinion_split/2016003375_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..42d4b14d5a21d460450b8f3ad8f44bab35debe2c --- /dev/null +++ b/opinion_split/2016003375_DECISION.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "I Appellants indicate the real party-in-interest is Apple Inc. App. Br. 3.", + "The disclosed invention relates to a computing device and method for associating authentication credentials with biometric information. Spec. Abstract, 11 6-9.", + "1. A system for automatic association of authentication credentials with biometrics, comprising: at least one processing unit; at least one touch input/output (I/O) device coupled to the at least one processing unit, wherein the at least one touch I/O device includes a fingerprint sensor disposed below a touch sensitive surface, the touch sensitive surface configured to receive touch inputs for the system; and at least one non-transitory storage medium storing instructions executable by the at least one processing unit to: receive authentication information from at least one user, within a time-out period from receipt of the authentication information, receive at least one fingerprint from the at least one user via the touch sensitive surface while the touch sensitive surface receives one or more touch inputs from the at least one user; and assign at least one authentication credential to the at least one fingerprint based at least on at least one authentication credential associated with the authentication information." + ], + "examiner_findings": [ + "Appellants seek review under 35 U.S.C. 6 134(a) from the Examiner's Final Rejection of claims 1-20, all of the pending claims in the application.", + "Claims 1, 2, 9, 11, 19, and 20 stand rejected under 35 U.S.C. 6 103(a) as unpatentable over Pleasant et al. (US2009/0320125 AI; Dec. 24, 2009) (*Pleasant\"), Jiang et al. (GB 2447752 A; Sept. 24, 2008) (\"Jiang\"), and Kim (US 2010/0225607 A1; Sept. 9, 2010).", + "Claims 3-7, 10, 12-14, and 16-18 stand rejected under 35 U.S.C. 6 103(a) as unpatentable over Pleasant, Jiang, Kim, and Bianco et al. (US 6,256,737 B1; July 3, 2001).", + "Claims 8 and 15 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Pleasant, Jiang, Kim, Bianco, and Jacobs (US 2008/0109871 A1; May 8, 2008).", + "The Examiner finds that Pleasant teaches *receivling] authentication information from at least one user; within a time-out period from receipt of the authentication information, receiv[ing] at least one fingerprint from the at least one user,\" as recited in claim 1, and recited similarly in independent claims 11 and 20. See Final Act. 8, 12, 15 (citing Pleasant \" 32, 43, 69).", + "The Examiner explains that Pleasant teaches \"receive at least one fingerprint from the at least one user, based on Pleasant's disclosure of using biometric identification including finger or thumbprint identification, and a workstation configured with a fingerprint reader. See Ans. 5-6 (citing Pleasant 11 32, 69).", + "The Examiner asserts that Pleasant teaches *within a time-out period from receipt of the authentication information,\" \" based on Pleasant's disclosure of the configurability of software such that users can set and change settings in the security module, including an inactivity timeout (a duration of inactivity after which input devices are transformed back to no access), and a logon form timeout (a duration of inactivity on a log on window after which the logon form will become minimized or otherwise not visible until the next attempt to input data). See Ans. 6 (citing Pleasant I 43).", + "The Examiner contends that \"because the disclosure of Pleasant fairly teaches all elements of the subject limitation of Appellant's independent claim 1 (and similarly independent claims 11 and 20), Examiner has provided an explicit prima facie case of obviousness with regard to the subject claim limitation(s).\" Id." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We REVERSE.", + "Representative claim 1, reproduced from the Claims Appendix of the Appeal Brief, reads as follows (disputed limitations in italics):", + "We have reviewed the Examiner's rejections in light of Appellants' arguments in the Appeal Brief, the Examiner's Answer, and Appellants' arguments in the Reply Brief.", + "We agree with Appellants* arguments.", + "We highlight and address specific findings and arguments below for emphasis.", + "We agree with Appellants' argument that the cited disclosures of Pleasant do not teach or suggest receiving at least one fingerprint within a time-out period from receipt of the authentication information. See App. Br. 9-11 (citing Pleasant 11 32, 43, 69).", + "We further agree with Appellants' argument that Pleasant teaches a timeout period as an inactivity timeout associated with a lack of action and a timeout period in conjunction with a log in window or an input device, but does not teach or suggest a time out period with respect to fingerprints, where the fingerprints are received within a time out period from receipt of authentication data. See Reply Br. 3-4; Pleasant I 43.", + "The Examiner does not rely on the additional teachings of Jiang and Kim to remedy the aforementioned deficiencies of Pleasant. See Final Act. 8-18.", + "Therefore, we are persuaded the Examiner erred in rejecting claims 1, 2, 9. 11, 19, and 20 as unpatentable over Pleasant, Jiang, and Kim.", + "The Examiner further does not rely on the additional teachings Bianco and Jacobs to remedy the aforementioned deficiencies of Pleasant. See Final Act. 18-30.", + "Accordingly, we are persuaded the Examiner erred in rejecting dependent claims 3-7, 10, 12-14, and 16-18 as unpatentable over Pleasant, Jiang, Kim, and Bianco, and dependent claims 8 and 15 as unpatentable over Pleasant, Jiang, Kim, and Jacobs." + ] +} \ No newline at end of file diff --git a/opinion_split/2016003404_DECISION.json b/opinion_split/2016003404_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5bde1cdcccfa9a4680a4dce5a4b5fac8a8c7339d --- /dev/null +++ b/opinion_split/2016003404_DECISION.json @@ -0,0 +1,21 @@ +{ + "appellant_arguments": [ + "Appellants argue Langan does not disclose this limitation. App. Br. 4-5; Reply Br. 2-4.", + "Hence, when considering claim 1 as a whole, Langan et al., step 84 of Figure 2 and paragraph [0053], does not read on claim 1. \u00b7 Langan et al. explicitly requires generating the static volume rendering by spatially associating more than a single 3D reconstruction (i.e., the reconstructions 84). Reply Br. 2." + ], + "examiner_findings": [ + "Rejections Claims 1, 3, and 12-20 are rejected under 35 U.S.C. 8 102(e) as being anticipated by Langan (US 2006/0133564 A1, June 22, 2006). Final Act. 2- 7.", + "Claims 4 and 5 are rejected under 35 U.S.C. 103(a) as being unpatentable over Langan and Leach (US 2007/0127809 A1, June 7, 2007). Final Act. 7-9.", + "Claims 6-8 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over Langan and Pan (US 2007/0036418 A1, Feb. 15, 2007). Final Act. 10-12,", + "Claim 9 is rejected under 35 U.S.C. 9 103(a) as being unpatentable over Langan, Pan, and Webler (US 2007/0167801 A1, July 19, 2007). Final Act. 12-13.", + "Claims 10 and 11 are rejected under 35 U.S.C. 6 103(a) as being unpatentable over Langan and Webler. Final Act. 13-15." + ], + "ptab_opinion": [ + "In particular, Appellants argue, and we agree, in Langan, Paragraph [0053] states the desired motion-corrected reconstructions (plural) are associated spatially, e.g., spatially proximate or adjacent images may be ordered or combined to generate a static volume rendering at one instant in the cardiac cycle.", + "We agree with Appellants as our interpretation of the disclosure of Langan coincides with that of Appellants. See App. Br. 4-5; Reply Br. 2-4.", + "We conclude that the Examiner's findings are not supported by Langan for the reasons set forth by Appellants.", + "Therefore, on this record, we find the weight of the evidence supports the positions articulated by Appellants in the briefs.", + "Accordingly, as such, we cannot sustain the Examiner's rejections of claims 1, 12, and 14.", + "Because we reverse the rejection of ofindependent claims 1, 12, and 14 on appeal, we also reverse the rejections of dependent claims 3-11, 13, and 15- 20, which depends on claims 1, 12, and 14 respectively." + ] +} \ No newline at end of file diff --git a/opinion_split/2016003756_DECISION.json b/opinion_split/2016003756_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..683ccfb7b6fffd8252a00e773e7d4ded1388be56 --- /dev/null +++ b/opinion_split/2016003756_DECISION.json @@ -0,0 +1,67 @@ +{ + "appellant_arguments": [ + "FF 22. Vitolo declares that based on tests using Mycobacterium bovis-BCG, \"a composition including both a quaternary ammonium salt and a 1,2- alkanediol, such as those recited in [Appellants'] claims 1, 21, 38, 41, 43, and 46 O. exhibits unexpectedly improved tuberculocidal effects over a composition that does not include both a quaternary ammonium salt and a 1, 2-alkanediol [sic]\" (Vitolo Decl. 12 ' 2; see also id. 11 3-7).", + "Claims 15, 16, and 33-36: Appellants do not contest the rejection of claims 15, 16, and 33-36.", + "To the contrary, Appellants group: (i) claims 15 and 16 with claim 1 and (ii) claims 33-36 with claim 21.", + "Claim 39: Appellants contend that \"[the cited references, either alone or in combination, fail to disclose, teach or suggest the composition recited in claim 39\" (App. Br. 22).", + "Claims 50-52: Appellants do not contest the rejection of Appellants' antimicrobial wipe and composition claims 50-52.", + "To the contrary, Appellants group: (i) claim 50 with claim 1, (ii) claim 51 with claim 21, and (iii) claim 52 with claim 38." + ], + "examiner_findings": [ + "Claims 1-14, 17-31, 37, 38, 41-45, 53-56, and 59-62 stand rejected under 35 U.S.C. 9 103(a) as unpatentable over the combination of Mitra, 3 Yao,4 DuPont,* and Hyamine.\" 6", + "Claims 1, 12, 13, 21-32, and 53-56 stand rejected under 35 U.S.C. a 103(a) as unpatentable over the combination of Mitra, Yao, Michels,\" DuPont, and Hyamine.", + "Claims 46-52, 57, and 58 stand rejected under 35 U.S.C. 6 103(a) as unpatentable over the combination of Mitra, Yao, DuPont, Hyamine, and McCue.\" 8", + "Claims 15, 16, 39, and 40 stand rejected under 35 U.S.C. S 103(a) as unpatentable over the combination of Mitra, Yao, DuPont, Hyamine, Schmid,' 9 and Zander. 10", + "Claims 33-36 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over the combination of Mitra, Yao, Michels, DuPont, Hyamine, Schmid, and Zander.", + "FF 4. Examiner finds that Mitra exemplifies a wipe loaded with a composition comprising the ingredients listed in Mitra's EXAMPLE 23: EXAMPLE 23 BARQUAI 205M 0.15-0.4% Ammunium Chloride 0.05-0.8% Dipotassium EDIA 0.07-0.128 Incomposed 25-47 FaB Calycol other) 0.05~2% Sucious 1109 0.2-0.55 Zoept PSO 0~1% Fragrance 0-2 thise M \\ 10% Dufent \u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7 20-22.23 Loading ratio 33-4.1 pH Alkalies Wherein **Surfonic L108 is an ethoxylated nonionic surfactant, BARQUAT 205M is a quaternary ammonium salt, isopropanol is an alcohol, and PnB is propylene glycol mono-n-butyl ether\" (Final Act. 3-4; see generally Mitra 31: 11-47.)", + "FF 5. Examiner finds that Mitra's 's wipe comprises a substrate loaded with *3.5xow to 4xow\" of Mitra's composition, wherein Mitra's liquid composition is *absorbe[d] [into the] wipe via soaking, spraying, or impregnating where 0 pre-moistened wipes are packaged in a dispenser\" (Final Act. 4; citing Mitra 4: 26-34 and 58-66).", + "FF 6. Examiner finds that Mitra discloses the use of of\"BARQUAT 205 M [] an alkyl benzyl ammonium chloride as well as BARQUAT MB-50 0 a similar cationic biocide that is an alkyl dimethyl benzyl ammonium chloride (Final Act. 4, citing Mitra 9: 48-55).", + "FF 7. Examiner finds that \"BARQUAT MB-50 is a mixture of C12, C14 and C16 dimethyl benzyl ammonium chloride\" (Final Act. 4, citing Hyamine).", + "FF 8. Examiner finds that Mitra's substrate may be \"Dupont\"M 8838 [] a nonwoven wood pulp-polyester blend with a basis weight of 51 g/m2** (Final Act. 4, citing Mitra 23: 3-9 and DuPont).", + "FF 9. Examiner finds that Mitra discloses the use of *PnB, as well as DPnB, dipropylene glycol mono-n-butyl ether\" (Final Act. 4, citing Mitra 25: 51-53).", + "FF 10. Examiner finds that Mitra discloses \"[the addition of pH regulating agents 0 in order to yield a pH of 7.2 to 10.5M (Final Act. 4, citing Mitra 21: 36-43).", + "FF 11. Examiner finds that Mitra does not exemplify a composition comprising each quaternary ammonium salt or solvent within the scope of Mitra, a composition comprising **1,2-alkanediol, or the precise order for the combination of components in the composition\" (Final Act. 5).", + "FF 13. Examiner finds that Yao discloses *that 1, 2-alkanediols [sic],\" such as 1,2-octanediol, *act synergistically with antibacterial compounds to increase their efficacy\" (Final Act. 5, citing Yao I 18).", + "FF 15. Examiner finds that Yao discloses that antibacterial compositions comprising 0.5% 1,2-alkanediols are useful for *inclus[ion] on absorbent materials\" (Final. Act. 5, citing Yao I 19).", + "FF 19. Examiner finds that McCue discloses the use of disinfectant compositions for application to hard surfaces, such as those employed in health care (Final Act. 8, citing McCue 4: 51-5: 24).", + "FF 20. Examiner finds that Schmid discloses *antimicrobial compositions that include quaternary ammonium salts as the antimicrobial active [and] Zonyl surfactants as well as Triton X-100, the commercial name for polyethylene glycol p+(1,1.3.3etramethylburyl)pnyl ether, as nonionic surfactants envisioned for inclusion in such compositions\" (Final Act. 9-10, citing Schmid 11 70 and 133 and Zander 5: 8-11).", + "FF 21. Examiner relies on Michels to disclose *moistened wipes for cleaning surfaces.\" which comprise \"n-alkyl dimethyl benzyl ammonium chlorides, a category to which BARQUAT MB-50 belongs\" and *dipropylene glycol mono-n-butyl ether as well as dipropylene glycol mono- n-propyl ether\" (Final Act. 12, citing Michels 99 2, 88, and 174).", + "Based on the combination of Mitra, Yao, DuPont, and Hyamine, with or without Michels, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious \"to exchange BARQUAT MB-50 for the BARQUAT 205M in the composition of [Mitra's] 's] example 23 as a quaternary ammonium salt of similar structure that is also envisioned for the same purpose in the composition, *exchange dipropylene glycol mono-n-butyl ether for the propylene glycol mono-n- butyl ether in [Mitra's] composition as a similarly structured solvent also envisioned for the same purpose,\" and \"add 1, 2-octanediol [sic] at the percentage taught by Yao \" (interpreted as a wt/wt percentage) to [Mitra's] composition so as to enhance the antimicrobial activity of the BARQUAT MB-50 based upon the teachings of Yao\" (Final Act. 5-6 and 12-13).", + "Examiner recognizes that the combination of Mitra, Yao, DuPont, and Hyamine is \"silent in regard to the ability of the wipe to meet the DIS/TSS-6 efficacy data requirements and kill mycobacterium [as] recited in [Appellants'] claims, \", but reasons that \"[the resulting modified formulation has all the claimed components at the claimed proportions, therefore the recognition that products of the instant invention have a particular type of efficacy is not enough to distinguish the claimed composition from\" the composition suggested by the combination of Mitra, Yao, DuPont, and Hyamine (Final Act. 7 and 13-14).", + "On this record, Examiner finds that the prior art directs a person of ordinary skill in this art to an antimicrobial wipe comprising the same ingredients in the same amounts as are required by Appellants' claimed invention (Final Act. 7 and 13-14, FF 1-16).", + "Further, Examiner finds that Yao discloses \"that 1, 2-alkanediols [sic],\" such as 1,2-octanediol, *act synergistically with antibacterial compounds[, such as those disclosed by Mitra,] to increase their efficacy\" (FF 6, 7, 13, and 14).", + "Based on the combination of Mitra, Yao, DuPont, Hyamine, Schmid, and Zander, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious \"to include polyethylene glycol p-(1,1 p+(1,1.3.3etrimethylbutyl/phenyl ether in the composition\" suggested by the combination of Mitra, Yao, DuPont, and Hyamine, with or without Michels, *instead of Zonyl FSO,\" which is exemplified in Mitra's 's Example 23 (Final Act. 10 and 15; FF 1-16 and 20).", + "To the contrary, as Examiner explains, the combination of references relied upon by Examiner suggest a composition comprising ingredients, as required by Appellants' claimed invention, at concentration ranges that **fully lie inside of or overlap those claimed\" (Ans. 8).", + "Based on the combination of Mitra, Yao, DuPont, Hyamine, and McCue, Examiner concludes that, at the time Appellants\" invention was made, it would have been prima facie obvious to use the wipe suggested by the combination of Mitra, Yao, DuPont, and Hyamine to disinfect \"a hard surface with mycobacteria thereon\" (Final Act. 8)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellants disclose \"disinfecting wipe products and compositions\" (Spec. I 1).", + "Claims 1, 11, and 46 are representative and reproduced below: 1. An antimicrobial wipe for use on hard surfaces comprising: (a) an absorbent substrate; and (b) a liquid composition comprising: (i) about 0.01 w/w % to about 1.0 w/w % of Cur C18 alkyl dimethyl benzyl ammonium chloride, C12-C14 alkyl dimethyl ethylbenzyl ammonium chloride, or mixtures thereof; (ii) about 0.05 w/w % to about 6.0 w/w % of a 1,2- alkanediol: (iii) about 0.5 w/w % to about 7.5 w/w % of dipropylene glycol mono-n-butyl ether, dipropylene glycol mono-n-propyl ether, or mixtures thereof; (iv) about 0.01 w/w % to about 3.0 w/w % of an ethoxylated nonionic surfactant; and (v) the balance being water; wherein the substrate is impregnated with the composition at a loading level from about 1.5 xowl2] to about 10 xow; said antimicrobial wipe being effective to treat a hard surface to kill mycobacterium on the hard surface by wiping with the antimicrobial wipe, and said antimicrobial wipe meeting the United States Environmental Protection Agency's DIS/TSS-6 Efficacy Data Requirements for Supplemental Efficacy Claims with respect to mycobacterium tuberculosis. (App. Br. 31.)", + "11. The antimicrobial wipe of claim 1, wherein the 1,2- alkanediol is 1,2-octanediol. (Id. at 33.)", + "46. A method of disinfecting a surface having mycobacterium thereon comprising: applying an effective amount of a disinfecting composition onto a hard surface, using an applicator containing the disinfecting composition, said disinfecting composition comprising: about 0.01 w/w % to about 1.0 w/w % of C12-C18 alkyl dimethyl benzyl ammonium chloride, C12-C14 alkyl dimethyl ethylbenzyl ammonium chloride, or mixtures thereof; about 0.05 w/w % to about 6.0 w/w % of a 1,2- alkanediol; about 0.5 w/w % to about 7.5 w/w % of dipropylene glycol mono-n-butyl ether, dipropylene glycol mono-n-propyl ether, or mixtures thereof; about 0.01 w/w % to about 3.0 w/w % of a nonionic surfactant; a pH regulating agent to make the pH of the composition between about 5.0 and about 11.5; and water; wherein said disinfecting composition disinfects the hard surface and kills the mycobacterium thereon, and said disinfecting composition meets the United States Environmental Protection Agency's DIS/TSS-6 Efficacy Data Requirements for Supplemental Efficacy Claims with respect to mycobacterium tuberculosis. (App. Br. 41-42.)", + "ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness?", + "FF 1. Mitra discloses a \"general purpose cleaning wipe which includes a wipe combined with a liquid cleaning composition having a biocide and a biocide release agent\" (Mitra 1: 13-16; 6; see id. at 2: 37-40; Final Act. 11 3).", + "FF 2. Mitra's \"cleaning composition is typically formulated to clean hard surface counter tops; however, the 0 cleaning composition has much broader applications and [can] be used as a clean glass cleaner, appliance cleaner, hard surface cleaner, floor cleaner, dishwashing cleaner, and the like, wherein \"the term *hard surface' includes, but is not limited to \u00b7 \u00b7 appliances \u00b7 \u25a0 \u25a0 utility devices (e.g., telephones \u00b7 \u00b7 .)\" and \"the fields of use 0 include, but are not limited to \u00b7 \u00b7 \u00b7 health care (e.g., hospitals, urgent care facilities, clinics, nursing homes, medical/dental office, laboratories)\" (Mitra 2: 41-67, see Ans. 4-5).", + "FF 3. Mitra discloses the \"[clommon types of bacteria that are destroyed by [Mitra's] cleaning composition include, but are not limited to, Staphylococcus aureus (Staph), Kleb, Salmonella choleraesuis (Salmonella), Pseudomonas aeruginosa, Serratia marcescens, Influenza A2, Candida albicans, Fusarium solani, common viruses and/or fungi\" (Mitra 24: 4-10 and 48-54).", + "FF 12. Yao *relates generally to an absorbent article and, in particular, to an absorbent article having antimicrobial properties\" (Yao ' 1: see generally Ans. 5).", + "FF 14. Yao discloses that \"benzalkonium compounds (e.g., benzalkonium chloride, and a mixture of benzalkonium chloride, silver nitrate)\" are **suitable antimicrobial agents for use in the embodiments described\" by Yao (Yao I 15; see also Final Act. 5 (\"Benzalkonium chlorides, [are] another name for the compounds of BARQUAT MB-50*).", + "FF 16. Yao discloses that [n]ot all antimicrobial agents can kill or inhibit the growth of all microbes. Rather, any one particular antimicrobial agent generally has a range of microbe types that the antimicrobial agent is effective against. As such, a variety of antimicrobial agents and/or combinations of antimicrobial agents may be applied to [Yao's] absorbent layer 0 to provide protection against a broad range of microbes. (Yao I 15.)", + "FF 17. McCue discloses *disinfectant compositions which are effective against Mycobacterium terrae\" (McCue 1: 5-8; see Final Act. 8).", + "FF 18. McCue discloses compositions comprising \"a germicidal cationic quaternary ammonium compound,\" such as *BARQUATO MB-50\" or **BARQUATO 205M\" (McCue 1: 66-2: 8 and 3: 5-18; Final Act. 8).", + "\"Synergism, in and of itself, is not conclusive of unobviousness in that synergism might be expected.' In re Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979).", + "\"To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention.\" Bristol-Myers Squibb Co. V. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).", + "Therefore, we are not persuaded by Appellants' contentions regarding *unexpectedly improved tuberculocidal effect as compared to compositions that do not include [Yao's] 1,2-alkanediol, such as those disclosed in Mitra\" (App. Br. 9-21 and 22-27; Reply Br. 1-5; see FF 22; of Final Act. 5-6 and 12-13).", + "For the reasons set forth above Appellants' claim 21 is prima facie obvious over the combination of Mitra, Yao, DuPont, and Hyamine, with or without Michels.", + "Claim 32 stands rejected over the combination of Mitra, Yao, DuPont, Hyamine, and Michels (see Final Act. 9-10), Therefore, consistent with Appellants' claim grouping, as it relates to the rejections of record, Appellants' claim 32 falls with claim 21 (see App. Br. 18).", + "Having found claims 1 and 21 prima facie obvious over the combination of Mitra, Yao, DuPont, and Hyamine, with or without Michels, we find no error in Examiner's undisputed rejection of claims 15 and 33 over the combination of Mitra, Yao, DuPont, Hyamine, Schmid, and Zander, without or with Michels respectively (Final Act. 3-8 and 10-14; FF 1-16, 20, and 21; of App. Br. 16 and 18).", + "We are not persuaded.", + "\"[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness.\" Iron Grip Barbell Co. V. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004); see also In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997) (Overlapping ranges support a prima facie case of obviousness).", + "Further, \"where[, as here,] the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.\" In re Aller, 220 F.2d 454, 456 (CCPA 1955).", + "In addition, we are not persuaded by Appellants' assertion that the claimed composition exhibits unexpected properties, because Yao teaches that 1,2-alkanediols, such as 1,2-octanediol, act synergistically with antimicrobial agents to enhance their antimicrobial efffect (FF 13).", + "Having found claims 1, 21, and 38 prima facie obvious over the combination of Mitra, Yao, DuPont, and Hyamine we find no error in Examiner's undisputed rejection of claims 50, 51, and 52 over the combination of Mitra, Yao, DuPont, Hyamine, and McCue (Final Act. 3-8; FF 1-19; cf App. Br. 16, 18, and 21).", + "The method of disinfecting a surface having mycobacterium thereon, as set forth in Appellants' claim 46 requires, inter alia, applying an effective amount of a disinfecting composition onto a hard surface, using an applicator containing the disinfecting composition, \u00b7 \u00b7 wherein [the] disinfecting composition disinfects the hard surface and kills the mycobacterium thereon, and [the] disinfecting composition meets the United States Environmental Protection Agency's DIS/TSS-6 Efficacy Data Requirements for Supplemental Efficacy Claims with respect to mycobacterium tuberculosis. (App. Br. 41-42.)", + "At best, Examiner established that a composition comprising \"a germicidal cationic quarternary ammonium compound\" is *effective against Mycobacterium terrae\" and may be used to disinfect hard surfaces (FF 17- 20).", + "Notwithstanding Examiner's assertion to the contrary, we are not persuaded that \"[i]n light of [McCue's disclosure relating to Mycobacterium terrae] it would have been obvious to one of ordinary skill in the art to use the wipe of Mitra [I in view of Yao II to wipe a hard surface with mycobacteria thereon so as to disinfect the surface\" in the manner specifically required by Appellants' claimed invention (Final Act. 8-9).", + "Stated differently, Examiner failed to establish an evidentiary basis on this record to support a conclusion that the combination of Mitra, Yao, DuPont, Hyamine, and McCue makes obvious Appellants' claimed invention." + ] +} \ No newline at end of file diff --git a/opinion_split/2016004096_DECISION.json b/opinion_split/2016004096_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..68859a55a9d5040fc557cd7a450b6ce4ebd25d13 --- /dev/null +++ b/opinion_split/2016004096_DECISION.json @@ -0,0 +1,124 @@ +{ + "appellant_arguments": [ + "STATEMENT OF THE CASE- Appellant describes the invention as relating to \"meeting management software that distinguishes staff from other meeting invitees and permits staff based programmatic actions.\" \" Spec. I 1.", + "Appellant states that it only seeks review of rejections 4, 5, and 6. Appeal Br. 10.", + "Appellant defines staff as humans responsible for conducting some aspect of a meeting. Spec. 1 4 (\"Meeting staff are members who are responsible for one or more facets of a meeting. \").", + "Appellant argues that the Figure 1 shows staff members being distinguished from others and thus demonstrates Appellant' s possession of the \"distinguishes\" recitations. Appeal Br. 14-15.", + "Rather, Appellant merely explains that the idea of an expandable and contractable hierarchy is known in the art. Appeal Br. 15-17.", + "With respect to the Examiner's obviousness rejections, Appellant argues rejections three through six as a group in asserting that the cited references do not teach the *staffs element\" recited by each independent claim. See Appeal Br. 18, 22-25.", + "Appellant also argues that various combinations of references are improper. Appeal Br. 19-21.", + "Appellant argues (Appeal Br. 23-26) that each claim requires a staffs element such as that depicted in Figure 3 of the Specification and reproduced in part below.", + "Appellant's argument that neither Strick nor Nguyen individually teach the staffs element does not persuasively rebut against the Examiner's conclusion that the staffs element recitation is obvious in view of the combined references.", + "Appellant also argues that the Examiner has not adequately identified what elements of Strick and/or Nguyen are asserted as equivalent to the recited \"staffs element\" and request a claim mapping pursuant to MPEP 8 1207.02(e).", + "Appellant argues that the Examiner provides no proper motivation for combining Strick and Nguyen. Appeal Br. 19-20.", + "Appellant argues that the Examiner provides no proper motivation for combining Strick, O'Sullivan, and Nguyen. Appeal Br. 20.", + "Appellant argues that the Examiner has not provided a proper motivation to combine Strick and Conmy. Appeal Br. 21-22." + ], + "examiner_findings": [ + "REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Conmy et al. US 2001/0014866 A1 Aug. 16, 2001 (hereinafter \"Conmy\") Strick et al. US 6, 732,103 B1 May 4, 2004 (hereinafter **Strick*) Nguyen et al. US 2005/0209914 AI Sep. 22, 2005 (hereinafter \"Nguyen\") O'Sullivan US 2006/0271419 A1 Nov. 30, 2006", + "REJECTIONS The Examiner maintains the following rejections on appeal:", + "Rejection 1. Claims 1-7, 14-18, and 21-23 pursuant to the written description requirement of 35 U.S.C. 8 112. Ans. 3; see also Final Act. 3.5", + "Rejection 2. Claim 24 as indefinite under 35 U.S.C. S 112. Ans. 3; see also Final Act. 5.", + "Rejection 3. Claims 9-11, 13-16, and 21-23 under 35 U.S.C. . 103 as unpatentable over Strick in view of Nguyen. Ans. 3; see also Final Act. 6.6", + "Rejection 4. Claims 1-5 and 24 under 35 U.S.C. S 103 as unpatentable over Strick in view of O'Sullivan and in further view of Nguyen. Ans. 3; see also Final Act. 24.", + "Rejection 5. Claims 6 and 7 under 35 U.S.C. & 103 as unpatentable over Strick in view of O'Sullivan and further in view of Conmy and Nguyen. Ans. 3; see also Final Act. 38.", + "Rejection 6. Claims 12, 17, and 18 under 35 U.S.C. 9 103 as unpatentable over Strick in view of Nguyen and in view of Conmy. Ans. 3; see also Final Act. 42.", + "The Examiner rejects claims 1-7, 14-18, and 21-23 pursuant to the written description requirement of 35 U.S.C. 9 112. Ans. 3; see also Final Act. 3.", + "In particular, the Examiner maintains that Appellant's 's original specification does not demonstrate Appellant's possession of the instant invention \"wherein said staffs element distinguishes meeting staff users from other meeting participants, and distinguishing meeting staff users from other meeting participants using the input entered into the staff's element. \" Final Act. 3-4,", + "The Examiner finds that \"GUI input box claimed as *staffs element is merely a data field labeling certain data (names of staff members) as staff, but in no way precludes other labels being assigned to the users.\" \" Ans. 7.", + "The Examiner rejects claim 24 as indefinite under 35 U.S.C. S 112. Ans. 3; see also Final Act. 5.", + "The Examiner states that \"[the claim and the specification lack any clarification for the proper metes and bounds of what exactly constitutes [a] decomposable hierarchy.\" Ans. 9.", + "For the third rejection, the Examiner rejects claims 9-11, 13-16, and 21-23 as obvious over Strick in view of Nguyen. Ans. 3; see also Final Act. 6.", + "The Examiner's fourth, fifth, and sixth rejections also reference Strick and Nguyen while relying on additional references as well. Ans. 3: see also Final Act. 24, 38, 42.", + "The Examiner finds that Strick discloses a system for managing meetings where staff is distinguished from other meeting participants. Final Act. 6-8 (providing citations to Strick).", + "The Examiner finds that \"[t]he GUI from which invitees can be selected comprises *the staffs element configured to accept input defining at least one user who is to be considered a staff member. \". Id. at 8 (quoting claim 9).", + "The Examiner finds that Strick discloses that invitees may be chosen by designated group, affiliation, or category and that it would be *apparent to one of ordinary skill in the art that a staff category could easily be created as disclosed by Strick's teachings.\" Id. at 8.", + "The Examiner finds that *under a strictly conservative interpretation, Strick may not appear to explicitly specify said user interface comprising a staffs element verbatim as *staff although it does distinguish invitees by different positions, such as *employee.\" .. Ans. 13.", + "The Examiner finds that Nguyen, however, teaches event planner software that explicitly teaches distinguishing between staff and non-staff. Id. at 13-14 (providing citations to Nguyen); see also Final Act. 8-10 (providing citations to Nguyen).", + "The Examiner thus concludes that \"it would have been obvious to one of ordinary skill in the art to modify Strick who already discloses that attendees or invitees of an event can be categorized, to further extend the categorization to distinguish between staff attendees and other types of attendees for optimized event management and communication in order to improve workflow and logistics regarding staff scheduling for the event. \" Ans. 14; see also Final Act. 10.", + "The Examiner finds that Strick discloses a GUI (graphic user interface) from which invitees from different categories may be selected. Ans. 10.", + "For example, employees could be selected. Id.; see also Strick Fig. 10, 6:13-30.", + "The Examiner further finds that Nguyen permits defining attendee roles *such as speaker, VIP, vendor, staff. executives, planner, etc. Ans. 13; see also Nguyen \" 244-246.", + "Based on this evidence, the Examiner concludes that it would have been obvious to extend Strick 's categorization to distinguish staff members. Ans. 14.", + "In particular, the Examiner finds that O'Sullivan discloses a meeting management system *similar* to Strick that adds a feature of defining participants of the meeting who are not considered staff. Final Act. 28.", + "The Examiner finds that adding this concept to Strick would make the Strick product *more useful to a greater customer-base.\" Id.", + "In other words, the Examiner finds that this feature of O'Sullivan would improve Strick in the same manner it improves O'Sullivan.", + "The Examiner finds, however, that O'Sullivan discloses presenting calendaring and scheduling software and references calendar displays such as those of Lotus Notes and Lotus Organizer. Final Act. 40 (citing O'Sullivan ' 2).", + "The Examiner further finds that Conmy teaches a selectable calendar display that can enhance the functionality of Lotus Notes software. Id. (providing citations to Conmy).", + "The Examiner thus concludes it would have been obvious to include Conmy's functionality with the combination of Strick and O'Sullivan because Conmy expressly teaches that it improves upon calendaring software (such as Lotus Notes) referenced by O'Sullivan." + ], + "ptab_opinion": [ + "Claim 1, reproduced below with emphases added to certain key recitations, is illustrative of the claimed subject matter: 1. A method for designating staff of a meeting comprising: identifying, via a computing device comprising hardware that executes computer program code, a staffsl3] element ofa user interface for editing or adding meeting software objects, wherein said staffs element is one of a plurality of different interface element, wherein said staffs element distinguishes meeting staff users from other meeting participants, wherein the staff users of the meeting is a set of one or more humans who are responsible for one or more facets for conducting the meeting; receiving, via a computing device comprising hardware that executes computer program code, input from a user entered into the staffs element; distinguishing, via a computing device comprising hardware that executes computer program code, meeting staff users from other meeting participants using the input entered into the staffsl4) element; acquiring, via a computing device comprising hardware that executes computer program code, a user selection to save details of a currently presented meeting object, wherein said details comprise establishing a staff group for the meeting, said staff group consisting of those users defined as staff using the staffs element; parsing, via a computing device comprising hardware that executes computer program code, a set of at least one user considered staff from the received input entered into the staffs element; determining, via a computing device comprising hardware that executes computer program code, a unique identifier for each staff user in the parsed set; and storing, via a computing device comprising hardware that executes computer program code, at least one record in a meeting data store that indexes each of the determined unique identifiers against a meeting identifier such that these determined unique identifiers signify that associated users are to be considered by the computing device to be staff for the meeting object. Dec. 11, 2013, Amendment, 2-3.", + "The statement appears to be in error, however, as Appellant explicitly argues claim 9, argues rejections 1 and 2 explicitly, and ultimately argues that rejection of claims \"1-24\" is in error. Appeal Br. 15-17, 22, 26.", + "We thus understand that all pending claims and all rejections are on appeal.", + "We note that Appellant cancelled claims 8 and 19-20.", + "These claims, therefore, are not on appeal. See December 11, 2013, Applicant Remarks at 14.7", + "On appeal, we consider claims as they stand.", + "Thus, we refer to and consider the claims as provided with Appellant's December 11, 2013, amendment and addressed by the Examiner's February 2, 2014, Final Action.", + "(We note that the claims recited in both Appellant's original and December 23, 2014, Claims Appendix are not consistent with the pending claims as they now stand.)", + "ANALYSIS Rejection 1.35 U.S.C. 8 112. written description.", + "We note that claim 1 recites *wherein said staffs element distinguishes meeting staff users from other meeting participants, \" independent claim 14 recites *wherein said staffs element distinguishes meeting staff from other meeting participants,' and independent claim 21 recites \"said user interface comprising a staffs element that distinguishes staff of a meeting managed by the meeting management software from other meeting participants.\" Dec. 11, 2013, Amendment 2, 9, 11.", + "Claim 1 also recites *distinguishing, via a computing device \u00b7 \u00b7 \u00b7 meeting staff users from other meeting participants using the input entered into the staff's element.\" \" Id. at 2.", + "We begin our analysis of the Examiner's rejection with claim construction related to these recitations.", + "In the context of claims 1, 14, and 21 and Appellant's Specification, the staffs element *distinguishes staff* by providing a designation that permits a human to be able to identify staff as compared to other meeting participants. Spec. II 4-5, 13.", + "We agree.", + "A portion of the Specification's Figure 1 is reproduced below and depicts User Interface 126.", + "User Interface 126 Meeting Establishmess View 142 cax Calendaring View 152 CAX Subject: New Meesing ABC 9.00 am 10.00 sm Participants Staffs 144 or on 1993 10:00 am New Meeting ABC 154 Required as 1993 12:00 pa See Details lass Optional in Mon, a a 1.00 . Show Chair 158 FYI and . 2.00 pen Stath , View SAVE SEND NOTICE CANCEL 3.00 pan Chat Email", + "Figure 1 is a schematic diagram of a system 100 for meeting management that distinguishes staff from other meeting participants.", + "The Specification explains that *[o]ne of the interface elements of view 142 can be a staff 's element 144, within which a set of users (e.g., users 132) are able to be defined as staff for a specific meeting.\" \" Spec. I 26.", + "In other words, once a user enters the names of the staff into staffs element 144, the system has now distinguished staff from non-staff because a user can readily identify staff by reviewing who is listed in the Staffs field 144.", + "This labeling, however, is enough to demonstrate Appellant's possession of the recited \"distinguishes\" features.", + "Although the Examiner is correct that a participant labeled *staff* could also be in a different contact field, those persons are still distinguished as staff by virtue of their name appearing in the staffs field.", + "We therefore do not sustain the Examiner's rejection of claims 1-7, 14-18, 8, and 21-23 based upon the written description requirement of 35 U.S.C. 6 112.", + "Rejections 2-6. generally.", + "We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections\")).", + "After considering the evidence presented in this Appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error.", + "Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer.", + "We add the following primarily for emphasis.", + "Rejection 2. 35 U.S.C. 8 112, indefiniteness.", + "Claim 24 recites, with emphasis added, \"[t]he method of claim 1, wherein the staffs element comprises a top level of a decomposable hierarchy, which can be selectively expanded or contracted to show or hide respectively, sub- categories of staff members for the meeting object.\" \" Dec. 11, 2013, Amendment 13.", + "Our reviewing court has explained the process for resolving indefiniteness rejections during patent prosecution as follows: We conclude that, when the USPTO has initially issued a well- grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of $ 112(b).", + "The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)", + "Here, the Examiner has identified the term \"decomposable\" as recited in claim 24 as unclear.", + "The Specification uses the word \"decomposable\" only once, and its usage of the word does not provide further clarity to what \"decomposable\" means in the context of claim 24. Spec. I 52.", + "The Examiner has thus initially issued a well-grounded objection.", + "Appellant has not met the burden under In re Packard of either modifying the word decomposable, providing a separate definition of the word decomposable, or providing a persuasive explanation as to why the word decomposable is not unclear in the context of claim 24.", + "Appellant's focus on claim 24's recitation that the hierarchy \"can be selectively expanded or contracted to show or hide\" does not address the core question at hand: what does the word \"decomposable\" mean as it is recited in claim 24?", + "Appellant does not answer this question and does not provide any evidence as to how a person of skill would understand a \"decomposable\" hierarchy.", + "To the extent Appellant's implied position is that \"decomposable\" means nothing more than having an expandable and contractable hierarchy as recited later in claim 24 (i.e., a collapsible hierarchy), such a position does not distinguish a *top level of a decomposable hierarchy, which can be selectively expanded or contracted to show or hide respectively\" from \"a top level of a hierarchy, which can be selectively expanded or contracted to show or hide respectively.\"", + "In other words, Appellant's position renders the recitation \"decomposable\" superfluous.", + "Because **claims are interpreted with an eye toward giving effect to all terms in the claim\" (Bicon, Inc. V. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)), we must presume that the term \"decomposable\" is intended to further define the scope of claim 24 beyond just a hierarchy which can be selectively expanded or contracted.", + "On the present record, however, we cannot discern what \"decomposable\" means in this context or how it further defines claim scope.", + "Accordingly, we sustain the Examiner's rejection of claim 24 as indefinite.", + "Rejections 3-6, \"staffs element\" argument.", + "Therefore, consistent with the provisions of37 C.F.R. S 41.37(c)(1)(iv) (2013), we focus our discussion below on claim 1 and also address, under separate headings, each of Appellant's 's arguments where, for example, Appellant argues against a combination of references that does not apply to claim 1.", + "A preponderance of the evidence supports the Examiner's findings and conclusion.", + "- in - --- - in - - - - and Calle, 3711 to Calvadian Rates 312 a the ^ \" - -- was \u25cf Subject: Team's Turrer is Thies When 320 - . was a \u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7 we - 311 11 - wee FAOME and Commer Minks - Thisessy - ~ respeased - 1M 330 - \u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7 - \u00b7- - manemproom -- -- what tirth 232 AM M. Mog - M Seat 14 Pop-up Regated TexarGome 360 . - 138 \u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7\u00b7 ry Where: 340 Loration 342 Tel: \u00b7\u00b7\u00b7", + "Figure 3 shows an interface 310 for establishing a meeting. Spec. 9 46.", + "The staffs field 332 permits a set of meeting attendees designated as staff to be defined. Spec. I 50.", + "In other words, the user can enter the names of staff into field 332 to identify who is staff (persons responsible for some facet of the meeting).", + "We note that, in the case where employees of a company are responsible for providing a presentation for customers and/or other non- employees (in the real world, a common scenario that would occur, for example, in a classroom setting) the list of employees associated with the meeting would be the same as *staff.*", + "In other words, it would have been obvious to use one of Strick's customizable fields for categories of attendees to identify (i.e., distinguish) staff.", + "In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (\"Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. \").", + "Appellant's citation to MPEP 8 1207.02(e) appears to be out dated.", + "The Ninth Edition of the MPEP applicable as of March 2014 does not include the language quoted by Appellant.", + "Moreover, decisions an examiner makes during examination of a discretionary, procedural, or nonsubstantive nature not directly connected with the merits of issues involving rejections are reviewable by petition under 37 CFR 8 1.181 to the Director, not by appeal. In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002).", + "In any event, the Examiner adequately explains why the combination of Strick and Nguyen renders the staffs element recitation obvious as explained above. See, e.g., Ans. 9-15.", + "Accordingly, Appellant's arguments regarding the *staffs element\" do not establish reversible error.", + "Rejections 3-6. combination of Strick and Nguyen.", + "We presume Appellant applies this argument to each rejection that makes use of this combination of references (i.e., rejections 3-6).", + "As addressed above, the Examiner provides a thorough explanation of how and why the teachings of these references would be combined. Ans. 13-15.", + "Appellants do not present argument or evidence persuasively disputing the Examiner's findings or specific reasoning for combining the references.", + "Accordingly, this argument does not persuasively identify Examiner error.", + "Rejections 4 and 5. combination of Strick. O'Sullivan, and Nguyen.", + "The Examiner, however, explains why the teachings of these references would have been combined. Ans. 13-15 (explaining combination of Strick and Nguyen); Final Act. 28 (explaining further combination of O'Sullivan).", + "Appellant presents no evidence or argument to rebut these findings of fact.", + "These findings support the Examiner's obvious conclusion because they demonstrate that combining O'Sullivan's 's teachings with Strick would be no more than predictable use of prior art elements according to established functions. KSR Int 7 V. Teleflex Inc., 550 U.S 398, 417 (2007).", + "Accordingly, Appellant's argument does not identify Examiner error.", + "Rejections 5 and 6. combination of Strick and Conmy.", + "Appellants provide no argument persuasively disputing the obviousness of incorporating the calendar functionality taught by o O'Sullivan into the meeting planning software of Strick.", + "Use of Conmy in this fashion is no more than predictable use of prior art element according to established function. KSR Int 'I, 550 U.S. at 417.", + "Appellant presents no evidence or persuasive argument refuting this reasoning and therefore do not identify reversible error.", + "Because Appellant's arguments do not identify reversible error in any of the Examiner's obviousness rejections, we sustain those rejections." + ] +} \ No newline at end of file diff --git a/opinion_split/2016004768_DECISION.json b/opinion_split/2016004768_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..b88372572953d1ff5e71d820a0e681bae290c149 --- /dev/null +++ b/opinion_split/2016004768_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "Appellant's invention is directed to a mobile electronic multifunctional device and method for managing and controlling *near field communication in situations where the terminal is not or only partially powered\" (Spec. 1:10-12).", + "Independent claim 33, reproduced below, is exemplary of the subject matter on appeal.", + "33. An apparatus comprising: an interface to a near field communication component configured to provide near field communication functionality; a battery interface; and a battery control circuit, connected to said battery interface, wherein said battery control circuit is configured to control operation of said apparatus in accordance with a battery charging condition of a battery connected to the battery interface and to allow operation of the near field communication component when the battery charging condition is any of at least two of: a normal operation condition; a software cut-off condition; and a hardware cut-off condition, wherein said apparatus further comprises a storage configured to store configurations of the near field communication component connected via said interface to said near field communication component to allow operation of said near field communication component when said battery charging condition is at least one of the software cut-off condition and the hardware cut-off condition, and wherein at least one software application is unavailable to a user when said battery charging condition is the software cut-off condition and said apparatus has at least substantially reduced hardware functionality available to a user when said battery charging condition is the hardware-cut-off condition.", + "As Appellant explains, Loughran's grammar check while typing* is only a feature of the MS Word application, rather than a separate application that is made unavailable,\" and Loughran does not teach disabling MS Word or other applications for saving power (App. Br. 18 (citing Loughran \" 20, 25); see also Reply Br. 5).", + "Rather, Loughran's applications continue to be available to a user when Loughran's power management is in the economy state (Reply Br. 5 (citing Loughran I 20); App. Br. 19 (citing Loughran I 21)).", + "A feature of an application is not the application itself (Reply Br. 4)." + ], + "examiner_findings": [ + "The Examiner rejected claims 33-36, 39-42, 44, 45, 47-49, 54, 56, and 57 under 35 U.S.C. 8 103(a) based upon the teachings of Lessing (US 2007/0239981 A1, published Oct. 11, 2007) and Loughran (US 2003/0135769 AI, published July 17, 2003).", + "The Examiner rejected claims 37, 38, 43, 50-53, and 55 under 35 U.S.C. 8 103(a) based upon the teachings of Lessing, Loughran, and Berkes (US 2005/0182976 A1, published Aug. 18, 2005).", + "With respect to claim 33, the Examiner finds Loughran teaches a battery charging condition of a battery is a software cut-off condition, wherein at least one software application is unavailable to a user in the software cut-off condition, as claimed (Final Act. 6; Ans. 4-5).", + "Particularly, the Examiner finds Loughran's 's \"economy\" state disables software applications' features--such as spelling and grammar checker features of a Microsoft Word application--that are *not essential to proper function of the applications, but consume significant power,\" \" thus teaching a software cut- off battery condition in which at least one software application is unavailable (Final Act. 6 (citing Loughran 11 17, 22, 25, 27); Ans. 4 (citing Loughran I 26)).", + "The Examiner finds Loughran *also discloses disabling multiple software applications for saving power\" (Ans. 5)." + ], + "ptab_opinion": [ + "We do not agree.", + "We agree with Appellant that Loughran does not teach or suggest a software cut-off condition in which *at least one software application is unavailable to a user, as recited in claim 33 (App. Br. 18).", + "The Examiner's interpretation of the claimed term \"software application\" as *readling] on Loughran's software *features** of MS Word (or other application) is unduly broad (Ans. 4).", + "As the Examiner has not shown that the additional teachings of Lessing and Berkes cure the above-noted deficiencies of Loughran, we do not sustain the Examiner's rejection of independent claim 33, independent claims 40, 45, 52, 54, and 55, argued for substantially the same reasons as claim 33, and claims 34-39, 41-44, 47-51, 53, 56, and 57 dependent therefrom (App. Br. 22)." + ] +} \ No newline at end of file diff --git a/opinion_split/2016005184_DECISION.json b/opinion_split/2016005184_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f438b713f8378de688f0da7fc197755b5881d6cb --- /dev/null +++ b/opinion_split/2016005184_DECISION.json @@ -0,0 +1,98 @@ +{ + "appellant_arguments": [ + "As Appellant contends, Bergersen discloses that \"the term 'appliances' [is understood] to include anti-thumb sucking and pacifier-type devices.\" Id. at 2:20-21.", + "Appellant repeatedly contends that there is a \"fundamental contradiction\" between the properties of materials capable of protecting against injury encompassed by claims 1 and 43, and the properties of materials capable of providing the teeth-repositioning function recited in those claims. Appeal Br. 9. 13; Reply Br. 5.", + "Appellant argues that the *fact that these two functionalities call for conflicting material properties (hardness and stiffness for repositioning, softness and compliance for protection) naturally leads away from the combination of the two.\" Appeal Br. 13.", + "Appellant contends only that **Farrell fails to cure the deficiencies of Bergersen and Phan\" discussed above as to claim 1. Appeal Br. 16.", + "Appellant contends only that **Farrell 3 fails to cure the deficiencies of Bergersen and Phan\" discussed above as to claims 1 and 43. Appeal Br. 16.", + "Appellant again contends that there is a **fundamental contradiction\" between the properties of materials capable of protecting against injury encompassed by claim 1. and the properties of materials capable of providing the teeth-repositioning recited in the claims, and that, the *fact that these two functionalities call for conflicting material properties (hardness and stiffness for repositioning, softness and compliance for protection) naturally leads away from the combination of the two.\" Appeal Br. 18.", + "Appellant contends only that **Farrell fails to cure the deficiencies of Bergersen and Chishti I\" discussed above as to claim 1. Appeal Br. 22.", + "Appellant contends only that \"Farrell 3 fails to cure the deficiencies of Bergersen and Chishti I\" discussed above as to claim 1. Appeal Br. 23.", + "Appellant reiterates the arguments, discussed above, that the cited combination of references does not teach or suggest a system having an occlusal pad with the protective functionality required by claim 43. Appeal Br. 23-24.", + "As to claim 58, Appellant reiterates the arguments advanced as to claim 56, discussed above, that the cited references, in particular Chishti I. do not teach or suggest an occlusal pad with middle layers that are softer than the inner and outer layers. Appeal Br. 24-25.", + "Appellant contends only that **Farrell 3 fails to cure the deficiencies of Bergersen, Chishti I, and Phan\" discussed above as to claim 43. Appeal Br. 25." + ], + "examiner_findings": [ + "The Examiner found that Bergersen described a removable orthodontic appliance having all of the features of the device recited in independent claim 1, including the claimed teeth-receiving cavities, but conceded that Bergersen did not expressly disclose that its teeth-receiving cavities were *formed to resiliently reposition teeth from a first arrangement toward a planned second arrangement.\" Non-Final Act. 5.", + "To address that deficiency, the Examiner cited Phan as evidence that it was known in the art to include, in orthodontic devices, teeth-receiving cavities formed to resiliently reposition teeth. Id. at 6.", + "Based on the references' combined teachings, the Examiner reasoned that an ordinary artisan would have considered it obvious to modify Bergersen's orthodontic device to include Phan's teeth-positioning cavities, *as such modification would provide for more efficient and controlled orthodontic treatment.\" Id. at 6-7.", + "As to independent claim 43, the Examiner concluded, for similar reasons, that it would have been obvious to modify Bergersen's device to include Phan's multiple appliances having teeth-positioning cavities. Id. at 7-10.", + "The Examiner cited Chishti II as further evidence of the obviousness of teeth-repositioning cavities in orthodontic appliances. See id. at 9 (citing Chishti II, 3:45-50).", + "See Non-Final Act. 6 (Examiner's annotated Fig. 3 of Bergersen); see also id. at 4, 7 (identifying element C of the annotated drawing as corresponding to the occlusal pad at issue, noting that element C is \"disposed between the first and second arch and spanning a majority (e.g. all) of the teeth of the second arch when the appliance is worn by the patient\").", + "In the present case, as the Examiner determined (see Ans. 2-3), claims 1 and 43 do not specify any particular degree of protection, nor do the claims specify any degree of impact, or any particular type of injury resulting from said impact, against which protection must be provided.", + "As the Examiner found, Bergersen does not appear to expressly describe the teeth-receiving cavities of its exemplary device as being shaped to reposition teeth, as recited in Appellant's independent claims 1 and 43.", + "As the Examiner found, however, Phan discloses that such teeth- receiving cavities were known in the art to be useful teeth-repositioning devices. Phan 1 4 (\"A particularly promising approach relies on the use of elastic positioning appliances for realigning teeth. Such appliances comprise a thin shell of elastic material that generally conforms to a patient's teeth but is slightly out of alignment with the initial tooth configuration.\" .\"", + "In rejecting claim 4, which depends from claim 1 discussed above, over Bergersen, Phan, and Farrell, the Examiner cited Bergersen and Phan for the disclosures discussed above, and cited Farrell as evidence of the obviousness of including on Bergersen's device the leash tab recited in claim 4. Non-Final Act 10-11.", + "In rejecting claims 5 and 53, which depend, respectively, from claims 1 and 43 discussed above, over Bergersen, Phan, and Farrell 3, the Examiner cited Bergersen and Phan for the disclosures discussed above, and cited Farrell 3 as evidence of the obviousness of including in Bergersen's device the air passages recited in claims 5 and 53. Non-Final Act 11-12,", + "In rejecting claims 1, 2, 6, 7, and 56 over Bergersen and Chishti I, the Examiner concluded, similar to the rejection discussed above over Bergersen, Phan, and Chishti II, that an ordinary artisan would have considered it obvious to modify Bergersen's orthodontic device to include Chishti I's teeth-positioning cavities and multi-layered structure, \"as such modification would provide for more efficient and controlled orthodontic treatment, and provide improved strength, durability, force application and flexibility of the device.\" Non-Final Act. 15.", + "In the embodiment cited by the Examiner as meeting the limitations of Appellant's claim 56, Chishti I's device has inner, outer, and middle layers (as required by claim 56), with the middle layers composed of a material having a lower glass transition temperature than the inner and outer layers of the device. See Chishti I, 9:59-66; see also id. at Figs. 4A-4C (showing inner/outer layers 134 and middle layers 132).", + "In rejecting claim 4, which depends from claim 1 discussed above, over Bergersen, Phan, and Farrell, the Examiner cited Bergersen and Chishti I for the disclosures discussed above, and cited Farrell as evidence of the obviousness of including on Bergersen's device the leash tab recited in claim 4. Non-Final Act 15-16.", + "In rejecting claim 5, which depends from claim 1 discussed above, over Bergersen, Chishti I, and Farrell 3, the Examiner cited Bergersen and Chishti I for the disclosures discussed above, and cited Farrell 3 as evidence of the obviousness of including in Bergersen's device the air passages recited in claim 5. Non-Final Act 16.", + "In rejecting claims 43, 49-52, and 58 over Bergersen, Chishti 1, Phan, and Chishti II, the Examiner relied on the combination of Bergersen and Chishti 1, discussed above in relation to claim 1, as teaching all of the features of the system recited in independent claim 43, except for the requirement for the claimed system to comprise \"a set of patient wearable appliances shaped to resiliently reposition a patient's teeth from a first arrangement to a second arrangement during a stage of treatment.\" Non- Final Act. 18.", + "To address that deficiency, the Examiner cited Phan as evidence that it would have been obvious to *modify the system of Bergersen/Chishti I to include Phan's treatment planning with treatment steps, and multiple appliances with teeth positioning cavities.\" Id. at 19.", + "The Examiner reasoned that *such modification would provide for more efficient and controlled orthodontic treatment, and provide improved force application and flexibility of the device and treatment and additionally would merely involve a duplication of parts which has been held to be within the skill of\" the ordinary artisan.\" \" Id. at 19-20.", + "The Examiner cited Chishti II as further evidence of the obviousness of using multiple appliances with teeth- repositioning cavities in orthodontic systems. See id. at 19 (citing Chishti II, 3:45-50).", + "In rejecting claim 53, which depends from claim 43 discussed above, over Bergersen, Chishti I, Phan, and Farrell 3, the Examiner cited Bergersen, Chishti I, and Phan for the disclosures discussed above, and cited Farrell 3 as evidence of the obviousness of including in Bergersen's device the air passages recited in claim 53. Non-Final Act 21." + ], + "ptab_opinion": [ + "In the present case, we agree with the Examiner's findings of fact and ultimate conclusion of obviousness, and adopt them as our own.", + "Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner's prima facie case of obviousness as to claims I and 43.", + "In particular, Appellant does not persuade us (see Appeal Br. 10-13, 14-15; 5; Reply Br. 5-6) that the Examiner erred in finding that Bergersen teaches or suggests a device with an *occlusal pad portion having a shape and material selected to provide protection against impact-induced injury involving an impact forcing the teeth of the first arch into the teeth of the second arch\" as claims I and 43 require (Appeal Br. 27, 28).", + "Contrary to Appellant's contention that the Examiner failed to identify the element in Bergersen's device corresponding to an occlusal pad having a shape that would provide the protection required by claims 1 and 43, the Examiner provided an annotated drawing identifying each of the elements corresponding to the structural features recited in the claims, including the rejected claims\" occlusal pad.", + "Contrary to Appellant's contention that the Examiner failed to identify in Bergersen materials that would impart to the occlusal pad the protection required by claims 1 and 43, the Examiner cited column 2, lines 25-30 of Bergersen as disclosing such materials. Non-Final Act. 4, 7.", + "Appellant does not direct us to any definitions or specific exemplary materials in the Specification that might limit or illustrate the scope of the language at issue.", + "Indeed, claims 1 and 43 do not require the material forming the occlusal pad at issue to have any particular physical properties, for example elasticity or hardness, or lack thereof.", + "Thus, Appellant does not persuade us (see Reply Br. 5) that the Examiner was unreasonable in interpreting the language at issue as encompassing the protective absorption of any amount of the force generated by any type of injury-causing impact that drives the two tooth arches together. See Ans. 2-3,", + "Given the breadth of the language at issue in claims 1 and 43, and further given Bergersen's disclosure of forming its devices from *any soft or hard plastics or rubber used in fabricating custom positioners\" (Bergersen, 1:17-18), which, as the Examiner noted, include a variety of thermoplastic materials (see id. at 2:25-36) that reasonably would have been expected to have at least some degree of force-absorbing resiliency, Appellant does not persuade us that the Examiner failed to provide a sufficient evidentiary basis for concluding that Bergersen's device, including the occlusal pad portion, would provide a degree of protection encompassed by claims I and 43.", + "Appellant also does not persuade us (see Appeal Br. 13-14, Reply Br. 5-6) that the Examiner failed to identify a sufficient reason for modifying Bergersen's orthodontic device to include Phan's teeth-positioning cavities.", + "Given Phan's teaching that teeth-repositioning cavities were known in the art to be useful in orthodontic devices, we agree with the Examiner that an ordinary artisan had good reason for, and a reasonable expectation of success in, modifying Bergersen's device so that the teeth-receiving cavities were configured to reposition teeth, as required by Appellant's claims 1 and 43, particularly given Bergersen's 's disclosure that its teachings are applicable to orthodontic devices. See, e.g., Bergersen claims.", + "Appellant does not persuade us, therefore, that the Examiner erred in finding that an ordinary artisan would have combined the cited references in the manner posited in the rejection.", + "We are not persuaded.", + "Appellant does not identify any specific objective evidence of record supporting the contention that the properties of materials capable of teeth-repositioning, and the properties of materials capable of injury protection, are mutually exclusive.", + "Appellant's s argument, therefore, is entitled to little probative weight.", + "Moreover, contrary to Appellant's assertion, both Bergersen and Phan include teachings that relatively compliant materials, which Appellant asserts provide the protective functionality of claims 1 and 43, are also useful for providing teeth-repositioning.", + "In sum, for the reasons discussed, Appellant does not persuade us that the preponderance of the evidence fails to support the Examiner's prima facie case that the device of Appellant's claims 1 and 43 would have been obvious over Bergersen, Phan, and Chishti II.", + "We also note that Appellant does not advance secondary evidence of nonobviousness that outweighs the evidence of prima facie obviousness.", + "Therefore, for the reasons above, we affirm the Examiner's rejection.", + "Because they were not argued separately, claims 2, 6, 7, 49-52, 55, and 57 fall with claims 1 and 43. 37 C.F.R. 6 41.37(c)(1)().", + "As discussed above, however, Appellant does not persuade us that the teachings of Bergersen and Phan are deficient as to claim 1.", + "Because Appellant does not identify, nor do we discern, error as to the Examiner's rejection of claim 4 over Bergersen, Phan, and Farrell, we affirm the Examiner's rejection of that claim over those references.", + "As discussed above, however, Appellant does not persuade us that the teachings of Bergersen and Phan are deficient as to claims 1 and 43.", + "Because Appellant therefore does not identify, nor do we discern, error as to the Examiner's rejection of claims 5 and 53 over Bergersen, Phan, and Farrell 3, we affirm the Examiner's 's rejection of those claims over those references.", + "Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner's prima facie case of obviousness as to claim 1.", + "To the contrary, we agree with the Examiner's findings of fact and ultimate conclusion of obviousness, and adopt them as our own.", + "Specifically, Appellant does not persuade us (see Appeal Br. 17-19; Reply Br. 5-6) that the Examiner erred in finding that the combination of Bergersen and Chishti I teaches or suggests a device with an *occlusal pad portion having a shape and material selected to provide protection against impact-induced injury involving an impact forcing the teeth of the first arch into the teeth of the second arch\" as claim 1 requires (Appeal Br. 27).", + "As discussed above, we agree with the Examiner that, when given its broadest reasonable interpretation consistent with the Specification, the language at issue in claim 1 encompasses the protective absorption of any amount of the force generated by any type of injury-causing impact that drives the two tooth arches together. See Ans. 2-3.", + "As discussed above, moreover, Bergersen discloses forming its devices from *any soft or hard plastics or rubber used in fabricating custom positioners\" (Bergersen, 1:17- 18), which, as the Examiner noted, include a variety of thermoplastic materials (see id. at 2:25-36) that reasonably would have been expected to have at least some degree of force-absorbing resiliency.", + "Turning to Chishti I, we acknowledge the disclosure that teeth- repositioning devices *must be relatively stiff (i.e. possess a high strength or high modulus) to provide a sufficient grip on the teeth. The stiffness both ensures that the dental appliance remains firmly in position on the patient's teeth and provides the repositioning force necessary to move the teeth.\" Chishti I, 1:52-56.", + "Chishti I, nonetheless, refers to such teeth-repositioning devices, in general, as **elastic positioners [which] comprise a thin shell of elastic material that general conforms to a patient's teeth but is slightly out of alignment with the initial tooth configuration.\" Id. at 1:34-37 (emphasis added).", + "Given the breadth of the language at issue in claim 1. and further given the disclosures in Chishti I and Bergersen of forming their devices from compliant or elastic materials that reasonably would have been expected to have at least some degree of force-absorbing resiliency, Appellant does not persuade us that the Examiner failed to provide a sufficiently specific evidentiary basis for concluding that Bergersen and Chishti I teach or suggest a teeth-repositioning device having an occlusal pad portion that would provide a degree of protection encompassed by claim 1.", + "As discussed above, however, because Appellant does not identify any specific objective evidence of record supporting the contention that the properties of materials capable of teeth-repositioning and injury protection are mutually exclusive, Appellant's s argument is entitled little probative weight. See In re Geisler, 116 F.3d at 1470-71.", + "Moreover, contrary to Appellant's assertion, both Bergersen and Chishti I include teachings that relatively compliant materials, which Appellant asserts are required to provide the protective functionality of claim 1, are also useful for providing teeth-repositioning.", + "In sum, for the reasons discussed, Appellant does not persuade us that the preponderance of the evidence fails to support the Examiner's prima facie case that the appliance of claim 1 would have been obvious in view of Bergersen and Chishti I.", + "We note, again, that Appellant does not advance secondary evidence of nonobviousness that outweighs the evidence of prima facie obviousness.", + "Therefore, for the reasons above, we affirm the Examiner's rejection.", + "Because they were not argued separately, claims 2, 6, and 7 fall with claim 1. 37 C.F.R. 5 41.37(c)(1)(iv).", + "Because the middle layers of Chishti I's device are less stiff, that is, more flexible, than the device's 's outer layers at or above the glass transition temperature, Appellant does not persuade us (Appeal Br. 20-21) that the Examiner erred in finding that Chishti I discloses a multilayer device that meets the requirement in claim 56 of having a middle layer which is *softer than each of the outer and inner layers for increased impact protection.\" Id. at 30 (claim 56).", + "Although Appellant suggests (id. at 21) that an ordinary artisan would not have considered less stiff material to be \"softer\" (id.), the term \"soft\" may be defined as \"not hard or stiff. \"", + "As to Appellant's contention, regarding Chishti's disclosure, that the temperature that induces the softer state is preferably above body temperature and not one normally encountered in daily life (Appeal Br. 20 (citing Chishti I, 8:21-25 and 3:43-48)), we note that claim 56 does not exclude materials that are softer only under certain circumstances.", + "Appellant does not persuade us, moreover (see Appeal Br. 21-22), that the Examiner posited changing Chishti I's multilayer arrangement to provide flexible middle layers at physiological temperatures or during normal wear. See Non-Final Act. 12-15.", + "Appellant does not persuade us, therefore, that the Examiner's rationale for the rejection changes the principle of operation of Chishti I's invention. See Appeal Br. 21-22.", + "In sum, for the reasons discussed, Appellant does not persuade us that the preponderance of the evidence fails to support the Examiner's prima facie case that the appliance of claim 56 would have been obvious in view of Bergersen and Chishti I.", + "Again, we note Appellant does not advance secondary evidence of nonobviousness that might outweigh evidence of prima facie obviousness.", + "Therefore, we affirm the Examiner's rejection.", + "As discussed above, however, Appellant does not persuade us that the teachings of Bergersen and Chishti I are deficient as to claim 1.", + "Because Appellant therefore does not identify, nor do we discern, error as to the Examiner's rejection of claim 4 over Bergersen, Chishti I, and Farrell, we affirm the Examiner's rejection of that claim over those references.", + "As discussed above, however, Appellant does not persuade us that the teachings of Bergersen and Chishti I are deficient as to claim 1.", + "Because Appellant therefore does not identify, nor do we discern, error as to the Examiner's rejection of claim 5 over Bergersen, Chishti I, and Farrell 3, we affirm the Examiner's rejection of those claims over those references.", + "Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner's prima facie case of obviousness as to claim 43.", + "To the contrary, we agree with the Examiner's findings of fact and ultimate conclusion of obviousness, and adopt them as our own.", + "For the reasons discussed above as to the combination of Bergersen and Chishti I. as well as the combination of Bergersen and Phan, we do not find these arguments persuasive.", + "Accordingly, we affirm the Examiner's rejection of claim 43 over Bergersen, Chishti I, Phan, and Chishti II.", + "Claims 49-52 were not argued separately and therefore fall with claim 43. 37 C.F.R. S 41.37(c)(1)(iv).", + "For the reasons discussed above as to the same limitation in claim 56, we do not find these arguments persuasive.", + "We therefore affirm the Examiner's rejection of claim 58 over Bergersen, Chishti I, Phan, and Chishti II.", + "As discussed above, however, Appellant does not persuade us that the teachings of Bergersen, Chishti I, and Phan are deficient as to claim 43.", + "Because Appellant therefore does not identify, nor do we discern, error as to the Examiner's rejection of claim 53 over Bergersen, Chishti 1, Phan and Farrell 3, we affirm the Examiner's rejection of that claim over those references." + ] +} \ No newline at end of file diff --git a/opinion_split/2016005306_DECISION.json b/opinion_split/2016005306_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..29aed590324e0f3883a68e62523ff97335f12749 --- /dev/null +++ b/opinion_split/2016005306_DECISION.json @@ -0,0 +1,22 @@ +{ + "appellant_arguments": [ + "Appellants contend that Leeb does not teach or suggest that the HCT will respond to being introduced into a network ecosystem by automatically establishing the link between the non-appliance specific graphical user interface and the intended target appliance. App. Br. 6-7; Reply Br. 4-5.", + "Instead, Appellants argue that Leeb describes that all that is required to configure the HCT to transmit commands to a particular appliance is for a software module to be installed on the HCT, irrespective of whether that appliance or the HCT is a part of the HomeNet. Reply Br. 4." + ], + "examiner_findings": [ + "The Examiner finds Figure 2 of Leeb discloses the non-appliance specific graphical user interface recited in claim 1. Ans. 20.", + "The Examiner further finds Leeb discloses automatically establishing the recited link in response to the controlling device being introduced into a network ecosystem by its description that the HCT (mapped to the claimed controlling device) is configured to control appliances and that the appliance and the HCT must be on the HomeNet in order for the appliances to be controlled from anywhere in the HomeNet. Ans. 22-23." + ], + "ptab_opinion": [ + "We have reviewed Appellants' contentions in the Briefs, the Examiner's rejection, the Examiner's response to Appellants' contentions, and the evidence of record.", + "We agree with Appellants argument that the Examiner errs in finding Leeb discloses in response to the controlling device being introduced into a network ecosystem which includes the intended target appliance, causing the controlling device to \u00b7 . \u00b7 automatically establish within the controlling device a link between the received, non- appliance specific graphical user interface and the intended target appliance (*automatically establish a link\" limitation), as recited in independent claim 1.", + "We agree with Appellants that the cited sections of Leeb do not disclose automatically establishing a link between the user interface disclosed in Figure 2 (\"non-appliance specific graphical user interface\") and the intended target appliance in response to the HCT (*controlling device\") being introduced into a network ecosystem (HomeNet) which includes the intended target appliance, as required by the *automatically establish a link\" limitation.", + "For the foregoing reasons, Appellants persuade us of error in the rejection of claim 1.", + "Accordingly, we do not sustain the 35 U.S.C 8 102(b) rejection of claim 1 and its dependent claims 2, 4, and 7.", + "Independent claim 9 sets forth a similar limitation as the *automatically establish a link\" limitation, which requires the controlling device to use data received from another controlling device (indicative of a link established in the other controlling device) to cause the controlling device to automatically establish a link between the non-appliance specific graphical user interface and the intendent target limitation.", + "The Examiner does not establish that Leeb discloses data received from a third-party software module (equated to be \"the received data\") is used to automatically establish a link between the interface disclosed in Figure 2 (``non-appliance specific graphical user interface\") and the target appliance. See Final Act. 5-6; Ans. 25.", + "Accordingly, we do not sustain the 35 U.S.C. 8 102(b) rejection of claim 9 and its dependent claim 11.", + "The Examiner does not show the additional references of record (Dresti, Bayes) overcome the deficiency in Leeb.", + "Accordingly, we do not sustain the 35 U.S.C. 8 103(a) rejections of dependent claims 3, 5, 6, 8, 10, 12, and 13." + ] +} \ No newline at end of file diff --git a/opinion_split/2016005504_DECISION.json b/opinion_split/2016005504_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..81b926364654d3ee807c66189da05da03d2bbb1d --- /dev/null +++ b/opinion_split/2016005504_DECISION.json @@ -0,0 +1,61 @@ +{ + "appellant_arguments": [ + "ANALYSIS A. Double Patenting Rejections of Claims 1-21 and 31-39 Appellants do not provide substantive arguments regarding the double-patenting rejections of claims 1-21 and 31-39. See Ans. 2.", + "B. Obviousness Rejection of Claims 1. 5. 6. 8-12. and 15-21 Appellants argue the combination of Song and Wengrovitz fails to teach or suggest \"inserting an entry in a multicast domain name system (mDNS) cache of the first device based on the service information such that the streaming service is (i) discoverable by the first device via a mDNS query,\" as recited in independent claim 1, and similarly recited in independent claim 12. See Appeal Br. 4, 7.", + "More specifically, as argued by Appellants, Song's M-search message is not equivalent to the claimed \"query\" because Song teaches a remote proxy intercepting an M-search message that originates from a control point and creating a response to the M-search message, where the control point is not aware of the remote proxy or an underlying device list. See Appeal Br. 5-6.", + "Appellants further argue one of ordinary skill in the art would not have been motivated to modify Song's Universal Plug and Play (UPnP) system and associated service discovery protocol (SSDP) with Wengrovitz's mDNS protocol because the proposed modification would amount to extra work for no apparent reason. See Appeal Br. 6-7; see also Reply Br. 2-3,", + "C. Obviousness Rejection of Claims 2-4. 13, and 14 Appellants argue the combination of Song, Wengrovitz, and Metzler fails to teach or suggest \"receiving a request to share a display of the first device with the second device, wherein inserting the entry is conditional based on an acceptance of the request,\" as recited in claim 2, and similarly recited in claim 13. See Appeal Br. 8.", + "More specifically, Appellants argue, Metzler merely describes a capabilities exchange between devices including commands a device is capable of accepting, and fails to teach or suggest *wherein inserting the entry is conditional based on an acceptance of the request,\" \" as recited in claim 2, and similarly recited in claim 13. See id.", + "Appellants further argue Metzler merely describes a device receiving a request and fails to teach the device accepting the request, and the Office Action conflates the claimed \"acceptance\" with Metzler's receiving. See Reply Br. 4.", + "D. Obviousness Rejection of Claim 7 Appellants argue Bonjour fails to teach or suggest a *unicast connection.\" as recited in claim 7. See Appeal Br. 9: see also Reply Br. 5-6.", + "Appellants further argue the Office Action uses \"hindsight reconstruction to pick and choose among isolated disclosures in the prior art in an attempt to arrive at the claimed invention.\" See Appeal Br. 9-10.", + "E. Obviousness Rejection of Claims 31, 34-36, 38, and 39 Appellants argue the combination of Song, Wengrovitz, and Bonjour fails to teach or suggest \"using, at the first device, the service information to internally publish multicast domain name system (mDNS) information regarding the streaming service such that the streaming service is (i) discoverable by an application on the first device via a mDNS query and (i) accessible through a second network that interconnects the first networks,\" and a *unicast connection,\" \" as recited in independent claim 31, and similarly recited in independent claim 36. See Appeal Br. 11, 16.", + "Essentially, Appellants' argument regarding claims 31 and 36 incorporates both Appellants' argument regarding claims 1 and 12 and Appellants' argument regarding claim 7. See Appeal Br. 11-16; see also Reply Br. 6-9.", + "F. Obviousness Rejection of Claims 32, 33, and 37 Appellants argue the combination of Song, Wengrovitz, Bonjour, and Metzler fails to teach or suggest \"receiving a request to share a display of the first device with the second device, wherein using the service information to internally publish the mDNS information is conditional based on an acceptance of the request,\" as recited in claim 32, and similarly recited in claim 37. See Appeal Br. 17.", + "Essentially, Appellants' argument regarding claims 32 and 37 incorporates their argument regarding claims 2 and 13. See id; see also Reply Br. 9-11." + ], + "examiner_findings": [ + "B. The Rejections on Appeal The Examiner provisionally rejects claims 1-21 under 35 U.S.C. 6 101 as claiming the same invention as that of claims 1-30 of co-pending Application No. 14/305,791. Final Act. 5.", + "The Examiner provisionally rejects claims 31-39 on the ground of non-statutory double patenting as being unpatentable over claims 1-30 of co-pending Application No. 14/305,791 in view of Apple Inc., Bonjour Overview, Apr. 23, 2013, masteringsinastene, al/NetServices/Intreduction.huml (\"Bonjour\"). Final Act. 7.", + "The Examiner rejects claims 1, 8-10, 12, 15, and 18-20 under 35 U.S.C. & 103 as unpatentable over Song (US 2008/0263124 AI; Oct. 23, 2008), in view of Wengrovitz (US 2013/0094423 A1; Apr. 18, 2013). Final Act. 8.", + "The Examiner rejects claims 2-4, 13, and 14 under 35 U.S.C. 8 103 as unpatentable over Song, in view of Wengrovitz, and further in view of Metzler (US 2004/0102977 A1; May 27, 2004). Final Act. 13.", + "The Examiner rejects claims 5-7, 16, and 17 under 35 U.S.C. 8 103 as unpatentable over Song, in view of Wengrovitz, and further in view of Bonjour. Final Act. 15.", + "The Examiner rejects claims 11 and 21 under 35 U.S.C. 9 103 as unpatentable over Song, in view of Wengrovitz, and further in view of Khanna (US 2007/0113275 A1; May 17, 2007). Final Act. 17.", + "The Examiner rejects claims 31, 34-36, 38, and 39 under 35 U.S.C. 8 103 as unpatentable over Song, in view of Wengrovitz, and further in view of Bonjour. Final Act. 18.", + "The Examiner rejects claims 32, 33, and 37 under 35 U.S.C. 6 103 as unpatentable over Song, in view of Wengrovitz, in view of Bonjour, and further in view of Metzler. Final Act. 25." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. S 134(a), from the Examiner's final rejection of claims 1-21 and 31-39, which are all the pending claims. Appeal Br. 1.", + "Claims 22-30 have been cancelled.", + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We affirm.", + "BACKGROUND A. The Invention Appellants' invention is directed to *service discovery and media sharing.\" Abstract.", + "Claims 1, 2, 7, 31, and 32 are representative and reproduced below, with emphasis added to the disputed elements: 1. A method comprising: receiving, at a first device, service information for a streaming service provided by a second device, the first device and second device being on different first networks, the first networks being different local multicast networks; inserting an entry in a multicast domain name system (mDNS) cache of the first device based on the service information such that the streaming service is (i) discoverable by the first device via a m mDNS query and (ii) accessible through a second network that interconnects the first networks; and sending streaming information from the first device to the second device through the second network for the streaming service. 2. The method of claim 1, comprising: receiving a request to share a display of the first device with the second device, wherein inserting the entry is conditional based on an acceptance of the request. 7. The method of claim 1, wherein receiving the service information comprises receiving, over a unicast connection through the second network, a version of a mDNS service record that was published by the second device on a corresponding one of the first networks. 31. A method comprising: receiving, at a first device over a unicast connection, service information for a streaming service provided by a second device, the first device and second device being on different first networks, the first networks being different local multicast networks; using, at the first device, the service information to internally publish multicast domain name system (mDNS) information regarding the streaming service such that the streaming service is (i) discoverable by an application on the first device via a mDNS query and (ii) accessible through a second network that interconnects the first networks; operating the application to perform the mDNS query to discover one or more devices associated with the streaming service; and sending streaming information from the application on the first device to the second device through the second network for the streaming service, wherein sending the information comprises using an network address that is returned by the mDNS query and is associated with the second device. 32. The method of claim 31, comprising: receiving a request to share a display of the first device with the second device, wherein using the service information to internally publish the mDNS information is conditional based on an acceptance of the request. Appeal Br. 19-20, 23 (Claims App.).", + "Ifa ground of rejection stated by the Examiner is not addressed in the Appellants' Appeal Brief, Appellants have waived any challenge to that ground of rejection and the Board may summarily sustain it. See Manual of Patent Examining Procedure (MPEP) 9 1205.02.", + "We summarily sustain the provisional statutory double patenting rejection of claims 1-21 and the provisional non-statutory double patenting rejection of claims 31-39,", + "We do not find Appellants' argument persuasive.", + "We agree with the Examiner that Appellants' argument regarding Song's M-search message is not commensurate with the scope of independent claims I and 12, as the claims do not explicitly prohibit interception of the claimed \"query,\" as taught by Song, and do not require \"awareness\" of one element by another. See Ans. 3.", + "Appellants' argument also does not address the Examiner's finding that Song teaches the remote proxy initially sending an M-search message to a local proxy, rather than intercepting the message, and inserting entries in a created device list based on the device responses received from the local proxy. See Ans. 4; see also Song \" 62-63.", + "We further agree with the Examiner that Appellants' argument is not persuasive because it addresses Song individually, rather than the combination of Song and Wengrovitz. See Ans. 3.", + "We also agree with the Examiner that Appellants have failed to show why the Examiner's articulated motivation to combine Song with Wengrovitz (i.e., \"to retain the wide-area latency reduction of Song while allowing users to conduct remote presentations using [devices] that are compatible with mDNS but not necessarily UPnP\") is insufficient. See Ans. 4-5 (citing Final Act. 9).", + "Thus, we are not persuaded that the Examiner erred in finding the combination of Song and Wengrovitz teaches all the claim elements of independent claims I and 12.", + "Accordingly, we sustain the Examiner's rejection of independent claims 1 and 12 under 35 U.S.C. 6 103.", + "We further sustain the rejection of dependent claims 5, 6. 8-11, and 15-21, not argued separately.? See Appeal Br. 7. 10-11.", + "We find Appellants' argument persuasive.", + "We agree with Appellants that Metzler merely describes a controlling application receives a user request for list of capabilities and then transmits a capabilities query to a UPnP device (see Metzler I 23), and that Metzler does not teach the control application accepting (or denying) the request. See Appeal Br. 8; see also Reply Br. 4.", + "Thus, we are persuaded that the Examiner erred in finding the combination of Song, Wengrovitz, and Metzler teaches all the claim elements of claims 2 and 13.", + "Accordingly, we do not sustain the Examiner's rejection of claims 2 and 13 under 35 U.S.C. S 103.", + "We also do not sustain the Examiner's rejection of claims 3, 4, and 14, which depend upon one of claims 2 and 13.", + "We do not find Appellants' arguments persuasive.", + "We agree with the Examiner that Bonjour clearly teaches, as an alternative to multicast DNS, advertising and discovering services over unicast DNS (see Bonjour, 19), and we also agree with the Examiner that one of ordinary skill in the art would understand unicast DNS involves a unicast connection. See Ans. 8.", + "We further agree with the Examiner that Song, Wengrovitz, and Bonjour are not \"isolated disclosures\" as they all relate to network discovery protocols, and, in light of Bonjour's explicit suggestion of using unicast DNS as an alternative to multicast DNS, we conclude the Examiner's combination of the cited references is proper. See Ans. 9; see also Bonjour, 19.", + "Thus, we are not persuaded the Examiner erred in finding the combination of Song, Wengrovitz, and Bonjour teaches all the claim elements of claim 7.", + "Accordingly, we sustain the Examiner' rejection of claim 7 under 35 U.S.C. 8 103.", + "Appellants' arguments are not persuasive for the reasons described above.", + "Accordingly, we sustain the Examiner's rejection of independent claims 31 and 36 under 35 U.S.C. S 103.", + "We further sustain the rejection of dependent claims 34, 35, 38, and 39, not argued separately. See Appeal Br. 16.", + "We find Appellants' argument persuasive for the reasons previously discussed above with respect to claims 2 and 13.", + "Accordingly, we do not sustain the Examiner's s rejection of claims 32 and 37 under 35 U.S.C. 6 103.", + "We also do not sustain the Examiner's rejection of claim 33, which depends upon claim 32." + ] +} \ No newline at end of file diff --git a/opinion_split/2016005541_DECISION.json b/opinion_split/2016005541_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c0ea94e76a61af1b60f5f9d177f49e3cd1d332f7 --- /dev/null +++ b/opinion_split/2016005541_DECISION.json @@ -0,0 +1,75 @@ +{ + "appellant_arguments": [ + "Appellants argue that one of ordinary skill in the art would not have had a reason to replace the benzotriazole UV absorber disclosed in Peter with a carbon black UV absorber as disclosed in Ozai, as proposed by the Examiner. App. Br. 15-25; Final Act. 5.", + "Specifically, Appellants argue that Peter is directed to protecting wood with a coating composition and discloses an extensive list of UV absorbers suitable for use in the composition.", + "App. Br. 15-18, Appellants contend that one of ordinary skill in the art would not have turned to Ozai to find a UV absorber to include in Peter's coating composition that differs from the UV absorbers that Peter discloses because Ozai is unrelated to protecting wood and is directed to organopolysiloxane compositions. App. Br. 17-21.", + "Appellants further contend that neither Peter nor Ozai teach or suggest that carbon black would be suitable for use with a hydroxyphenyltriazine UV absorber. App. Br. 21.", + "Appellants further argue that Ozai is non-analogous art because one skilled in the art desiring to protect wood from discoloration would not look to Ozai because Ozai is directed to a curable organopolysiloxane for use on rubber surfaces to provide tack-free properties, lubricity, and wear resistance. Rep. Br. 2-3; App. Br. 17-18.", + "Appellants contend that none of these features relate to wood discoloration. Id.", + "Appellants further argue that Peter does not disclose or suggest the weight ratio of organic UV absorber to inorganic UV absorber recited in claim 1. App. Br. 11-15.", + "Specifically, Appellants contend that because Peter discloses that a UV absorber is an optional component of the coating composition, and further discloses that both the inorganic pigment and optional UV absorber are present in the composition in an amount of 0.01% to 5% by weight, Peter would not have suggested including a UV absorber in the coating composition in an amount that is 10 to 1000 fold greater than the amount of the inorganic pigment. App. Br. 15.", + "Appellants contend that this lack of suggestion in Peter of the recited weight ratio is further demonstrated by Peter's experimental examples, which disclose coating compositions in which the weight ratios of UV absorber to inorganic pigment are outside the range recited in claim 1. App. Br. 14-15.", + "Appellants further argue that neither Maier nor Leiden teach or suggest stabilizing wood substrates against damage by heat and light as disclosed in Peter.", + "Appellants contend that one of ordinary skill in the art therefore would not have had a reasonable expectation that wood and cork as disclosed in Maier and Leiden would be suitable substrates for stabilization with Peter's coating composition, particularly in view of Peter's disclosure of applying the composition to only a single type of wood--fir. App. Br. 10-11, 25-27.", + "Appellants further argue that page 1, line 32 through page 2, line 2 and experimental Examples 1 and 2 of their Specification demonstrate the synergistic effects that result from a combination of a hydroxyphenyltriazine organic UV absorber and small amounts of carbon black or mixtures of carbon black and transparent inorganic oxides. App. Br. 21-22.", + "Appellants contend that these synergistic effects set forth in their Specification could not have been predicted from the disclosures of Peter and Ozai. ld." + ], + "examiner_findings": [ + "1. Claims 1-3, 6-13, 15, and 16 under 35 U.S.C. 5 103(a) as unpatentable over Peter (wo 2005/005114 Al, published January 30, 2005), Ozai et al. (US 6,306,999 BI, issued October 23, 2001; hereinafter \"Ozai\"), and Maier et al. (US 2003/01 62892 Al, published August 28, 2003; hereinafter \"Maier\").", + "II. Claims 1, 3, 4, 6-13, 15, and 16 under 35 U.S.C. 8 103(a) as unpatentable over Peter, Ozai, and Leiden et al. (US 6,645,588 BI. issued November 11, 2003; hereinafter \"Leiden\").", + "The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of Appellants' invention to substitute a carbon black UV absorber as taught by Ozai for the benzotriazole UV absorber taught by Peter because Ozai discloses that carbon black and benzotriazole can be used interchangeably as UV absorbers in coating compositions. Final Act. 5; Ans. 8-9." + ], + "ptab_opinion": [ + "Appellants' invention is generally directed to a method of protecting cork or wood substrates from discoloration. Spec. 2, II. 4-5.", + "Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A method for protecting cork or wood substrates from discoloration wherein the wood substrate is selected from the group consisting of ofbeech, alder, meranti, oak, cherry, teak, nut, redwood, mahogany, eucalyptus, american beech, durian, red cedar, leichhardt tree, champa, rubberwood, taiwan ash, campher tree, zebra wood, makha, rosewood, rain tree and ironwood; comprising applying to the cork or wood substrate a coating, which coating contains a) an organic UV-absorber, wherein the organic UV. absorber is a hydroxyphenyltriazine: and b) an inorganic UV-absorber, wherein the inorganic UV- absorber is carbon black or a mixture of carbon black and a transparent iron oxide; wherein the weight ratio of organic UV-absorber to inorganic UV-absorber is from 1000:1 to 10:1. App. Br. 30 (Claims Appendix).", + "Appellants request review of the following rejections maintained by the Examiner in the Answer entered March 3, 2016 (*Ans. \"), 2:", + "DISCUSSION Upon consideration of the evidence on this appeal record and each of Appellants\" contentions, we affirm the Examiner's rejection of claims 1-3, 6-13, 15, and 16 under 35 U.S.C. 6 103(a) as unpatentable over Peter, Ozai, and Maier, and affirm the Examiner's rejection of claims 1, 3, 4, 6-13, 15, and 16 under 35 U.S.C. , 103(a) as unpatentable over Peter, Ozai, and Leiden.", + "We add the following discussion primarily for emphasis.", + "Appellants address Rejections I and II together, rather than providing separate arguments for each rejection (App. Br. 9-27), and we therefore also address both rejections together.", + "In addition, although Appellants argue all of the pending claims together as a group on the basis of independent claims 1 and 16, Appellants do not provide separate arguments for each of claims 1 and 16. Id.", + "Therefore, we select claim 1 as representative, and claims 2-4, 6-13, 15, and 16 will stand or fall with claim 1. 37 C.F.R. 9 41.37(c)(1)(iv) (2015).", + "Peter discloses a method of stabilizing or protecting wood against damage caused by exposure to sunlight and heat that involves applying a coating composition to the wood. Peter 1, II. 3-6.", + "Peter discloses that the coating composition comprises a binder and either a single transparent inorganic pigment, such as transparent iron oxide, or a mixture of different transparent inorganic pigments. Peter 18, II. 13-26, Peter discloses that the total amount of transparent inorganic pigment in the coating composition is from 0.01% to 5% by weight based on the weight of binder solids. Peter 18, 11. 25-26.", + "Peter discloses that the coating composition may further comprise one or more UV absorbers, and Peter discloses numerous exemplary, suitable UV absorbers, including hydroxyphenyltriazines and hydroxyphenylbenzotriazoles, Peter 19, I. 16-22, 1. 12.", + "Peter discloses that the UV absorbers are preferably present in the coating composition in an amount of 0.01% to 5% by weight based on the solids content of the composition. Peter 25, II. 8-10.", + "Peter exemplifies application of coating compositions to fir. Peter 26, 1. 17-29, 1. 2.", + "Ozai discloses an organopolysiloxane composition suitable for coating various substrates. Ozai col. 1, II. 6-10.", + "Ozai discloses that the coating composition can comprise one or more inorganic pigments, and discloses that the *inorganic pigment may include carbon black and iron oxides.\" Ozai col. 6, 11. 25-28, 45-49.", + "Ozai further discloses that the composition may include one or more ultraviolet light absorbers, and discloses that the ultraviolet light absorber *may include carbon black and benzotriazole.\" \" Ozai col. 6, II. 25-29, 46-49.", + "However, as discussed above, Peter discloses a coating composition for wood that comprises one or more inorganic pigments, such as iron oxide, and can comprise one or more UV absorbers, such as hydroxyphenyltriazine and hydroxyphenylbenzotriazole. Peter 18, II. 21-26; 19, 11. 16-22; 21, 1. 32.", + "Ozai discloses a coating composition suitable for *various substrates\" that can comprise an inorganic pigment, and Ozai teaches that a combination of carbon black and iron oxide can be used as the inorganic pigment. Ozai col. 6, II. 25-28, 45-46.", + "Ozai's disclosure of including both carbon black and iron oxide as an inorganic pigment in a coating composition for various substrates reasonably would have suggested to one of ordinary skill in the art at the time of Appellants' invention that carbon black and iron oxide could be successfully used in combination as the inorganic pigment in Peter's coating composition for wood comprising a hydroxyphenyltriazine UV absorber, as recited in claim 1, in view of Peter's disclosure that the composition can include one or more inorganic pigments.", + "Moreover, Ozai further teaches that the coating composition disclosed in the reference can comprise one or more UV absorbers, such as carbon black and benzotriazole. Ozai col. 6, 11. 25-29, 46-47.", + "Peter similarly teaches that the disclosed coating composition can comprise one or more UV absorbers, and indicates that hydroxyphenyltriazines and hydroxyphenylbenzotriazoles are exemplary, suitable UV absorbers. Peter 19,1. 1. 16-22, 1. 12.", + "In view of Peter's disclosure of a coating composition that may include one or more UV absorbers, Ozai's disclosure of including a combination of carbon black and benzotriazole UV absorbers in a coating composition for various substrates reasonably would have suggested that a combination of carbon black and one or more of the exemplary UV absorbers disclosed in Peter, such as hydroxyphenylbenzotriazole and/or hydroxyphenyltriazine, as recited in claim 1, could be successfully used in a coating composition for wood.", + "Appellants' arguments that Peter and Ozai do not teach or suggest that carbon black would be suitable for use with a hydroxyphenyltriazine UV absorber fail to consider Peter's broad disclosure of a coating composition that can include one or more UV absorbers, and Peter's non-limiting disclosure of suitable UV absorbers that are merely exemplary. Peter 19, I. 16-22, 1. 12.", + "Appellants' arguments also fail to take into consideration Ozai's similarly broad disclosure of including one of more UV absorbers in a coating composition, and Ozai's non-limiting disclosure that the UV absorber *may include\" carbon black and benzotriazole. Ozai col. 6, II. 25- 29, 46-47.", + "Appellants' arguments do not identify any disclosure in either Peter or Ozai, or any other evidence, demonstrating that carbon black and hydroxyphenyltriazine could not have been successfully used in combination in a coating composition. App. Br. 15-25.", + "Appellants' arguments are therefore unpersuasive of reversible error.", + "For a prior art reference to be analogous art, the reference must be in the field of the inventors' endeavor, or if it is not in the inventors' field, the reference must be reasonably pertinent to the particular problem with which the inventors were concerned from the viewpoint of one of ordinary skill in the art. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (stating that the analogous art test requires that \"a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned \u00b7 \u00b7 \u00b7 based on the judgment of a person having ordinary skill in the art.\")", + "As set forth above, claim 1 recites a method for protecting cork or wood substrates from discoloration that comprises applying a coating to the cork or wood.", + "Ozai discloses a coating composition used to protect *various substrates\" from wear, and Ozai discloses that the coating composition can include one or more inorganic pigments and UV absorbers. Ozai col. 1, II. 49-58; col. 6, II. 25-29.", + "One of ordinary skill in the art seeking to produce a coating composition to protect a substrate such as wood would have looked to Ozai's disclosure of useful ingredients for coating compositions that protect various substrates, including useful inorganic pigments and UV absorbers.", + "Accordingly, one of ordinary skill in the art would have understood Ozai to be reasonably pertinent to the particular problem with which the inventors were concerned--methods for protecting cork or wood substrates from discoloration with coating compositions.", + "Appellants' arguments are therefore unpersuasive of reversible error.", + "However, regardless of Peter's non-limiting disclosure of exemplary coating compositions in which the weight ratio of UV absorber to inorganic pigment is outside the range recited in claim 1, Peter broadly discloses that the total amount of inorganic pigment in the coating composition is 0.01 % to 5% by weight, and discloses that the UV absorbers are preferably present in an amount of 0.01% to 5% by weight. Peter 18, II. 25-26; 25, II. 8-10.", + "Peter therefore discloses that the weight ratio of UV absorbers to inorganic pigment in the coating composition can range from 500:1 to 1:5003, which overlaps the range recited in claim 1, rendering the recited range prima facie obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) (*In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness \u00b7 . .\").", + "Because Appellants do not provide evidence demonstrating the criticality of the recited range (App. Br. 9-27), Appellants' arguments are unpersuasive of reversible error. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.).", + "However, it was known in the art at the time of Appellants' invention that exposing wood to UV light discolors the surface of the wood, and it was also known that colored cork and dark wood are particularly sensitive to the discoloring effects of UV and visible light. Peter 1, II. 10-14; Spec. 1, II. 11-16.", + "It was also known that colored wood could be protected against discoloration caused by exposure to light by coating the surface of the wood with a UV absorbing light stabilizer. Peter 1, 1. 26-2, 1. 9.", + "As discussed above, Peter discloses a coating composition that stabilizes or protects wood against damage caused by exposure to sunlight (Peter 1, II. 3-6), and the combined disclosures of Peter and Ozai would have suggested a protective coating composition for wood comprising carbon black, iron oxide, and hydroxyphenylbenzotriazole, as recited in claim 1.", + "In view of the knowledge in the art at the time of Appellants' invention that cork and dark wood species are particularly sensitive to discoloration by UV light, and can be protected from discoloration with a UV absorber, the combined disclosures of Peter and Ozai reasonably would have suggested that applying a protective coating comprising carbon black, iron oxide, and a hydroxyphenylbenzotriazole UV absorber to cork and dark wood species would successfully protect them from discoloration, as recited in claim 1.", + "In addition, Leiden discloses a coating composition for wood and cork substrates that protects them from weathering (Leiden col. 1, 11. 12-16; 6; col. 7, II. 12-17), and one of ordinary skill in the art reasonably would have understood that \"weathering\" as disclosed in Leiden includes exposure to sunlight.", + "Accordingly, one of ordinary skill reasonably would have expected that applying a protective coating to cork and wood substrates as disclosed in Leiden, which comprises carbon black, iron oxide, and a hydroxyphenylbenzotriazole UV absorber, as suggested by the combined disclosures of Peter and Ozai, would successfully protect the cork and wood from discoloration caused by weathering, including exposure to sunlight.", + "Appellants* arguments are therefore unpersuasive of reversible error.", + "However, the burden of analyzing and explaining Specification data to support an assertion of non-obviousness rests with Appellants. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).", + "In the present case, Appellants do not explain why the limited data for only four compositions provided in the relied-upon disclosures in their Specification (Spec. 1, 1. 32-2, 1. 2; 32, 1. 1- 35, 1. 22), are sufficient to show that the full scope of the compositions covered by claim 1 impart unexpected results relative to the coating compositions of the closest prior art, Peter. App. Br. 21-22.", + "In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (*Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims. \"); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (\"Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. \") (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).", + "compositions disclosed in Peter comprise a hydroxyphenyltriazine UV absorber and iron oxide inorganic pigment (Peter 18, 11. 21-26; 19, 11. 16- 18), but Examples 1 and 2 of Appellants' Specification do not include data providing a comparison between such compositions and the compositions recited in claim 1, and thus do not provide a comparison to the closest prior art. Spec. 32, I. 1-35, 1. 22. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (\"[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art. \").", + "Further, Appellants do not direct us to any statement in the Specification attesting to the unexpected nature of the relied-upon data, or to any other persuasive evidence or averment evincing that these results would have been unexpected by one of ordinary skill in the art at the time of their invention. App. Br. 21-22.", + "See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (\"Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration under Rule 132 . . Instead, the only reference to unexpected results was a statement by Geisler's counsel \u00b7 \u00b7 that Geisler' s results were *surprising. \").", + "Appellants' arguments to that effect cannot take the place of evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).", + "Thus, Appellants do not meet their burden of demonstrating that the claimed method imparts unexpected results sufficient to rebut the Examiner's prima facie case of obviousness.", + "We accordingly sustain the rejections of claims 1-4, 6-13, 15, and 16 under 35 U.S.C. $ 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2016006178_DECISION.json b/opinion_split/2016006178_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..52216257fa1a9a4dafa48032f7a7c3413d76d33f --- /dev/null +++ b/opinion_split/2016006178_DECISION.json @@ -0,0 +1,95 @@ +{ + "appellant_arguments": [ + "Appellants argue that the Examiner's position is unreasonable. Appeal Br. 14.", + "Appellant argues that \"weak\" and **strong** are terms of degree and, as such, are not indefinite because Appellant's Specification provides adequate standards for measuring such. Appeal Br. 16-17.", + "With respect to the Examiner's accusation of *pure functional** claiming, Appellant argues that: \"the welding power source is the structure, and it employs programmed logic to perform the recited aspects.\" Id. at 18." + ], + "examiner_findings": [ + "1. Claims 19-22 and 27 are rejected under 35 U.S.C. , 112, first paragraph, for failing to comply with the written description requirement.", + "2. Claims 19-22 and 27 are rejected under 35 U.S.C. 8 112, first paragraph, for failing to comply with the enablement requirement.", + "3. Claims 1-4, 11-13, and 19-27 are rejected under 35 U.S.C. & 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention.", + "4. Claims 1-4, 11-13, and 19-27 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over Blankenship.", + "With respect to the language \"configured to,\" which appears four times in claim 19 and once each in claims 20 and 27, the Examiner finds the claim language is broad enough to encompass any and all conceivable configurations that are capable of performing the claimed functions. Final Action 3.", + "\"[T]he scope of the functional claim language of claim 1 is so broad and sweeping that it includes all structures or means that can perform the function.\" Ans. 14.", + "Thus, according to the Examiner, the scope of the claims is broader than the scope of the Specification. Final Action 3.", + "In this ground of rejection, the Examiner essentially takes the same observations made in the written description rejection discussed above and re-casts them as a non-enablement ground of rejection. Final Action 4 (*The remarks in the written description rejection are incorporated here\").", + "The Examiner determines that the terms \"weak\" and \"strong,\" which appear in all pending claims, render all claims indefinite. Final Action 5.", + "According to the Examiner, Appellant's Specification is unclear, leaving the meaning of these terms up to subjective interpretation. Id.", + "More particularly, with respect to claims 19-22, and 27, the Examiner determines that Appellant has engaged in pure functional claiming. Id. (*determine, determine, automatically prompt, and automatically reset\"). Id.", + "The Examiner points out that there is no algorithm disclosed in the Specification to achieve the intended result. Id.", + "This is just programming that is not disclosed in the specification.", + "Element 130 is a black box not needed disclosure.", + "A means for determining strong or weak indicator is not addressed.", + "It appears to be more undisclosed programing.", + "Again box 130 is a black box only.", + "If programming exits [sic exists] for the means recitation it is not disclosed in the specification.", + "The alarm 133 and computer 150 are known devices taught in the art and require programming to perform the intended functions in the recitations. Id. at 16.", + "The Examiner notes that these claims involve functional recitations and that these claims contain the indefinite terms \"weak\" and \"strong.\" Final Action 5." + ], + "ptab_opinion": [ + "Appellant's invention relates to welding. Spec. I 1.", + "Claim 19, reproduced below, is illustrative of the subject matter on appeal.", + "19. A welding system, said welding system comprising: a consumable welding package including a consumable welding wire; a welding tool; a welding power source configured to provide electrical power to the welding tool; and a wire feeder configured to feed the consumable welding wire from the consumable welding package to the welding tool, and further configured to provide wire feeding information, associated with feeding the consumable welding wire, to the welding power source, wherein the welding power source is further configured to: determine at least one characteristic associated with replenishing the consumable welding package, determine if the at least one characteristic is a weak indicator or a strong indicator that the consumable welding package has been replenished, automatically prompt an operator of the welding system to manually reset a weight value of the consumable welding package within the welding system when the at least one characteristic is determined to be a weak indicator, and automatically reset the weight value of the consumable welding package within the welding system when the at least one characteristic is determined to be a strong indicator.", + "The Examiner relies upon the following as evidence in support of the rejections:", + "Blankenship US 6,536,660 B2 Mar. 25, 2003", + "The following rejections are before us for review:", + "Claim 19 is an independent claim and claims 20-22, and 27 depend therefrom.", + "Claims App.", + "The written description requirement is met when the disclosure **allow[s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.\" Enzo Biochem, Inc. V. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002).", + "The proper inquiry is \"whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.\" Ariad Pharm., Inc. V. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).", + "For purposes of the instant case, we focus our attention on the limitation: **wherein the welding power source is further configured to: \u00b7\u00b7\u00b7 determine if the at least one characteristic is a weak indicator or a strong indicator that the consumable welding package has been replenished.\" \" Claims App.", + "The Specification defines *weak indicator\" - as \"a clue, a signal, data, or information suggesting that something may have happened, but very possibly not.\" Spec. ' 25.", + "Similarly, *strong indicator\" is defined to *mean a clue, a signal, data, or information suggesting that something has likely happened, but possibly not.\" Spec. I 26.", + "The Specification, however, provides no teaching as to how a practitioner may determine whether an indicator is \"weak\" or \"strong.\"", + "The Specification alludes to *various techniques\" such as a \"Q-test.\" Spec. 9 49.", + "The Specification further alludes to embodiments where \"the system learns to recognize\" characteristics associated with replenishing. Id.", + "The Specification further alludes to neural network techniques, evolutionary algorithm techniques, inductive logic techniques, etc. Id. ' 50.", + "However, the Specification fails to describe with any specificity how such techniques are actually used to determine weak or strong indicators in the context of replenishment of a consumable welding package.", + "In particular, we note the complete absence of a single operational example in the Specification. Cf. Ariad, 598 F.3d at 1352 (examples are not required where the invention is otherwise adequately disclosed).", + "Thus, the description fails to reasonably convey that the inventors had possession of the scope of the claimed welding power source configured to make determinations concerning weak and strong indicators.", + "When a written description cannot be found in the specification, as filed, the only thing the PTO can reasonably be expected to do is to point out its non-existence. See Hyatt V. Dudas, 492 F.3d 1365, 1377 (Fed. Cir. 2007).", + "The Examiner has adequately pointed out the deficiency in Appellant's disclosure. Final Action 3-4.", + "We sustain the Examiner's Section 112 written description rejection of claims 19-22 and 27.", + "However, courts recognize that a specification need not describe how to make and use every possible variant of a claimed invention. AK Steel Corp. V. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003).", + "The artisan's knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and even extrapolate beyond the disclosed embodiments depending upon the predictability of the art. Id.", + "To be enabling, a patent's specification must \" \u00b7 \u00b7 teach those skilled in the art how to make and use the full scope of the claimed invention without *undue experimentation. \" ALZA Corp. V. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (citation omitted).", + "Enablement is not precluded by the necessity for some experimentation, as long as the amount of experimentation is not undue. See In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988) (\"The key word is 'undue,' not *experimentation*%), \").", + "Factors to be considered in determining whether a disclosure would require undue experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id. at 737.", + "In the instant case, the Examiner performs no analysis regarding what a person of ordinary skill in the art would or would not be able to do without engaging in undo experimentation.", + "The Examiner's s findings and analysis are insufficient to state a proper rejection.", + "We do not sustain the Examiner's Section 112 enablement rejection of claims 19-22 and 27.", + "The test for definiteness under 35 U.S.C. 8 112, is whether \"those skilled in the art would understand what is claimed when the claim is read in light of the specification.\" Orthokinetics, Inc. V. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).", + "The PTO can properly reject a claim as indefinite if the claim is ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).", + "During patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).", + "Claims 1-4 are method claims, where claim 1 is an independent claim and claims 2-4, and 23-26 depend, directly or indirectly, therefrom. Claims App.", + "The second step of claim 1 recites: *determining if said at least one characteristic is a weak indicator or a strong indicator that the consumable welding package has been replenished.\"", + "The Examiner points out, correctly, that Appellant is merely claiming an intended result. Ans. 15.", + "The Examiner's findings are amply supported by the record and Appellant has failed to direct our attention to any disclosure in the Specification that controverts the Examiner's findings.", + "Claim 11 is an independent claim and claims 12 and 13 depend therefrom. Claims App.", + "Claim 11 is substantially similar in scope to independent claims 1 and 19, except that it is recited in means-plus-function language. Id.", + "For purposes of this rejection, we focus our attention on the following limitation in claim 11: \"means for determining if said at least one characteristic is a weak indicator or a strong indicator that the consumable welding package has been replenished.\"", + "Our discussion with respect to claim 1-4 above is equally pertinent here.", + "Furthermore, as claim 11 is written in means-plus-function format, the disposition of these claims is a straightforward application of the court's 1 Our consideration with respect to claim 1 is augmented by our discussion of pure functional claiming discussed in connection with the indefiniteness rejection of claim 19 infra. decision in Aristocrat Tech. V. Int 'I Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).", + "In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.", + "The point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming.", + "\u00b7 , \u00b7 For a patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming.", + "Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to \"the corresponding structure, material, or acts\" that perform the function, as required by section 112 paragraph 6. Id.", + "Claim 11 essentially recites a black box that is broad enough to encompass any and all means to accomplish the recited \"determining\" function.", + "Appellant's 's Specification cites insufficient structure to support the *means for determining \u00b7 \u00b7 \u00b7 step.", + "Appellant's argument that \"the welding power source is the structure, and it employs programmed logic to perform the recited aspects\" is to no avail. Appeal Br. 18.", + "Appellant's welding power source 130 provides electrical power to welding tool 140 and further includes a production monitoring system that uses software to keep track of production information. Spec. 11 32-42.", + "However, Appellant does not direct us to any disclosure as to how the generic computing structure and software determines whether an indicator is \"weak\" or \"strong.\"", + "Appellant's generic disclosure of computational equipment and software is insufficient, as a matter of law, to render the claims definite under the second and sixth paragraphs of Section 112. See Function Media, LLC V. Google Inc., 708 F.3d 1310 (2013) (simply disclosing software without providing some detail about the means to accomplish the function is not enough).", + "Claims 19-22 and 27", + "Claim 19 is an independent claim and claims 20-22 and 27 depend therefrom.", + "Claim 19 recites, in pertinent part, \"wherein the welding power source is further configured to . \u00b7 . determine if the at least one characteristic is a weak indicator or a strong indicator that the consumable welding package has been replenished.\" ld.", + "Like the method claims and means-plus-function claims discussed above, claim 19, when read in light of the Specification, leaves unclear how one determines whether an indicator is \"weak\" or **strong.\"", + "Therefore, the scope of the claimed structure of a welding power source configured to make that determination is equally unclear.", + "In view of the foregoing discussion, we sustain the Examiner's indefiniteness rejection of claims 1-4, 11-13, and 19-27.", + "In traversing the Section 103 rejection, Appellant points out, correctly, the Blankenship fails to disclose prompting an operator to reset the weight value of a consumable welding package. Appeal Br. 23.", + "Thus, while we agree with the Examiner that the claims are indefinite by reason of the \"weak\" and *strong* indicator limitations, the claims are, nevertheless, not obvious over Blankenship regardless of the meaning of such indefinite terms.", + "Blankenship is concerned, generally, with aspects of inventory and process control in a welding environment. Blankenship, Abstract.", + "We have reviewed the Examiner's citations to Blankenship with respect to allegedly prompting an operator to reset the weight value of a consumable welding package and we agree with Appellant that the Examiner's findings of fact are not supported by a preponderance of the evidence. See Final Action 8, 9 29 and passages to Blankenship cited therein.", + "We do not sustain the Examiner's Section 103 unpatentability rejection of claims 1-4, 11-13, and 19-27." + ] +} \ No newline at end of file diff --git a/opinion_split/2016006372_DECISION.json b/opinion_split/2016006372_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4be8504d47dd5c73be4c762b5e65ccbce7d74328 --- /dev/null +++ b/opinion_split/2016006372_DECISION.json @@ -0,0 +1,65 @@ +{ + "appellant_arguments": [ + "According to Appellants, the invention relates to \"a computing device\" which includes \"a touch-sensitive screen configured [to] accept an input from a hand of a person based upon a touch contact.\" and \"a cleanliness sensor configured to detect an indicator of a pathogen present on the hand of the person\" (Spec. I 10).", + "Appellants contend \"it will file an appropriate terminal disclaimer in one of this application and the '149 application, if both cases are found to be allowable and such a rejection is made in one of them\" (App. Br. 44).", + "As for independent claim 1, Appellants contend that \"Ivnitski and Jobs are not properly combinable\" (App. Br. 18) at least because **Ivnitski is not in the same field of endeavor and is not analogous to the instant claims\" (id. at 27).", + "In particular, Appellants contend **Ivnitski never mentions touch screens,\" wherein \"the Examiner did not make a showing that the pathogen detection techniques of Ivnitski (which are carried out in solution) are applicable to detecting pathogens on a hand\" (id.).", + "According to Appellants, none of the cited references \"are configured to detect a pathogen *on the hand of a person,' as recited in the claim\" (id. at 28).", + "As to claim 8, Appellants add that **[n]one of the sensors. of Ivnitski discuss real-time detection of a pathogen\" (App. Br. 28).", + "As for claims 17, 20, 21, and 27-30, Appellants similarly contend that Panopoulos is \"nonanalogous to the claims\" (App. Br. 33)." + ], + "examiner_findings": [ + "1. Claims 1-3, 5, 6, 8-12, 15, 16, 31-35, 37, 38, 41-53, 55, 56, and 58-61 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over Jobs et al. (US 2008/0174570 A1; pub. July 24, 2008), and Dmitri Ivnitski et al. (Biosensors for Detection of Pathogenic Bacteria, Biosensors & Bioelectronics 14, 599-624 (1999)).", + "2. Claims 17, 20, 21, and 27-30 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over Jobs, Ivnitski, and Panopoulos (US 2004/0220538 A1; pub. Nov. 4, 2004).", + "3. Claims 1-3, 5, 6, 8-12, 15-17, 20, 21, 27-35 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 11, 12, 16, 18-20, 25, 27-30, 35, 38- 40, 44, 47, 52-54, 61, 62, 71, 72. 75, 79-81, 83, 85-88, 90, 93, 94 and 98- 100 of copending Application No. 13/770,149.", + "The Examiner concedes that Jobs *does not specify that this sensor can be used as a cleanliness sensor\" to detect a pathogen on the hand (Final Act. 11), however, the Examiner relies on Ivnitski for teaching and suggesting \"optical sensors\" that *can be used to detect pathogens on the skin of the person touching the device.\" \" Id.", + "However, as the Examiner points out, Ivnitski *on page 602, second column, line 15, clearly specifies that there are direct detection biosensors which are design[ed] to perform detection in real time\" (Ans. 6-7),", + "However, as the Examiner points out, **Panopoulos was used to show a computer device which allows detection of pathogen on the skin of a person using cleanliness sensors (53) . \u00b7 \" (Ans. 6-7)." + ], + "ptab_opinion": [ + "Appellants appeal under 35 U.S.C. 6 134(a) from the Final Rejection of claims 1-3, 5, 6, 8-12, 15-17, 20, 21, 27-35, 37, 38, 41-53, 55, 56, and 58-61.", + "Claims 4, 7, 13, 14, 18, 19, 22-26, 36, 39, 40, 54, and 57 have been canceled.", + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We AFFIRM.", + "As Appellants do not argue that the rejection is in error, we summarily affirm the rejection of claims 1-3, 5, 6, 8-12, 15-17, 20, 21, 27-35 on the ground of double patenting over the specified claims of copending Application No. 13/770,149.1", + "Claim 1 is exemplary: 1. A computing device comprising: a touch-sensitive screen configured to accept an input from a hand of a person based upon a touch contact; a cleanliness sensor configured to detect an indicator of a pathogen present on the hand of the person contacting the touch-sensitive screen or on a hand of the person contacting another surface of the computing device; and a cleanliness notification circuit configured to output a signal responsive to the detected indicator of a pathogen.", + "The principal issue before us is whether the Examiner erred in finding that the combination of Jobs and Ivnitski teaches or suggests a \"computing device\" comprising a \"touch-sensitive screen\" and a \"cleanliness sensor\" configured to \"detect an indicator of a pathogen present on the hand of the person contacting the touch-sensitive screen\" (claim 1).", + "The following Findings of Fact (FF) are shown by a preponderance of the evidence.", + "Jobs discloses detecting finger contacts with a touch screen display (Abst.), wherein Figure 2 is reproduced below: - Butthers flandice tas 110 \" - . Semoor - was themack Prearay the ~ 710 ~ are mirt ~ *** and Froot . -- Home Accolemation: . 284 \u25a0 - ~ 124 Figure ,", + "Figure 2 discloses a portable multifunction device 100 having a touch screen 112 (I 165).", + "One or more optical sensors 164 (I 112) and one or more proximity sensors 166 (I 113) may be included.", + "Ivnitski discloses biosensors for detection of pathogenic bacteria in a variety of fields (e.g., clinical diagnostic, food analysis and environmental monitoring) (Abst.).", + "Ivnitski recognizes that an average person carries more than 150 kinds of bacteria which exist both inside and outside of the body, and thus expresses a need for rapid bacterial detection since \"the presence of a single pathogenic organism in the body or food may be an infectious dose\" (Sect. 1.1. Bacteria and microbial diseases).", + "We have considered all of Appellants' arguments and evidence presented.", + "However, we disagree with Appellants' contentions regarding the Examiner's s rejections of the claims.", + "We agree with the Examiner's findings, and find no error with the Examiner's combination of the references and the conclusion that the claims would have been obvious over the combined teachings.", + "Although Appellants contend **Ivnitski never mentions touch screens\" (id. at 27), and that none of the references are configured to detect a pathogen *on the hand of a person\" (id. at 28), the test for obviousness is what the combined teachings would have suggested to one of ordinary skill in the art.", + "See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Here, we agree with the Examiner's finding that Jobs discloses \"a touch-sensitive screen configured to accept an input from a hand of a person based upon a touch contact\" (Final Act. 10-11; FF 1).", + "Thus, we agree with the Examiner's reliance on Jobs for teaching and suggesting a \"computing device\" comprising a \"touch-sensitive screen\" and a \"sensor\" configured to detect the *hand of the person contacting the touch-sensitive screen\" (claim 1).", + "In particular, Ivnitski discloses detection of pathogenic bacteria in a variety of fields, including detecting pathogenic bacteria both inside and outside of the body (FF 2).", + "We agree with the Examiner that Ivnitski teaches a \"cleanliness sensor\" configured to \"detect an indicator of a pathogen present\" on a person. ld.", + "Thus, we are unpersuaded that the Examiner erred in finding that the combination of Jobs and Ivnitski teaches and suggests detecting \"pathogen present on the hand of the person contacting the touch-sensitive screen.\" as recited in claim 1.", + "Although Appellants contend \"I **Ivnitski is not in the same field of endeavor and is not analogous to the instant claims\" (App. Br. 27), the nonanalogous art test considers the threshold question whether a prior art reference is *too remote to be treated as prior art.\"", + "In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)).", + "A reference is analogous art to the claimed invention if (1) \"the reference is from the same field of endeavor as the claimed invention (even ifit addresses a different problem)\"; or (2) \"the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)\" (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).", + "Here, Ivnitski is directed to sensing the pathogen bacteria that an average person carries inside and outside of the body, since the presence of a single pathogenic organism in the body may be an infectious dose (FF 2).", + "In particular, like Appellants' invention, Ivnitski is related to sensing whether a pathogen is present on the person of interest (id.).", + "Thus, we are unpersuaded that Ivnitski is not from the same field of endeavor as the claimed invention (pathogen detection) and is not reasonably pertinent to the problem faced by the inventor (detecting a pathogen on the person that may be infectious).", + "See Bigio, 381 F.3d at 1325.", + "That is, we are unpersuaded that Ivnitski is \"too remote to be treated as prior art.\"", + "See Clay, 966 F.2d at 658 (quoting Sovish, 769 F.2d at 741).", + "Here, we agree with the Examiner that \"Li]t is clear to any person skilled in the art\" that \"to mount the cleanliness sensor described in Ivnitski et al on Jobs' touch screen\" would be *quite obvious\" since *all elements are well known in the art and would not change in their respective functions\" wherein \"the proposed combination would have yield[ed] nothing more than predictable results\" to the ordinarily skilled artisan (Ans. 5).", + "We conclude that a person of ordinary skill in the art, upon reading Ivnitski's teaching of detecting pathogen bacteria on the person to determine whether the person is infectious (FF 2), would have found it obvious to modify Jobs's touch screen sensors to include a pathogen sensor.", + "As the Supreme Court guides, \"[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations ofit, either in the same field or a different one\" KSR Int 'I Co. V. Teleflex, Inc., 550 U.S. 398, 417 (2007).", + "When considering obviousness of a combination of known elements, the operative question is thus \"whether the improvement is more than the predictable use of prior art elements according to their established functions\" (Id.).", + "Here, Appellants have not provided any evidence that such modification to modify Jobs' touch screen to include a pathogen sensor would have been \"uniquely challenging or difficult for one of ordinary skill in the art\" (Leapfrog Enters., Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), or would have yielded unexpected results.", + "We agree with the Examiner that Appellants' invention is simply a modification of familiar prior art teachings (as taught or suggested by the cited references) that would have realized a predictable result (KSR, 550 U.S. at 421).", + "The skilled artisan is \"a person of ordinary creativity, not an automaton.\" Id. at 421.", + "On this record, we find no error in the Examiner's rejection of claim 1, and claims 2, 3, 5, 6, 9-12, 15, and 16 depending therefrom and not separately argued (App. Br. 28) over Jobs and Ivnitski.", + "We adopt the Examiner's findings, which we incorporate herein by reference.", + "Appellants do not provide substantive arguments for claims 31-35, 37, 38, 41-53, 55, 56, and 58-61 separate from claims 1 and 8 (App. Br. 33- 34).", + "Thus, we also affirm the rejection of claims 31-35, 37, 38, 41-53, 55, 56, and 58-61 over Jobs and Ivnitski.", + "We adopt the Examiner's findings, which we incorporate herein by reference, and affirm the rejection of claims 17, 20, 21, and 27-30 over Jobs, Ivnitski, and Panopoulos." + ] +} \ No newline at end of file diff --git a/opinion_split/2016007249_DECISION.json b/opinion_split/2016007249_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a6a5294025062a7d86af261fdcbc016a281e7b89 --- /dev/null +++ b/opinion_split/2016007249_DECISION.json @@ -0,0 +1,59 @@ +{ + "appellant_arguments": [ + "While the cited portions of Behrens may disclose selecting sub-collections, they do not disclose *selecting \u00b7 \u00b7 \u00b7 a aparticular one of the plurality of To matrices.\" and especially not selecting one of the plurality of To matrices *that has the greatest similarity to the query,\" as recited in Claim 1. App. Br. 11.", + "That is, while the cited portion of Behrens may disclose selecting the best sub-collections based on rank, merely selecting sub- collections does not disclose, teach, or suggest *selecting \u00b7 \u00b7 \u00b7 a particular one of the plurality of To matrices that has the greatest similarity to the query, as recited in Claim 1. App. Br. 12.", + "Furthermore, the Examiner's mapping of Claim 1 to Behrens is flawed.", + "For example, the Examiner maps Behrens' \"sub-collections\" to the claimed \"subset matrices\" (Final Office Action, page 3, footnote 2, page 14, paragraph 47, and page 15, paragraph 49) and then alleges that Behrens \"discloses decomposition of the sub-collections (i.e., subset matrices) into the plurality of To. So, and Do matrices.\" (Final Office Action, page 14, paragraph 47.)", + "The Examiner then collapses the distinction between the claimed \"subset matrices\" and the claimed *decomposed matrices comprising \u00b7 \u00b7 \u00b7 a plurality of To matrices\" by alleging that Behrens teaches that \"a highest ranked sub-collection (i.e., subset matrix that has a To with the greatest similarity to the query) is selected.\" \" (Final Office Action, page 15, paragraph 49.)", + "However, selecting a sub-collection (equated to the claimed \"subset matrices\" by the Examiner) does not disclose selecting \"a particular one of the plurality of To matrices,' as required by the above portion of Claim 1. App. Br. 12 (emphasis omitted).", + "[T]he Examiner states in the Answer that the claimed \"To matrix** is created using SVD (Examiner's Answer, Pages 3-4), but the cited portions of Behrens for the disputed portion of Claim 1 (which require the claimed \"To matrix\") are completely devoid of any mention whatsoever of SVD. Reply Br. 3 (footnote omitted).", + "Furthermore, other portions of Behrens specifically disclose that the *term sets\" of Behrens simply contain terms that correspond to using k-means clustering, not SVD \u00b7 \u00b7", + "That is, Behrens specifically defines the *term set\" as simply being terms that are the result of using k-means clustering, not SVD. Reply Br. 6 (citing Behrens 5:62-6:5).", + "[T]he Examiner provides no proof or explanation of how Behrens\" \"term set\" is a \"To matrix\" that was created by processing a *subset matrix with a natural language analysis process\" and that *provide[s] a mapping of the first plurality of terms into a first dimensional space,\" as required by other portions of Claim 1. Reply Br. 3.", + "The Examiner relies on 5:4-31 of Behrens as allegedly teaching this portion of Claim 2. (Final Office Action, page 5.)", + "However, this is incorrect.", + "While the cited portions of Behrens may disclose partitioning a collection of data objects into sub- collections, they do not disclose **forming each of the subset matrices so that each vector in the first matrix appears in exactly one subset matrix, \" as recited in Claim 2. App. Br. 13 (emphasis omitted).", + "In the Examiner's Answer on Pages 5-7, the Examiner points to new portions of both Behrens and Sasaki for this portion of Claim 2", + "Here, the Examiner jumps to the erroneous conclusions that Behrens' alleged disclosure of using clustering to create homogenous sub-collections and Sasaki's alleged disclosure of disjoint clusters necessarily discloses **forming each of the subset matrices so that each vector in the first matrix appears in exactly one subset matrix, \" as required by Claim 2.", + "However, this apparent reliance on inherency is incorrect. Reply Br. 8 (Appellants' emphasis omitted, Panel emphasis added).", + "[T]he proposed Behrens-Sasaki combination fails to disclose, teach, or suggest \"wherein vectors are not discarded from the first matrix prior to partitioning the first matrix into a plurality of subset matrices,\" as recited in Claim 3.", + "The Examiner relies on 4:59-67 and 5:1-3 of Behrens as allegedly teaching this portion of Claim 3. (Final Office Action, page 5.)", + "Specifically, the Examiner states the following: Preprocessing removes and ignores words (i.e., discards vectors) from the documents in the collection (i.e., first matrix).", + "The preprocessing step is optional, which is interpreted to mean that the invention can also work without preprocessing (i.e., vectors are not discarded). (Id. at footnote 4.)", + "While the cited portions of Behrens may disclose a preprocessing step where words may be ignored, they do not disclose *wherein vectors are not discarded from the first matrix prior to partitioning the first matrix into a plurality of subset matrices,\" as recited in Claim 3. App. Br. 14-15 (bold-italicized emphasis added).", + "Furthermore, the Examiner's footnote above suggesting that the cited portion of Behrens discloses Claim 3 because it is an optional step is flawed at least because other portions of Behrens explicitly disclose that it is necessary to remove stop words for the Behrens invention (Behrens, 6:25-35 . .)", + "That is, Behrens explicitly states that \"it is necessary to exclude high frequency terms.\" Id.", + "Thus, the Examiner's s assertion that removing terms from the Behrens invention is optional and therefore *can also work without preprocessing\" is incorrect. App. Br. 15.", + "Appellants then further argue **this apparent reliance on inherency is incorrect.\" Reply Br. 8." + ], + "examiner_findings": [ + "The Examiner rejected claims 1-6, 8, 9, 11-20, 22-27, 29, 30, 32-41, and 43 under 35 U.S.C. 8 103(a) as being unpatentable over the combination of Behrens et al. (US 7,152,065 B2; iss. Dec. 19, 2006) and Sasaki et al., Web Document Clustering Using Threshold Selection Partitioning, Proceedings of NTCIR-4 (2004).", + "The Examiner rejected claims 10, 21, 31, and 42 under 35 U.S.C. 9 103(a) as being unpatentable over the combination of Behrens, Sasaki, and Roitblat et al. (US 2008/0059512 A1; pub. Mar. 6, 2008).", + "Thus, even though each sub-collection may contain a To matrix, it is the To matrix itself that is selected as having the greatest similarity. Ans. 4-5." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejections in light of Appellants' Appeal Brief and Reply Brief arguments.", + "We disagree with Appellants' conclusions that the Examiner has erred.", + "Rather, we concur with the conclusions ultimately reached by the Examiner.", + "As to Appellants\" above contention 1.A, Appellants appear to be construing \"selecting \u00b7 \u00b7 \u00b7 a particular one of the plurality of To matrices that has the greatest similarity to the query\" to require that the result of the selection must be limited to exactly the matrix having the greatest similarity to the query and cannot be a larger sub-collection containing a To matrix.", + "However, this argument does not adequately address the Examiner's finding that Behrens *determines the closest (i.e., greatest similarity) term set (i.e., To matrix) to the query vector\" and \"[t]he selected term set (i.e., To matrix) is used to determine which sub-collection of documents to query. \" Ans. 4.", + "We, therefore, agree with the Examiner (Final Act. 4, 15) that Behrens suggests this limitation, including at column 9, lines 2-33.", + "Further, we construe the limitation \"selecting \u00b7 \u00b7 \u00b7 a particular one of the plurality of To matrices that has the greatest similarity to the query\" to only require that the result of the selecting includes the matrix having the greatest similarity.", + "Claim I is an open-ended **comprising\" claim that does not preclude other unclaimed steps also selecting other less similar matrices (e.g., the matrix with the second greatest similarity) so long as the greatest similarity matrix is selected.", + "David Netzer Consulting Eng r LLC V. Shell Oil Co., 824 F.3d 989, 998 (Fed. Cir. 2016) (*[A] method claim with the word *comprising* appearing at the beginning generally allows for additional, unclaimed steps in the accused process, but each claimed step must nevertheless be performed as written. \").", + "As to Appellants' above contention 1.B, we disagree.", + "Contrary to Appellants argument that *Behrens specifically defines the Sterm set' as simply being terms that correspond to using k-means clustering, not SVD\" (Reply Br. 6, citing Behrens 5:62-6:5), Behrens states that k-means clustering is performed (step 120) prior to step 130, which is the Singular Value Decomposition (SVD), and again at step 140 on the reduced vector spaces of the SVD to ultimately get the term set at step 160 (Behrens 5:4- 66).", + "Thus, the term set is a result of the SVD.", + "In the absence of a showing of good cause by Appellants, we decline to consider an argument raised for the first time in the Reply Brief, as the Examiner has not been provided a chance to respond.", + "See 37 C.F.R. , 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal brief will not be considered when filed in a reply brief, absent a showing of good cause explaining why the argument could not have been presented in the principal brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (*Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause. \").", + "Appellants have provided no showing of good cause.", + "As to Appellants' above contention 2, we disagree.", + "Although we agree with Appellants' argument (App. Br. 13) that Behrens fails to disclose, teach, or suggest each vector in the first matrix appears in exactly one subset matrix, the Examiner correctly responds (Ans. 6) that Sasaki discloses partitioning an original cluster into disjointed? clusters.", + "However, we see no relevance to this further argument as we find no reliance on inherency by the Examiner.", + "As to Appellants' above contention 3, we agree with Appellants' argument (App. Br. 14) that Behrens at column 4. lines 59-67 and column 5, lines 1-3 fails to disclose, teach, or suggest *wherein vectors are not discarded from the first matrix prior to partitioning the first matrix into a plurality of subset matrices.\" \"", + "However, we disagree with Appellants with respect to Behrens at column 6, lines 25-35.", + "Claim 3 only requires not discarding prior to partitioning.", + "The discarding step discussed at Behrens column 6, lines 34-35 is an alternative to discarding during preprocessing and is performed at the time the similarity is measured which is subsequent to (i.e., not prior to) the partitioning step.", + "The Examiner correctly points this out. Ans. 8:3-11." + ] +} \ No newline at end of file diff --git a/opinion_split/2016007649_DECISION.json b/opinion_split/2016007649_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..57c35287c50f64f607250c974ede9ea514c2568a --- /dev/null +++ b/opinion_split/2016007649_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Appellants argue claims 1, 3, 7, and 10 as a group. Appeal Br. 7-18.", + "Appellants traverse the Examiner's rejection by first arguing that Miller is directed to \"feminine hygiene*' products and, as such, would not have been combined with Kaneko and Matsuo to achieve the claimed invention. Appeal Br. 12; Reply Br. 2.", + "Appellants next argue that the Examiner errs in finding that it would have been obvious to modify the prior art to achieve a product with a second high-absorbent resin basis weight that is lower than the basis weight of the first high-absorbent resin dispersed in the high excrement absorbency layer. Appeal Br. 12.", + "Appellants direct our attention to Figure 5 of Kaneko and then argue: As can be seen there is no basis for considering modifying Kaneko et al. so that the basis weight of the second high- absorbent resin is lower than a basis weight of the high- absorbent resin dispersed in the first high excrement absorbency layer since the Examiner's \"second high absorbency resin\" is only particles of resin in Kaneko et al. Id. at 12-13.", + "Appellants next challenge the Examiner's finding and conclusion that it would have been obvious to place Kaneko's modified sheet in Matsuo's animal toilet. Appeal Br. 13.", + "Appellants argue that Kaneko is configured for use outside of a toilet container. Id.", + "Appellants argue that Kaneko is designed with hydrophilic side regions above the backsheet and that making Kaneko's various layers laterally co-extensive would *destroy the function of Kaneko.\" Appeal Br. 13.", + "Finally, Appellants argue that **[]here is no correlation between basis weight and absorbency of urine in Miller.\" Appeal Br. 15." + ], + "examiner_findings": [ + "The Examiner finds that Kaneko discloses all of the elements of claim 1 except for: (1) a toilet container body; (2) continuous uniform thickness of the disposal sheet; (3) rectangular top sheet; (4) the various layers being co-extensive; (5) the claimed basis weight; (6) the claimed dispersion ratio; and (7) the claimed difference in basis weight between the high absorbent resin in the high excrement layer and the \"second\" high- absorbent resin. Final Action 3-7.", + "The Examiner relies on Matsuo for elements (1) through (4). Id.", + "The Examiner relies on Miller for elements (5) and (6). Id.", + "The Examiner finds that modifying the prior art to satisfy element (7) would have been obvious to a person of ordinary skill in the art. Id.", + "The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine and modify the prior art to achieve the claimed invention and would have had ample reason to do so. Id.", + "In response, the Examiner states that Miller is directed to absorbing a bodily fluid using **pulp, which is the same material used in Kaneko for absorbing urine. Ans. 4.", + "The Examiner further supports this position by directing our attention to Takeuchi (US 2008/0312627 A1, pub. Dec. 18, 2008), at paragraphs 1 and 136. Id.", + "In response, the Examiner explains that the basis weight of a substance is merely the amount of the substance that is deposited per unit of surface area. Ans. 4.", + "Consequently, according to the Examiner, a lower basis superabsorbent polymer is equivalent to less superabsorbent polymer being deposited per unit of surface area, which establishes a slower liquid absorption rate in that area. Id. at 4-5.", + "The Examiner reiterates that it would have been obvious to have a basis weight of the second superabsorbent polymer be lower than a basis weight of the first superabsorbent polymer dispersed in the first high excrement absorbency portion in order to allow migration for absorption of liquid in the lower portion for forming a sheet that is suitable for long term use. Id. at 5.", + "In response, the Examiner explains that both Kaneko and Miller disclose a structure comprised of the same absorbent material. Ans. 7.", + "The Examiner cites to paragraph 39 and/or Table 2 of Miller as disclosing a basis weight of 100 to 600 g/m2. Id." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We select claim 1 as representative. See 37 C.F.R. S 41.37(c)(1)(iv).", + "The Examiner's s position on this issue is more persuasive.", + "The Examiner's position that Miller's pulp material is known in the art as effective in absorbing either blood or urine is amply supported by the record.", + "Miller's primary purpose as a feminine hygiene product does not negate its use for other purposes, as it is well settled that it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants' Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).", + "\"A reference may be read for all that it teaches, including uses beyond its primary purpose.\" In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418-421 (2007)).", + "The issue before us relates to the relative absorbency of various layers in a multi-layer absorbent sheet.", + "Based on the record before us, it appears that Appellants merely vary the basis weight of absorbent portions of the sheet to direct where the absorbed fluid will eventually migrate to in the sheet.", + "It further appears to us that the basic principles of absorbency and migration of fluid in a multi-layer sheet are well known such that Appellants' invention merely amounts to *simply arrangling] old elements with each performing the same function it had been known to perform\" and yields no more than one would expect from such an arrangement. KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida V. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).", + "It is well settled that such an arrangement is obvious. Id.", + "We find unpersuasive Appellants' argument that modifying the lateral extent of the absorbent layers in Kaneko to make them co-extensive would destroy the function of Kaneko.", + "Kaneko, with or without the proposed modification, still absorbs pet urine.", + "Furthermore, we agree with the Examiner that modifying the lateral extent of the layers in Kaneko so that they would be co-extensive as claimed and so that it could be used in Matsuo's litter box would have been obvious to a person of ordinary skill in the art.", + "\"[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.\" KSR, 550 U.S. at 416 (citing United States V. Adams, 383 U.S. 39, 50-51 (1966)).", + "Here, the invention merely substitutes Kaneko's sheet for the disposal sheet in Matsuo with a minor modification to the lateral extent of the various layers, which we view as no more than a predictable variation of Kaneko. See KSR, at 417 (predictable variations unpatentable).", + "In the absence of any evidence or persuasive technical reasoning from Appellants that making the various layers of an absorbent sheet laterally co-extensive required more than ordinary skill or achieved unexpected results, we determine that the Examiner's findings on the issue of laterally co-extensive layers is supported by a preponderance of the evidence.", + "Appellants present neither evidence nor persuasive technical reasoning showing that a person of ordinary skill in the art would have recognized the basis weight taught by Miller as limited to the absorption of blood to the exclusion of other fluids, such as urine.", + "The Examiner's finding of fact on basis weight and absorbency is supported by a preponderance of the evidence. Id.", + "We sustain the Examiner's unpatentability rejection of claims 1, 3, 7, and 10.", + "Consequently, we sustain the Examiner's unpatentability rejection of claim 6. See 37 C.F.R. $ 41.37(c)(1)(iv) (failure to separately argue claims)." + ] +} \ No newline at end of file diff --git a/opinion_split/2016007895_DECISION.json b/opinion_split/2016007895_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..bf04a24b7b20dbbf1ee4c0aa2d6d3f9398d39893 --- /dev/null +++ b/opinion_split/2016007895_DECISION.json @@ -0,0 +1,70 @@ +{ + "appellant_arguments": [ + "Appellants' Arguments Appellants argue claim 1 does not organize medical device statuses into categories; instead, \"a status is indicated visually and a status is updated.\" Reply Br. 8; see also App. Br. 17.", + "According to Appellants, Cyberfone is distinguishable because claim 1 does not recite separating data into different categories. Id.", + "Appellants argue claim 1 *does not claim the use of categories to organize, store, and transmit information\" and, even if claim I were to be categorizing an alarm code or error condition, as stated by the Examiner, claim 1 is not \"directed to\" that categorization. Id. at 9.", + "Instead, Appellants argue: Claim 1 is *directed to\" providing a visual representation of specific medical devices on a handheld mobile device, including status, selectable by a user to provide additional information, updating the status, receiving an indication of an alarm code at the handheld representing an alarm or error condition of the medical device and providing information to assist a user in handling the alarm or error condition.", + "In short, there is nothing \"abstract\" about this combination of features. Id. at 9.", + "Appellants also argue claim 1 provides improvements to the functioning of the handheld computer by addressing the problem of handheld devices having limited display space for providing data: Claim I addresses this concern by first displaying representations of one or more medical devices and then, if selected by a user, to provide additional information regarding the medical devices, such as time remaining in an infusion, elapsed time in an infusion, name of an operator, etc. [See] present [S]pecification, para. [73].", + "Thus, the handheld computer is able to display more information about a pump with a limited screen size by enabling a user to select a medical device before receiving the additional information (e.g., in another screen). Id.", + "Appellants argue, like the claims in DDR Holdings V. Hotel.com, 773 F.3d 1248 (Fed. Cir. 2014), claim 1 overcomes a problem specifically arising in the realm of mobile computing devices: displaying a lot of data on a small screen. Id. at 9-10.", + "Appellants argue that Gannin fails to disclose providing information \"to assist a user in handling the alarm or error condition of the one or more medical devices,\" *, as recited in claim 1. App. Br. 4.", + "Although Appellants acknowledge that Gannin discloses generating an alert, Appellants argue \"[a]n alert, without more, does not comprise *information to assist a user in handling an alarm or error condition. \" Id. at 4-5 (citing Gannin Fig. 3, 12:26-36; see also id. at 5-7).", + "Appellants also argue that Gannin is designed for desktop computer applications and, although Gannin discloses its personal communication devices include \"an in-house phone, a pager, and a mobile device\" (see Gannin 6:7-10), *there is no enabling teaching as to how one of ordinary skill in the art would arrive at a truly handheld, mobile device that provides updates, receives an alarm code, and provides information to assist a user in handling the alarm.\" \" Id. at 7-8.", + "In the Reply Brief, Appellants argue for the first time that Gannin does not teach or suggest \"receiving an indication of an alarm code at the handheld mobile device, the alarm code representing an alarm or error condition of one or more of the medical devices,\" as recited in claim 1. Reply Br. 1-3.", + "Appellants argue that *[n]either the *CURRENTLY ASSOCIATED VERSION' nor the *LATEST VERSION' [as shown in dialogue box 900 of Figure 9] is an *entered alarm code' or a *captured image of an alarm condition. .. Reply Br. 3.", + "Appellants also argue Gannin merely teaches pressing a button labeled \"LATEST VERSION\" or a button labeled \"CANCEL,' \" but these are not alarm codes. Id. at 4.", + "Appellants argue that the cited portion of Gannin describes Figure 8 and also states \"[h]ere there are five infusion pumps and channels connected that have been associated with orders for the patient. Reply Br. 4.", + "Appellants argue Hood is directed to a self-contained, transportable life support system, and the display containing the maintenance requirements and instructions *is the display of the transportable life support system,\" which *does not teach providing training via the mobile device.\" App. Br. 12; see also Reply Br. 7.", + "Appellants also argue Hood teaches away from combining its teachings with Gannin because \"Hood criticizes care systems which 'require skilled operators having extensive training. ~ App. Br. 12-13 (citing Hood 26:65-27:4); see also Reply Br. 7 (arguing **Hood teaches away from requiring extensive training to use its life support system\" and, therefore, one of ordinary skill would not look to Hood for solutions to providing training via a handheld device)." + ], + "examiner_findings": [ + "Claims 1-20 stand rejected under 35 U.S.C. 8 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.", + "Claims 1-3, 5-12, and 14-20 stand rejected under 35 U.S.C. 8 102(b) as being anticipated by Gannin et al. (US 8,291,337 B2; issued Oct. 16, 2012) (\"Gannin\").", + "Claims 4 and 13 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Gannin and Hood et al. (US 6,488,029 B1; issued Dec. 3, 2002) (\"Hood\").", + "Examiner's Findings The Examiner finds claim 1 is directed to the abstract idea of *using categories to organize, store, and transmit information.' Ans. 5.", + "Specifically, the Examiner finds claim I provides a representation of one or more medical devices and updates the status for each, receives an indication of an alarm code or error condition of one or more of the medical devices, \"where categories of various medical device status (alarm code or error condition) are organized, stored and transmitted (presented remotely on a user mobile device indicating the medical device status), \" which is similar to concepts that have been identified as abstract by the courts, such as using categories to organize, store, and transmit information. Id. (citing Cyberfone Systems, LLC V. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed Cir. 2014)).", + "The Examiner also finds that no technological improvements have been provided within the medical field and, although the recited invention may improve the process of providing a representation of medical devices and updating the status for each medical device, receiving an indication of an alarm code or error condition of one or more of the medical devices (i.e. the abstract idea), *there is no evidence to show that it improves the structural or functional properties of the computer itself.\" Ans. 6.", + "The Examiner also finds the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the computer as recited is a generic computer component that performs generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. Id. at 8.", + "In the Final Action, the Examiner relied on Gannin at column 1, line 63-column 2, line 8 and column 5, lines 37-46 as disclosing the limitations of claim 2. Final Act. 7.", + "In the Answer, the Examiner relies on column 14, lines 23-36, and Figure 9. of Gannin as disclosing the \"troubleshooting'' of claim 2.", + "The Examiner finds these limitations are disclosed in Gannin because \"[i] relationship to managing infusion pumps as a form of medical device, drug product inventory such as milrinone, norepinephrine and dopamine of milliliters mentioned in column 14, lines 10-22 serve as the inventory of available products.\" Ans. 3", + "The Examiner finds the limitations of claim 4 are taught or suggested by the combination of Gannin, which teaches the mobile device, and Hood, which teaches the ``maintence requirements for the transportable life support system are preferably automated and integrated into the system such that notification of a particular requirement is provided upon the display thereof, as well as instructions for performing such maintenance, if 'desired.\" Ans. 4 (citing Hood 26:65-27:4).", + "The Examiner also finds the automated instructions of Hood \"serve as training to operate a medical device.\" Ans. 4.", + "The Examiner further finds \"Gannin's method and system mobile device is combine[d] with Hood's provided medical device training to provide a faster way to troubleshoot infusion pump problems while treating patients.\" Id." + ], + "ptab_opinion": [ + "Alice Step One We are persuaded by Appellants' arguments that claim 1 is not *directed to\" an abstract idea.", + "We agree with Appellants' argument that claim 1 *does not claim the use of categories to organize, store, and transmit information\" and that claim 1 is distinguishable from Cyberfone because it does not separate data into different categories. Reply Br. 9.", + "We also agree with Appellants' argument that claim 1 as a whole is not directed to excluded subject matter because it improves the computer-implemented process of medical device management by, as Appellants argue, the specifically recited steps of: (1) providing a visual representation of specific medical devices on a handheld mobile device, including status, selectable by a user to provide additional information; (2) updating the status via communication with the handheld device; (3) receiving an indication of an alarm code at the handheld device representing an alarm or error condition of the medical device; and (4) providing information to assist a user in handling the alarm or error condition.", + "That is, we conclude the focus of claim 1 is on the specific asserted improvement in computer capabilities and functioning of a handheld mobile device for medical device management and not on a process that qualifies as an abstract idea for which computers are invoked merely as a tool. See Enfish, 822 F.3d at 1335-36.", + "Because we find claim 1 is not directed to an abstract idea, we do not need to proceed to step two of Alice.", + "Thus, for these reasons, we conclude claim 1, as well as claims 2-20, are directed to patent-eligible subject matter under 9 101.", + "We are not persuaded by Appellants' arguments.", + "Instead, we agree with the Examiner's finding that Gannin discloses providing information in a dialogue box \"to assist in efforts to clearing a mismatched pump channel alarm.\" Ans. 2 (citing Gannin, Fig. 9, 14:23-36).", + "As the Examiner correctly finds, Gannin discloses the dialogue box *includes an area indicating the currently associated version of the order 915 and latest version of the order 920M and that a user *may select the latest version button to associate the pump channel with the latest version of the order for the patient.\" Id.", + "Thus, we agree with the Examiner that Gannin discloses providing information \"to assist a user in handling the alarm or error condition of the one or more medical devices.\" \" Id.", + "We also are not persuaded by Appellants' argument there is no enabling teaching in Gannin of \"a truly handheld, mobile device\" with the features of claim 1.", + "Here, although the burden shifted to Appellants to provide evidence of nonenablement, Appellants failed to provide persuasive evidence or technical reasoning showing that a person of ordinary skill in the art could not take the disclosure of Gannin, in combination with his or her own knowledge of the art, and be in possession of the invention.? See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995).", + "Because this argument is raised by Appellants for the first time in the Reply Brief not in response to a shift in the Examiner's position or without otherwise showing good cause, it is waived. See 37 C.F.R. S 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (\"[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not. .\"", + "Thus, for these reasons, we agree with the Examiner's s findings that Gannin discloses \"providing information at the handheld mobile device to assist a user in handling the alarm or error condition of the one or more of medical devices,\" \" as recited in claim 1.", + "Accordingly, we sustain the Examiner's rejection of claim 1 under 9 102(b).", + "For the same reasons, we also sustain the Examiner's rejection of claims 10 and 18, which recite limitations commensurate to the disputed limitation of claim 1. and dependent claims 5-9, 14-17, 19, and 20, which are not separately argued.", + "We are persuaded by Appellants' arguments that the Examiner erred.", + "Thus, we do not sustain the Examiner's s rejection of claim 2 under 102(b).", + "For the same reasons, we also do not sustain the rejection of claim 11, which recites limitations commensurate to claim 2, under 6 102(b).", + "Appellants also argue, and we agree, *[s]howing five pumps currently in use is not *displaying an inventory of available products for the medical devices at a healthcare facility,' nor is it *facilitating inventory control. \", Reply Br. 5, 6; see also App. Br. 10-11.", + "We are persuaded by Appellants' arguments that the Examiner erred.", + "Thus, we do not sustain the rejection of claim 3 under 8 102(b).", + "For the same reasons, we also do not sustain the rejection of claim 12, which recites limitations commensurate with those of claim 3, under 6 102(b).", + "We are not persuaded by Appellants' arguments.", + "First, we are not persuaded by Appellants' argument that Hood's display *does not teach providing training via the mobile device\" because the rejection is based on the combined teachings of Gannin and Hood and the Examiner relies on Gannin as teaching the *mobile device.\" App. Br. 12.", + "Second, we are not persuaded by Appellants' argument that Hood \"teaches away\" from being combined with Gannin.", + "Hood, therefore, does not criticize or discredit all training, including \"training to a medical device operator,\" as recited in claim 4.", + "Claim 4 does not recite \"extensive\" training.", + "Thus, contrary to Appellants' argument, we find that Hood's teachings of providing an intensive care system with an integrated display with maintenance instructions for the system are entirely consistent with claim 4's feature of providing training to a medical device operator of one of the medical devices recited in claim 1.", + "Accordingly, we agree with the Examiner's (1) findings that the combined teachings of Gannin and Hood teach or suggest the limitations of claim 4 and (2) conclusion that the combination of references renders claim 4 unpatentable under 8 103(a).", + "Thus, we sustain the Examiner's rejection of claim 4.", + "For the same reasons, we sustain the Examiner's rejection of claim 13, which recites limitations commensurate to those of claim 4, under $ 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/2016008102_DECISION.json b/opinion_split/2016008102_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f28383abeafc0d81b18b9ac4961cefbd3aac7a4b --- /dev/null +++ b/opinion_split/2016008102_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Responding to the Examiner\\'s s rejection, Appellant argues claims 1- 16, 18, and 19 as a group.", + "Finally, Appellant argues the Examiner\\'s assertion that the claims lack an inventive concept is \"contradicted by the Examiner\\'s withdrawal of the previous rejections under 35 U.S.C. 9 102.\"" + ], + "examiner_findings": [ + "Claims 1-16, 18, and 19 are rejected under 35 U.S.C. 9 101 as being directed to non-statutory subject matter.", + "Applying the framework in Alice, and as the first step of that analysis, the Examiner maintains that step (a)-(e) of claim 1 are directed to generating a hierarchical functional structure from a hierarchical operational structure, which is a method of organizing human activity and an idea of itself.", + "According to the Examiner, providing a hierarchical structure with roles and positions of an organization is an abstract idea of organizing human activity, by identifying unique positions and roles of humans in an organization.", + "As for step (f), \"controlling user access to business processes based on the hierarchical functional structure, \" the Examiner considers this step as either insignificant post-solution activity or an abstract idea, as per SmartGene.\"", + "Proceeding to the second step under the Alice framework, the Examiner finds the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea." + ], + "ptab_opinion": [ + "We select independent claim 1 as representative.", + "Thus, claims 2-16, 18, and 19 stand or fall with claim 1.", + "The subject matter of claim 1, as reasonably broadly construed, is drawn to a business administration concept for management of a business; that is, claim 1 is focused on a methodology of creating a functional organizational structure\" from a hierarchical operational structure and controlling access to business processes\" based on the created functional structure.", + "We find the concept of organizational structure, in which an organization can be structured in different ways, and managing access to business processes based on an organizational structure, is a well-established business practice, and an idea with no particular concrete or tangible form.", + "Furthermore, we find the \"computer\" of claim 1 is invoked merely as a tool and does not provide any specific improvement in computer capabilities.", + "Because we find that claim 1, as reasonably broadly construed, is directed to a business administration concept for management of a business, i.e., a conventional business practice long prevalent in our system of commerce, and that the recited \"computer\" is invoked merely as a tool, we determine that this is nothing more than the automation of the abstract idea.\"", + "We are not persuaded of error by Appellant\\'s s contention that the claims are not directed to an abstract idea because \"the limitation of controlling user access to business processes does not simply amount to abstract manipulation or communication of information, but instead amounts to a real-life constraint on a real user\\'s ability to perform certain actions. . App. Br. 17; see also Reply Br. 4-5.", + "As discussed above, the claims of the present application are directed to a business practice, which is similarly abstract.", + "Turning to the second step outlined in Alice, we agree with the Examiner that there is no inventive concept defined by an element or combination of elements in claim 1, which is significantly more than the abstract idea.", + "The method as claimed is an application of well-known business management concept in a known computing environment.", + "With regard to implementing said method on a computer, as claimed, \"the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.\" Alice, 134 S. Ct. at 2358.", + "Appellant does not persuasively explain why the claimed invention is dissimilar to the claims in SmartGene.", + "In view of the Specification, Appellant\\'s arguments do not apprise us of error in the rejection because Appellant has not shown how the claimed process amounts to more than comparing stored and input data and applying business rules.", + "We also find unpersuasive Appellant\\'s argument that controlling the users\\' access to the business processes amounts to significantly more than the abstract idea because \"[the claims do not attempt to preempt every application of this idea and consequently do not risk disproportionately tying up the use of the idea.\\' App. Br. 19.", + "Although the Supreme Court has described *the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption\" (id. at 2354), characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility.", + "Appellant\\'s argument does not persuade us of Examiner error.", + "Although the second step in the Alice analysis includes a search for an inventive concept, the analysis is not an evaluation of novelty or nonobviousness, but rather, a search for *an element or combination of elements that is *sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. *** Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294).", + "A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible.", + "Further, \"under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.\" Genetic Techs. Ltd. V. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).", + "Accordingly, we sustain the rejection of independent claim 1 as being directed to patent ineligible subject matter, including claims 2-16, 18, and 19 which fall with claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2016008454_DECISION.json b/opinion_split/2016008454_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..b58378494691d0fcfdb57c32f1d1aa405ccb17ed --- /dev/null +++ b/opinion_split/2016008454_DECISION.json @@ -0,0 +1,51 @@ +{ + "appellant_arguments": [ + "\" Appellants request review of the rejection of claims 1, 2, 8-32, and 38-53, and specifically argue the following grounds of rejection: I. claims 1, 2, 8, 12, 20, 21, 28, 29, 31, 32, 38-43, and 50-53 under 35 U.S.C. 8 103(a) as unpatentable over Chiao\" in view of Fuller* and Haos (Appeal Br. 10-17); II. claim 9 under 35 U.S.C. 5 103(a) as unpatentable over Chiao, Fuller, and Hao as applied to claim 1 and further in view of Johnson (id. at 17-18); and III. claims 16 and 48 under 35 U.S.C. 8 103(a) as unpatentable over Chiao, Fuller, and Hao as applied to claims 1 and 39 and further in view of Savord? (id. at 18-19).", + "Appellants contend that Fuller does not teach analog decoding as claimed.", + "Appeal Br. 15; see also id. at 17 (\"Fuller and Hao similarly fail to disclose, teach, or suggest such analog sampling in the context of coded excitation\").", + "Furthermore, Appellants contend that \"[the Examiner explicitly and repeatedly mischaracterizes *coded excitation' and the corresponding decoding of such coded excitation as somehow being the same as beamforming.'", + "Reply Br. 2, see also Id. at 4 (\"[T]he Examiner erroneously blurs the distinction between beamforming and coded excitation, and also the distinction between band-pass (e.g., linear) filtering and compression (e.g., non-linear) filtering\").", + "Appellants contend that Fuller does not disclose analog decoding of a coded signal.", + "Appeal Br. 15.", + "\"[O]ne of ordinary skill in the art would readily appreciate that such coded excitation involves dispersing the energy of an excitation pulse over a broader pulse width for transmission . a non- linear transformation of the excitation pulse - and then compressing the received pulse to eliminate the lengthening effect.\"", + "Reply Br. 3.", + "The rejection **fails to show that the recited *coded excitation* coupled with the recited *analog decoding' using information about the `coded excitation' and using an *analog decoder circuit' is broad enough to encompass such beamforming.'", + "Reply Br. 3; see also Appeal Br. 11." + ], + "examiner_findings": [ + "The Examiner finds that \"Chiao teaches [a] system and method for pulse-echo medical imaging . \u00b7 using coded excitation according to said transmit code sequence \u00b7 . . and to transduce said electrical signals to pulses of energy other than electrical signals (ultrasound transducers are known to convert electric energy to acoustic energy; Host computer [] determines the conditions under which the acoustic pulses will be transmitted . \u00b7 ).\"", + "The Examiner finds that \"Chiao does not teach performling] analog sampling and analog decoding of the received electrical signals using information about the coded excitation; and configured to provide a weighted, summed digital signal using information obtained from the analog sampling and the analog decoding.\"", + "The Examiner relies on Fuller to teach analog sampling and analog decoding of a coded excitation signal.", + "See Final Act. 5, see also id. at 25 (\"the 'filter' circuitry [of Fuller] is interpreted as *analog decoder**).", + "The Examiner concludes that it would have been obvious to modify the method of Chiao with the analog decoding taught by Fuller because this relaxes analog-to-digital converter processing and memory constraints of digital processing.", + "FF4. The Examiner finds that \"Chiao does not teach performling] analog sampling and analog decoding of the received electrical signals using information about the coded excitation.\"", + "Final Act. 4; see also Ans. 4 (\"Chiao does not teach analog sampling and analog decoding of coded excitation since the signals are digitized at the receiver 16M).", + "The Examiner's s position is that \"[s]ignal compressions or band-pass filtering is very common and frequently used for signal modification (decoding).\" Ans. 8.", + "The Examiner finds that because the codes are not specified in the claims, any signal received by the receiver in which \"the amplitude is filtered or the time delay is adjusted to obtain the transmitted frequency amplitude (which both amplitude and the time delay can be interpreted as decoding).\" Id. at 3.", + "The Examiner finds, however, that Chiao does not perform analog decoding.", + "Therefore, the Examiner relies on Fuller's teaching to teach analog filtering (decoding).", + "The Examiner finds that **Fuller clearly teaches analog receiving and analog signal processing along with the signal filtering where the filters are used as a decoder.\"", + "Ans. 5.", + "Specifically, the Examiner finds that a bandpass filter is an analog decoder.", + "See Ans. 5.", + "To support the position that filters are known to be used as decoders, the Examiner cites Wang 10 in support.", + "Ans. 6." + ], + "ptab_opinion": [ + "Since all of the rejections rely upon the teaching of Chiao, Fuller and Hao, we consider the rejections together.", + "The issue is: Does the preponderance of evidence of record support the Examiner's conclusion that Fuller's system is an analog decoder of a received electrical signal that uses information about the coded excitation?", + "In other words, Chiao's filtering method uses digitally compiled data before applying the various filter parameters.", + "On this record, we find that Appellants have the better position.", + "We recognize that Fuller teaches analog processing of a received signal prior to subjecting the signal to digital processing with the analog-to-digital converter.", + "Fuller, however, does not teach adjusting the filter processing of the received signal based on information about the coded excitation that is applied to the original signal transmitted by the transducer.", + "II Hao also does not provide insight into Fuller's filter processing and does not establish that Fuller's analog filtering uses any information based on any coded excitation applied to the transmission pulse.", + "Accordingly, we agree with Appellants' position that the combination of references does not teach the limitation of **performling] analog decoding of the received electrical signals using information about the coded excitation and using an analog decoder circuit\" as claimed.", + "Even if we agree with the Examiner that Fuller discloses analog filtering and decoding of a received signal, we do not find that the process in Fuller takes into account any coded excitation information that is applied to the transmission pulse of a pulse-echo imaging system.", + "We recognize, but are not persuaded by, the Examiner's position that the claims are broad in that they do not recite specific excitation code that is incorporated in the transmission code sequence. See Ans. 3.", + "The claim does not need to recite a specific excitation code in order for such a code to be considered in the processing phase of the received signal of a pulse-echo system.", + "The processing phase of a pulse-echo signal does not occur in isolation, rather it is part of a system that both produced the sound signal that is applied to a study area and also captures the reflected signal from that area.", + "Thus, a system that does not add an excitation code signal to the transmission burst would not include a way of processing a received signal that takes such a code into account.", + "We conclude that the preponderance of the evidence of record does not support the Examiner s conclusion that the combination of Chiao, Fuller, and Hao discloses an imaging system and a method having all limitations of independent claims 1, 31, and 39 and dependent claims thereto.", + "We also reverse the rejections under 35 U.S.C. 5 103(a) of any claims that rely on the teachings of the combination of these references." + ] +} \ No newline at end of file diff --git a/opinion_split/2017000906_DECISION.json b/opinion_split/2017000906_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..095adc05b360df37e131086351cd23aaa0b2d5f9 --- /dev/null +++ b/opinion_split/2017000906_DECISION.json @@ -0,0 +1,56 @@ +{ + "appellant_arguments": [ + "Appellants describe the present invention as follows: An embodiment of the disclosure displays a plurality of icons for files and a plurality of icons for folders within a graphical user interface.", + "A set of two or more icons can be selected via user input for inclusion within a group object.", + "The group object can be moved within the graphical user interface responsive to user input to within a predetermined range of one of the icons for one of the folders.", + "Responsive to moving, a subset of files of the group object can be determined.", + "Selection of the files within the subset can be based on whether attributes of the folder match attributes of the files.", + "Additionally, responsive to moving the group object, the subset of files can be moved or copied to the one of the folders to which the group object was moved.", + "Appellants assert inter alia that **Appellants teach and claim a group object [that] has a graphical representation that is independent of the items contained therein.\" App. Br. 11.", + "Ledet lacks a group object as taught and claimed by Appellants.", + "According to Appellants, Ledet, conversely, shows collecting individual icons from a folder to the location of a cursor.", + "Nothing in Ledet suggest the cursor is a \"temporary container\" that is represented graphically, nor does Ledet teach or suggest that the icons being moved in Ledet are shown contained within the cursor.", + "Rather, they move to the location of the cursor and form a \"cluster.\"", + "Appellants point out that Appellant's claimed invention likewise move icons in a **cluster,' \" but inside ofthe claimed group object.", + "Appellant's claimed group object exists independent[ly] ofa pointing icon or the file icons that are placed within the claimed group object." + ], + "examiner_findings": [ + "The Examiner finds in relation to all of the claims, inter alia, that Ledet teaches the creation of the claimed \"group object.\"", + "More specifically, the Examiner interprets the claimed group object as reading on Ledet's depicted file cluster.", + "Id.: see also Ans. 3 (explaining \"[t]he cluster, as described in Ledet, is a movable group object comprising multiple graphically represented file icons\")." + ], + "ptab_opinion": [ + "Abstract.", + "Independent claim 1 is illustrative of the appealed claims.", + "It is reproduced below with bracketed edits indicating our understanding of how the claim's multiple antecedent-basis issues are intended to be resolved: I. A method comprising: displaying a plurality of icons for files and a plurality of icons for folders within a graphical user interface; receiving user input to create a group object, which results in the group object being created and displayed in the graphical user interface; selecting a set of two or more [file] icons via user input for inclusion within the group object; moving, within the graphical user interface responsive to user input, the group object to within a predetermined range of a first one of the icons and a second one of the icons for one of the folders; responsive to moving the group object, determining a first subset of files and a second set of files of [the] group object to be moved or copied to the first one of ofthe icons [sic: the folder icons] and the second one of the icons [sic: the folder icons], wherein the first subset and the second subset each comprises at least one but less [than] a total number of files of the group object, wherein selection of the files within the subset [sic: each of the subsets] is based on whether attributes of the at least one of the first and second folder match attributes of the files; and responsive to moving the group object, moving or copying the first subset of files to the first one of the folders and the second set subset of files to the second one of the folders to which the group object was moved within the predetermined range of", + "Claims 1-4, 6-9, 11-14, and 16-25 stand rejected under 35 U.S.C. \u25cf 103(a) as unpatentable over Ledet (US 2012/0084689 A1; published Apr. 5, 2012), Chiu (US 2007/0271524 A1; published Nov. 22, 2007) and Matsuda (US 8,316,022 B2; issued Nov. 20, 2012).", + "Claims 5, 10, and 15 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Ledet, Chiu, Matsuda, and Lee (US 201 2011/0197155 A1; published Aug. 11, 2011).", + "We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon.", + "Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "FINDINGS AND CONTENTIONS", + "E.g., Final Act. 3- 4.", + "Id.", + "Id.", + "\"Before considering the rejections \u00b7 \u00b7 ~, we must first [determine the scope of] the claims . \u00b7 \u00b7\u00b7", + "In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).", + "In the present case, then, we first determine the meaning of the claim term \"group object.\"", + "To do so, we follow the instruction of our reviewing court, which has explained that the Specification is the single best guide to a disputed term's meaning and acts as a dictionary when it expressly defines terms recited in the claims.", + "Phillips V. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc).", + "Appellants' Specification explains that the icons selected by the user (e.g., file icons) are contained \"within\" the group object.", + "Spec. I 83.", + "Appellants' Specification further defines the *group object\" as *an intermediate tray inside the screen to temporarily hold and record objects selected by the user therein\".", + "In the embodiments of the present invention, the *group object\" is used to help a user to manipulate and process objects, which is an intermediate tray inside the screen to temporarily hold and record objects selected by the user therein.", + "Further, the \"group object\" is temporarily used to enable the user to manipulate and process multiple objects all at once.", + "In addition, the \"group object can show the user objects selected by the user in the form of `icons therein.", + "Spec. I 83 (emphasis added), cited in App. Br. 11.", + "A \"tray,\" in turn, is a container into which icons are placed--not a cluster of icons itself.", + "See, e.g., hagp//seanchemtcoprisedesktep.tect. com/definition/system-tray (last visited June 9, 2017) (explaining that a system tray is a section of the taskbars in the Microsoft Windows@ desktop and that icons can be placed in and removed from system trays).", + "The Examiner has not set forth sufficient evidence that it would have been reasonable to interpret an icon cluster, itself, as constituting a tray.", + "As such, the Examiner has not established the reasonableness of interpreting Ledet's icon cluster as corresponding to the claimed group object.", + "For the foregoing reasons, Appellants have persuaded us of error in the Examiner's obviousness rejection of independent claims 1, 6, 11, and 16, each of which sets forth a group object.", + "Accordingly, we do not sustain the Examiner's rejection of those claims or of claims 2-4, 7-9, 12-14, and 17- 25, which respectively depend from these independent claims.", + "With respect to the remaining rejection of dependent claims 5, 10, and 15, the Examiner does not rely upon Lee to cure the deficiency of the obviousness rejection explained above.", + "See Final Act. 17-19.", + "For the reasons discussed above, then, we likewise do not sustain the rejection of claims 5, 10, and 15." + ] +} \ No newline at end of file diff --git a/opinion_split/2017000946_DECISION.json b/opinion_split/2017000946_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..9c9342dd3116f68576f0a648eec3f00a2d2e6382 --- /dev/null +++ b/opinion_split/2017000946_DECISION.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "Further, as Appellants point out, \"Haemmerich only teaches calculating or estimating lesion size based on the parameters used. Haemmerich does not teach generating optimal values parameters to evaluate the ablation of tissue.\" Reply Br. 5; see also Appeal Br. 6." + ], + "examiner_findings": [ + "1. Claims 1-3, 5-7, 19-21, and 23-25 stand rejected under pre-AIA 35 U.S.C. 8 102(b) as anticipated by Haemmerich.2 Ans. 2.", + "2. Claims 4 and 22 stand rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Haemmerich and Panescu.\" Ans. 2.", + "The Examiner finds claim 1's \"measured non-ablative values\" correspond to Haemmerich's measurement of temperature during the non- ablative pre-pulse (Final Action 4 (citing Haemmerich \" 46-54), claim I's *measured ablative values\" to Haemmerich's measuring of temperature during ablation (id. (citing Haemmerich ' 55)), claim 1's \"calculated non- ablative values\" to Haemmerich's values generated when estimating lesion size before ablation (id. (citing Haemmerich Fig. 9)4), and claim I's \"calculated ablative values\" to Haemmerich's values generated when estimating lesion size during ablation (id. (citing Haemmerich Fig. 9).", + "The Examiner further finds that Haemmerich teaches comparing the calculated and measured non-ablative values. See id. 4-5.", + "Haemmerich describes *providing for the comparison of information therein with such functionality providing with respect to the above pre-ablative values\" (id. at 4-5 (citing Haemmerich I 65), and that the calculated and measured ablative values are similarly compared (id. at 5 (*Similarly, the ablative comparison was taken as the comparison of information therein with such functionality provided with respect to the cited ablative values. \").", + "According to the Examiner, Haemmerich **generate[s] optimal values of the physical parameters to evaluate the ablation of the tissue\" as required by claim 1 insofar as Haemmerich uses the comparisons to achieve target temperatures (id. at 5 (citing Haemmerich I 65))." + ], + "ptab_opinion": [ + "We agree with Appellants (see Appeal Br. 5-6; Reply Br. 4-5) that the Examiner has not shown that Haemmerich teaches the claimed comparisons or generation of optimal values.", + "Claim I requires \"comparing the measured ablative values with the calculated ablative values, which according to the Examiner's rejection (see Final Action 4-5) would be, in Haemmerich, a comparison of measured temperature during ablation with calculated lesion size during ablation.", + "However, the Examiner does not point out or explain how Haemmerich teaches such a comparison.", + "To be sure, Haemmerich correlates pre-ablation temperature measurements with measured lesion size, and uses pre-ablation temperature measurements and \"other a-priori information from computer models to calculate lesion dimensions.\" Haemmerich I 65; see also id. at ' 64 (referring to the \"parameters\" as dTmax and slope).", + "These may well be comparisons of measured and calculated pre-ablative values, but we discern no teaching in the cited passage or elsewhere in Haemmerich of comparing measured and calculated ablative values.", + "Haemmerich describes \"provid(ing] a patient and site-specific estimate of convective cooling, allowing the use of a computer model to provide more accurate estimates of lesion dimensions (FIG. 9)\" (Haemmerich I 65), but to the extent that this passage teaches optimization of temperature or other ablation parameters, it appears to be based on pre-ablation measurements and calculations.", + "For these reasons, on this record we must conclude that the Examiner has not established that Haemmerich describes, whether expressly or implicitly, all the limitations of claim 1, as required by S 102.", + "Accordingly, we reverse the rejection of claim 1.", + "Claim 19, also independent, is an apparatus claim but otherwise includes substantially similar limitations. Compare Appeal Br. 8 with id. at 13 (Claims Appendix).", + "Thus, we reverse the rejection of claim 19 for the same reasons.", + "Claims 2, 3, 5-7, 20, 21, and 23-25 depend on claim 1 or 19, and fall with claims 1 and 19.", + "The rejection of claims 4 and 22 under 8 103 relies equally on Haemmerich (see Final Action 8-9), and accordingly suffers from the same deficiencies." + ] +} \ No newline at end of file diff --git a/opinion_split/2017001146_DECISION.json b/opinion_split/2017001146_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d52dfce2da1442ad61f8ffd76000c89bdc2a763a --- /dev/null +++ b/opinion_split/2017001146_DECISION.json @@ -0,0 +1,120 @@ +{ + "appellant_arguments": [ + "Appellants argue that the Examiner erred in finding that Shytenberg discloses determining whether a dimmer is present.", + "According to Appellants, Shteynberg describes \"determining when the dimmer - which is apparently always present - is in the conductive part of its cycle (*Td interval\") and when the dimmer is in the non-conducting part of its cycle CB interval\"). \" Br. 8 (citing Shteynberg 11 61, 67); 13 (adopting the same argument with respect to claim 10).", + "With regarding to claim 10, Appellants additionally argue that Shytenberg does not disclose that microcontroller 160 is \"configured to determine whether a dimmer is connected between a voltage mains and a power converter\" are recited in claim 10.", + "Appellants\" argument is similarly based on the dimmer switch being determined to be on or off in Shteynberg, arguing that it is not the same as a first value for the control signal when the dimmer is present and a second value when the dimmer is not present.", + "Appellants argue that the Examiner's rejection of claim 2 is in error because paragraph 56 of Shteynberg, whicht discloses \"measuring the RMS value of phase modulated voltage VRMS,\" does not disclose \"detecting a phase angle based on signal waveforms of a rectified input voltage\" as recited by the claim.", + "Appellants also assert that paragraphs 18 and 56-59 of Shteynberg do not disclose *comparing the detected phase angle with a predetermined threshold\" nor \"determining that the dimmer is present when the detected phase angle is less than a threshold\" as also recited by the claim.", + "Appellants argue that the Examiner erred in rejecting claim 3 because Shteynberg's disclosure of determining the RMS value of phase modulated voltage VRMS is not a disclosure of **sampling digital pulses corresponding to the signal waveforms\" as recited in the claim.", + "Appellants also assert that the Examiner does not \"cite anything which discloses the actual features which are recited, related to the lengths of the sampled digital pulses.\"", + "Appellants assert that the Examiner'. s rejection of claim 4 is in error because the cited art does not disclose or make obvious a method including the recited feature of \"comparing the detected phase angle with the threshold comprises comparing the length of at least one digital pulse with the threshold.\"", + "Appellants assert that the Examiner's s rejection of claim 5 is in error because the cited art does not disclose or make obvious a method including the recited feature of *determining that the length of the at least one digital pulse is less than the threshold.\"", + "Appellants assert that the Examiner' s rejection of claim 6 is in error because (1) the cited art does not disclose or make obvious the recited features of claim 6 and (2) the Examiner does not explain where or how the cited references supposedly teach or make obvious the recitation of claim 6.", + "Appellants assert that the Examiner's s rejection of claim 7 is in error because the cited art does not disclose or make obvious a method including the recited feature of \"maintaining a nominal operating point of the power converter when the dimmer is determined not to be present.\"", + "Appellants contend that the Examiner's finding that Shteynberg discloses determining the nominal voltage provided by the dimmer switch without dimmer *is not the same as maintaining a nominal operating power of the power converter when the dimmer is determined not to be present at all!\"", + "According to Appellants, *zero dimming? is not the same as no dimmer switch being present at all.\"", + "Appellants assert that the Examiner' s rejection of claim 8 is in error because the cited art does not disclose or make obvious a method including the recited feature of \"setting the power control signal to a predetermined nominal value corresponding to the amount of power to be delivered by the power converter when the dimmer is not present.\"", + "Appellants contend that the Examiner's findings do not teach when the dimmer is not present.", + "Appellants assert that the Examiner's s rejection of claim 9 is in error because the cited art does not disclose or make obvious a method including the recited feature of \"a PWM signal having a second duty cycle.\"", + "Appellants contend that the Examiner's 's findings do not teach a nominal value corresponding to the amount of power to be delivered by the power converter when the dimmer is not present comprises a PWM signal having a second duty cycle.", + "Appellants assert that the Examiner' s rejection of claim 11 is in error because **[the cited text in [Shteynberg] '859 all discusses a situation when a dimmer is off or in a non-conductive state \u00b7- not a situation where no dimmer is present at all and wherein as a result a power control signal has a second value and in response to this, the power converter does not increase the output power, the output power being equal to the nominal power.\"", + "Appellants assert that the Examiner' s rejection of claim 12 is in error because the cited art does not disclose or make obvious a method including the features recited in claim 12.", + "Appellants argue that the Examiner *does not even attempt to argue that the cited text discloses that a second value which a power control signal has when no dimmer is present comprises a PWM signal having a second duty cycle different from the first duty cycle which it has when a dimmer is present.\"", + "According to Appellants, Shteynberg \"absolutely doe[s] NOT state that *the microcontroller comprises a pulse width modulation having a first duty cycle to active (sic) the switch of the power converter when the dimmer switch is present\" because \"there is no mention or suggestion of anything having to do with *when the dimmer switch is present' (because the dimmer switch is always present).\"", + "Appellants assert that the Examiner' s rejection of claim 14, which depends from claim 10, is in error \"[f]or similar reasons to those set forth above with respect to claim 2.\"", + "Appellants assert that the Examiner's s rejection of claim 17 is in error because (1) the Examiner cites an Irissou reference in a non-final rejection that is not mentioned in the rejection, (2) the Examiner does not cite anything in the prior art as teaching \"detecting a phase angle based on signal waveforms of a rectified input voltage\" as recited in claim 17, (3) Shteynberg does not disclose comparing a phase angle detected based on signal waveforms of a rectified input voltage with a predetermined threshold, and (4) none of the cited references discloses the claim recitation *when the detected phase angle is below the predetermined threshold, setting the power control signal to a dimmer value \u00b7 \u00b7 \u00b7 to deliver the increased output power to the LED light source.\"", + "Appellants argue that Kuo does not remedy the deficiencies of Shteynberg and Shteynberg '859 discussed above with respect to claim 1.", + "According to Appellants, Kuo's disclosure of a burst dimming mode requires the presence of a dimmer and cannot exist when a dimmer is not present." + ], + "examiner_findings": [ + "The Examiner finds that claims 1-12, 14, and 17 would have been obvious to one of ordinary skill in the art at the time of the invention over the combination of Shteynberg and Shteynberg '859 for the reasons stated on pages 7-22 of the Final Action.", + "The Examiner responds that Appellants' Specification detects when the dimmer is present or not present by RMS voltage, the same method used in Shteynberg.", + "The Examiner determines that the broadest reasonable interpretation of **dermining whether a dimmer is present\" and \"when the dimmer is not present\" as recited in claims 1 and 10 is \"when the dimmer is switch(ed] on then it is present and when the dimmer is switch(ed] off then it is not present.", + "The Examiner responds that Shteynberg discloses detecting a phase angle and sensing RMS voltage (VRMS) using a wide variety of methods.", + "The Examiner further finds that Shteynberg teaches the controller determines VRMS using measurements from connection to the output of dimmer switch 75.", + "The Examiner additionally provides citations to the cited prior art references for each element of claim 2.", + "The Examiner responds that Shteynberg's 's disclosure of a controller configured to convert analog to digital signals is a disclosure of sampling digital pulses corresponding to signal waveforms.", + "The Examiner explains that Shteynberg expresses this as a duty cycle having a period of time for a signal to complete an on-and-off cycle and a time the signal is active.", + "The Examiner additionally provides citations to the cited prior art references for each element of claim 3.", + "The Examiner responds with a citation to the cited prior art references for each element and refers back to the remarks concerning claim 3 and Shteynberg's disclosure of a duty cycle having a length of time for a signal to complete an on-and-off cycle.", + "The Examiner responds that Shteynberg discloses sampling digital pulses corresponding to signal waveforms based on the reference's disclosure of a controller, such as a digital signal processor configured to convert analog to digital signals.", + "The Examiner further finds that Shteynberg discloses sensing the phase angle of the full or non-phase-modulated signal under conditions of dimming to control and provide variable brightness or intensity levels of the optical output of the LEDs.", + "The Examiner responds with a citation to the cited prior art references for each limitation of claim 6.", + "The Examiner determines it would have been obvious to modify the method of Shteynberg with increased power delivered to the LED lights when the dimmer is turned on and when the dimmer is turned off to have the increased power equal to the nominal power to allow for sophisticated control of the output brightness or intensity as taught by Shteynberg '859.", + "The Examiner responds that Shteynberg's disclosure of the voltage level of capacity C5 is always maintained at or above the voltage level required by the LEDs is a disclosure of maintaining a nominal operating point.", + "The Examiner also responds that capacitor C5 (345) is charged to a sufficiently high voltage and discharged when the dimmer switch 75 is not providing any power.", + "The Examiner responds with the same citations to Shteynberg disclosing the capacitor C5 is discharged during time intervals when the dimmer switch is not providing any power as corresponding to the amount of power to be delivered by the power converter when the dimmer is not present.", + "The Examiner responds by further finding that paragraph 55 of Shteynberg discloses \"the microcontroller comprises a pulse width modulation having a first duty cycle to active the switch of the power converter when the dimmer switch is present.\"", + "The Examiner also cites paragraph 55 for disclosing a second duty cycle and Figure 8, dimmer 75, as further explaining the details of the dimmer being present and not present in Figure 11.", + "The Examiner responds with citations to the prior art references for the recited limitations in the claim.", + "The Examiner responds with citations to the prior art references for the recited limitations in the claim.", + "The Examiner responds that the step of detecting a phase angle based on signal waveforms of a rectified input voltage is disclosed by Shteynberg in paragraphs 48, 59, 64, and 67.", + "The Examiner further responds with citations to Figure 10 of Shteynberg disclosing the recited LED light source (item 140), voltage mains (item 35), dimmer (75), and power converter (items 265, 270).", + "In addition, the Examiner includes citations to the prior art for each claim limitation recited in claim 17.", + "The Examiner finds that claim 13 would have been obvious to one of ordinary skill in the art at the time of the invention over the combination of Shteynberg, Shteynberg '347, and Kuo for the reasons stated on page 23 of the Final Action." + ], + "ptab_opinion": [ + "We address below the claims separately argued by Appellants.", + "We are not persuaded by Appellants' argument for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not dispute the Examiner' finding that the Specification uses the same measurement of voltage as disclosed in Shteynberg to determine whether the dimmer is present or not.", + "Because the Examiner's interpretation of the claim term is reasonable and consistent with the Specification, we are not persuaded of reversible error in the rejection of claims 1 and 10 over the combination of Shteynberg and Shteynberg *869.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants quote the language of the claim and then provide a single sentence asserting that the disclosure of the cited prior art does not disclose each recited claim element.", + "This is insufficient to state an issue for appeal.", + "To the extent Appellants do state a separate ground for appeal, Appellants' arguments are not persuasive because the Examiner's finding that Shteynberg measures a phase angle and utilizes an RMS converter of the phased-modulated signal provided by the dimmer switch 75 is supported by the record.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not adequately explain why the Examiner erred as to the rejection of claim 3.", + "Specifically, Appellants do not sufficiently explain why the recited *lengths of the sampled digital pulses\" are not disclosed by the duty cycles described in Shteynberg, which relate to periods of time as the Examiner finds.", + "Appellants also do not sufficiently explain why the Examiner's further findings relating to Shteynberg's controller determining the voltage provided by the dimmer switch is not a disclosure of \"lengths corresponding to a level of dimming of the dimmer, if present\" as recited in claim 3.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not adequately explain why the Examiner erred as to the rejection of claim 4.", + "Specifically, Appellants do not sufficiently explain why Shteynberg's teaching of duty cycles does not suggest the use of a digital pulse for performing the comparing step recited in claim 4.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not adequately explain why the Examiner erred as to the rejection of claim 5.", + "Specifically, Appellants do not sufficiently explain why Shteynberg's teaching of sampling digital pulses corresponding to signal waveforms and controlling brightness based on the phase angle under conditions of dimming does not suggest the use of a digital pulse for determining the length of the at least one digital pulse is less than the threshold as recited in claim 5.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not adequately explain why the Examiner erred as to the rejection of claim 6.", + "Specifically, Appellants do not sufficiently explain why the teachings of Shteynberg and Shteynberg *859 cited by the Examiner, which disclose adjusting power supply in the electrical environment of a dimmer switch, do not disclose or suggest the adjustment step of claim 6.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not adequately explain why the Examiner erred as to the rejection of claim 7.", + "Specifically, Appellants do not sufficiently explain why *when the dimmer is determined not to be present\" is not the same or obvious in view of the dimmer switch not providing any power as taught by Shteynberg.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not adequately explain why the Examiner erred as to the rejection of claim 8.", + "Specifically, Appellants do not sufficiently explain why \"when the dimmer is determined not to be present\" is not the same or obvious in view of the dimmer switch not providing any power as taught by Shteynberg.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "Appellants do not adequately explain why the Examiner erred as to the rejection of claim 9.", + "Specifically, Appellants do not sufficiently rebut the Examiner's finding that Shteynberg discloses a PWM signal having a second duty cycle as required by claim 9.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "As discussed above in connection with claim 10 from which claim 11 depends, Appellants do not dispute the Examiner's finding that the Specification uses the same measurement of voltage as disclosed in Shteynberg to determine whether the dimmer is present or not.", + "Because the Examiner's interpretation of the claim term is reasonable and consistent with the Specification, we are not persuaded of reversible error in the rejection of claim 11 over the combination of Shteynberg and Shteynberg *869.", + "To the extent that Appellants assert error in the Examiner's findings regarding claim 11 apart from the interpretation of \"a dimmer is not present\" as recited in independent claim 10, Appellants do not adequately explain why the Examiner erred as to the rejection of claim 11.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "As discussed above in connection with claim 10 from which claim 12 indirectly depends, Appellants do not dispute the Examiner's finding that the Specification uses the same measurement of voltage as disclosed in Shteynberg to determine whether the dimmer is present or not.", + "Because the Examiner's interpretation of the claim term is reasonable and consistent with the Specification, we are not persuaded of reversible error in the rejection of claim 12 over the combination of Shteynberg and Shteynberg *869.", + "To the extent that Appellants assert error in the Examiner's findings regarding claim 12 apart from the interpretation of \"a dimmer is not present\" as recited in independent claim 10, Appellants do not adequately explain why the Examiner erred as to the rejection of claim 12.", + "We are not persuaded by Appellants\" arguments for the reasons stated by the Examiner and for the reasons discussed above in connection with claims 2 and 10.", + "We are not persuaded by Appellants' arguments for the reasons stated by the Examiner.", + "In addition, we add the following.", + "The Final Action does not rely on an *Irissou reference.\"", + "therefore, it is not part of the final rejection of claim 17 from which Appellants raise this appeal.", + "Appellants do not rebut the Examiner's findings (Ans. 19) regarding the \"detecting a phase angle\" step recited in claim 17, therefore Appellants' argument that the Examiner does not cite anything in the prior art teaching this recited step is not persuasive.", + "Moreover, the Examiner made the same findings as to the *detecting a phase angle\" step in claim 17 (Ans. 19) as were made with respect to the same step recited in claim 2 (Final Act. 10).", + "For the reasons discussed above in connection with claim 2, we do not find persuasive Appellants\" assertion of reversible error by the Examiner.", + "Regarding Appellants assertion that the cited art does not disclose the recited step in claim 17 of *when the detected phase angle is below the predetermined threshold \u00b7 \u00b7 \u00b7 Appellants do not adequately explain why the Examiner erred as to the rejection of claim 17.", + "The Examiner's findings that Shteynberg discloses a detected phase angle is not below the predetermined threshold CI 44, 61) when the dimmer is not providing power to the LEDs, setting the power control signal to a no dimmer value (Figs. 8, 11, dimmer present Td, dimmer 75) are sufficiently supported by the record cited in this appeal.", + "In sum, we affirm the Examiner's rejection of claims 1-12, 14, and 17 as obvious over the combination of Shteynberg and Shteynberg '347.", + "We are not persuaded of reversible error by the Examiner for the same reasons discussed above in connection with claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2017001521_DECISION.json b/opinion_split/2017001521_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f139a7d09196bd72dba96d1027d53f4fd3112bb9 --- /dev/null +++ b/opinion_split/2017001521_DECISION.json @@ -0,0 +1,101 @@ +{ + "appellant_arguments": [ + "Does the Examiner err in finding claim 30 is directed to an abstract idea, without significantly more?", + "Does the Examiner err in finding the combination of Montagna and McKay teaches or suggests \"the change database is provided to the external device in a format that includes selectable filters, wherein the filters of the change database are preset in the GUI based on content of the change database\" (hereinafter the \"database and filter limitation\"), as recited in claim 21?", + "Does the Examiner err in finding the combination of Montagna and McKay teaches or suggests *displaying, with the GUI, a configuration of one of the CIs at two different time points in a side by side format\" (hereinafter the *side by side limitation\"), as recited in claim 26?", + "Does the Examiner err in finding the combination of Montagna and McKay teaches or suggests *with the GUI, automatically marking and characterizing differences between two displayed configurations\" (hereinafter the *marking and characterizing limitation\"), \". as recited in claim 27?", + "Does the Examiner err in finding the combination of Montagna and McKay teaches or suggests *displayling] a topology of changes to a network environment\" (hereinafter the *topology of changes limitation\"), as recited in claim 302", + "Does the Examiner err in finding the combination of Montagna and McKay teaches or suggests \"the GUI allows a user to: display a topology of the CI-level database\" (hereinafter \"the CI-level topology limitation\"), as recited in claim 36?", + "Appellants contend \"the claimed invention integrates the building blocks of human ingenuity into something more than the exception by applying the abstract idea in a meaningful way, and as such, is directed to patentable subject matter. Br. 10-11.", + "Appellants contend \"the Final Office Action merely references Montagna's 's user 3 as accessing or selecting a snapshot using a snapshot filter 910.", + "The filter 910 is not, however, a filter that is preset based on a content of a change database.\" Br. 13.", + "Appellants contend \"it is entirely unclear why one of ordinary skill in the art would have modified Montagna's GUI in view of McKay, such that the GUI has filters that are present based on a content of a change database, absent impermissible hindsight gleaned solely from the present application. *, Br. 13.", + "Appellants contend as follows: One of ordinary skill in the art would not glean from Fig. 7, or its discussion, that the configuration setting changes in Fig. 7 pertain to the same configuration setting at different times.", + "It is noted that in the identifier column 806, the 'X' is merely a wildcard identifier.", + "See, for example, the server name in column 802, for example. Br. 14.", + "Appellants contend as follows: Fig. 7 merely shows changes in two configuration settings.", + "One row of Fig. 7 is not compared or contrasted with another row, as each row pertains to a different configuration setting.", + "As such, there is no teaching or suggestion in Montagna that the rows pertain to configuration differences or that the differences between two rows of Fig. 7 are marked. Br. 15.", + "Appellants contend that the GUIs taught by Montagna and McKay merely display information, arguing, \"[the mere display of configuration changes fails to disclose or render obvious a topology of changes or a topology of changes to a network environment.\" Br. 16." + ], + "examiner_findings": [ + "Claim 30 stands rejected under 35 U.S.C. 8 101 because the claimed invention is directed to a judicial exception, i.e., an abstract idea, without significantly more.", + "Claims 21, 23, 25-28, and 30-37 stand rejected under 35 U.S.C. 8 103(a)2 as being unpatentable over Montagna et al. (US 8,356,088 B2, issued Jan. 15, 2013; hereinafter **Montagna\") and McKay (US 8,447,737 B2, issued May 21, 2013).", + "Claims 24, 29, and 38-40 stand rejected under 35 U.S.C. 6 103(a) as being unpatentable over Montagna, McKay, and Kephart et al. (US 2007/0100892 A1, published May 3, 2007; hereinafter **Kephart*).", + "In concluding claim 30 is patent-ineligible, the Examiner applies Mayo/Alice step 1, finding \"[c]laim 30 is directed to the basic abstract idea of using categories to organize, store and transmit information, as well as comparing new and stored information and using rules to identify options.\" Final Act. 3.", + "The Examiner next applies Mayo/Alice step 2, finding \"[the claim does not include additional elements that amount to significantly more than the judicial exception.\" Id.", + "The Examiner relies on the combination of Montagna and McKay to teach the database and filter limitation. See Final Act. 8, 10-12 (citing Montagna, col. 13, II. 19-34, col. 14, 1. 52-col. 15, 1. 11, col. 18, 11. 7-32, Figs. 1, 4, 8; McKay, col. 3, 1. 65-col. 4, 1. 4. col. 4, II. 45-47, col. 5, II. 7- 10, col. 5, 1. 66-col. 6, 1. 5, col. 8, 11. 9-28, Figs. 1, 3).", + "More particularly the Examiner *reli[es] upon Montagna for disclosing a GUI with selectable filters, while using McKay for the teachings of the change database.\" \" Final Act. 28-29 (bold-facing omitted).", + "Rather than relying solely on Montagna's 's snapshot filter 910 the Examiner explains that \"Montagna teaches that the user 3 can also filter the results by selecting the result status filter link 912, which allows a user 3 to filter the results of the snapshot by new, missing, and specifically changed items for any server, server group, etc. \" Final Act. 29-30 (italics added; bold-facing omitted) (referring to Montagna, Fig. 8) (quoted at Br. 13).", + "The Examiner concludes as follows: At the time of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Montagna and McKay before him or her, to modify the configuration management system 6 of Montagna to include the change log database 310 of McKay, with reasonable expectation that this would result in a system that allowed users to select specific view of previous configurations of the [CIs] in accordance with user selectable attributes (McKay, FIG. 3, col. 8, lines 9-28).", + "This method of improving the configuration management system of Montagna was well within the ordinary ability of one of ordinary skill in the art based on the teachings of McKay. Final Act. 12 (bold-facing omitted).", + "The Examiner relies on Montagna to teach the side by side limitation. Final Act. 13 (citing Montagna, Fig. 7); see also Montagna, Fig. 8.", + "As pointed out by the Examiner, the side by side limitation makes no mention of configuration settings. Ans. 22.", + "Rather it recites *displaying \u00b7 \u00b7 \u00b7 a configuration of one of the CIs at two different time points in a side by side format.\" \" Id.", + "The Examiner goes on to explain as follows: [A]s stated in the Final Action, FIG. 7 illustrates the GUI displaying the configuration information of a CI at two different time points.", + "The information is clearly shown together [i.e., side by side], listed at item 808 of FIG. 7, the current size 36.08 KB at time 01/31/2008 21:58:52, the reference size 37.08 KB at time 07/21/2010 21:02:56 (See Montagna, FIG. 7, item 808). Ans. 22 (bold-facing omitted, italics added).", + "The Examiner relies on Montagna to teach the marking and characterizing limitation. Final Act. 13 (citing Montagna, Fig. 7).", + "The Examiner explains that Montagna teaches identifying differences between snapshots (Montagna, col. 15, 11. 7-11) and characterizing those differences (id., 11. 25-37). Ans. 24-25.", + "The Examiner then explains that the display illustrated in Montagna's Figure 7 \"clearly indicates the difference between a reference configuration item and a current configuration item.\" \" Final Act. 25.", + "The Examiner relies on Montagna combined with McKay to teach the topology of changes limitation. Final Act. 15 (citing Montagna, Fig. 7); Ans. 27-28 (additionally citing Montagna Fig. 8; McKay, col. 3, 1. 67-col. 3, 1. 9).", + "The Examiner explains as follows: Montagna teaches that FIG. 8 is providing the configuration management interface for reviewing the reports regarding the configuration settings of the servers.", + "In particular, FIG. 8 discloses the results interface 900, which allows the user 3 to access any snapshot, server, group of servers, application, configuration schema, results identifier, or specific file that is related to the configuration management application 20.", + "The user 3 can select a snapshot from the snapshot filter 910 drop down list to view any snapshot taken by the configuration management application 20 in the past (See FIG. 8, item 942, illustrating the results column).", + "Furthermore, McKay also discloses (though not expressly visible) an [graphical user] interface for users to perform various operations that may facilitate interaction with the configuration management server 130 including, e.g., managing/accessing configuration item records, providing requests for one or more states of configuration items, receiving/providing information (for example, configuration related information or other information) associated with configuration items, and/or performing other operations (See McKay, col. 3, line 67-col. 4, line 9). Ans. 27-28 (bold-facing omitted, brackets in original).", + "The Examiner explains that the *interprets the recited 'topology' \u00b7 \u00b7 as merely `configuration information,\" which is commensurate in scope with each of FIG. 1-3 of the [Specification].\" Ans. 30 (emphases in original) (discussing claim 32)." + ], + "ptab_opinion": [ + "Rather than repeat the arguments here, we refer to the Appeal Brief (\"Br.\" filed Mar. 10, 2016) and the Specification (*Spec.\" filed Aug. 5, 2011) for the positions of Appellants and the Final Office Action (\"Final Act.\" mailed Oct. 15, 2015) and Answer C (\"Ans.\" mailed Sept. 15, 2016) 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.", + "We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "We find no error in the Examiner's findings and conclusion.", + "We see no principled distinction between the patent-ineligible *[m]ethod of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid,' \" at issue in Electric Power, 830 F.3d at 1351, and the *data processing system for evaluating changes to a network environment,\" at issue here.", + "Claim 30 recites an *external device\" having a \"processor\" and a \"GUI,\" i.e., a generic computer, \"for evaluating changes to a network environment.\"", + "\" The recited functions performed by the generic computer are limited to displaying information and requesting data from a database.", + "There are no recited functions for acquiring data from the network environment, manipulating the displayed information, or acting on the network environment in any way.", + "To be sure, claim 30 does recite displaying a topology of changes to a network environment (see Br. 10), but does not recite any functions for identifying the changes or organizing them into a topology, i.e., does not *identify[] a particular tool for presentation,\" Electric Power, 830 F.3d at 1354, other than a generically recited GUL", + "Additionally, although claim 30 does recite certain characteristics of the displayed data (see Br 10), there is no recitation of functions that change the data.", + "For example, although the claim recites *displayling] filtered data, wherein the filtered data comprises changes to [the] network environment, \" there is no recited function for filtering the data.", + "Unlike the claim in Electric Power, claim 30 does not recite any analysis ofthe collected and displayed information.", + "We conclude that, like the claim in Electric Power, claim 30 is focused on the combination of abstract-idea processes and is, therefore, directed to an abstract idea.", + "Based on the foregoing, we conclude claim 30 is directed to a patent-ineligible abstract idea because it is, at most, merely a method of organizing, comparing, and displaying data that can be performed in a human mind or using pen and paper.", + "We disagree.", + "When considering the elements recited in claim 30 individually or as an ordered combination, we find nothing in the claim that is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.", + "The claimed invention does not improve another technology or technology field or effect a transformation or reduction of a particular article to a different state or thing like the claim at issue in Diamond V. Diehr, 450 U.S. 175 (1981).", + "The claim does not add a specific limitation other than that which is well-known in the field like the claim at issue in DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).", + "The claim does not effectuate an improvement in how the computer itself functions, like the claim at issue in Enfish, LLC V. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).", + "Although claim 30 does recite a system for evaluating changes in a networked environment, it is devoid of any functions that affect how the networked environment operates.", + "Indeed, we see nothing in claim 30 that goes beyond generally linking the use of the abstract idea to a particular technological environment and applying it using a computer.", + "Therefore, based on the foregoing, we conclude claim 30 does not recite any element or combination of elements such that claim 30 amounts to significantly more than the abstract idea itself.", + "Appellants do not demonstrate error in the rejection of claim 30 as being directed to a patent-ineligible abstract idea.", + "Accordingly, we sustain the rejection of claim 30 under 35 U.S.C. 6 101.", + "Appellants' argument does not demonstrate error in the Examiner's rejection of claim 21 because it is not commensurate with the rejection as explained by the Examiner.", + "We do not identify any error in the Examiner's reliance on Montagna's 's result status filter link, in combination with McKay's s change log database (McKay, Fig. 3) to teach the database and filter limitation.", + "In other words, the Examiner concluded the articulated combination of Montagna and McKay is \"[the combination of familiar elements according to known methods , \u00b7 \u00b7 [that] does no more than yield predictable results.\" \" KSR Int 7 Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007), and can be implemented by a person of ordinary skill in the art, id. at 417, - an obvious variation.", + "The Examiner has articulated a reason to combine that is reasonable on its face, consistent with controlling law, and has rational underpinnings drawn from evidence in the record.", + "Appellants' conclusory argument points to no specific failing in the Examiner's rationale for combining Montagna and McKay.", + "Such lawyer's s arguments and conclusory statements, unsupported by factual evidence, are entitled to little probative value.", + "For the foregoing reasons we sustain the rejections of claim 21 and claims 23-25 and 29, which depend from claim 21 and were not separately argued with particularity", + "Appellants' argument does not demonstrate Examiner error because it is not commensurate with either the claim or the rejection articulated by the Examiner.", + "The Examiner broadly, but reasonably, construes \"a configuration\" to encompass configuration information. Id.", + "In other words, the Examiner is relying on the side by side display of two values of configuration information and associated time stamps presented in a single row of Montagna's Figure 7.", + "We agree with the Examiner.", + "For the foregoing reasons, we sustain the rejection of claim 26 and claim 28, which depends from claim 26 and was not separately argued with particularity.", + "We agree with Appellants.", + "Although, as discussed supra regarding claim 26, Appellants incorrectly focus on the differences between two rows of Montagna's 's Figure 7, their argument is equally applicable the two values in a single row of Figure 7 relied upon by the Examiner.", + "Although the Examiner is correct Montagna teaches automatically identifying and characterizing differences between snapshots (see Ans. 24-25), the Examiner does not explain how those identifications and characterizations are reflected in the side by side display of configuration information of Figure 7.", + "Further, although the Examiner is correct that a user could identify differences from the side by side display of configuration information, that falls short of the recited claim limitation, which requires actually automatically marking and characterizing the differences.", + "For the forgoing reasons we do not sustain the rejection of claim 27.", + "We agree with Appellants.", + "Therefore a display of a topology of changes to a network environment requires displaying the physical or logical arrangement of the changes. See, e.g., Spec. Fig. 6 (item 620).", + "The Examiner appears to have conflated \"topology\" with \"configuration.\" See Ans. 30.", + "Although it is true that \"topology\" is a specific form of **configuration information,' the teaching of displaying configuration information, generally, does not, without more, teach displaying that information as a topology.", + "We have reviewed the cited passages of Montagna and McKay and find nothing that teaches or suggests displaying anything in the form of a topology.", + "Montagna does teach additional tabs in the GUI illustrated in Figure 8 (e.g., \"configuration\"). but provides no information as to the form the displayed information would take when those tabs are selected.", + "For the foregoing reasons we do not sustain the rejection under 35 U.S.C. S 103(a) of claim 30 and claims 31-35,3 which depend from claim 30", + "The Examiners findings, conclusions, and explanations, and the Appellants\" arguments regarding the CI-level topology limitation are substantially similar to those for the topology of network changes limitation of claim 30. Compare Final Act. 18, with id. at 15; compare Ans. 30, with id. at 27-28; compare Br. 18, with id. at 16-17.", + "We agree with Appellants for substantially the same reasons as set forth supra regarding claim 30.", + "Accordingly, we do not sustain the rejections of claim 36 and claims 37-40, which depend form claim 36." + ] +} \ No newline at end of file diff --git a/opinion_split/2017002346_DECISION.json b/opinion_split/2017002346_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c9f7beb136d380945e8e37d2b03bff4303c4c143 --- /dev/null +++ b/opinion_split/2017002346_DECISION.json @@ -0,0 +1,28 @@ +{ + "appellant_arguments": [ + "Appellants argue the Examiner erred in finding the claims are patent ineligible under 35 U.S.C. 8 101, because the *[c]laim[s] were not directed to an[y] abstract ideas as they solve an internet-centric problem of trust and more specifically the manipulation of recommendations transmitted over the internet to benefit persons with a conflict of \"interest.\" App. Br. 12.", + "Appellants refer to publications showing \"the importance of using technology reflected in the claims to a number of internet-business models,\" as providing **evidence that the [claimed] solution is necessarily rooted in computer technology.\" App. Br. 12.", + "Appellants argue \"the operation of the claims transforms the recommendations into something functionally very different, which are claims that can be relied on, because, as stated by an expert above, if consumers can't rely on the content, then the service is of no value.' \" App. Br. 12 (quotations omitted).", + "Particularly, Appellants contend \"the claims provide a \u00b7 . function of validating the validity and source of the recommendations, while adding a number of other limitations.\" App. Br. 13." + ], + "examiner_findings": [], + "ptab_opinion": [ + "We have reviewed the Examiner's rejections in light of Appellants' arguments.", + "Any other arguments Appellants could have made but chose not to make are deemed to be waived. See 37 C.F.R. 6 41.37(c)(1)(iv).", + "We are not persuaded the Examiner erred; we adopt the Examiner's findings and conclusions as our own, and we add the following primarily for emphasis.", + "Accordingly, we summarily affirm this rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (\"[T]he Board will not, as a general matter, unilaterally review . . \u00b7 uncontested aspects of the rejection.\"). \").", + "We select claim 101 as representative. See 37 C.F.R. $41.37(c)(1)(iv).", + "Appellants do not persuade us the Examiner errs in finding claim 101 is directed to *the abstract idea of providing recommendations for the purchase or lease of goods or services for a purchaser or lessor,\" which is *a fundamental economic practice, as well as a method of organizing [human] activities.' \" Final Act. 6, 24.", + "Rather than being directed to a technical problem, claim 101 solves the business/legal/financial problems of conflicts of interest arising from facilitating transactions. See, e.g., Spec. 6-7 (*systems and methods of the present disclosure eliminate or at least ameliorate possible economic conflict of \"interest,\" by *separating or not separating advice and/or selection of products and/or services from those who benefit to varying degrees \u00b7 \u00b7 . in such a way that conflicts of interests are, if not eliminated, at least ameliorated. \".", + "We agree with the Examiner that such concept is Abstract. 4 See Final Act. 22; see also Bilski V. Kappos, 561 U.S. 593, 643 (2010) (\"neither the Patent Clause, nor early patent law, nor the current S 101 contemplated or was publicly understood to mean that [better ways to conduct business] are patentable. \").", + "We have reviewed the submitted evidence and find it to be unpersuasive of Examiner error, because the claims are not directed to an internet-centric problem. See Final Act. 22-23.", + "Such process could be performed by a \"natural person\" (Spec. 17) or generic computer \"as is known to those skilled in the art\" (Spec. 27-28), and *after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.\" DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014); see also Ultramercial, Inc. V. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (\"use of the Internet does not transform an otherwise abstract idea into patent-eligible subject matter\").", + "Further, the problem of trustworthy recommendations pre-dates the internet.", + "Appellants' arguments focus on the recitations of the internet in claim 101; however, Appellants do not identify ways in which the claim provides an improvement to the relevant technology. See App. Br. 12-13.", + "Instead, we agree with the Examiner that \"the instant claims provide a generically computer-implemented solution to a business-related or economic problem and are thus incomparable to the claims at issue in DDR.\" Ans. 6; see also DDR Holdings, 773 F.3d at 1257 (Finding the claims at issue were *necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. \"); compare Spec. 13 (representative systems and representative methods \u00b7 . . to assist individuals including consumers in the lease or purchase of products or services \u00b7 [are] through a facilitator 14 which may be a natural person or a machine, such as, for example, a computer or equivalent. \").", + "Appellants do not persuade us that validating recommendations transforms the nature of the claims.", + "Rather, we find the limitations, including \"insuring \u00b7 \u00b7 independent of at least one person who will profit\" are part of the abstract idea itself.", + "We agree with the Examiner that claim 101 *doles] not contain any limitations either individually or as an ordered combination that transform the claim[] into a patent eligible application. * Final Act. 22-23.", + "Accordingly, we are not persuaded the Examiner erred in finding claim 101 patent ineligible." + ] +} \ No newline at end of file diff --git a/opinion_split/2017002843_DECISION.json b/opinion_split/2017002843_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..e368aa1572c4cf0c383c2b413223b7d4da4e3184 --- /dev/null +++ b/opinion_split/2017002843_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "Second, the Examiner cites Cho's s paragraphs 25 and 77-79 for teaching the disputed claim limitation.", + "See Final Act. 4; Ans. 3-4, 11." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's s rejection in light of Appellants' contentions and the evidence of record.", + "We concur with Appellants' contention that the Examiner erred in finding Krikorian and Cho collectively teach \"receiving, by the wrapper module, a user selected subset of the captured frames for manipulation by the user.\" as recited in independent claim 1 (emphasis added).", + "First, the Examiner asserts the italicized claim limitation merely states an intended use, but does not provide any reasoning.", + "We disagree.", + "Claim 1 is a method--not a product--claim, and Schreiber'.s intended-use doctrine is inapplicable here.", + "In any event, the Examiner has not established \"receiving, by the wrapper module, a user selected subset of the captured frames for manipulation by the user\" (emphasis added) merely constitutes intended use, and should not have patentable weight.", + "However, \"the image analyzing unit 270\" is a part of \"the image processing apparatus 200\" (Cho I 66), and is not a user.", + "Therefore, the Examiner has not explained why the cited Cho portions teach \"a user selected subset of the captured frames for manipulation by the user,\" as required by the claim.", + "Further, as applied by the Examiner, the teachings of Krikorian do not remedy the deficiencies of Cho.", + "Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner'.s rejection of claim 1.", + "Independent claim 15 recites a claim limitation that is substantively similar to the disputed limitation of claim 1.", + "Therefore, for similar reasons, we reverse the Examiner'.s rejection of independent claim 15.", + "We also reverse the Examiner's rejection of corresponding dependent claims 2-14 and 16-20.", + "While the Examiner cites additional references for some dependent claims, he has not shown the additional references overcome the deficiency of the base combination of Krikorian and Cho, as discussed above regarding the rejection of claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2017003321_DECISION.json b/opinion_split/2017003321_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..702cc3a83f5360b387303e189685d0ccfbc29adf --- /dev/null +++ b/opinion_split/2017003321_DECISION.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "Appellants state in the Reply Brief that the Examiner's determination regarding the failure of claim 10 to recite a controller *represents a new line of argument by the Examiner not previously presented in prosecution, and \"[ilf the position of the Office is that a controller, particularly programmed with the logic of [Appellants]] claims, would overcome the art, this could easily have been added to [Appellants'] claims via amendment. \" Reply Br. 3." + ], + "examiner_findings": [ + "The Examiner maintains the following rejections:", + "A. The rejection of claims 10, 12, 13, 16, and 17 under 35 U.S.C. S 103(a) as being unpatentable over Stimming? in view of Saito*;", + "B. The rejection of claims 11 and 21 under 35 U.S.C. 103(a) as being unpatentable over Stimming and Saito and further in view of Saunders\"; and", + "C. The rejection of claim 14 under 35 U.S.C. & 103(a) as being unpatentable over Stimming and Saito and further in view of Burch.", + "As pointed out by the Examiner, claim 10 does not recite a controller. Ans. 10." + ], + "ptab_opinion": [ + "STATEMENT OF CASE Pursuant to 35 U.S.C. 8 134(a), Appellants? appeal from the Examiner's decision to reject claims 10-14, 16, 17, and 21.", + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We AFFIRM.", + "The claims are directed to a fuel cell system including a fuel cell stack, a battery, and an electrical converter.", + "The issue on appeal concerns the electrical converter.", + "Claim 10, with key language highlighted, is illustrative: 10. A fuel cell system comprising: a fuel cell stack including a plurality of fuel cells each having an anode electrode and cathode electrode; a battery; and an electrical converter electrically coupled to the battery, said electrical converter being configured to assist in providing an oxidation potential to the fuel cell stack by converting electrical power from the battery at a time effective to oxidize contaminants on the cathode or anode electrodes in the fuel cell stack, wherein the effective time is a time where an amount of hydrogen in the fuel cell stack is known so as to define a reference potential within the stack and there are no system loads drawing power from the fuel cell stack, said oxidation potential being the reference potential plus a voltage potential provided by the electrical converter. Appeal Br. 19 (claims appendix) (emphasis added).", + "6 OPINION Appellants' claim 10 recites that the electrical converter is *configured to assist in providing an oxidation potential to the fuel cell stack by converting electrical power from the battery at a time effective to oxidize contaminants on the cathode or anode electrodes in the fuel cell stack\" and then defines the effective time.", + "The first issue to be resolved is the limiting nature of the \"configured to assist in \u00b7 \u00b7 \" recitation of the claim.", + "The question is: How does the electrical converter assist in providing an oxidation potential and how does the functional recitation regarding the providing step and its timing limit the structure of the electrical converter?", + "In considering the limiting nature of the \"configured to assist in \u00b7 \u00b7 \" recitation, we keep in mind that 35 U.S.C. $ 101 requires the subject matter of a claim fit into one of the statutory classes of invention, i.e., process, machine, manufacture, or composition of matter.", + "In the context of the claim before us the system is a \"machine\" as it is \"a concrete thing, consisting of parts, or of certain devices and combination of devices.\" In re Nuijten, 500 F.3d. 1346, 1355 (Fed. Cir. 2007) (quoting Burr V. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863).", + "According to Appellants\" Specification, the electrical converter is either: (1) a power converter that converts the high voltage battery power from the battery 22 to a voltage potential suitable for the oxidation process; or (2) a boost converter that converts a low voltage to a high enough voltage portion to provide the oxidation. Spec. I 27.", + "The Specification does not disclose that the electrical converter itself determines the timing of the power conversion or boost conversion.", + "Instead, the fuel cell system includes a voltage monitoring circuit 48 and a system controller 44 that controls the operation of the fuel cell system 10 and receives the voltage values from the voltage monitoring circuit 48. Spec. I 23,", + "Electrical converter 34 is controlled by controller 44. Spec. I 25.", + "Controller 44 monitors the maximum and minimum cell voltages provided by the voltage monitoring circuit 48 and only allows the converter 34 to provide the oxidation potential to the fuel cell stack 12 when the maximum cell voltage, i.e., the fuel cell with the highest voltage, is below a maximum cell voltage threshold and the minimum cell voltage, i.e., the fuel cell with the lowest voltage, is above a minimum cell voltage threshold. Spec. I 26.", + "Although the electrical converter is configured to assist the controller in performing the functions recited in claim 10, the electrical converter structure remains that of an electrical converter.", + "Thus, the functional recitation regarding the assistance in claim 10 does not patentably distinguish the structure of the electrical converter from the electrical converter structures known in the prior art.", + "We do not decide whether such an amendment would overcome the prior art, however, we do point out that language directed to a controller programmed with the logic disclosed in the Specification would, at least, provide a structural limitation.", + "\"If a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.\" In re Bernhart, 417 F.2d 1395 at 1400 (CCPA 1969).", + "For the above reasons, none of Appellants' arguments are persuasive of reversible error.", + "Because the claims sweep in the structure of the prior art, we sustain the rejections of the Examiner." + ] +} \ No newline at end of file diff --git a/opinion_split/2017003336_DECISION.json b/opinion_split/2017003336_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ff541d0499d65d7eeba764b7e9572dd4319eb332 --- /dev/null +++ b/opinion_split/2017003336_DECISION.json @@ -0,0 +1,53 @@ +{ + "appellant_arguments": [ + "Appellant argues that the Examiner errs by finding Muffly discloses the drain limitation because the Examiner is incorrect that element 36 comprises a portion of a chute, moreover, the Examiner is incorrect that element 96 is a drain connected to the chute. Br. 7-8." + ], + "examiner_findings": [ + "1. The Examiner rejected claims 1, 2, 11, and 12 under 35 U.S.C. 8 103(a) as unpatentable over Muffly (US 2,866,322, iss. Dec. 30, 1958) and Buchser (US 5,077,985, iss. Jan. 7, 1992).", + "II. The Examiner rejected claims 3, 5, and 6 under 35 U.S.C. 6 103(a) as unpatentable over Muffly, Buchser, and Gould (US 3,146,601, iss. Sept. 1, 1964).", + "III. The Examiner rejected claim 4 under 35 U.S.C. , 103(a) as unpatentable over Muffly, Buchser, and Brown (US 3,667,249, iss. June 6, 1972),", + "IV. The Examiner rejected claim 7 under 35 U.S.C. 8 103(a) as unpatentable over Muffly, Buchser, and Ducharme (US 2010/0218518 A1, pub. Sept. 2, 2010).", + "V. The Examiner rejected claims 8-10 under 35 U.S.C. $ 103(a) as unpatentable over Muffly, Buchser, Brown, and Smith (US 2009/0211292 A1, pub. Aug. 27, 2009).", + "VI. The Examiner rejected claims 13, 14, and 18 under 35 U.S.C. 9 103(a) as unpatentable over Muffly, Brown, and Buchser.", + "VII. The Examiner rejected claims 15 and 16 under 35 U.S.C. 6 103(a) as unpatentable over Muffly, Brown, Buchser, and Gould.", + "VIII. The Examiner rejected claim 19 under 35 U.S.C. 8 103(a) as unpatentable over Muffly, Brown, Buchser, and Ducharme.", + "IX. The Examiner rejected claims 17 and 20 under 35 U.S.C. 9 103(a) as unpatentable over Muffly, Brown, Buchser, and Smith.", + "The Examiner determines claims 1, 2, 11, and 12 would have been obvious in view of Muffly and Buchser. Final Act. 3-5,", + "For independent claim 1, the Examiner finds that Muffly discloses the chute limitation and the drain limitation. Id. at 3-4 (citing Muffly 5:15-16, Figs. 1, 2).", + "To support these findings, the Examiner relies principally on Figure I of Muffly reproduced below:", + "For the chute and drain limitations, the Examiner finds in Figure 1 of Muffly that elements 36 and 38 show \"a chute, \" element 28 shows \"a bucket for storing ice,' element 36 shows \"an ice dispenser,\" and a \"conduit from pump 92\" (i.e., element 96) shows \"a drain. Final Act. 3-4.", + "This is because the Examiner relies on the connection between element 96 and element 36 to disclose \"a drain connected to the chute, as the drain limitation in claim I recites.", + "The Examiner determines claims 13, 14, and 18 would have been obvious in view of Muffly, Brown, and Buchser. Final Act. 11-14.", + "For independent claims 13 and 18, the Examiner again finds that elements 36 and 38 in Muffly's Figure 1 disclose the claimed chute and that element 36 is also the ice dispenser. Id. at 11, 13.", + "And like claim 1. the Examiner finds element 96 and its connection with element 36 discloses a drain extending from the chute. Id." + ], + "ptab_opinion": [ + "We have jurisdiction over this appeal under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "Notably, the Examiner identifies element 36 as both a component of the claimed chute and as being the claimed ice dispenser.", + "Also notable is that element 96 in Figure 1 connects to element 36 only and does not connect to element 38.", + "Appellant's s argument is persuasive and, for the following reasons, we agree the Examiner's factual findings are flawed.", + "It is clear from claim 1 that the chute is structurally separate from the bucket with an opening at its bottom and the ice dispenser.", + "\"Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.\" Becton, Dickinson & Co. V. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citations and quotations omitted).", + "There is nothing in claim 1 to suggest that the chute and ice dispenser can be the same structure.", + "See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (\"In the absence of any evidence to the contrary, we must presume that the use of \u00b7 \u00b7 different terms in the claims connotes different meanings. \").", + "The Specification confirms further that the chute and ice dispenser are understood properly to be separate structures. Spec. 4-5, Figs. 2-5.", + "Beyond pointing to Figure I of Muffly, the Examiner offers no evidence or technical reasoning to explain why a skilled artisan would consider element 36 as part of the chute.", + "In view of what Muffly describes Figure 1 to disclose, element 36 may be viewed as an ice dispenser, but there is not sufficient evidence to support the Examiner's finding that it is also a component of the chute.", + "The Examiner' s assertion that the chute and the ice dispenser could be the same structure would render claim I nonsensical.", + "If the chute and ice dispenser are one and the same element, namely storage tank 36 and chute 38, then the chute must have a second end \"disposed at\" itself, a physical impossibility.", + "See Becton, Dickinson & Co., 616 F.3d at 1255 (*If the hinged arm and the spring means are one and the same, then the hinged arm must be \"connected to\" itself and must \"extend between\" itself and a mounting means, a physical impossibility. \").", + "On this record, we are persuaded that the Examiner's reliance on element 36 in Figure I of Muffly as forming the claimed chute was an error.", + "This error contaminates the Examiner's finding that Muffly discloses the claimed drain.", + "Because element 36 is not a chute, there is insufficient evidence to support the Examiner's finding that Muffly discloses the recited drain limitation.", + "As a result, the Examiner has not made a persuasive showing that the prior art discloses each of the limitations claim 1 recites.", + "Therefore, we do not sustain the Examiner's obviousness rejection of claim 1, or claims 2, 11, and 12 depending therefrom.", + "The Examiner adopts the above errors into the rejections of dependent claims 3-10, which are the subject of Rejections II-V. See Final Act. 5-9.", + "The Examiner does not rely on Gould, Brown, Ducharme, or Smith to the cure the deficiencies discussed above (see supra, Rejection 1) regarding claim 1.", + "Therefore, we do not sustain the Examiner's rejections of claims 3- 10.", + "Thus, for the same reasons discussed above for claim 1 (see supra, Rejection 1), the Examiner* reliance of element 36 as forming \"the claimed chute was error and, as a result, the Examiner has not made a persuasive showing that the prior art discloses each of the limitations claims 13 and 18 recite.", + "Therefore, because claim 14 depends from claim 13, we do not sustain the Examiner' s rejection of claims 13, 14, and 18.", + "The Examiner does not rely on Gould, Brown, Ducharme, or Smith to the cure the deficiencies discussed above regarding independent claims 13 and 18 (see supra, Rejection VI).", + "Therefore, we do not sustain the Examiner's rejections of claims 15-17, 19, and 20." + ] +} \ No newline at end of file diff --git a/opinion_split/2017003425_DECISION.json b/opinion_split/2017003425_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7d42f4da47dfbe3fc650fb70cabfdaadef1e4924 --- /dev/null +++ b/opinion_split/2017003425_DECISION.json @@ -0,0 +1,41 @@ +{ + "appellant_arguments": [ + "Appellant claims a method of forming structures comprising: forming a radiation-imageable material (20) over a semiconductor substrate (12); photolithographically patterning the radiation-imageable material into separated features (22, 24, and 26) having gaps therebetween; forming a second material (40) on the features and gaps wherein the second material comprises an inorganic material (e.g., silicon or germanium) dispersed in a cross-linkable organic composition; and treating the resulting assembly so as to alter by cross-linking certain regions of the second material and to remove the features and portions of the second material thereby leaving at least one structure of the altered regions of the second material (independent claim 1, Figs. 1-6; see also remaining independent claims 7, 16, and 19).", + "The structure may comprise a tube (dependent claim 13) or non-tubular pedestals (dependent claim 14).", + "A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below.", + "1. A method of forming structures, comprising: forming a radiation-imageable material over a semiconductor substrate; photolithographically patterning the radiation- imageable material into at least two separated features; the separated features having one or more gaps between them; forming a second material over the at least two separated features, the second material being directly against the radiation imageable material, and across the one or more gaps between the at least two separated features, the second material comprising one or more components dispersed in an organic composition that is cross-linkable upon exposure to acid, the one or more components consisting of inorganic material; baking the features having the second material thereover to release at least one substance which alters the second material, the altering comprising forming crosslinks within the organic composition; the baking transferring the at least one substance from the features into regions of the second material proximate the features to alter said regions while leaving other regions of the second material non- altered; the non-altered second material being selectively removable relative to the altered second material, and the features being selectively removable relative to the altered material; treating the semiconductor substrate to remove the non-altered regions of the second material relative to the altered regions of the second material, the treating retaining portions of the altered regions of the second material along the sidewalls and over the top of the features; after the treating, removing portions of the altered regions of the second material over the top of the features; and selectively removing the features relative to the altered regions of the second material to leave at least one structure of the altered regions of the second material.", + "App. Br. 17-18 (Claims Appendix).", + "Appellant challenges the Examiner's obviousness conclusion by arguing that \"there is no evidence that the inclusion of these components [i.e., Cheng's inorganic materials] in any cross-linkable material [including the cross-linkable RELACS of Subramanian] would confer the improved etch resistance to any material other than the polymer materials disclose[d] by Cheng.\"", + "App. Br. 13.", + "Appellant contends that this rejection is improper because \"no motivation is provided for the actual *shape* recited in claim[s] 13 and 14.\"", + "App. Br. 16." + ], + "examiner_findings": [ + "The Examiner rejects claims 1-12 and 16-20 under 35 U.S.C. 9 103(a) as unpatentable over Subramanian et al. (US 6,383,952 B1, iss. May 7, 2002, hereinafter **Subramanian*) in view of Kondoh et al. (US 2005/0130068 A1, pub. June 16, 2005, hereinafter *Kondoh*) and Cheng et al. (US 2009/0212016 A1, pub. Aug. 27, 2009, hereinafter \"Cheng\").", + "Final Action 2-4.2", + "The Examiner concludes, inter alia, that it would have been obvious to provide the cross-linkable organic composition (i.e., RELACS polymer) of Subramanian with a dispersed inorganic material such as silicon or germanium in order to improve etch resistance in view of Cheng's teaching that such inorganic materials enhance the etch resistance of polymers.", + "Id. at 4 (citing Cheng I 68).", + "The Examiner also rejects claims 13 and 14 under 35 U.S.C. 6 103(a) as unpatentable over Subramanian in view of Kondoh and Cheng and further in view of Nozaki et al. (US 2007/0224537 A1, pub. Sept. 27, 2007, hereinafter **Nozaki\").", + "Final Action 4-5.", + "The Examiner concludes that it would have been obvious \"to have formed tubular or pedestal cross-linked patterns [as required by claims 13 and 14] in the process of Subramanian, Kondoh and Cheng, as suggested by Nozaki, because Nozaki teaches that a cross[-]linking process can be used to form differently shaped patterns, depending on what is desired in the final product.\"", + "Id. at 5.", + "Based on this finding, the Examiner concludes that it would have been obvious to form such tubular or pedestal shapes or patterns in the modified process of Subramanian *depending on what is desired in the final product.\"", + "Id." + ], + "ptab_opinion": [ + "We sustain this rejection for the reasons given in the Final Action, the Answer, and below.", + "In a prior appeal, Appellant presented a corresponding argument against this same obviousness conclusion.", + "In a Decision (dated January 26, 2015, \"Dec.\"), we found this prior-appeal argument to be unpersuasive \"because Appellant fails to embellish it with an explanation why the inorganic components of Cheng would not be expected to provide etch resistance to the cross-linkable organic RELACS material of Subramanian.'", + "\" Dec. 4-5.", + "We explained in our prior Decision that \"[blased on the record before us, one having ordinary skill in this art reasonably would have expected that Cheng's inorganic components would provide Subramanian's cross-linkable material with the desirable quality of etch resistance.\"", + "ld. at 5.", + "For analogous reasons, the above quoted argument in the current appeal lacks persuasive merit.", + "Specifically, Appellant once again fails to embellish this argument with any scientific rationale or evidence showing that the inorganic components of Cheng, while providing etch resistance to Cheng's polymers, would not be reasonably expected to provide etch resistance to Subramanian's 's cross-linkable RELACS polymer.", + "As a consequence, the record before us continues to reflect that an artisan would have provided the RELACS polymer of Subramanian with Cheng's inorganic components based on a reasonable expectation of achieving improved etch resistance.", + "See Pfizer, Inc. V. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (\"[T]he expectation of success need only be reasonable, not absolute. \").", + "Appellant's contention is unpersuasive because it is based on an inaccurate premise.", + "The Examiner expressly finds that Nozaki teaches or would have suggested the tubular and pedestal shapes of claims 13 and 14 (Final Action 5), and Appellant does not contest this finding.", + "Therefore, contrary to the premise of Appellant's contention, the Examiner explains with reasonable clarity that an artisan would have been motivated to provide a tubular or pedestal shape as claimed based on the desire for such a shape in the final product of Subramanian's 's modified process.", + "For this reason, we also sustain the 35 U.S.C. 8 103 rejection of claims 13 and 14." + ] +} \ No newline at end of file diff --git a/opinion_split/2017003719_DECISION.json b/opinion_split/2017003719_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..00c0855a2bb3e90726c0dfd6b6bb9ce9052fc6fc --- /dev/null +++ b/opinion_split/2017003719_DECISION.json @@ -0,0 +1,124 @@ +{ + "appellant_arguments": [ + "Appellants present the following principal arguments:", + "i. The claims are not directed to an abstract idea. See App. Br. 8- 1 11: see also Reply Br. 2-5.", + "\"[T]he claimed invention clearly does not recite fabstract mental processes of [a material handling device operator operating a machine], or *mirror the mental processes that a [material handling device operator] performs,\" rendering SmartGene inapplicable.\" App. Br. 10.", + "\"[T]he claimed invention creates neither a contractual relationship nor buySAFE[] 's transaction performance guaranty.", + "Consequently, the final Office Action's reliance on buySAFE is entirely misplaced.\" App. Br. 11.", + "ii.. The claims recite significantly more than an abstract idea. See App. Br. 11-14; see also Reply Br. 5-7.", + "The claims do not preempt managing the behavior of the operators. See App. Br. 12.", + "The claims define the computer's participation. See App. Br. 13.", + "The claims improve an existing technological process. See App. Br. 13.", + "The claims do not recite activities previously known to the industry. See App. Br. 13-14,", + "i. The prior art does not teach a competency and an associated minimum proficiency level value required for each action in each material handling stage, the competency relating to the action, and the associated minimum proficiency level value identifying a minimum level of proficiency for the competency selected from the plurality of proficiency level values [ranging from a least proficient value to a most proficient value] as recited in claim 1. See App. Br. 14-16.", + "D'Elena discloses an employee's proficiency rating, but \"is entirely silent with respect to requiring that a job assignment have a particular minimum proficiency rating.\" \" App. Br 15; see also Reply Br. 8 (\"D'Elena's *proficiency levels' are text-based descriptions\").", + "Roberts discloses employees having a particular skill level, but *is entirely silent with respect to defining *skill levels' as particular proficiency level values ranging from a least proficient value to a most proficient value.\" App. Br. 15; see also Reply Br. 8 (\"Similar to D'Elena's Sproficiency levels,' Roberts' *skill level' is a text-based description*\").", + "\"[T]his aspect of the obviousness rejection suffers from the influence of impermissible hindsight.\" App. Br. 15.", + "ii. The prior art does not teach if the competency and the associated minimum proficiency level value required for the action are satisfied by the competence profile for the second operator, communicate, over the network, an authorization to the material handling device to permit the first operator to perform the action using the material handling device as recited in claim 1. See App. Br. 16-17.", + "\"Ng simply discloses that an alarm/alert may be overridden by a supervisor badge-scan\" without verifying the supervisors proficiency level. App. Br. 16.", + "Appellants observe that rather than fitting together the existing pieces of a puzzle disclosed by these references, the final Office Action is impermissibly creating a new piece of the puzzle that is not disclosed by these references, i.e., *verifying a supervisor's proficiency level,' using the claimed invention as a roadmap. App. Br. 17." + ], + "examiner_findings": [ + "The Examiner concludes The claimed invention is directed to non-statutory subject matter because the claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.", + "The Claims are directed to the abstract idea of organizing human activities via an algorithm scheme.", + "The process of determining competencies, and overriding activities can be performed mentally or in a computer and it is similar to the kind of organizing human activity at issue in SmartGene.", + "Although the claims are not drawn to the same subject matter, the abstract idea of managing competency analysis is similar to the abstract idea of using rules to identify medical options (See SmartGene).", + "Furthermore, using systemic determination to alter party's interaction is similar to that of buySAFE.", + "Therefore, Applicant is claiming an abstract idea.", + "The additional elements or combination of elements in the claims other than the abstract idea per se amounts to no more than a mere instruction to implement the idea on a computer.", + "While the Claims further require a plurality of data processing/querying steps, these steps are generics computing steps.", + "For instance, the recited database is merely performing its generic data storing and communication function.", + "The claimed devices and computers are merely serving as a background framework to apply the abstract idea using their inherent and generic functions.", + "Viewing the claims as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Final Act. 9-10; see also Advisory Act. 2; Ans. 3-14.", + "The Examiner finds the combination of D'Elena, Roberts, Ng, and Jung teaches all limitations of claim 1. Final Act. 11-18.", + "In particular, the Examiner finds D'Elena teaches \"a competency and an associated minimum proficiency level value required for each action in each [job], the competency relating to the action, and the associated minimum proficiency level value identifying a minimum level of proficiency for the competency selected from the plurality of proficiency level values\" as recited in claim 1. See Final Act. 12-13, see also Ans. 15-17.", + "The Examiner finds Roberts teaches applying operator competency in a manufacturing environment (\"material handling stages\" as recited in claim 1). See Final Act. 13-14, see also Ans. 17-18.", + "In particular, the Examiner finds Ng teaches *if the competency and the associated minimum proficiency level value required for the action are satisfied by the competence profile for the second operator\" permit the first operator to perform the action as recited in claim 1. See Final Act. 16; see also Ans. 18-20.", + "The Examiner finds Jung teaches the devices coupled to a network (\"communicate, over the network, an authorization to the material handling device to permit the first operator to perform the action using the material handling device\" as recited in claim 1. See Final Act. 17-18; see also Ans. 20-21." + ], + "ptab_opinion": [ + "Appellants' claimed subject matter relates to *verifying the competence of operators at various stages of the manufacturing process.\" *, Spec. 1 1.", + "Claim 1 is illustrative and reproduced below:", + "1. A system, comprising: a plurality of material handling devices coupled to a network; a computer, coupled to a database, including one or more input/output (TO\") devices configured to receive information from a user and provide information to the user; a network interface in communication with the material handling devices; and a processing device configured to: set up and store, in the database, competence profiles for at least two operators in the manufacturing facility, the competence profiles including at least one competency and an associated proficiency level value, the competency relating to an operation, and the associated proficiency level value identifying a level of proficiency for the competency selected from a plurality of proficiency level values ranging from a least proficient value to a most proficient value; define and store, in the database, a plurality of material handling stages in the manufacturing facility, each stage including at least one action; define and store, in the database, a competency and an associated minimum proficiency level value required for each action in each material handling stage, the competency relating to the action, and the associated minimum proficiency level value identifying a minimum level of proficiency for the competency selected from the plurality of proficiency level values; set and store, in the database, whether an override is allowed for each action in each material handling stage, the override comprising allowing a particular action to be performed by an operator having a competence profile that does not include the competency and the associated minimum proficiency level value required for the particular action; during each material handling stage, prior to a first operator performing an action using one of the material handling devices: query the database to verify whether the competency and the associated minimum proficiency level value required for the action are satisfied by the competence profile for the first operator; and if the competency and the associated minimum proficiency level value required for the action are not satisfied by the competence profile for the first operator: query the database to check whether the override is allowed for the action; if the action has been set to allow the override: receive a request to override the competence check from a second operator; query the database to verify whether the competency and the associated minimum proficiency level value are satisfied by the competence profile for the second operator; and if the competency and the associated minimum proficiency level value required for the action are satisfied by the competence profile for the second operator, communicate, over the network, an authorization to the material handling device to permit the first operator to perform the action using the material handling device; and if the action has not been set to allow the override, communicate, over the network, a lack of authorization to the material handling device to prevent the operation of the material handling device by the first operator.", + "We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon.", + "Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "The 35 U.S.C. 8 101 REJECTION OF CLAIMS 1-11, 16, 17, 21, 22, 26-30, AND 32-36", + "A patent may be obtained for *any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.\" 35 U.S.C. .6 101.", + "The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. V. CLS Bank Int 7, 134 S.Ct. 2347, 2354 (2014); Gottschalk V. Benson, 409 U.S. 63, 67 (1972) (\"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. .\"", + "Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Services V. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012).", + "In Mayo, the Court stated that \"to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words *apply it. \". Mayo, 566 U.S. at 72 (citation omitted).", + "In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo *for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.\" Alice, 134 S.Ct. at 2355.", + "The first step in the analysis is to *determine whether the claims at issue are directed to one of those patent-ineligible concepts.\" Id.", + "If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims *individually and *as an ordered combination\" to determine whether there are additional elements that **transform the nature of the claim' into a patent-eligible application. \" Id. (quoting Mayo, 566 U.S. at 79, 78).", + "In other words, the second step is to \"search for an *inventive concept' -ie, an element or combination of elements that is *sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. \" Id. (quoting Mayo, 566 U.S. at 72-73), \"A claim that recites an abstract idea must include fadditional features' to ensure *that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]. \" Id. at 2357 (quoting Mayo, 566 U.S. at 77- 78).", + "The prohibition against patenting an abstract idea \"cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding *insignificant post[-]solution activity. .. Bilski V. Kappos, 561 U.S. 593, 610-11 (2010) (citation omitted).", + "The Court in Alice noted that **[s]imply appending conventional steps, specified at a high level of generality,' [was] not *enough* [in Mayo] to supply the finventive concept. \" Alice, 134 S.Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83, 77-78, and 72-73).", + "Step one: Are the claims at issue directed to a patent-ineligible concept?", + "Appellants' Specification describes the invention as follows:", + "The present disclosure describes systems, methods, and associated software for verifying the competence of an operator in a manufacturing facility.", + "In one embodiment, among many, a system for verifying operator competence includes one or more input/output devices, which are configured to receive information from a user and provide information to the user.", + "The system also includes a processing device, which is configured to enable the user to set up a competence profile of an operator in the manufacturing facility.", + "The processing device is also configured to enable the user to define jobs related to handling sensitive material at multiple material handling stages in the manufacturing facility.", + "In addition, the processing is configured to assign training to the operator as needed to meet industry guidelines and enable the user to define competence levels required at each multiple material handling stage. Spec. 1 5.", + "Claim 1 is more specific than the description above, and is directed to storing in a database: competence profiles for operators, competency requirements for each action in each material handling stage, whether override is allowed for each action in each material handling stage; and prior to an operator performing an action: checking the operator's competency against the requirements for the action, and if the requirements are not satisfied, checking whether or not override is allowed for the action, and checking an override requester's 's competency against the requirements for the action.", + "Put another way, claim 1 is directed to comparing operator profile and competency requirements using rules to identify whether or not the operator is permitted to perform an action.", + "Thus, we conclude claim 1's various limitations are, like SmartGene, comparing new and stored information and using rules to identify options. See Final Act. 9: see also Ans. 6-8,", + "Contrary to Appellants' argument (i), we conclude the claim does recite abstract mental processes that mirror the mental processes that a material handling device operator performs, and SmartGene is on point.", + "Put another way, operator profile and competency requirements are compared using rules to identify whether or not the operator is permitted to perform an action.", + "Performing and enforcing the processes on a computer does not make those processes less abstract.", + "Step two: Is there something else in the claims that ensures they are directed to significantly more than a patent-ineligible concept?", + "Because claim 1 is directed to an abstract idea, the question to be settled next, according to Alice, is whether claim I recites an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than the abstract idea.", + "Claim 1 recites \"a plurality of material handling devices coupled to a network\" and \"a computer.\"", + "The claimed elements are generic, purely conventional elements.", + "Appellants' Specification confirms this. See Spec. 11 29-36.", + "For example, Appellants\" Specification discloses \"Processing device 12 may be a general-purpose or specific-purpose processor or microcontroller.\" Spec. I 30.", + "Thus, the claims do no more than require generic computer elements to perform generic computer functions, rather than improve computer capabilities.", + "Put another way, looking beyond the abstract idea of comparing operator profile and competency requirements using rules to identify whether or not the operator is permitted to perform an action, we do not see any inventive concept in the remaining claim limitations individually or in combination. See Final Act. 4-5, 9-10; Advisory Act. 2; Ans. 8-10.", + "Claiming various combinations of conventional computers is not enough to transform the idea into a patent- eligible invention. See Alice, 134 S.Ct. at 2358 (\"[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. \").", + "Regarding Appellants' arguments (ii) relating to preemption, these arguments do not show any error in the Examiner's findings and conclusions.", + "We recognize as a threshold matter that the Supreme Court has described \"the concern that drives this exclusionary principle [to statutory patentability] as one of pre-emption.\" See Alice, 134 S. Ct. at 2354.", + "Characterizing preemption as a driving concern for patent eligibility, however, is not the same as characterizing preemption as the sole test for patent eligibility.", + "As our reviewing court has explained: \"questions on preemption are inherent in and resolved by the [section] 101 analysis,\" and, although \"preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.\" Ariosa Diagnostics, Inc. V. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); ef OIP Techs., Inc. V. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (\"[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract\").", + "Regarding Appellants' further arguments (ii), as discussed above, the various steps of the process performed by the computer are all part of the abstract idea of operator profile and competency requirements being compared using rules to identify whether or not the operator is permitted to perform an action, and performing the processes on a computer does not make those processes less abstract.", + "In addition, we do not agree that the claims improve an existing technological process, nor do we agree that the claims recite activities previously unknown to the industry, because the claims are directed to an abstract idea with the various steps of the processes all being part of the abstract idea, performed using conventional computers. See Spec. 11 29-36.", + "Appellants are reminded that \"the *inventive concept? [under step two of the MayolAlice test] cannot be the abstract idea itself\" and *Berkheimer \u00b7 \u00b7 \u00b7 leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged *inventive concept' is the abstract idea.\" Berkheimer V. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring).", + "\"It has been clear since Alice that a claimed invention 's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention *significantly more' than that ineligible concept.\" BSG Tech LLC V. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).", + "We therefore agree with the Examiner that the computer functions recited in the claims were in fact generic, and are met by numerous case law establishing that using a generic computer to expedite and automate processes traditionally performed manually or that are otherwise abstract is a well-understood, routine, and conventional use of such computers. Ans. 9-10, see, e.g., Intellectual Ventures I LLC V. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an intermediary computer to forward information); Bancorp Servs., L.L.C. V. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (\"The computer required by some of Bancorp's claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims. \").", + "Appellants are further reminded that \"relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.\" OIP Techs., Inc. V. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2359 (\"use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions\" is not an inventive concept)).", + "Therefore, the functions recited in claim 1 do not add any meaningful limitations beyond generally linking the abstract idea to the particular technological environment.", + "We sustain the Examiner's rejection under 35 U.S.C. 6 101 of claim 1.", + "We also sustain the Examiner's rejection under 35 U.S.C. 8 101 of claims 3- 5, 7-11, 14, 16-18, and 20-26, which are not separately argued with particularity. See App. Br. 7-14; see also Reply Br. 2-7.", + "The Obviousness REJECTION of CLAIMS 1-11, 16, 17, 21, 22, 26-30, AND 32-36 OVER D'Elena, Roberts, Ng, AND Jung", + "Appellants' arguments do not show any error in the contested findings of the Examiner.", + "We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's s Answer in response to Appellants* Appeal Brief.", + "We concur with the conclusions reached by the Examiner.", + "We highlight the following for emphasis.", + "D'Elena, for example, discloses A system and method for skill proficiencies acquisitions is presented.", + "Job roles are compared with employee skill profiles to determine which skills a corresponding employee needs developed.", + "A skill map is generated which includes skill development activity options.", + "Skill development activity options may include attending a seminar, reading a book, or participating in a mentoring program.", + "An employee selects a skill development activity that is suitable to his work routine and learning style.", + "A skill proficiency rating is determined after the conclusion of the skill development activity.", + "The new skill and proficiency rating are recorded in the employee's skill profile. D'Elena Abstract.", + "D'Elena further discloses *Skill profile 140 may include levels of proficiency for individual skills (i.e. acquired, applied, mastered, etc.).\" D'Elena I 39.", + "Thus, D'Elena teaches competency profiles for operators.", + "D'Elena further discloses *Skill profiles (skill profile 140) of each employee may be compared with a *java application programmer' job role.\" D'Elena 1 40.", + "Thus, D'Elena teaches competency profiles for jobs (actions).", + "Regarding values ranging from a least proficient value to a most proficient value, D'Elena describes a skill level as no skill, acquired, applied, and mastered. D'Elena Fig. 12.", + "Thus, D'Elena teaches competency selected from a plurality of proficiency level values ranging from a least proficient value to a most proficient value.", + "Thus, D'Elena teaches \"a competency and an associated minimum proficiency level value required for each action in each [job], the competency relating to the action, and the associated minimum proficiency level value identifying a minimum level of proficiency for the competency selected from the plurality of proficiency level values\" ranging from a least proficient value to a most proficient value as recited in claim 1.", + "Regarding the \"job\" being a *material handling stage\" as recited in claim 1, Roberts discloses The scheduling method 500 according to the invention is disclosed below in the context of providing pharmacy services, namely fulfilling and dispensing drug prescriptions, and is particularly suited for scheduling/staffing a stage-by-stage or compartmentalized workflow or process, such as that described above with respect to processing drug prescriptions, whereby various stages of the workflow/process require different skill levels. Roberts 22:36-43,", + "Thus, Roberts discloses the \"job\" being a *material handling stage\" as recited in claim 1.", + "Thus, we find the combined disclosures of D'Elena and Roberts teach \"a competency and an associated minimum proficiency level value required for each action in each material handling stage, the competency relating to the action, and the associated minimum proficiency level value identifying a minimum level of proficiency for the competency selected from the plurality of proficiency level values\" ranging from a least proficient value to a most proficient value as recited in claim 1.", + "Contrary to Appellants' argument (i), as explained above, D'Elena does teach a job rating. See D' D'Elena I 40 (java application programmer job role establishes a minimum proficiency level value required for the role).", + "Regarding skill ranges, as explained above, D'Elena teaches the recited proficiency level values. D'Elena Fig. 12 (no skill or acquired is least proficient, mastered is most proficient).", + "We likewise disagree with Appellants that the Examiner' s proposed combination of references is a product of impermissible hindsight because the Examiner articulates a reason for combing D'Elena and Roberts that is rational on its face and supported by evidence drawn from the record. See Final Act. 14 (citing Roberts 6:55-60),", + "Further, contrary to Appellants' argument (ii), the prior art does teach if the competency and the associated minimum proficiency level value required for the action are satisfied by the competence profile for the second operator, communicate, over the network, an authorization to the material handling device to permit the first operator to perform the action using the material handling device as recited in claim 1.", + "Ng, for example, discloses \"If an operator is not authorized to handle an alarm/alert, he can override the restriction by getting the approval of any supervisor, in the form of a badge-scan.' Ng I 111.", + "Regarding the further aspect of verifying the supervisor's proficiency level, D'Elena teaches competency profiles for operators and competency profiles for jobs. D'Elena 11 39-40,", + "The argued claim limitation in Appellants' argument (ii) is taught when the teachings of the references are combined. See Final Act 16-17,", + "The Examiner articulates a reason for combing Ng with D'Elena and Roberts that is rational on its face and supported by evidence drawn from the record. See Final Act. 16-17; see also Roberts 9:60-63 (\"a registered pharmacist (RPh) must become involved to review the DUR 133 and to either override the issue or negative DUR 134 in the pharmacy's system or contact a prescriber/doctor 135 for further consultation.' )", + "We, therefore, sustain the Examiner's rejection of claim 1.", + "We also sustain the Examiner's 's rejection of claims 2-11, 16, 17, 21, 22, 26-30, and 32-36, which are not separately argued with particularity. See App. Br. 14- 17; see also Reply Br. 7-9." + ] +} \ No newline at end of file diff --git a/opinion_split/2017003726_DECISION.json b/opinion_split/2017003726_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..62652d5d31a945330bd0a08d191fe7ca42bd1188 --- /dev/null +++ b/opinion_split/2017003726_DECISION.json @@ -0,0 +1,64 @@ +{ + "appellant_arguments": [ + "Initially, Appellants contend the Examiner failed to consider each claim as a whole and failed to consider the limitations of the claims both individually and in combination. App. Br. 7-8.", + "Appellants argue \"the Examiner articulates two different analyses to arrive at two different alleged abstract ideas to which the claims are supposedly directed\" (App. Br. 7) and \"[i] each analysis, the Examiner relies upon different portions of different alleged claim limitations to reach a different results-driven conclusion of unpatentability\" (App. Br. 8).", + "Appellants further contend the claims are not directed to the abstract ideas of mathematical equations or formulas and comparing new and stored information and using rules to adjust the recommended number of collected data points and optimize the processing of scenarios. App. Br. 8-9.", + "Appellants argue the claims are not directed to mathematical equations or formulas because the claims are not directed to performing calculations and do not recite any particular mathematical equation or formula for performing calculations. App. Br. 8.", + "Appellants further argue that courts have not found \"comparing new information such as newly collected data and stored information such as recommended number of collected data points and using rules to adjust the recommended number of collected data points and optimize the processing of scenarios\" to be an abstract idea. App. Br. 9.", + "According to Appellants, the claims are not directed to an abstract idea but, instead, are directed to *an improvement in computer capabilities, namely, the ability of a computer to more efficiently process large numbers of scenarios in a batch.\" App. Br. 11 (citing Spec. \" 6-7, 37).", + "Appellants argue the claims address the technical problem of how to efficiently bulk process scenarios on a computer system and the claimed solution to this technical problem *is concerned with efficiently using the resources of a computer system to bulk process bulk forecasts, specifically, by reducing the overall workload of a central processing unit and input/output devices.\" App. Br. 12.", + "Turning to the second step of the analysis, Appellants argue *the claimed solution is necessarily rooted in computer technology in order to overcome the technical problem of how to efficiently bulk processes scenarios on a computer system\" and, therefore, recites significantly more than the abstract idea. App. Br. 13.", + "Appellants argue the Examiner acknowledges that the claims are directed to optimizing runtime and utilization of computer resources in bulk statistical data modeling and forecasting, which *are clearly both improvements to technology and improvements to the functioning of the computer itself in the specific context of bulk processing forecasts or scenarios.\" \" App. Br. 14 (citing Final Act. 13).", + "Appellants further argue *improved runtime and utilization of computer resources such as CPU and I/O devices will inure benefit of end users in the form of an improved end-user experience\" and \"[this benefit \u00b7 is evidence of the existence of *significantly more' \" App. Br. 14.", + "Appellants contend the combination of Kakouros, Singh, Moessner, and Lindquist fails to teach or suggest the limitations recited in claim 1 because the cited references do not teach or suggest \"a recommended number of collected data points\" and \"a cap on time to elapse,\" as recited in claim 1. App. Br. 15-20.", + "Initially, Appellants contend the Examiner has failed to establish a prima facie case of obvious. App. Br. 15-17.", + "Appellants argue: [T]he Examiner cites to Kakouros, Singh, Moessner and Lindquist in such a piecemeal fashion that Appellant is unable to adequately determine how the Examiner purports to reconstruct the claimed invention. Rather than provide explicit analysis of each claim as a whole, the Examiner appears to treat each claim element in isolation and ignore antecedent basis. The Examiner's citations and quotations relative to one claim element are largely incongruous with the citations and quotations made relative to other elements of the same claim, many of which recite some of the same claim terms. The Examiner fails to address the invention \"as claimed.\" App. Br. 16.", + "Appellants argue that because the Examiner acknowledges that the combination of Kakouros, Singh, and Moessner does not teach or suggest \"a recommended number of collected data points\" and \"a cap on time to elapse,\" as defined by claim 1, [T]he Kakouros-Singh-Moessner combination necessarily also fails to disclose certain corresponding features of claim I such as, for example, *determining \u00b7\u00b7\u00b7 a recommended number of collected data points \u00b7- **determining \u00b7\u00b7\u00b7 a cap on time to elapse \u00b7- . *for each scenario, checking newly collected data to determine whether to adjust the recommended number of collected data points \u00b7- F\" and *optimizing the bulk processing by only forecasting scenarios in the plurality of scenarios for which the adjusted recommended number of collected data points has been exceeded, the cap on time to elapse has been exceeded, or at least three data points in the newly collected data have fallen outside the one or more confidence guardbands.\" \" App. Br. 17 (citing Final Act. 28).", + "Appellants further argue: An assertion by the Examiner that Lindquist discloses the snipped-out claim language defining the terms recommended number of collected data points and cap on time elapse, terms which are used repeatedly in claim I with respect to several claim features as shown above, is conclusory and prima facie deficient. The Examiner provides no reasoning to resolve the clear failure of the Kakouros-Singh-Moessner combination to disclose the above claim features in the *fashion claimed.\" In the Office Action, the Examiner only addresses portions of claim features and does not provide any rational underpinning for combination in terms of the claim as a whole. App. Br. 17." + ], + "examiner_findings": [ + "The Examiner finds the claims are directed to *optimizing runtime and utilization of computer resources in bulk statistical data modeling and forecasting.\" \" Final Act. 13.", + "The Examiner finds the claims recite limitations \"directed to mathematical equations/formulas\" and *comparing new information such as newly collected data and stored information such as recommended number of collected data points and using rules to adjust the recommended number of collected data points and optimize the processing of scenarios\" and, therefore. that the claims are directed to an abstract idea. Final Act. 13-14.", + "The Examiner further finds that the additional elements recited in the claims, when considered individual or as a whole, do not amount to *significantly more\" than the abstract idea. Final Act. 14-16.", + "The Examiner finds Kakouros teaches \"a computer-implemented method for optimizing runtime and utilization of computer resources in bulk statistical data modeling and forecasting.\" Final Act. 17 (citing Kakouros 3:40-47).", + "The Examiner further finds Kakouros teaches that the method includes: *determining with one or more computer processors a recommended number of collected data points as a function of forecast horizon and data and model quality parameters\" (Final Act. 17-18 (citing Kakouros 1:37-41; 3:40-47; 4:1-20, 6:56- 7:10); *determining with one or more computer processors a cap on time to elapse as a number proportional to the recommended number of collected data points\" (Final Act. 18-19 (citing Kakouros 6:56-67; 7:4-9; 9:12-25)); *forecasting with one or more computer processors one or more confidence guardbands associated with future data points\" (Final Act. 19-20 (citing Kakouros, Fig. 7; 5:11-16; 9:13-19, 27-30; 13:1-17; 16:5-15)); and *when future data points fall outside the one or more confidence guardband, generating with one or more computer processors a forecast model that is unscheduled\" (Final Act. 20 (citing Kakouros 4:20-28; 5:22-23; 10:3-8, 12-20, 13:18-24)).", + "The Examiner finds Singh teaches: *for each scenario in plurality of scenarios: determining with one or more computer processors a recommended number of collected data points as a function of seasonal variation, model uncertainty, of forecast horizon and data quality\" (Final Act. 22 (citing Singh 19 6, 47, 61); *determining with one or more computer processors a cap on time to elapse, the cap being determined as a number proportional to the recommended number of collected data points\" (Final Act. 22 (citing Singh 9 59); \"forecasting with one or more computer processors one or more confidence guardbands associated with future data points\" (Final Act. 23 (citing Singh I 60); *determining, based on at least one of data behavior, the recommended number of collected data points, and the cap on time to elapse, when to compute the forecast\" (Final Act. 23 (citing Singh 99 82, 102); \"periodically bulk processing the plurality of scenarios in batch to generate forecasts comprising: for each scenario, checking newly collected data to determine whether to adjust the recommended number of collected data points when the newly collected data comprises an outlier data point that exceeds the confidence guardbands\" (Final Act. 24 (citing Singh 11 21, 74); and *wherein adjusting the recommended number of collected data points comprises including at least two subsequent data points to ensure that the outlier data point is not the last point in a time series\" (Final Act. 24-25 (citing Singh 19 84, 85)).", + "The Examiner finds Moessner teaches or suggests *optimizing the bulk processing by only forecasting scenarios in the plurality of scenarios that exceed the adjusted recommended number of collected data points, exceed the cap on time to elapse, or have where at least three future data points that fall outside the one or more confidence guardbands.' \" Final Act. 26-27 (citing Moessner \" 16, 52, 53, 56).", + "The Examiner finds Lindquist teaches \"a recommended number of collected data points that, once accumulated via new data collection, should trigger computation of a forecast for the scenario\" (Final Act. 28-29 (citing Lindquist 99 1, 62, 64, 66)) and *determining with one or more computer processors a cap on time to elapse since a most recent forecast of the scenario that, once elapsed, should trigger computation of the forecast\" (Final Act. 29 (citing Lindquist 11 60, 77)." + ], + "ptab_opinion": [ + "We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).", + "We do not find Appellants' arguments persuasive.", + "A finding that a claim is directed to multiple abstract ideas does not necessarily evidence a failure to consider the claims as a whole or a failure to consider the limitations of the claims both individually and in combination. See FairWarning IP, LLC V. latric Systems, Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (\"Here, the claims are directed to a combination of these abstract- idea categories. \"); see also RecogniCorp, LLC V. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (finding the claims directed to multiple abstract ideas).", + "We do not find Appellants' arguments persuasive.", + "We agree with the Examiner that the claims are directed to the abstract idea of performing bulk statistical data modeling and forecasting. Final Act. 13.", + "The steps recited in independent claims I and 15, including, for example, *determining \u00b7 the recommended number of collected data points;\" *determining \u00b7 \u00b7 a cap on time to elapse,\" *forecasting \u00b7 one or more confidence guardbands;\" *determining . \u25a0 when to compute the forecast;\" and *periodically bulk processing the plurality of scenarios in batch to generate forecasts\" based on a set of rules are abstract processes of collecting and analyzing information.", + "Information, as such, is intangible, and data analysis, comparisons, and algorithms are abstract ideas. See, e.g., Microsoft Corp. V. AT&T Corp., 550 U.S. 437, 451 n.12 (2007); Alice, 134 S. Ct. at 2355; Parker V. Flook, 437 U.S. 584, 589, 594-95 (1978); Gottschalk 12. Benson, 409 U.S. 63, 71-72 (1972).", + "Information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. See, e.g., Internet Patents Corp. V. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1351 (Fed. Cir. 2014); CyberSource Corp. V. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).", + "That is, \"[w]ithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.\" Digitech, 758 F.3d at 1350-51 (*Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101\").", + "We are not persuaded by Appellants' argument that the claims are directed to *an improvement in computer capabilities, namely, the ability of a computer to more efficiently process large numbers of scenarios in a batch.\" \" App. Br. 11.", + "The Specification provides that the claimed process is implemented using conventional programming techniques on conventional hardware. See Spec. I 45 (*The present invention also relates to an apparatus for performing the operations herein. This apparatus may be specially constructed for the required purposes, or it may comprise a general-purpose computer selectively activated or reconfigured by a computer program stored in the computer. \"); I 46 (The algorithms and displays presented herein are not inherently related to any particular computer or other apparatus. \u00b7 \u25a0 \u25a0 In addition, the present invention is not described with reference to any particular programming language. \").", + "Merely programming a computer to implement a process for processing large numbers of scenarios in a batch does not change how the computer itself operates.", + "Appellants' claims are directed to an improvement in an algorithm executed by a conventional computer using standard programming techniques, and not to a specific improvement in the way the computer operates. See Parker V. Flook, 437 U.S. 584, 595 (1978) (*[IF a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory. \").", + "We do not find Appellants' arguments persuasive.", + "Appellants' claims do not go beyond generic functions, and there are no technical means for performing the claimed steps that are arguably an advance over conventional computer technology. See Elec. Power Grp., LLC V. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016).", + "Features such as, for example, the one or more computer processors recited in claim 1 and the non-transitory computer- usable medium recited in claim 15 are described and claimed generically rather than with the specificity necessary to show how those components provide a concrete solution to the problem addressed by the claims.", + "The recited features, therefore, fail to cause the claims to recite significantly more than the abstract idea of performing bulk statistical data modeling and forecasting.", + "Because claims 1-8, 10-23, and 25-29 are directed to a patent- ineligible abstract concept, and do not recite something *significantly more\" under the second step of the Alice analysis, we sustain the Examiner's rejection of these claims under 35 U.S.C. 9 101.", + "We have reviewed the Examiner's rejections under 35 U.S.C. 6 103(a) in light of Appellants' arguments that the Examiner has erred.", + "We disagree with Appellants' conclusions.", + "We adopt as our own the findings and reasons set forth by the Examiner in the Final Office Action from which this appeal is taken and the reasons set forth in the Examiner's Answer in response to Appellants' Appeal Brief. Final Act. 17-42; Ans. 46-53.", + "We highlight and address specific findings and arguments for emphasis as follows.", + "We do not find Appellants' contention persuasive.", + "As such, the Examiner has established a prima facie case by indicating that the cited references render the claims obvious under 35 U.S.C. 6 103(a) and citing to specific portions of the references believed to disclose the limitations recited in each claim. See In re Jung 637 F.3d 1356, 1363 (Fed. Cir. 2011).", + "We agree with Appellants that the claims must be read as a whole, but to the extend Appellants argue that doing so precludes the Examiner from relying on more than one reference for teaching the disputed limitation, we disagree. See In re Gorman, 933 F.2d 982, 986, (Fed. Cir. 1991) (affirming an obviousness rejection based on multiple references because \"[the criterion . \u00b7 \u00b7 is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention. \").", + "Appellants have not provided sufficiently persuasive evidence of a claim interpretation requiring any of the recited limitations to be read as an indivisible limitation that cannot be taught by multiple references, nor have Appellants pointed to any case law requiring such a result.", + "We are also not persuaded by Appellants' arguments that the Examiner \"provides no reasoning to resolve the clear failure of the Kakouros-Singh-Moessner combination to disclose the above claim features in the *fashion claimed\"\" and \"the Examiner only addresses portions of claim features and does not provide any rational underpinning for combination in terms of the claim as a whole.\" App. Br. 17.", + "We find the Examiner provides the required articulated reasoning with rationale underpinning for combining the teachings of the cited references. See Final Act. 25-26 (finding it would be obvious to modify the teachings of Kakouros with the teachings of Singh), 27-28 (finding it would be obvious to modify the combined teachings of Kakouros and Singh with the teachings of Moessner), 29-30 (finding it would be obvious to modify the combined teachings of Kakouros, Singh, and Moessner with the teachings of Lindquist).", + "The Examiner's findings are reasonable because the skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" since the skilled artisan is \"a person of ordinary creativity, not an automaton.\" KSR Int 7 Co. V. Teleflex Inc., 550 U.S. 398, 420, 421 (2007).", + "Appellants do not present evidence that the resulting arrangement was *uniquely challenging or difficult for one of ordinary skill in the art\" or \"represented an unobvious step over the prior art.\" See Leapfrog Enters., Inc. V. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).", + "Accordingly, we are unpersuaded the Examiner erred in finding the combination of Kakouros, Singh, Moessner, and Lindquist teaches or suggests the limitations recited in claim 1.", + "For the foregoing reasons, we are unpersuaded the Examiner erred in rejecting claim 1.", + "Regarding the rejection of claims 2-8, 10-23, and 25-29, because Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above (see App. Br. 20-21), we are not persuaded the Examiner erred in rejecting claims 2-8, 10-23, and 25-29 under 35 U.S.C. 9 103(a) for the reasons discussed supra with respect to claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2017003980_DECISION.json b/opinion_split/2017003980_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..a8523f26479b0ea81402d294359419dc212631e2 --- /dev/null +++ b/opinion_split/2017003980_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Appellants' invention generally relates to controlling engine idle stop in a hybrid vehicle. Spec., Abstract.", + "Appellants' Specification provides: Predictive information is used to determine potential vehicle stops and corresponding stop durations during a time window.", + "To achieve net fuel savings, the engine stop duration time must be long enough for the electrical energy savings to cover electrical load added to the system.", + "Ifthe predicted stop duration time is long enough to yield net fuel savings, engine stop may be initiated.", + "If not, engine stop may be inhibited. Id.", + "Claim 1, which is illustrative, reads as follows: 1. A hybrid vehicle, comprising: an engine; a starter motor configured to start the engine; and a controller configured to inhibit engine stop during a vehicle stop event in response to a predicted vehicle stop duration time being below a minimum engine stop time, wherein the minimum engine stop time is based on electrical load of components started in response to the engine stop and electrical load of the starter motor to restart the engine.", + "Appellants contend the combination of Kuroda and Herbolzheimer fails to teach or suggest \"wherein the minimum engine stop time is based on electrical load of components started in response to the engine stop and electrical load of the starter motor to restart the engine,\" as recited in claim 1. App. Br. 4-6; Reply Br. 2-3.", + "According to Appellants, Kuroda teaches restarting an engine upon reaching a target time and that the target time is an arbitrarily set value of \"idling-stoppage duration beforehand determined. \" App. Br. 5 (citing Kuroda 6:5-6).", + "Appellants argue: There is no disclosure of a *minimum engine stop time\" being based on \"electrical load of components started in response to the engine stop and electrical load of the starter motor to restart the engine.\"", + "This is important because the main purpose of Appellant's invention is to determine \"Lilf the predicted stop duration time is long enough to yield net fuel savings\" and *[t]o achieve net fuel savings, the engine stop duration time must be long enough to cover the change in electrical load.\" (See, e.g., Appellant's specification at 11 4, 23.)", + "In view of this, Kuroda's general statement that \"it is possible to avoid a situation in which the battery is discharged during stoppage of the engine, thereby causing the starting ofthe engine to be impossible\" is insufficient to teach or suggest Appellant's claimed invention, as recited in claim 1 and in light of the specification. App. Br. 5.", + "Appellants argue Herbolzheimer fails to teach or suggest the disputed limitation because Herbolzheimer does not provide any teaching regarding how the predetermined stop duration limit value GW is determined or the parameters upon which it is based. App. Br. 5-6 (citing Herbolzheimer ' 33).", + "Regarding the patentability of claims 7, 8, 19, and 20, Appellants contend the additional references cited in the rejection of these claims do not cure the alleged deficiencies in the teachings of Kuroda and Herbolzheimer discussed supra with respect to claim 1. App. Br. 7-8." + ], + "examiner_findings": [ + "Claims 1-6 and 9-18 stand rejected under 35 U.S.C. 8 103 over Kuroda et al. (US 6,564,765 B2; issued May 20, 2003) (\"Kuroda\") and Herbolzheimer (US 2012/0089317 A1; published Apr. 12, 2012). Final Act. 8-21.", + "Claims 7 and 19 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Kuroda, Herbolzheimer, and Yee et al. (US 2011/0246013 AI; published Oct. 6, 2011) (\"Yee\"). Final Act. 21-23,", + "Claims 8 and 20 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Kuroda, Herbolzheimer, and Nitz et al. (US 2012/0191330 A1; published July 26, 2012) (\"Nitz\"). Final Act. 23-25.", + "As found by the Examiner, Kuroda teaches determining the target time based on a quantity of power provided by the battery to various auxiliaries and based on a quantity of power required to start the engine. Ans. 2 (citing Kuroda 2:46-51); see also Kuroda 3:30-47." + ], + "ptab_opinion": [ + "We do not find Appellants' contention persuasive.", + "The Examiner finds, and we agree, Herbolzheimer teaches a controller configured to inhibit engine stop during a vehicle stop event in response to a predicted vehicle stop duration time being below a minimum engine stop time. Ans. 3 (citing Herbolzheimer, Abstract; I 12).", + "Kuroda teaches that when a duration of stoppage of an engine is equal to or larger than a target time, the engine is started to avoid a situation in which the battery is discharged during stoppage of the engine, thereby causing the starting of the engine to be impossible. Kuroda 2:43-51.", + "Because Herbolzheimer teaches predicting the vehicle stop duration time based on the present operating variables of the vehicle, the state variables, and other parameters (Herbolzheimer 11 10-12), the combination of Kuroda and Herbolzheimer teaches or suggests a controller configured to inhibit engine stop during a vehicle stop event in response to a predicted vehicle stop duration time being below a minimum engine stop time, as taught by Herbolzheimer, wherein the minimum engine stop time is based on electrical load of components started in response to the engine stop and electrical load of the starter motor to restart the engine, as taught by Kuroda.", + "Accordingly, we are not persuaded the Examiner erred in rejecting claim I and claims 2-9, which depend from claim 1 and are not separately argued. See App. Br. 6.", + "Appellants' arguments regarding the patentability of independent claims 10 and 14 are similar to the arguments discussed above with respect to claim 1. See App. Br. 6-7; Reply Br. 3.", + "We find these arguments unpersuasive for the reasons discussed supra.", + "Accordingly, we are not persuaded the Examiner erred in rejecting independent claims 10 and 14; and claims 11-13 and 15-18, which depend therefrom and are not separately argued. See App. Br. 7.", + "Accordingly, we are not persuaded the Examiner erred in rejecting claims 7, 8, 19, and 20 for the reasons discussed above with respect to claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2017004272_DECISION.json b/opinion_split/2017004272_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..989f63213318ff07c7b2a495a9693525cafb46b3 --- /dev/null +++ b/opinion_split/2017004272_DECISION.json @@ -0,0 +1,125 @@ +{ + "appellant_arguments": [ + "Regarding Alice Step 1, Appellants argue the Examiner has failed *to provide an analysis or explanation for why the proposed abstract idea is a judicial exception, [therefore] the Examiner's assertions are unsupported by the record and should be reversed on this basis alone.\"", + "Appellants further contend \"the Examiner's identification of an alleged abstract idea fails to meet the prima facie burden for a S 101 rejection by failing to compare the proposed abstract idea with abstract ideas identified by the courts.\"", + "App. Br. 8.", + "Regarding Alice Step 2, Appellants address the purported inventive concept of the claims by merely reciting the storing, establishing a connection, and, providing an advertisement claim 1 limitations, and then asserting: The limitations above do not simply recite the proposed abstract idea.", + "Rather, they provide an inventive application by relating brands together and permitting the relationship to be displayed to users that like one of the brands.", + "This is not simply \"brand- affiliated advertising\" but rather provides for a brand to support another brand, and display advertisements to users based on the brand's support.", + "Thus, claim 1 provides significantly more than \"providing brand affiliated advertisements to a user, based on a user and brand profile,\" , which means it is eligible underS 101.", + "App. Br. 11 (emphasis added).", + "Appellants recite similar limitations regarding claims 7 and 12.", + "(Id.).", + "Appellants urge: \"The claims, as a whole, recite a method for advertising an endorsement of a brand connected to the endorsing brand, and a method for identifying potential endorsers of an advertising brand.", + "The claims, as a whole, do not generically recite performance of the proposed abstract idea and are not generic computer functions.\"", + "\" App. Br. 13.", + "In the Reply Brief, Appellants cite to two Federal Circuit opinions as intervening authority: The Federal Circuit released its decisions in Enfish, LLC V. Microsoft Corp. and in McRO, Inc. V. Bandai Namco Games America Inc. on May 12, 2016 and September 13, 2016, after the Brief field on April 25, 2016.", + "These cases, decided after filing of the Brief, provide good cause for the Board to also consider the claims as not directed to any abstract idea under Step 2A of the Alice Test.", + "Additionally, these arguments are a continuation of the arguments in the Brief that \"many limitations in the claim do not appear to be directed to the proposed abstract idea\" (Brief at 9), and are also responsive to the Examiner's assertion in the Answer that the claims are directed to \"contractually obligated, brand affiliated advertisements based on a user and brand profile.\"", + "Answer at 3.", + "Reply Br. 3.", + "Appellants contend: the target consumers disclosed in Steelberg are associated with a brand requesting an endorsement from another brand.", + "The claims, on the other hand, recite \"receiving an endorsement request from the second brand\" and \"providing an advertisement request to at least one user connected to the first brand.'", + "In other words, the brand that is requesting an endorsement is not the same brand that is connected to the users receiving the advertisement.", + "Since Steelberg's target consumers are associated with the requesting brand, rather than the brand being requested for an endorsement, Steelberg does not anticipate the limitations of claim 1.", + "Furthermore, the claims recite that the connections between the first brand and the plurality of users \"indicat[e] expressed interest in the first brand declared by the plurality of users.'", + "As described above, a user can expressly declare interest in a brand by \"liking\" or \"being a fan\" of the brand.", + "See Specification, 9 11.", + "Steelberg describes a target consumer as \"the ideal customer for the particular goods being advertised, from a socio-economic perspective, from a morals and values perspective, from an age or interest level perspective, or based on other similar factors.\"", + "See Steelberg, I 3.", + "However, Steel berg does not disclose a target consumer expressing declared interest in a brand.", + "App. Br. 14-15 (emphasis added).", + "In the Reply Brief (14), Appellants address the Examiner's broader claim construction and contend it is improper: It is improper to equate explicit relationships and implicit relationships, because they are not \"functionally identical,' as asserted by the Examiner.", + "Answer at 9.", + "A connection that represents an explicit relationship between a user and a brand is a codification of an interest explicitly declared by the user, whereas an implicit relationship is inferred by the social networking system and involves a level of uncertainty in the interest in the brand.", + "Therefore, the Examiner's conflation of explicit relationships and implicit is improper.", + "As explained in the Brief, Steelberg does not disclose explicit relationships between users and brands.", + "Instead, Steelberg associates target consumers with a brand \"from a socio-economic perspective, from a morals and values perspective, from an age or interest level perspective, or based on other similar factors.'", + "\" Steelberg at I 3.", + "The Examiner does not contest whether the relationships between users and brands in Steelberg is explicit or implicit, and instead focuses on how claim 1 can supposedly be interpreted to include connections indicating implicit relationships between users and brands.", + "This interpretation is improper and, therefore, the rejection of claim 1 as being anticipated by Steelberg should be reversed.", + "Reply Br. 14 (emphasis added).", + "Regarding anticipation rejection C of claim 12 over Trout, Appellants urge that *Trout does not disclose identifying one or more candidate brands to the advertising brand as potential endorsers.\"", + "*, App. Br. 16.", + "In support, Appellants contend: \"at the very best, Trout discloses connections between users and brands, rather than between brands themselves.", + "However, claim 12 recites \"identifying \u00b7\u00b7\u00b7 one or more candidate brand connections to the advertising brand as potential endorsers of the advertising brand\" and \"modifying the social networking profile associated with the advertising brand to include a connection to the designated subset of the selected candidate brand connections.\"", + "App. Br. 16-17." + ], + "examiner_findings": [ + "A. Claims 1-16 are rejected under 35 U.S.C. 8 101 as being directed to patent-ineligible subject matter.", + "Final Act. 2.", + "B. Claims 1-11 are rejected under pre-AIA 35 U.S.C. 8 102(b) as being anticipated by Steelberg et al. (US 201 2011/0106632 Al published May 5, 2011) (hereinafter \"Steelberg\").", + "Final Act. 5.", + "C. Claims 12-16 are rejected under pre-AlA 35 U.S.C. 9 102(b) as being anticipated by Trout et al. (US 2009/0276453 A1 published Nov. 5, 2009) (hereinafter \"Trout\").", + "Final Act. 8.", + "Regarding the first step of the Alice/Mayo analysis, the Examiner concludes claims 1-16 are directed to an abstract idea: The claimed invention is directed to providing brand affiliated advertisements to a user, based on a user and brand profile.", + "Providing brand affiliated advertisements to a user, based on a user and brand profile is a fundamental economic practice (targeted advertisements to create more effective delivery).", + "Final Act. 4 (emphasis added).", + "Regarding the second step of the Mayo/Alice analysis, the Examiner finds the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, The steps or acts performed such as storing brand and user profiles, and delivering an advertisement endorsing one brand or both brands to the users based on those profiles, (utilizing a processor) in independent method claims 1. 7, 12 are not enough to qualify as \"significantly more\" than the abstract idea itself, since the claim is a mere instruction to apply the abstract idea.", + "Furthermore, there is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment, and the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional.", + "Final Act. 4-5 (emphasis added).", + "For the aforementioned reasons, the Examiner concludes that all claims 1-16 on appeal are not patent-eligible under 35 U.S.C. 8 101.", + "In response, the Examiner further explains the basis for the rejection: the Examiner has considered the claims as an ordered combination of steps and has identified the claimed invention as being drawn to an abstract idea, that being providing contractually obligated, brand affiliated advertisements based on a user and brand profile, which is a concept relating to the creation of business relations.", + "This also includes the relationships or transactions created between the endorsing entities, intended to increase efficiency or effectiveness of the targeted advertisement, whereby the endorsement is intended as the creation of a contractual relationship whereby one is obligated, upon request or acceptance, to endorse or promote the other entity.", + "Such practices involving creation of contractual relationships have been held to be \"Fundamental Economic Practices\".", + "Further, creation of Contractual Relationships may also be considered a \"Method of Organizing Human Activity\".", + "Such an idea of contractual endorsement between brand entities is analogous to the creation of a contractual relationship, as in buySafe.I\"]", + "Further, elements of a contractual relationship between business entities was found to be an abstract idea in the holding of Alice itself.", + "Ans. 3 (emphasis added).", + "In response, the Examiner further explains the basis for the rejection: the limitations do not recite significantly more than the judicial exception, merely the generic use of a processor to carry out the several steps of an abstract idea.", + "Appellant has presented an incorrect analysis of claim limitations at pages 10-11: \"storing a set of connections \u00b7\u00b7\u00b7 \u25a0 \". \u00b7 \"establishing a connection between [brands] \u00b7\u00b7\u00b7 describing support of the second brand by first brand \u00b7\u00b7\u00b7 \u25a0 , , \"providing an advertisement for display \u00b7\u00b7\u00b7 including a description of the connection between the first brand and the second brand\".", + "Again, as discussed above, Appellant's advertisement is generated as a means to promote the contractual/business relationship between the entities.", + "The steps in particular that Appellant incorrectly argues represent significantly more are merely a string of abstract ideas, which does not translate to significantly more.", + "Ans. 5 (emphasis added).", + "In response , the Examiner further explains the basis for the rejection, which is based upon a broader interpretation of the contested claim language: As per the limitation of \"a set of connections between the first brand and a plurality of users of the social networking system, the connections indicating expressed interested in the first brand declared by the plurality of users in the social networking system\", Examiner has interpreted this limitation as creating a profile for a user, based on a user's prior interaction with brand page(s).", + "Further, this element of the limitation is largely non-structural descriptive material, whereby the connections themselves are simply descriptive of the type of data being stored with the profiles for the brands in the system.", + "A \"user\" is interpreted as an individual not connected with the brand beyond some indication of an interest on the part of the user, or the user being perceived as someone who would react favorably to an advertisement based on a past profile history.", + "This interpretation is supported by Appellant's specification at [014], wherein a user is an individual is a user of the system, \"represented by user profiles and connections\".", + "A \"brand\" is interpreted by Examiner as any entity or element that is a \"non-individual entity in a social network\", as supported by Appellant's specification at [015].", + "Paragraph [015] also makes it clear that a \"brand\" profile functions identically to a user profile: \"A brand shares many attributes of individual users .. profile pages, \u00b7\u00b7\u00b7 content, \u00b7\u00b7\u00b7 connections\" and [016] states that \"An endorsement can comprise any positive relationship between brands in the social network\", and as such Examiner has interpreted \"brand endorsements\" to be any \"positive interaction\" between profiles of users in a social network.", + "The \"profile\" for a user is interpreted to be created based on the user's interactions with the brand page(s).", + "This is supported by Appellants specification at 014-016: \"an individual is represented in the social networking system by user profiles and connections to other individuals \u00b7\u00b7\u00b7 connections can be explicit or implicit\" [014], [022], both of which disclose alternatives of determining a relationship between a user and a brand.", + "An \"explicit\" relationship is formed via a user liking a brand, and an implicit relationship is formed via a number of activities including \"performing other actions within the social networking system associated with the brand\" (see Appellant's specification, 022).", + "The specification does not provide for any functional difference in the targeting of advertisements, i.e. the invention, once a \"fan\" is identified or \"declared\" via implicit or explicit relationships, and further, as the term \"declared\" is not present in the specification, Examiner has interpreted that \"declared\" relationships may be created implicitly via user interaction history.", + "Ans. 6-7 (paragraph breaks added)." + ], + "ptab_opinion": [ + "Regarding anticipation rejections B and C over the cited prior art, and based upon Appellants\" arguments, we decide the appeal of rejection B of claims 1-11 on the basis of representative independent claim 1.", + "Based on Appellants' arguments, we decide the appeal of rejection C of claims 12-16 on the basis of representative independent claim 12.", + "We have considered all of Appellants' arguments and any evidence presented.", + "To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived.", + "We highlight and address specific findings and arguments for emphasis in our analysis below.", + "We consider the question of whether the claims are directed to a specific improvement in the capabilities of the computing devices, or, instead, *a process that qualifies as an fabstract idea' for which computers are invoked merely as a tool.\" Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).", + "We, therefore, decide under step two whether the claims: (a) set forth an inventive concept that provides a specific means or method that improves the relevant technology, or (b) are directed to a result or effect that itself is the abstract idea, in which the claims merely invoke generic processes and machinery.", + "As in Electric Power, the combination of various abstract ideas relating to data collection and analysis is itself an abstract idea.", + "Applying this guidance to the claims before us on appeal, we conclude at least the recited step of *storing, in a social networking system, a first brand profile associated with a first brand corresponding to a first commercial enterprise, a second brand profile associated with a second brand corresponding to a second commercial enterprise, and a set of connections between the first brand and a plurality of users of the social networking system\" is merely a method of collecting information to facilitate the result of *providing of an advertisement for display to at least one user connected to the first brand, the advertisement including a description of the connection between the first brand and the second brand. ", + "\" Claim 1.", + "For the aforementioned reasons, we conclude the claims before us on appeal are directed to a fundamental economic practice, which includes the use of brands, endorsements, and advertisements.", + "Further, we agree with the Examiner that the creation of contractual relationships may also be considered a method of organizing human activity.", + "Ans. 3.", + "Therefore, on this record, we find Appellants' contentions regarding Alice Step 1 are not persuasive.", + "Accordingly, we proceed to Alice Step 2.", + "Because we conclude the claims are directed to an abstract idea for essentially the same reasons articulated by the Examiner (Final Act. 4), we turn to the second part of the Alice/Mayo analysis.", + "We analyze the claims to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to ***significantly more''' \". than the abstract idea.", + "Alice, at 2357.", + "However, we find Appellants\" claims are clearly distinguished from the claims considered by the court in Enfish, 822 F.3d at 1336, because Appellants' claims are silent regarding any mention of a database, much less a *self-referential table\" that *is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.\"", + "Enfish, 822 F.3d at 1339.", + "Further, regarding McRO, Inc. V. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (2016), our reviewing court guides: \"The abstract idea exception prevents patenting a result where *it matters not by what process or machinery the result is accomplished. *,", + "*, (quoting 0 'Reilly V. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).", + "Because none of Appellants' claims on appeal is directed to an improvement in a processor, database, or other computer/network component, we conclude that none of the claim limitations, viewed both individually and as an ordered combination, amounts to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter.", + "Applying the aforementioned guidance from our reviewing courts to the claims before us on appeal, we conclude, in our Mayo/Alice analysis, that each of Appellants' claims 1-16, considered as a whole, is directed to (under step one), a patent-ineligible abstract idea, and under step two, does not recite something *significantly more\" (Alice, at 2357 (internal citation and quotations omitted)) to transform the nature of the claim into a patent- eligible application.", + "Accordingly, for at least these reasons, we sustain the Examiner's rejection A under 35 U.S.C. S 101 of claims 1-16 as being directed to patent-ineligible subject matter in light of Alice and its progeny.\"", + "Based upon our review of the record, we are not persuaded the Examiner's broader claim interpretation is overly broad, unreasonable, or inconsistent with the Specification, because the Examiner repeatedly refers to descriptions of exemplary, non-limiting embodiments found in the Specification for support.", + "Ans. 6-7.", + "Therefore, on this record, we are not persuaded of error regarding the Examiner's broad but reasonable claim interpretation, and resultant finding of anticipation regarding the contested limitations of representative independent claim 1.", + "See Final Act. 5-6; Ans. 6-7.", + "Accordingly, we sustain anticipation rejection B of representative independent claim 1 over Steelberg.", + "The remaining grouped claims 2-11, also rejected under anticipation rejection B, and not substantively argued separately, fall with representative independent claim 1.", + "Appellants point to the corresponding support in the Specification (\"I 16) for the claim terms *brand* (App. Br. 17), and **endorsement*, which we find merely provides exemplary, non-limiting descriptions: Brand to brand, or \"brand-brand, \" connections used for advertising are referred to herein as endorsements.", + "We find only a user can want, desire, and use.", + "Therefore, we find Appellants\" arguments regarding rejection C of independent claim 12 (App. Br. 15-17) are essentially directed to similar claim interpretation issues we have addressed supra regarding independent claim 1.", + "For similar reasons discussed above, on this record, we are not persuaded the Examiner's broader claim interpretation is overly broad, unreasonable, or inconsistent with the Specification.", + "Therefore, on this record, we are not persuaded of error regarding the Examiner's finding of anticipation for independent claim 12, under rejection C.", + "The remaining grouped dependent claims 13-16, also rejected under anticipation rejection C, and not substantively argued separately, fall with representative independent claim 12." + ] +} \ No newline at end of file diff --git a/opinion_split/2017005550_DECISION.json b/opinion_split/2017005550_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..b25f0fcc2c35b4f997252d19816eff188b0ee4e6 --- /dev/null +++ b/opinion_split/2017005550_DECISION.json @@ -0,0 +1,52 @@ +{ + "appellant_arguments": [ + "Appellant contends that the Examiner has erred, offering arguments as to each independent claim, and to dependent claims 3, 4, 5, 10, 14, and 17. See generally App. Br.; Reply Br.", + "As to independent claim 1, Appellant contends that neither Onvlee nor Hirayanagi teaches a cleaning module to clean a mask secured on a mask stage, and that no motivation has been established to accordingly modify the prior art. App. Br. 11-14,", + "Appellant cites to paragraph 98 of Onvlee and argues that it teaches that \"the patterning device 302 is removed from the clamp structure before being cleaned by Onvlee's cleaning system 800\" (id. at 12; see also id. at 13 (quoting Onvlee I 98 with emphasis)).", + "Appellant first argues that even if Onvlee's paragraph 98 \"teaches the initial cleaning is performed after the patterning device 302 is loaded into a lithographic apparatus, this \"is not necessarily equivalent to a mask stage. \" Reply Br. 6 (emphasis omitted).", + "Appellant also argues about the spatial orientation of the structure discussed in paragraph 98. 6-7 (citing Onvlee, Fig. 9).", + "Appellant also argues, regarding paragraph 85 (and Figure 6) of Onvlee, that the embodiment does not show a mask stage. Reply Br. 7-8.", + "Appellant, citing the Examiner's Answer, also argues that the Examiner erred in relying on Hirayanagi's paragraph 36 and Figures 1-3. Reply Br. 8-10 (citing Ans. 4).", + "Finally, Appellant also argues that the rejection is grounded on impermissible hindsight. Reply Br. 10.", + "As to independent claim 13, Appellant also contends that \"Onvlee does not appear to teach whether its cleaning system is within the enclosed chamber\" and argues that the Examiner does not address the issue in the Final Office Action. App. Br. 15.", + "As to independent claim 18, Appellant also contends that the cleaning in the cited references *is not performed while the mask is secured to the mask stage, and while the cleaning module is within an opening in the mask stage.\" App. Br. 16.", + "Turning to dependent claims 3, 4, and 14, Appellant argues that the combination does not teach claim 3's limitation *wherein the cleaning structure includes a carrier substrate and the attraction mechanism is disposed on a top surface of the carrier substrate\" because \"Onvlee teaches a sticky tape 502 disposed on rolls 504a/504b . , . as the cleaning system\" and **Onvlee does not mention a *carrier substrate' as a part of the cleaning structure, let alone \u00b7 \u00b7 \u00b7 that an *attraction mechanism is disposed on a top surface of the carrier substrate. \" App. Br. 17 (citing Onvlee, Fig. 6).", + "Appellant also argues that the Examiner's reliance on Onvlee's Figure 9 in addition to Figure 6 would require disposing elements contrary to how they are arranged in the claim. Reply Br. 10-11.", + "Appellant argues that combination does not teach claims 4 and 14's limitation *wherein the carrier substrate is a mask substrate having a shape and dimensions of the mask\" because \"Onvlee does not even teach a carrier substrate as a part of the cleaning structure, let alone a carrier substrate *having a shape and dimensions of the mask. \". App. Br. 18, 20.", + "Turning to dependent claim 5, Appellant argues that the combination does not teach the limitation \"wherein the attraction mechanism includes a material with non-polar chains and polar compound\" (App. Br. 18-19, Reply Br. 12) and that the Examiner's reliance on Onvlee's disclosed **KAPTON or polyimide materials\" is insufficient (Reply Br. 12).", + "Appellant argues for the patentability of claim 2, rejected over Onvlee, Hirayanagi, and Sogard *739, and claim 7, rejected over Onvlee, Hirayanagi, and Sogard '525, on the basis of the claims' dependency from independent claim 1. App. Br. 21." + ], + "examiner_findings": [ + "The Examiner relies on Onvlee for disclosing *an exposing module configured to perform a lithography exposing process using a mask (MA) secured on a mask stage (MT; as shown in Figs. 1-3)\" (Final Act. 2) and \"a cleaning module integrated in the exposing module and configured to clean the mask using an attraction mechanism\" (id. at 3 (citing Onvlee 11 94-98, Fig. 9); see also Ans. 3-4 (citing Onvlee 11 86, 94-98, Figs. 6-9).", + "The Examiner relies on cleaning system 800, including cleaning layer 802, and determines that the disclosed *[clleaning system 800 may include other components as well[,] such as support structures \u00b7 \u00b7 and/or actuating systems\" and that the system may have \"a sticky surface designed to capture particles present on the backside or patterned surface of [the] patterning device in situ. \" Final Act. 3.", + "The Examiner highlights that Onvlee explicitly discloses cleaning the reticle after its loading onto the mask stage, as one of two alternatives, cleaning the reticle on the mask stage or removing it from the mask stage to clean it. Ans. 3 (citing Onvlee 11 85, 98).", + "The Examiner relies on Hirayanagi for disclosing a reticle? (mask) stage which *defines a recess or the like that receives the reticle wherein the recess also defines an opening in the radiation direction of the exposure 7 The terms reticle and mask are interchangeable, as Hirayanagi notes in paragraph 4. beam.\" Final Act. 3 (citing Hirayanagi I 36, Figs. 1-3); see also Ans. 4.", + "The Examiner further relies on Hirayanagi for teaching that the recessed stage prevents the reticle (mask) *from falling from the reticle stage even during a power failure.\" Id. (citing Hirayanagi I 10).", + "The Examiner determines that one of ordinary skill in the art would have found it obvious to use a mask stage as taught by Hirayanagi in the system of Onvlee because it is a suitable alternative that prevents the mask from falling from the mask stage, even during a power failure. Id.", + "The Examiner, thus, concludes that one of ordinary skill in the art armed with the knowledge of the cited prior art would have been led to the claimed subject matter within the meaning of 35 U.S.C. & 103. Ans. 4", + "As to the cleaning module being within an opening in the mask stage, the Examiner relied on Hirayanagi's Figure 2 and paragraph 36, which describes Figure 2, and these disclose a mask 100a secured to a mask stage 201 within a recess. Final Act. 3; Hirayanagi I 36, Fig. 2.", + "The Examiner correctly observes that Appellant provides no separate argument as to either claim 2 or claim 7. Ans. 6-7," + ], + "ptab_opinion": [ + "DISCUSSION Upon consideration of the evidence and opposing contentions of Appellant and the Examiner, we are not persuaded that the Examiner erred reversibly in rejecting claims for obviousness over the cited prior art, except as to claims 5, 10, and 17.", + "Appellant's contention that Onvlee does not disclose a cleaning module to clean a mask secured on a mask stage is untenable because, as highlighted by the Examiner, Onvlee teaches both cleaning a mask while secured on a mask stage and removing the mask for cleaning. See, e.g., Onvlee 1 98.", + "Appellant raises additional arguments in the Reply Brief that were not raised in the Appeal Brief. Compare Reply Br. 5-10, with App. Br.", + "Appellant has not provided an explanation establishing good cause for why these arguments could not have been raised in the Appeal Brief, as they address positions relied on by the Examiner not only in the Answer, but also in the Final Office Action. Final Act. 2-3.", + "We deem these arguments waived for purposes of the present appeal. 37 C.F.R. 6 41.41(b)(2).", + "*[A]n issue not raised by an [A]ppellant in its opening brief \u25a0 \u25a0 is waived.\" Cf Optivus Tech., Inc. V. Ion Beam Appl 'ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (citations and internal quotations omitted).", + "This argument is not persuasive of reversible error because it fails to account for the rejection as set forth by the Examiner grounded on the combination of Onvlee and Hirayanagi, including disclosure relating to embodiments with a mask stage. See, e.g., In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (A reference's disclosure is not limited to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art.).", + "The Examiner, however, relied on Hirayanagi in the same manner in the Final Office Action (compare Final Act. 3 (citing Hirayanagi I 36, Figs. 1-3), with Ans. 4 (citing Hirayanagi 9 36, Figs. 1-3), and Appellant provides no good reason why this argument was not raised in the Appeal Brief (see generally Reply Br.).", + "We deem the arguments waived.", + "This argument, likewise, is waived because it is not timely.", + "Appellant's argument is unpersuasive of reversible error because the rejection is explicitly grounded on the cleaning module being integrated in the exposing module in Onvlee as disclosed in, for example, paragraph 98. Final Act. 2-3 (citing Onvlee II 94-98, Figs. 1-3, 9).", + "Appellant's 's argument as to the mask not being secured while it is cleaned is unpersuasive of reversible error because, as discussed above, Onvlee teaches cleaning the mask while it is secured to the mask stage.", + "Appellant's skeletal contention in the Appeal Brief does not apprise us of any error. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 201 1) (merely reciting what a claim recites and/or providing a skeletal argument that the prior art references do not disclose or suggest certain claim limitations is not an argument that requires our separate consideration).", + "Appellant's arguments are not persuasive of reversible error because they fail to address the Examiner's reasoning grounded on Onvlee's relevant teaching (Final Act. 3; Ans. 5 (citing Onvlee 11 94-96)), and do not take into account that \"[a] person of ordinary skill is also a person of ordinary creativity, not an automaton\" (KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398, 421 (2007)).", + "As to Appellant's further argument that it is not sufficient that Onvlee teaches that the cleaning layer can be substantially the same dimensions as the mask because it is possible for the carrier substrate and the cleaning layer to have different shapes and/or sizes (Reply Br. 11-12), we find it unpersuasive that the Examiner erred because the reason for the carrier substrate is to support the cleaning layer and it reasonably does so by its presence, leading to it having the same shape and size as the cleaning layer, which, as explained by the Examiner, is substantially the same dimensions as the mask (Ans. 5). In re Preda, 401 F.2d 825, 826 (CCPA 1968) (*[I] considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. \").", + "We agree with Appellant that the Examiner has failed to establish this limitation.", + "The reliance on Onvlee's paragraph 85 as disclosing that \"the layer of tape *may be a sticky tape such as, for example, a KAPTON or polyimide tape that leaves behind no residue' or *layer of tape may be an insulating material that is charged to attract particle contamination via electrostatic interactions?\" \" (Ans. 5-6) is not sufficient to establish that it *includes a material with non-polar chains and polar compound.", + "Turning to dependent claims 10 and 17, we find that the Examiner has failed to establish that the relied on combination teaches or suggests \"a mask library configured to hold a plurality of masks\" (claims 10 and 17) and either \"a mask handler designed to secure and transfer one of the plurality of masks\" (claim 10) or \"a mask handler configured for mask transferring\" (claim 17). See generally Final Act.; Ans.", + "For the reasons above, we affirm the rejection of claims 1, 3, 4, 6, 8, 9, 11-16, 18, 19, and 21 over Onvlee and Hirayanagi, but reverse the rejection as to claims 5, 10, and 17.", + "Not being convinced of reversible error in the rejection of claim 1 over Onvlee and Hirayanagi, we are not apprised of reversible error in the rejection of claims 2 and 7 in further view of Sogard '739 and Sogard '525, respectively, and affirm the rejections." + ] +} \ No newline at end of file diff --git a/opinion_split/2017005692_DECISION.json b/opinion_split/2017005692_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..d68d6b0b0932d6e4d3743cc2632bb05eada9ee33 --- /dev/null +++ b/opinion_split/2017005692_DECISION.json @@ -0,0 +1,39 @@ +{ + "appellant_arguments": [ + "STATEMENT OF THE CASE- Appellants describe the invention as relating to a method of producing hot-rolled strips made of cast metal. Spec. 1:3-15.)", + "Appellants argue that the Examiner's rejection is in error because **Wehage only discloses a cooling step that allows one to variably set the rolling temperature in the first rolling pass.\" Appeal Br. 6.", + "Appellants also argue that \"Wehage does not disclose a two-step heat treatment before the first rolling pass of which one heat treatment step is a homogenization step.\" Appeal Br. 6-7.", + "Appellants also argue that steel making is an *ancient and widely known process[]\" such that *we are down to small advances that give critical advantages.\" Appeal Br. 8.", + "Appellants argue that the Examiner errs by asserting that \"a specific type of temperature control is not patentable because it is generally known to manipulate workpiece temperature after casting.\" Id. at 9.", + "Appellants argue that only the recited combination prevents \"negative influence on the quality and the material properties of the cast strip being produced\" (Appeal Br. 7) and argue that claim I's method provides \"critical advantages\" (id. at 8)." + ], + "examiner_findings": [ + "REJECTION AND REFERENCES On appeal, the Examiner maintains the rejection of claims 1-3 and 5 under 35 U.S.C. 9 103(a) as unpatentable over Wehage et al., U.S. Patent No. 6,527,882 B1, March 4, 2003; hereinafter \"Wehage.\" Final Act. 3.", + "The Examiner finds that Wehage generally teaches each step of claim 1 but does not make findings regarding Wehage explicitly teaching the specific temperatures recited in claim 1. Final Act. 3-4 (citing Wehage Abstract, Fig. 1, 4:38-8:17).", + "With respect to temperature, the Examiner finds that \"Wehage recognizes temperature as a result effective variable for controlling microstructure.\" Id. at 4.", + "The Examiner concludes that the recitations of claim 1 would have been obvious to a person having ordinary skill in the art because \"li]t would require little more than routine experimentation by one of ordinary skill in the art to determine the optimal or workable ranges of temperature for the various steps of Wehage.\" Id." + ], + "ptab_opinion": [ + "Claim 1, reproduced below with emphases added to certain key recitations, is illustrative of the claimed subject matter: 1. A method of making hot-rolled strips of cast steel, where a cast steel strip is subjected as a rough strip to at least one heat-treatment step and subsequently wound or stacked as a hot strip, the method comprising the steps of sequentially: subjecting the rough strip obtained from the casting step in a protective gas atmosphere to an upstream step of homogenizing its structure by maintaining a temperature at approximately 900 to 1000 *C, by reducing the temperature by approximately 200 *C, or by increasing the temperature by approximately 250 *C; subjecting the homogenized rough strip to at least one additional heat-treatment step by maintaining the temperature at 880 to 940 *C, by reducing the temperature by approximately 50 *C, or by increasing the temperature by approximately 50 *C; subjecting the heat-treated rough strip to a hot-rolling step having at least one pass, with the rough strip undergoing a reduction in thickness of less than 49%; subjecting the hot-rolled rough strip to a downstream homogenization step or recrystallization of its structural composition, by maintaining the temperature at approximately 700 to 900 *C, by reducing the temperature by approximately 100 *C, or by increasing the temperature by approximately 50 %C; and passing the rough strip through a cutter that is synchronized with the transport or belt speed to cut the strip into pieces of rolled hot strip. Appeal Br. 12 (Claims App *x).", + "ANALYSIS We review the appealed rejections for error based upon the issues identified by the Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"It has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections\")).", + "After considering the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error.", + "Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer.", + "We add the following primarily for emphasis.", + "Appellants argue all claims as a group. See Appeal Br. 6-10.", + "Therefore, consistent with the provisions of 37 C.F.R. 41.37(c)(1)(iv) (2013), we limit our discussion to claim 1, and all other claims on appeal stand or fall together with claim 1.", + "The Examiner, however, correctly explains that one of claim 1 's recited methods of homogenizing the strip is by cooling. Ans. 4.", + "Thus, the Examiner appropriately compares the function of Wehage's cooling device 2 (Fig. 1. 6:62-7:9 (\"a first device 2 for cooling the cast strip under inert gas\")) to claim I's \"subjecting the rough strip\" step.", + "Appellants' argument misapprehends the scope of claim 1.", + "Under the broadest reasonable construction, the \"subject the rough strip\" step of claim 1. for example, requires (a) \"maintaining a temperature at approximately 900 to 1000 \"C\" or (b) \"reducing the temperature by approximately 200 \"C\" or (c) *increasing the temperature by approximately 250 \"C.\"", + "The \"subjecting the homogenized rough strip\" step similarly recites three alternative ways of satisfying the step.", + "Thus, Appellants' argument does not squarely address or identify error in the Examiner's finding that these two steps are met by Wehage. Ans. 5-6 (quoting Wehage 4:44-52).", + "The Examiner's 's reasoning, however, is not so broad.", + "The Examiner properly rejected claim 1 based on the language of claim 1 and the teachings of Wehage.", + "The Examiner correctly explained that \"[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. \" Final Act. 4 (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (*discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art\").", + "Moreover, Appellants present no argument disputing the Examiner's finding that Wehage teaches that temperature is a result effective variable (Final Act. 4), and the preponderance evidence supports the Examiner's position.", + "See, e.g., Wehage 3:52-57 (\"the starting material runs through a furnace or an inductive heating system for the purpose of heating or temperature equalization over thickness and width or homogenization of the starting material before rolling\"), 4:48-52 (\"the hot pre-rolled strip being cooled, heated or its temperature maintained, according to choice\"); see also In re Applied Materials, 692 F.3d 1289, 1297 (Fed. Cir. 2012) (\"A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.\").", + "The burden to establish unexpected results rests with Appellants. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).", + "Here, however, Appellants present no evidence supporting that the claimed invention provides any advantage and therefore do not meet that burden.", + "In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (\"It is well settled the unexpected results must be established by factual evidence. Mere argument or conclusory statements \u00b7 do[] not suffice.\") .\") (internal quotes and citation omitted)." + ] +} \ No newline at end of file diff --git a/opinion_split/2017005969_DECISION.json b/opinion_split/2017005969_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..4caa5a535158e5e384881d2fb4ddab51e9517c0d --- /dev/null +++ b/opinion_split/2017005969_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Appellants cite Figure 5 and corresponding disclosure in the Specification for a description of the shadow ring recited in claims 1 and 7. See Appeal Br. 5-6.", + "Appellants argue the Examiner reversibly erred in finding Sen, alone or in combination with Moslehi, discloses or suggests a shadow ring having a recessed slot and a second annular bottom surface located therein in the manner recited in claims 1 and 7. Appeal Br. 9-11.", + "Appellants argue that in the embodiment of Figures 12A-B, Sen discloses a gap (980d), and a gap is not equivalent to a recessed slot. Id. at 9.", + "Appellants thus maintain that even if the Figures 8A-D embodiment was modified to include a gap as is used in the Figures 12A-B embodiment, the present invention would not result. Id.", + "Appellants argue Moslehi discloses a clamp ring, which is not equivalent to a shadow ring, and that the purpose of Moslehi's slot is to accommodate cantilever 102. Id.", + "Appellants contend one of ordinary skill in the art would not have had a reason to modify the Sen Figures 8A-D embodiment, which does not include a cantilever, based on Moslehi. See id.", + "In their Reply Brief, Appellants argue that in the Sen Figure 12A-B embodiment, gaps 980d pass completely through the body of the shadow ring, and not just the bottom plane, thereby creating openings. Reply Br. 2.", + "Appellants argue the Examiner has not identified evidentiary support for finding that one of ordinary skill in the art would have had a reason to close the top portions of those openings so as to create a recessed slot. Id. at 3." + ], + "examiner_findings": [ + "The Examiner relies on the following references as evidence of unpatentability: Yudovsky US 2004/0003780 A1 Jan. 8, 2004 Moslehi US 6,907,924 B2 June 21, 2005 Sen US 2005/0196971 A1 Sept. 8, 2005 Kaido US 2007/0065597 Al March 22, 2007", + "The claims stand finally rejected under 35 U.S.C. 8 103(a) as follows: 1. claims 1, 2, 5, 6, and 20 over Sen in view of Moslehi; 2. claim 3 over Sen in view of Moslehi and Yudovsky; 3. claim 4 over Sen in view of Moslehi and Kaido; 4. claims 7, 9, 10, 12, and 21 over Sen in view of Moslehi; and 5. claim 11 over Sen in view of Moslehi and Yudovsky. See Final 3-24.", + "The Examiner relies primarily on the embodiment described in Sen Figures 8A-D for a teaching of a shadow ring as recited in claims 1 and 7. See Final 3-6, 14-16.", + "The Examiner finds Sen does not disclose that the shadow ring in the embodiment of Figures 8A-D includes a recessed slot and does not describe the annular lip as having \"a third annular bottom surface located a second distance above the first annular bottom surface, the second distance less than the first distance\" as required by claims 1 and 7. Id. at 6, 16.", + "The Examiner finds the shadow ring in the embodiment of Sen Figure 12A includes a recessed slot 980d.\" Id. at 7. 18.", + "The Examiner further finds Moslehi Figure 4 discloses a ring (clamp 96) for use in a deposition chamber that includes a recessed slot. Id. at 7-8, 18-19.", + "Based on these teachings, the Examiner finds a motivation for modifying the annular body of the shadow ring of Sen[] to include a recessed slot and an annular lip as disclosed by Moslehi[] is to have a specific type of system configured to be capable of one or more of: ensuring a uniformity of the magnetic field at the edge regions of a wafer by incorporating one or more gaps in the form of one or more recessed slots in a shadow ring so as to be capable of depositing material uniformly in non-shadowed edge regions of the wafer; and allowing some physical contact between overhanging portions of a shadow ring and excluded edge regions of an underlying wafer while configuring the shadow ring so that any possible contamination not affect [sic] wafer yield. Id. at 8-9, 19-20.", + "In the Advisory Action, however, the Examiner does not appear to rely on Moslehi for a teaching or suggestion of using a recessed slot and an annular lip, but cites only to Sen Figures 12A-B (see Advisory 6-9, e.g. id. at 9 (\"[C]laim 1 is obvious in view of Sen[]. \"), contending the embodiment in these figures \"discloses that gap characteristics (e.g., shape, depth, width, breadth \u00b7 \u00b7 etc.) are result-effective variables\" (id. at 7-8 (citing Sen 99 133-138))).", + "In the Response to Argument section of the Answer, the Examiner clarifies that Moslehi is cited only to *demonstrate[] that including recessed slots in the form annular chamber [sic] is known in the art.\" \" Ans. 12.", + "The Examiner disagrees with Appellants' argument that a gap is not a recessed slot, citing to dictionary definitions of \"recess\" as an indentation in a line and \"gap\" as a break in a line, in support of a contention that \"a recess in a line creates a gap in that line. \" Id. at 4- 5.", + "The Examiner explains that when the embodiment of in [sic] FIGs. 8A-D of Sen[] is modified to include a recess slot (gaps 980d between vertical tab 980c & overhanging portion 980a: FIGs. 12A-B \u00b7 \u25a0 \u25a0 & paras [0136]-[0138]) and a depth of the recess slot is optimized to attain any one of an optimum electric field over a wafer edge; an optimum magnetic field at the edge regions of a wafer; and an optimum electric field over a wafer edge and an optimum magnetic field at the edge regions of a wafer, such optimization can result in the depth of the recess slot being less than the thickness of the shadow ring 880.", + "In such case, the recessed slot having the 2nd annular bottom surface defines a thinned portion of the shadow ring 880 between the top of surface the ring [sic] and the 2nd annular bottom surface above the recess slot. Id. at 7 (citing an August 2, 201 6, summary of an Applicant Initiated Interview)." + ], + "ptab_opinion": [ + "Sen I 137 discloses that due to gaps 980d, spar portions are needed to maintain physical contact between vertical tab 980c (allegedly corresponding to the claimed \"pin member\") and overhanging portion 980a (allegedly corresponding to the claimed \"annular lip\"), thereby clearly indicating that gaps 980d are completely open, i.e., extend through the entire body of the shadow ring, as argued by Appellants.", + "Further, Sen uses the term \"recess\" in a manner consistent with its use in the present application, and does not use this term interchangeably with the term \"gap.\" See Sen I 112, Fig. 8A (describing recess 828c); compare Sen independent claim 12 (reciting \"a gap\"), with Sen dependent claim 13 (reciting \"a recess\"); of CAE Screenplates, Inc. V. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (*In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings. \").", + "Therefore, we agree with Appellants that gaps 980d in Sen Figures 12A-B are not recessed slots.", + "We also agree with Appellants that Sen paragraphs 133-138 do not support the Examiner's s finding that the gap characteristics are result-effective variables. See Advisory 7-8.", + "In sum, Appellants have argued persuasively that the Examiner reversibly erred in finding the applied prior art discloses or suggests a shadow ring having a recessed slot and a second annular bottom surface located therein in the manner recited in independent claims 1 and 7.", + "Accordingly we do not sustain the rejections of claims 1 and 7; nor do we sustain the rejections of dependent claims 2-6, 9-12, 20, and 21, which are based on the same, unsupported finding." + ] +} \ No newline at end of file diff --git a/opinion_split/2017006178_DECISION.json b/opinion_split/2017006178_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..cdf326aa20f757200de28c1a7ce35d2dddf6ce6d --- /dev/null +++ b/opinion_split/2017006178_DECISION.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [ + "INVENTION Appellants' disclosed invention relates to a training system for providing training to agents of an enterprise.", + "See Abstract of Appellants' Specification.", + "Claim 1 is illustrative of the invention and reproduced below: 1. A training system for training agents of an enterprise, comprising: a memory device storing executable instructions; a processor, the processor communicatively coupled to the memory device, the processor when executing the executable instructions: retrieves content from at least one predetermined resource; determines at least one topic based on the retrieved content; selects an answer for the at least one topic from the retrieved content based upon predefined rules; updates, based on the retrieved content, a knowledge database communicatively coupled to the processor with the at least one topic and the answer based on at least: a volume of messaging in the content involving the at least one topic; and an associated age of the messaging involving the at least one topic; and reports the at least one topic and the answer to one or more agent terminals of the enterprise.", + "Appellants argue, on pages 7 through 11 of the Appeal Brief and pages 2 through 6 of the Reply Brief, that the Examiner's rejection of claim 1 is in error.", + "Appellants' arguments directed to the first issue assert the rejection of independent claim 1 is in error as Cooper teaches that the query, which the Examiner equates to the claimed content, is received and not retrieved as claimed. App. Br. 8-9.", + "Appellants argue that receiving is passive whereas the claimed system which retrieves the data is active and thus different from the system of Cooper. App Br. 9-11; Reply Br. 2-4.", + "Appellants' arguments directed to the second issue assert the rejection of findependent claim 1 is in error because if**the *content* retrieved by Robinson was modified to be the 'queries' received by Cooper, then Robinson could no longer effectively *select an answer for the at least one topic from the retrieved content as required by claim 1.\" App. Br. 11; Reply Br. 5-6.", + "Appellants' arguments with respect to the rejection of claim 13 through 19 assert the rejection is in error for the same reason as claim 1. App. Br. 12.", + "Similarly, Appellants ague the Examiner*: 's rejection of claims 13 through 20 is in error of the same reason as claim 1." + ], + "examiner_findings": [ + "The Examiner rejected claims 1 through 20 under 35 U.S.C. 8 103 as unpatentable over Robinson (US 8,769,417 B1, issued July 1, 2014), Cooper (US 8,781,813 B2, issued July 15, 2014), and Azzam (US 8,560,567 B2, issued Oct. 15, 2013). Final Act. 3-16.", + "The Examiner provides an extensive response on pages 3 through 5 of the Answer.", + "The Examiner finds that Cooper teaches an embodiment where the logged queries are analyzed and used to update intent categories (which the Examiner equates to the claimed step of updating a knowledge database) via a matching process. Id.", + "The Examiner finds that this embodiment teaches an active process where the queries are retrieved. Id.", + "In response, the Examiner states the rejection is based upon: Robinson teaching a method and system of identifying answers to questions determined to be in discussion forum content and storing matching question and answers in a discussion data store being modified with Cooper's ability to update the intent categories of queries logged in a database based on frequency of queries received over a period of time by matching logged queries with intent categories and further modified with Azzam's ability to store pairs of automatically determined question and answer pairs in a store that is accessible to users \u00b7 \u00b7 \u00b7 \u00b7 The motivation for combining the prior art of Robinson, Cooper, and Azzam is that doing so would be provide more relevant responses to user queries, as stated in column I lines 6-15 of Cooper. Answer 6." + ], + "ptab_opinion": [ + "We have reviewed Appellants' arguments in the Briefs, the Examiner*s s rejections, and the Examiner's response to Appellants\" arguments.", + "Appellants' arguments have not persuaded us of error in the Examiner's determination that the claims are unpatentable.", + "Appellants' arguments present us with the following issues: 1) Did the Examiner err in finding the combination of Robinson, Cooper, and Azzam teaches retrieving content from a resource as recited in claim 12 2) Did the Examiner err in finding the skilled artisan would combine the teachings of Robinson and Cooper as the references would not perform the claimed functions when combined?", + "We find a preponderance of the evidence supports the Examiner's findings.", + "We particularly note the Examiner also found that Robinson teaches retrieving data (content) which the Appellants' arguments have not addressed. Final Act. 3 (citing Robinson, col. 6, II. 21-30); see also Robinson Abstract.", + "Thus, the Examiner has also shown that retrieving content (i.e., content requested) is known in the art, and as such Examiner has also shown that in combination with the other references in the rejection having Cooper retrieve the information would be obvious.", + "Accordingly, Appellants' arguments directed to the first issue have not persuaded us of error in the Examiner's rejection.", + "We concur with the Examiner, because: (1) Robinson teaches analyzing data (answers to questions) to perform one function, (2) Cooper teaches analyzing data to perform another function, and the Examiner is combining these teachings to perform both functions.", + "Appellants' argument is based upon a bodily incorporation of one references teaching into the other and assuming that the data (claimed content) contains only queries as is asserted that Cooper teaches.", + "*The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference \u00b7 \u00b7 Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).", + "See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) CM is not necessary that the inventions of the references be physically combinable to render obvious the invention under review. \"); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (\"Combining the teachings of references does not involve an ability to combine their specific structures. \").", + "Further, we do not find that Cooper identifies that the content must contain only queries, and cannot contain other data such as answers and the questions as discussed in Robinson.", + "Thus, Appellants' arguments directed to the second issue have not persuaded us of error in the Examiner's rejection of representative claim 1.", + "Accordingly, we sustain the Examiner's rejection of claim 1 and claims 2 through 12, grouped with claim 1. See 37 C.F.R. 8 41.37(c)(1)().", + "As we discussed above, we are not persuaded of error in the Examiner's 's rejection of claim 1, accordingly, we similarly sustain the Examiner's rejection of claims 13 through 20." + ] +} \ No newline at end of file diff --git a/opinion_split/2017006350_DECISION.json b/opinion_split/2017006350_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..323b2920389020c3d513befa2132dfd07d01c01d --- /dev/null +++ b/opinion_split/2017006350_DECISION.json @@ -0,0 +1,28 @@ +{ + "appellant_arguments": [ + "Appellants contend the cited portions of Konchitsky do not teach the limitations *determining a degree of convergence of the adaptive response, **enable[ing] adaptation of the adaptive response if the degree of convergence of the adaptive response is below a particular threshold,' and \"disabling adaptation of the adaptive response while continuing to apply the adaptive response to generate the anti-noise signal if the degree of convergence of the adaptive response is above a particular threshold, \" as recited in claim 18. App. Br. 10.", + "Appellants argue the Examiner appears to make assertions regarding Rasmusson's and Konchitsky's teachings that completely foreclose any further innovations in the field of audio systems. App. Br. 11-12." + ], + "examiner_findings": [ + "In rejecting claim 18, the Examiner found Konchitsky's process of enabling/disabling noise reduction based on a threshold, where, if the signal is greater than the threshold, noise reduction is enabled, and, ifit is less than the threshold, noise reduction is disabled, teaches or at least suggests the disputed enabling and disabling limitations of claim 18. Ans. 16 (citing Konchitsky 11 41, 47).", + "The Examiner also found Rasmussen's convergence determination, indicating a degree to which the filter arrangement has adapted, teaches or at least suggests the disputed claim limitation \"a degree of convergence of the adaptive response,\" recited in claim 18. Ans. 17 (citing Rasmussen, col. 4, II. 25-26, 49-53)." + ], + "ptab_opinion": [ + "ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred.", + "We disagree with Appellants' contentions.", + "Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief.", + "We concur with the conclusions reached by the Examiner.", + "We highlight the following additional points.", + "We are not persuaded of Examiner error.", + "Appellants have not presented persuasive arguments or objective evidence addressing the combined teachings of Konchitsky and Rasmusson.", + "Instead, Appellants attack the prior art references individually, even though the Examiner relied on the combination of the references as teaching or suggesting the disputed limitations.", + "See Br. 10-12, see also Final Act. 2-6; In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (\"[T]he test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art. \").", + "The question under 35 U.S.C. 8 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.", + "Merck & Co. V. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989); see also MPEP 6 2123.", + "Moreover, Appellants have not presented persuasive explanation or objective evidence to persuade us that modifying Konchitsky's selectively enabling or disabling the adaptive noise cancellation circuit, based on the noise threshold, with Rasmusson's supplemental signal processing would have been \"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. Fischer-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. 398,418-19 (2007)).", + "For these reasons, we are not persuaded the Examiner erred in finding the combination of Konchitsky and Rasmusson teaches or suggests the limitations of claim 18.", + "Accordingly, we sustain the 35 U.S.C. 6 103 rejection of independent claim 18.", + "We also sustain the separate 35 U.S.C. 8 103 rejection of claims 1, 35, and 36, which Appellants argue are patentable for similar reasons. App. Br. 10, 12.", + "We also sustain the 35 U.S.C. & 103 rejection of dependent claims 2-17, 19-34, and 37-40, for which Appellants make no separate, substantive arguments for patentability. App. Br. 12." + ] +} \ No newline at end of file diff --git a/opinion_split/2017006736_DECISION.json b/opinion_split/2017006736_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..99c26045db5cd9c9595effc07c3f7130249d915f --- /dev/null +++ b/opinion_split/2017006736_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "Appellants contend, among other things, the Examiner errs in finding McHugh discloses or suggests this limitation. Appeal Br. 10- 11; Reply Br. 2.", + "Instead, Appellants assert \"McHugh teaches a desired rhythm is selected by a user [from pre-programmed rhythm pattern data] and the user-selected rhythm is then played at the tempo of the user's s heartbeat. Appeal Br. 10-11 (citing McHugh, col. 5, II. 8-10).", + "In reply, Appellants submit that \"playing a single rhythm at two different tempos is irrelevant.\" Reply Br. 2.", + "Rather, Appellants assert McHugh's disclosure of \"playing\" a single rhythm at two different tempos does not disclose or suggest \"selecting\" a media content based on a moving pattern of the portable device. Reply Br. 2." + ], + "examiner_findings": [ + "Claims 1-21 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over McHugh (US 6,230,047 B1; May 8, 2001) and Howard (US 6,747,632 B2; June 8, 2004). Final Act. 3-8.", + "In rejecting claim 1, the Examiner finds McHugh teaches \"selecting a media content based on the moving pattern\" with McHugh's disclosure of an apparatus that receives a signal of a user's heartbeat and triggers a programmed rhythm that is played in a music playback device at a tempo corresponding to the user's s heartbeat. Final Act. 3 (citing McHugh, Fig. 3, col. 2, II. 54-64).", + "In response, the Examiner maintains that McHugh teaches the disputed \"selecting\" limitation because \"a single rhythm, played at two different tempos, is considered to be two different pieces of *media content' based [on] a reasonable interpretation of the phrase 'media content.' *, Ans. 3.", + "Rather, the Examiner finds Howard teaches an *accelerometer for detecting user input\" and *performing a user input based upon movement of a portable device\" and explains that Howard was \"cited \u00b7 \u00b7 . to show that it is known in the art to use an accelerometer to monitor the movement of an entire device.\" Final Act. 3-4 (citing Howard, col. 3, 11. 22-25); Ans. 2 (citing Howard, col. 3, II. 15-25), see also Ans. 3." + ], + "ptab_opinion": [ + "Appellants appeal under 35 U.S.C. $ 134(a) from a final rejection of claims 1-21.", + "We have jurisdiction over the pending claims under 35 U.S.C. 8 6(b).", + "We reverse.", + "Claims 1. 8, and 15 are independent claims.", + "Claim 1, reproduced below, is illustrative of the claimed subject matter:", + "1. A method, comprising: determining whether a portable device is moving using an accelerometer; determining a moving pattern of the portable device based on movement data provided by the accelerometer; selecting a media content based on the moving pattern of the portable device; and playing the selected media content via the portable device.", + "Having considered the Examiner's rejection in light of each of Appellants\" arguments and the evidence of record, we find the Examiner errs.", + "McHugh's disclosures of playing a rhythm at different tempos based on a user's 's heartbeat do not support the Examiner's finding that McHugh teaches or suggests *selecting a media content based on the moving pattern, *, as claimed.", + "To the contrary, only after selecting a rhythm does McHugh's apparatus adjust or set the rhythm's tempo based on the user's heartbeat.", + "See McHugh, col. 1, 11. 44-46 (*The audio comprises a rhythm that is played at a selected tempo corresponding to an individual's heart rate. \"), col. 2, II. 54-col. 3, II. 13 (describing a pre-programmed rhythm that is played at a certain tempo in relation to the user's heartbeat), col. 5, 11. 40-44 (*[A] triggered, programmed rhythm \u00b7 . \u00b7 is played at the tempo of the user's heart rate. As the user's s pulse rate increases, the tempo of the rhythm correspondingly increases; as the user's pulse rate decreases, the tempo of the rhythm correspondingly decreases. \").", + "The Examiner has not provided sufficient persuasive evidence that McHugh selects a rhythm to be played based on or in accordance with a moving pattern of the user's heartbeat.", + "Further, the Examiner's s findings are inconsistent with the Specification and the claimed invention, which distinguish between (1) selecting a rhythm that has a tempo corresponding to a moving pattern; and (2) while playing a rhythm, adjusting the rhythm's tempo to match the moving pattern.", + "Compare Spec. I 121 (disclosing that **application software may \u00b7 \u00b7 \u00b7 select \u00b7 . \u00b7 a multimedia content that is best suitable for the determined user's activities (e.g., joggling [sic] rate)\" and \"when the accelerometer \u00b7 \u00b7 . detects that a user is performing certain types of activities, an associated type of multimedia contents may be selected\"), I 122 (\"digital multimedia content having a rhythm relatively matched with the determined repetitive rate [of the movements of the portable device] is optionally selected and played\"), and claim 4 (\"selecting . \u00b7 \u00b7 media content that has a tempo relatively matched with the repetitive rate of the movement\"), with Spec. I 120 (*the tempo of a music currently played by an MP3 player may be adjusted to relatively match the joggling rate of the user holding the MP3 player\") and claim 3 (*adjusting a rhythm of the media content to relatively match the repetitive rate of the movement\").", + "In light of the evidence of record, the cited disclosures of McHugh do not support the Examiner' s finding that McHugh teaches or suggests \"selecting a media content based on the moving pattern,\" as recited in claim 1.", + "Further, the Examiner does not find or explain that Howard teaches or suggests the \"selecting\" limitation. See Final Act. 3-4; Ans. 2-3.", + "Additionally, the Examiner has not provided an adequate rationale to fill the gaps in the cited prior art. See Final Act. 3-4; Ans. 2-3.", + "Therefore, having considered the Examiner's rejection of independent claims 1, 8, and 15 in light of Appellants' arguments and the evidence of record, we do not sustain the Examiner's rejection of claims 1, 8, or 15, nor do we sustain the Examiner's 's rejection of dependent claims 2-7, 9-14, and 16-21." + ] +} \ No newline at end of file diff --git a/opinion_split/2017006953_DECISION.json b/opinion_split/2017006953_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..592bcb6711a2520ab2c6f0bde91b264938ffd7f1 --- /dev/null +++ b/opinion_split/2017006953_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "Claims 1 and 3-21 are rejected under 35 U.S.C. 6 103(a) as being unpatentable over Donaldson (US 6,321,267 B1, issued Nov. 20, 2001), Fanton (US 2006/0150256 A1, published July 6, 2006), and Kikuchi (US 2002/0010740 AI, published Jan. 24, 2002)", + "First, the Examiner asserts the italicized claim limitation merely states an intended use, and does not constitute a patentable distinction.", + "In particular, the Examiner's assertion that \"Donaldson . [t]hereby satisfying the intent of the intended use recited by the claim language\" (Ans. 3) is insufficient to support the rejection.", + "Second, the Examiner cites Donaldson's column 19, lines 15-26 for teaching the disputed claim limitation. See Final Act. 6." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejection in light of Appellants' contentions and the evidence of record.", + "We concur with Appellants* contention that the Examiner erred in finding the cited portions of Donaldson teach identifying, at the proxy server, a trusted-domain database that identifies trusted source domains for software vendors that have been verified as publishing trusted files; determining, by causing the proxy server to query the trusted-domain database using the source domain, that the source domain associated with the file exists within the trusted-domain database as a trusted domain for a trusted software vendor, as recited in independent claim 1 (emphasis added).' See App. Br. 7-11; Reply Br. 2-6.", + "See Ans. 2-3, We disagree.", + "\"It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.\" In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).", + "Claim I is a method--not a product--claim, and Schreiber's intended-use doctrine is inapplicable here.", + "Additionally, claim 1 also recites *query the trusted-domain database using the source domain, that the source domain associated with the file exists within the trusted-domain database as a trusted domain for a trusted software vendor.\" \" Claim 1 (emphasis added).", + "In any event, the Examiner has not established why \"a trusted-domain database that identifies trusted source domains for software vendors that have been verified as publishing trusted files\" merely constitutes intended use, and should not have patentable weight. See Reply Br. 2-4.", + "We have reviewed the cited Donaldson portions, and they do not teach *identifying, at the proxy server, a trusted-domain database that identifies trusted source domains for software vendors that have been verified as publishing trusted files,\" as required by claim 1.", + "In particular, the cited Donaldson's 's portions do not teach the claimed *software vendors that have been verified as publishing trusted files, and Donaldson's mail domains are not the claimed *software vendors that have been verified as publishing trusted files,\" as that term is understood by one skilled in the art.", + "Absent further explanation from the Examiner, we do not see how the cited Donaldson's portions teach the disputed claim limitation.", + "Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner's rejection of claim 1.", + "We also reverse the Examiner*s rejection of corresponding dependent claims 3-21 for the same reasons." + ] +} \ No newline at end of file diff --git a/opinion_split/2017007067_DECISION.json b/opinion_split/2017007067_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..040128be35c50c630c139f019041546a3b9067b7 --- /dev/null +++ b/opinion_split/2017007067_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "According to the Appellants, the device *is capable of reducing insertion loss, and is applicable to electronic devices, such as mobile phones\" (id. at 58, 11. 15-17).", + "The Appellants' principal argument is that no prima facie case of obviousness exists because \"the Examiner takes portions of each of Yamane and Kimura out of context and ignores portions of the references that would have discouraged one of ordinary skill in the art from making the asserted combination\" (Br. 8).", + "Specifically, the Appellants point out that Yamane requires its IDT electrode to satisfy an inequality defined as (h/2)xa50.05, where h is the thickness of the interdigital electrode, 2 is the period of electrode fingers of the interdigital electrode, and a is the ratio of the density of a metal of the interdigital electrode to the density of Au, but Kimura's IDT electrodes would have inequality values above the upper limit of 0.05 required by Yamane (id. at 8-11).", + "The Appellants rely on the same arguments offered for Rejection A, adding only that Seki does not cure the alleged deficiencies in the Examiner's combination of Yamane and Kimura (Br. 13)." + ], + "examiner_findings": [ + "A. Claims 1-13, 16, 19, and 21-27 as unpatentable over Yamane et al.3 (hereinafter \"*Yamane\") and Kimura et al.4 (hereinafter *Kimura*); and", + "B. Claims 14, 15, 17, 18, and 20 as unpatentable over Yamane, Kimura, and Seki et al.s (hereinafter *Seki\"). (Ans. 2-3; Final Act. 2-16.)", + "The Examiner finds that Yamane describes an acoustic wave device having most of the limitations recited in claim 1, including an IDT electrode, but acknowledges that the reference does not disclose the specific IDT electrode recited in the claim (Final Act. 2-3).", + "The Examiner finds further, however, that Kimura teaches an IDT electrode, which satisfies the limitations missing in Yamane, as providing an improvement in terms of electromechanical coupling coefficient to an acoustic wave device (Final Act. 3; Ans. 2-3),", + "The Examiner concludes from these findings that a person having ordinary skill in the art would have combined Yamane and Kimura in the manner claimed by the Appellants (Final Act. 3; Ans. 2-3).", + "As the Examiner explains (Ans. 2), Yamane's 's teaching regarding the inequality being less than or equal to 0.05 is disclosed in the context of a preferred embodiment--not an absolute requirement (Yamane I 10 (\"A preferred embodiment of the present invention \u00b7 .\")." + ], + "ptab_opinion": [ + "The subject matter on appeal relates to an acoustic wave device including a specified IDT (interdigital transducer) electrode (Specification filed October 3, 2012, hereinafter \"Spec.,\" \" 1, 1. 6; 2, I. 3-6; 7, I. 8-9).", + "Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief (Br. 14), with key limitations emphasized, as follows:", + "1. An acoustic wave device comprising: a piezoelectric body; an IDT electrode disposed above the piezoelectric body, the IDT electrode exciting a main acoustic wave having a wavelength 2, the IDT electrode including a first electrode layer mainly made of molybdenum disposed above the piezoelectric body and a second electrode layer mainly made of aluminum disposed above the first electrode layer, the IDT electrode having a total thickness not more than 0. 152, the first electrode layer having a thickness not less than 0.052, the second electrode layer having a thickness not less than 0.0252; a silicon oxide film disposed above the piezoelectric body and covering the IDT electrode, the silicon oxide film having a thickness between 0.22. and 12, the thickness ofthe first electrode layer selected based on the thickness of the silicon oxide film; and a dielectric film having a thickness between 12, and 52 disposed above the silicon oxide film, the dielectric film including a medium allowing a transverse wave to propagate through the medium faster than the transverse wave propagates through the silicon oxide film.", + "On appeal, the Examiner maintains two rejections under pre-AlA 35 U.S.C. & 103(a):", + "The Appellants argue claims 1-13, 16, 19, and 21-27 together (Br. 8-13).", + "Therefore, we confine our discussion to claim 1. which we select as representative pursuant to 37 C.F.R. S 41.37(c)(1)(iv).", + "As provided by this rule, claims 2-13, 16, 19, and 21-27 stand or fall with claim 1.", + "The Appellants' argument fails to identify any reversible error in the Examiner's rejection.", + "In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).", + "Furthermore, according to the Appellants' own calculations (Br. 11), when molybdenum is selected as the first electrode layer as in Kimura (Kimura 1 59), the resulting IDT electrode would have an inequality between 0.0529 and 0.0598--values that are very close to Yamane's 0.05 as disclosed in its preferred embodiment.", + "In view of the closeness of such values, a person having ordinary skill in the art would have reasonably expected Kimura's 's IDT electrode based on molybdenum as the first electrode layer and aluminum as a second electrode layer (id. 99 59, 65), when implemented in Yamane, would provide beneficial results in terms of electromechanical coupling coefficient as taught by Kimura (id. I 45).", + "Under these circumstances, we discern no merit in the Appellants' position that a person having ordinary skill in the art would have been dissuaded from combining Kimura with Yamane.", + "In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (\"Nothing in the prior art teaches that the proposed modification would have resulted in an 'inoperable' process. \").", + "For these reasons and those given by the Examiner, we uphold Rejection A.", + "Because the Examiner's reliance on the combined teachings of Yamane and Kimura is not deficient, we uphold Rejection B for the same reasons discussed above." + ] +} \ No newline at end of file diff --git a/opinion_split/2017007346_DECISION.json b/opinion_split/2017007346_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0c5f3949c9901c8876621d9af59004fe35cd0c7a --- /dev/null +++ b/opinion_split/2017007346_DECISION.json @@ -0,0 +1,44 @@ +{ + "appellant_arguments": [ + "Appellant argues for reversal of this rejection with respect to two separate groups of claims: (i) claims 1, 2, and 4-7, Appeal Br. 7-10; and (ii) claims 8-12, 16-18, and 20. Id. at 10-11.", + "Appellant argues for reversal of the rejection of these claims as obvious based upon the limitations of ofindependent claim 1 and do not present substantive argument with respect to dependent claims 2 and 4-7,", + "Appellant argues that this rejection should be reversed because: (1) Boutwell would have led one of ordinary skill in the art to use tape cast barrier coatings to coat internal cavity surfaces, but would not have led such an artisan any reason to modify Lee *442, Appeal Br. 8-9, (2) \"Boutwell discloses that *the tape cast barrier coatings can overcome line-of-sight issues presented by conventional barrier coatings,\" \" such as CVD and EBPVD, id. at 9, and (3) \"[the Examiner is reading Boutwell selectively,\" but not \"as a whole,\" because it *does not suggest that any technique capable of overcoming line-of-sight issues can or should be modified to coat interior surfaces.\" \" Reply Br. 6-7," + ], + "examiner_findings": [ + "Claims 1, 2, 4-12, 16-18, and 20 are rejected under 35 U.S.C. $ 103 as unpatentable over the combination of Lee *4423 and Boutwell.4 Final Act. 3; Answer 2.", + "Claim 13 is rejected under 35 U.S.C. 8 103 as unpatentable over the combination of Lee *442, Boutwell, and Lee *432, 5 Final Act. 18; Answer 17.", + "Claim 19 is rejected under 35 U.S.C. 8 103 as unpatentable over the combination of Lee *442, Boutwell, and Haas. 6 Final Act. 21; Answer 20.", + "The Examiner rejected claims 1, 2, 4-12, 16-18, and 20 as obvious over the combination of Lee *442 and Boutwell. Final Act. 3; Answer 2.", + "In rejecting claim 1, the Examiner found Lee *442 teaches or suggests each recited method step, with the exception of depositing a barrier coating on the internal cavity of a gas turbine engine by an electron beam vapor. Answer 1-3.", + "The Examiner found, however, that \"Lee '442 does teach that\" the process may improve coating uniformity on surfaces that are not readily exposed to a cloud of vaporized target material, such as surfaces that are not in a line-of-sight between the targets and the substrate.\" Id. at 3-4 (citing Lee *442 I 57).", + "The Examiner further found that Boutwell teaches that: (i) *most high temperature gas turbine engine components would benefit from both exterior and interior coating with a barrier coating,\" \" Answer 4 (citing Boutwell 11 7, 18), and (ii) *tape cast barrier coatings can overcome line-of-sight issues presented by conventional barrier coatings[,] thereby allowing the barrier coating to be conveniently placed both externally and internally on the component.\" Id. (citing Boutwell I 32).", + "Thus, the Examiner determined that it would have been obvious for the ordinary skilled artisan to modify Lee '442's directed vapor deposition (DVD) to coat the interior surface of a substrate with barrier coatings because Boutwell teaches that such surfaces also benefit from the coatings. Answer 22.", + "The Examiner further determined that because Lee *442 teaches that DVD overcomes the issues of line-of-sight coating, it would have been capable of forming such coatings by directing the vapor cloud to the interior surface that is not readily exposed. Id. at 21-22,", + "The Examiner rejected claim 13 as obvious over the combination of Lee *442, Boutwell, and Lee *432. Final Act. 18; Answer 17.", + "The Examiner rejected claim 19 as obvious over the combination of Lee *442, Boutwell, and Haas. Final Act. 21; Answer 20." + ], + "ptab_opinion": [ + "We address Appellant's arguments regarding each group of claims in turn.", + "The dependent claims, therefore, stand or fall with representative claim 1. 37 C.F.R. 8 41.37(c)(1)().", + "We address these arguments below.", + "First, Appellant's argument (1) is not persuasive because the Examiner has identified a sufficient motivation to modify Lee *442 in view of Boutwell's teachings.", + "We agree with the Examiner.", + "The applied prior art teaches that line- of-sight issues may be overcome by employing various techniques--a person of ordinary skill in the art at the time of the invention would have reasonably inferred that Lee '442's DVD technique may overcome such issues.", + "Appellant's argument is not directed to the Examiner's rationale set forth above and in the Answer for modifying Lee *442 to incorporate Boutwell's teachings.", + "Thus, Appellant's argument does not identify reversible error in the Examiner's determination.", + "Second, Appellant's arguments (2) and (3) are unpersuasive because the applied prior art teaches two techniques that overcome line-of-sight issues.", + "Thus, such modification would have come at the expense afforded by employing Lee '442's DVD, such as increased coating control. Lee *442 I 57.", + "Thus, a person of ordinary skill in the art would have understood and weighed this tradeoff in benefits.", + "Appellant's argument fails to identify reversible error in the Examiner's determination that it would have been obvious to employ any known technique that overcomes line-of-sight issues, including Lee '442's DVD.", + "Appellant relies on the same arguments that we previously found unpersuasive in connection with arguments for reversal of claims group (1) above. Appeal Br. 11.", + "They are similarly unpersuasive for the reversal of claims 8-12, 16-18, and 20. 37 C.F.R. $ 41.37(c)(1)(iv).", + "For the reasons set forth above and in the Answer, we are not persuaded by any of Appellant's arguments for reversal of the obviousness rejection of claims 1, 2, 4-12, 16-18, and 20.", + "We, therefore, affirm Rejection 1.", + "Appellant relies on the same arguments that we previously found unpersuasive in connection with arguments for reversal of claims group (1) above. Appeal Br. 11.", + "They are similarly unpersuasive for the reversal of claim 13. 37 C.F.R. 6 41.37(c)(1)().", + "Thus, we affirm Rejection 2.", + "Appellant relies on the same arguments that we previously found unpersuasive in connection with arguments for reversal of claims group (1) above. Appeal Br. 12.", + "They are similarly unpersuasive for the reversal of claim 19. 37 C.F.R. 6 41.37(c)(1)(iv).", + "We, therefore, affirm Rejection 3." + ] +} \ No newline at end of file diff --git a/opinion_split/2017007349_DECISION.json b/opinion_split/2017007349_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..84018aa608d0b6ed854d2e6b9385337b8ae475f4 --- /dev/null +++ b/opinion_split/2017007349_DECISION.json @@ -0,0 +1,74 @@ +{ + "appellant_arguments": [ + "Appellant contends Ikoma is deficient because it does not disclose selectively discarding based on \"a priority of data.'", + "More specifically, Appellant argues the decision to discard a packet in an overload state is not based *on a priority of the data\" because Ikoma teaches only that the combination of the destination address and a protocol value of the packet is used to ascertain the discard/pass instruction.", + "According to Appellant, \"the discard/pass criteria of Ikoma et al. is based on an occurrence percentage of that type of data packet and not a priority of the data itself.\"", + "Appellant argues Ikoma's filtering process does not teach or suggest selectively discarding based on \"a priority of the data.", + "Appellant argues *[nJeither the destination address nor the protocol (e.g., IPv4, IPv6, etc.) reflect a priority of the payload data within the reception packet.\"", + "Appellant argues the combination is improper because the references are not analogous art.", + "More specifically, Appellant argues Ikoma and Morein are not analogous art because Morein *is completely unrelated to network communication.\"", + "Appellant further contends Ikoma and Morein are directed to different problems--- Ikoma to selective discarding of reception packets and Morein to parallel processing in high speed graphics.", + "Appellant argues the rejection is in error because Assia teaches only *performing a cyclic redundancy check in a main processor (i.e., the CPU), and not in a data unit processing engine as recited in claim 8.\"", + "According to Appellant, even if Assia's cyclic redundancy check were applied to Ikoma's system, it **would result in a device where the CRC is performed in processor 4 of Ikoma, and not in packet reception control device 100.\"", + "Appellant contends the Examiner has erred because *no pre- processing of the reception packets is performed by the packet transfer section 660, and thus none of the data received by the main processor 4 is pre-processed data as claimed.' \"", + "Appellant contends Ikoma is deficient because *no classification engine is taught or suggested that assigns a priority to the received data that is then employed in determining whether such data should be discarded by the auxiliary processor as claimed.\" \"" + ], + "examiner_findings": [ + "Claims 1-7 and 15-20 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Ikoma and Morein.", + "Claims 8-12 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Ikoma and Assia.", + "Claims 13-14 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Ikoma, Assia, and Tuck.", + "In rejecting claim 1 under 35 U.S.C. S 103(a), the Examiner finds Ikoma and Morein teach or suggest all of the recited claim limitations.", + "Relevant to this issue, the Examiner finds Ikoma teaches the limitation **wherein the auxiliary processing device is configured to selectively discard received data to be processed by the main processing device based on the load of the main processing device and a priority of the data. \"", + "The Examiner finds Ikoma teaches an auxiliary processing device having load detection section 620 that detects a load on processor 4 and outputs the result to a filter rule setting portion 642.", + "The Examiner additionally finds Ikoma's filter rule section 620 uses filtering rules to discard certain types of packets when processor 4 is in an overload state.", + "The Examiner explains that those packets which, according to the filtering rules, are discarded, have a lower priority.", + "Second Issue-- Combination of Ikoma and Morein As noted above, the Examiner relies on Ikoma and Morein in concluding claims 1-7 and 15-20 would have been obvious.", + "With respect to independent claims 1 and 15, the Examiner relies primarily on Ikoma, finding it teaches all limitations except *process[ing] data not needing processing by the main processing device and outputting it as processed data. \"", + "To cure this deficiency, the Examiner cites Morein, finding it teaches this limitation because it discloses the use of a second processor that actively performs other functions and is used only when the primary processor is overloaded.", + "The Examiner finds Ikoma and Morein are analogous art *because they are in the same field of endeavor of network communication.\"", + "The Examiner further finds a person of ordinarily skill in the art would have sought to improve Ikoma by adding a second processor which processes data not needing processing by the primary processor, as taught by Morein, because doing so would allow them \"to utilize the second processor as a reserve processor when the primary processor 110 becomes overloaded.\"", + "Third Issue-Independent Claim 8 The Examiner rejects independent claim 8 as unpatentable over Ikoma in view of Assia.", + "As with the other independent claims, the Examiner relies primarily on Ikoma, finding it teaches all but the limitation of **wherein the data processing engine is configured to perform a cyclic redundancy check on the received data unit. \"", + "The Examiner relies on Assia to supply this limitation, finding it teaches performing cyclical redundancy checks on received frames.", + "The Examiner concludes it would have been obvious to incorporate Assia's 's cyclic redundancy check into Ikoma's system, finding that an ordinarily skilled artisan would have been motivated to do so in order to detect errors in received data.", + "As explained by the Examiner, Assia is relied upon only to show that it was known to perform error checking, including cyclic redundancy checks, on received data frames.", + "The Examiner does not rely on Assia to supply the recited *data processing engine, \" but instead relies on Ikoma for that teaching.", + "In rejecting the claim over Ikoma and Morein, the Examiner finds Ikoma teaches this limitation.", + "More specifically, the Examiner finds the packet reception control device described in connection with Figure 11 forwards pre- processed data because it processes reception packets to make a discard/pass determination, and because those packets receiving a pass determination are forwarded to the memory 8 and then to processor 4.", + "The Examiner finds this limitation taught by Ikoma.", + "The Examiner explains that discard/pass determination portion 656 depicted in Figure 11 of Ikoma compares received packets with the filters stored in filter table 652.", + "As a result of this comparison, ifa match is not found, a packet is categorized/classified as high priority, and allowed to pass to the main processor." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We affirm.", + "We are not persuaded by Appellant's s argument.", + "We agree with the Examiner that this determination amounts to assigning a priority to the packets within the meaning of Appellant's claims.", + "The problem with Appellant's argument is that relies on an unduly narrow characterization of what constitutes a \"priority.\"", + "The claims do not require, however, that the \"priority\" be the priority of the \"payload data within the reception packet.\"", + "Rather, the claims merely recite that the discarding be based on \"priority of the data\" in a more general sense.", + "By determining that certain packets are outside the scope of the filtering rules, they are \"treated as more important\" than those that that match the filtering rules and are consequently discarded.", + "As such, the packets are \"selectively discarded\" based on the \"priority of the data.'", + "~ Moreover, the mere fact that data is not randomly discarded in Ikoma at least suggests that the data is prioritized in some fashion.", + "Appellant's claims do not specify the basis of the prioritization; they require only that data be prioritized in making the discard/pass decision.", + "We agree with the Examiner that Ikoma satisfies this requirement.", + "We disagree.", + "Appellant does not contend Ikoma is not analogous to the claimed invention.", + "Rather, Appellant appears to argue Ikoma and Morein are not in same field of endeavor.", + "The test, however, requires that we compare each reference to the claimed invention, and not to the other reference as Appellant has done here.", + "Appellant does not dispute that Ikoma is from the same field as the claimed invention.", + "See App Br. 10 (\"While Ikoma indeed relates to network communication \u00b7 .\" Therefore, the issue turns on whether Morein is in the same field as the claimed invention, or if not, whether it is reasonably pertinent to the problem faced by the inventors.?", + "We agree with the Examiner that Morein is at least reasonably pertinent to the problems faced by the inventor because it relates to *load control/sharing of a processing unit.", + "We agree with the Examiner (Ans. 9-10) that a person of ordinary skill in the art, concerned with reducing latency and delay due to processor overload, would find useful Morein's teachings regarding the use of reserve processors in overload situations (see Morein col. 5, 11. 45-52) and would consider those teachings to be at least reasonably pertinent to the problem.", + "Accordingly, we are not persuaded Ikoma and Morein are improperly combined.", + "We are not persuaded by this argument.", + "Appellant's argument attacks the references singly, when the rejection made by the Examiner is based on the combined teachings of Ikoma and Assia.", + "Moreover, we agree with the Examiner that *Assia does not explicitly limit the cyclic redundancy check function can only be performed by a main processor\" (Ans. 11) and that an ordinarily skilled artisan would have appreciated that Assia's error checking could be incorporated into processing units other than the main CPU.", + "Accordingly, we are not persuaded the Examiner erred in rejecting claim 8.", + "We are not persuaded by Appellant\" s argument because it is premised on an overly narrow interpretation of *pre-processed data.\" \"", + "As such, Ikoma teaches the recited *preprocessed data, \", and we are not persuaded the Examiner has erred in rejecting claim 2.", + "Appellant does not provide any definition for the recited **classification engine. \"", + "Based on this limited description, we conclude the recited *classification engine\" is broadly, but reasonably defined in terms of the function it performs, namely any component or process that assigns priorities to incoming packets.", + "Applying that definition, we agree with the Examiner that Ikoma's discard/pass determination is encompassed by the recited *classification engine\" because, as we explained above, Ikoma prioritizes the data in order to make the discard/pass decision in each instance." + ] +} \ No newline at end of file diff --git a/opinion_split/2017007536_DECISION.json b/opinion_split/2017007536_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ff5455ef53ef8669e672a23a471d044760d85378 --- /dev/null +++ b/opinion_split/2017007536_DECISION.json @@ -0,0 +1,84 @@ +{ + "appellant_arguments": [ + "According to Appellants, there are no associations between these services on networks, requiring copying and pasting of data between services.", + "Ans. 2-16, THE CONTENTIONS Claims 13, 16, 19-21, and 23 Appellants argue Kreder is non-analogous art.", + "In particular, Appellants assert Kreder is not in the same field of endeavor as the inventors' efforts and \"is directed to identifying booksellers for a textbook associated with a particular course.\"", + "Appellants also argue Kreder fails to teach the limitation *determining other services associated with the service based on a service template of the service in response to a selection of the tagged data item\" in claim 13.", + "Specifically, Appellants argue that the single service being requested in paragraph 41 of Kreder is comparative pricing/sourcing information for a textbook and not a requested service and other services associated with the service as recited in claim 13.", + "Appellants further argue the Examiner has not identified the *service template of the service\" and pertinent book information (Ans. 3) is not a template directly associated with the requested service.", + "Appellants also contend the Examiner uses the pertinent book information as both the recited \"data item\" and the \"service template of the service.\"", + "Lastly, Appellants assert, because only one service exists in Kreder, there are not \"other services associated with the service\" and there are not outputs provided as recited.", + "\" Appellants argue that Kreder only teaches requesting a single service (i.e., comparative pricing/sourcing information for a textbook) and not a requested service and other services associated with the service as claimed.", + "Although initially arguing that providing comparative-pricing information is a service and is the requested service in Kreder (App. Br. 12), Appellants later state such providing of comparison book prices cannot be \"other services\" because *[i]nformation alone is neither a service nor a plurality of services\" (id. at 15).", + "Appellants next assert that the Examiner has not identified the recited *service template of the service\" in the limitation \"other services associated with the service based on a service template of the service.\" \"", + "Appellants contend \"the *service template' [of the service] is directly associated with the 'service' (i.e., the initially requested service.)\"", + "Appellants further argue the Examiner has mapped pertinent book information to both the recited *data item\" and \"a service template of the service.\"", + "Lastly, Appellants contend Kreder teaches a single service providing an output and not \"other services \u00b7 \u00b7 \u00b7 provide outputs\" as recited.", + "Appellants contend that the cited passage by the Examiner does not mention the pertinent book information, which has been mapped by the Examiner to the recited \"service template.\" \"", + "Moreover, Appellants state \"the Examiner's cited passage does not mention additional *pertinent book information' that is associated with the initial book information.\"", + "Appellants repeat the argument that the Examiner relies on pertinent information for both the recited *data item\" and the recited \"service template.\"", + "Appellants additionally argue that the Examiner has relied on this same pertinent information as the recited *context of the service\" in claim 15.", + "Among the assertions presented, Appellants argue Kreder's **pricing information\" is not an association score, as claimed\" because it *is not reflective of an association *between the other service template and that service template' as claimed.\"" + ], + "examiner_findings": [ + "The Rejection Claims 13-25 are rejected under 35 U.S.C. S 103(a) as unpatentable over Kreder and McNeely.", + "Kreder \" 30-31, 41, Figs. 5-10; see also Ans. 4 (explaining \" **display[ing] the cheapest single or multiple cheapest suppliers for the required course material' \u00b7 . could be interpreted as *other services associated with the service . \u00b7 \") (italics and underlining omitted).", + "The Examiner additionally states links are generated in Kreder, which direct the user to a book on a specific vendor's website (e.g., yet another *other service\").", + "However, the Examiner has distinguished the recited *data item\" from the recited \"service\" template.\" \"", + "The Examiner describes the recited \"service template\" as comprising an ISBN, title, author, edition, and publisher and the recited *data item\" as comprising the attributes of each of ISBN number, title, author, edition, and publisher.", + "See Ans. 5-6 (discussing Kreder 11 47-48, Figs. 8-9) (discussing Figures 8 and 9 when addressing \"other service templates\" and explaining how pricing charts in the comparative- pricing tools are generated using the ISBN, title, author, publisher, edition).", + "As presented, the rejection turns to Kreder's paragraph 45, Figure 5. and Figure 6 to teach the recited \"context of the service.\"", + "Specifically, the Examiner states Figure 6 shows a webpage 133 that \"displays the course materials that corresponds to the information previously entered by the user\" shown in Figure 5.", + "For this above-quoted limitation, the rejection states Kreder teaches generating a cheapest single vendor and cheapest multiple vendors." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We affirm in part.", + "Based on the record before us, we determine Kreder is analogous art.", + "As Appellants correctly indicate (App. Br. 9), \"[t]he analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.\"", + "Notably, Appellants do not state what the field of endeavor for the instant invention is.", + "At best, Appellants identify \"*[the function of the claimed invention involves receiving a request for a service, providing a service, and determining other services associated with the requested service.\" \"", + "Assuming the above- identified function is what Appellants consider to be within the field of endeavor, Kreder is still within this field.", + "Thus, although classified differently (App. Br. 11), the above discussion demonstrates Kreder is analogous art.", + "We next consider the disputed limitation of representative claim 133 which calls for, in pertinent part, *an other service determination module for determining other services associated with the service based on a service template of the service in response to a selection of the tagged data item.", + "We are not persuaded.", + "The phrase *other services\" has not been defined in the Specification, such that we must construe the phrase to have a particular meaning.", + "Notably, the disclosure also does not provide an explicit example of what the recited *other services associated with the service\" are.", + "For example, the Specification includes an example of a request for retrieving a book and that other services associated with the service are provided, but the disclosure does not identify other services other than possibly providing book prices.", + "Although this informs our construction of the recited phrase, \"other services associated with the service,\" we decline to import such embodiments into claim 13.", + "We thus construe the phrase \"other services associated with the service\" in claim 13 to have its ordinary meaning, which includes another tool or function related to the requested service.", + "That is, Kreder teaches various services/tools that relate to the initial service of providing requested course materials, including (1) the service of providing the single, cheapest source for the materials (Figure 8), (2) the service of providing multiple cheapest sources for the materials (Figure 9), and (3) the service of providing all sources for the materials (Figure 10).", + "We disagree for the above-stated reasons.", + "To the extent Appellants contend these comparative-pricing functions are \"a single service\" (see Reply Br. 4), we disagree because, as broadly as recited, each tool (i.e., a service) in Kreder is different, such as one functions to provide a single cheapest source for the course material (e.g., Figure 8), another functions to provide multiple cheapest sources for the course material (e.g., Figure 9), and yet another functions to provide all sources for the course material (e.g., Figure 10).", + "We disagree that claim 13 requires the recited *service template of the service\" be directly associated with the requested service as argued.", + "That being said, we agree that the \"at least one data item\" and \"a service template of the service\" are separately recited in claim 13 (id.) and cannot be mapped to the same element in Kreder.", + "Notably, the phrase *service template of the service\" has not been defined in the Specification.", + "But, unlike Appellants' assertion (Reply Br. 3), these are examples of a service template.", + "Moreover, Kreder teaches and suggests the ISBN, title, author, edition, and publisher (e.g., summarized, pertinent information of the course-material list service) are used to perform the comparative pricing on the course material in different ways.", + "As such, this information acts as a guide or blueprint of the service (e.g., a service template of the service) to other services (e.g., determining other services based on the service template as recited).", + "We thus remain unconvinced, given the record, that the Examiner's mapping of the recited *service template of the service\" is erroneous.", + "This mapping of the attribute of title (e.g., \"Biology\") to a data item (see Ans. 18) is reasonable, given that the disclosure has not defined a \"data item\" and even includes an example of one such data item that is a book name.", + "For the above reasons, we disagree and identified multiple outputs provided by the other services (e.g., a first service of providing the single, cheapest source for the course material (Kreder's Figure 8) and the second service of providing all sources for the course material (Kreder's Figure 10).", + "We refer above for more details.", + "For the foregoing reasons, Appellants have not persuaded us of error in the rejection of (1) independent claim 13, (2) independent claims 21 and 23, which recite commensurate limitations, and (3) dependent claims 16, 19 and 20, which are not separately argued.", + "We are not persuaded.", + "Thus, the rejection of claim 13 also applies to claim 14's analysis, including how Kreder teaches the claimed *service template\" and addressing the pertinent book information.", + "We refer above for more details.", + "Appellants fail to elaborate, but we note that claim 14 does not include such a limitation of information associated with the initial book information.", + "However, to the extent Appellants are referring to the recitation \"other service templates associated with the service template\" in claim 14, we noted previously a service template is not limited in the disclosure.", + "Nor do the claims, or the rejection for that matter, limit the *service template\" to one type of template, such that the service template and other service templates must both be pertinent book information.", + "For the foregoing reasons, Appellants have not persuaded us of error in the rejection of dependent claim 14 and dependent claims 22 and 24, which are not separately argued and are similar in scope.", + "We are not persuaded for the above reasons.", + "We disagree.", + "Although the Specification state \"[the context of the service may comprise its URI\" (Spec. 6:1 (emphasis added)), this is not a definition for \"context.\"", + "As such, \"the context of the service\" in claim 15 can include data inputted/selected by the user or data provided by the service.", + "Appellants have not disputed these specific findings sufficiently.", + "Accordingly, Appellants have not persuaded us of error in the rejection of dependent claim 15 and dependent claim 25, which are not separately argued and similar in scope.", + "Claims 17 and 18 We reach the opposite conclusion for dependent claims 17 and 18.", + "Kreder's Figures 8 through 10 suggest to one of ordinary skill in the art determining a score between the mapped \"other services.\"", + "However, the Examiner has not sufficiently explained how Kreder determines a score between these mapped \"other services\" (e.g., the various price-comparison tools) and the mapped \"service\" (e.g., providing the course-material list) as recited, much less that this score is determined according to \"the association scores between the other service templates and that service template\" as further recited in claim 17.", + "Cited paragraph 41 (Ans. 7, 20) does not assist in explaining the Examiner's s position in this regard, merely addressing a search that refers to databases to find a course- material list and a process that allows a user to select books to find pricing information and links the user to a specific book vendor's website.", + "The Examiner also fails to explain sufficiently how the discussed hyperlink a user can use to connect to a book vendor's website (see Kreder I 42) creates the recited *association scores\" in claim 17.", + "Accordingly, we do not sustain the rejection of claim 17 and claim 18, which depends from claim 17." + ] +} \ No newline at end of file diff --git a/opinion_split/2017008426_DECISION.json b/opinion_split/2017008426_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7845763b7e9e097b1cbe2181436c4d440a4a45fa --- /dev/null +++ b/opinion_split/2017008426_DECISION.json @@ -0,0 +1,49 @@ +{ + "appellant_arguments": [ + "First, Appellants argue that the claims are directed to patent-eligible subject matter because they are directed to \"a specific technique to improve upon computer processes for utilizing computer technology to allow the solving of problems that arise in a game space or virtual space hosted over a network. \" Br. 5.", + "Second, Appellants argue that the claims are patent eligible because they *avoid pre-empting other, sub-optimal ways of performing the alleged abstract idea with a computer.\" Id.", + "Finally, Appellants argue that \"a patent examiner cannot properly reject a claim under Section 101 if the examiner does not provide any evidence that at least a non-computer-implemented version of a computer-implemented process required by the claims exists in the prior art.\" Id. at 6 (citing McRO, Inc. V. Bandai Namco Games America Inc., 837 F.3d 1299 (2016)).", + "Appellants contend that the claims are directed to techniques that provide guidance to computer game players to help them locate items in a virtual game space. Br. 5.", + "Finally, Appellants argue that \"a patent examiner cannot properly reject a claim under Section 101 if the examiner does not provide any evidence that at least a non-computer-implemented version of a computer- implemented process required by the claims exists in the prior art.\" Id. at 6 (citing McRO, 837 F.3d at 1314)." + ], + "examiner_findings": [ + "Regarding the first step in the Alice Framework, the Examiner finds that the claims are directed to \"a multiple step process \u00b7 \u00b7 \u00b7 for providing a virtual game.\" Final Act. 3.", + "According to the Examiner, \"\"[the concept of providing a virtual game on a computer is very analogous to the concept of managing or providing a game of Bingo on a computer,\" which the Federal Circuit held amounted to an abstract idea. Id. (citing Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)).", + "The Examiner further determines that the **additional of limitations that narrow the idea, such as harvesting, associating cost, deducting an amount of rechargeable resources and spatial zones, further describe the abstract idea, but do not make it less abstract.\" Id.", + "Regarding the second step, the Examiner finds that \"the claim simply instructs the practitioner to implement the concept of providing a virtual game with routine conventional activity specified at a high level of generality in a particular technological environment.\" Id. at 4.", + "Thus, according to the Examiner, \"[w]hen viewed either as individual limitations or as an ordered combination, the claim as a whole does not add significantly more to the abstract idea of providing a virtual game.\" Id." + ], + "ptab_opinion": [ + "Appellants appeal under 35 U.S.C. $ 134 from a rejection of claims 1, 4-9, 11-16, and 18.", + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We affirm.", + "The claims are directed to a system and method for presenting a virtual game space with discoverable items to be prospected.", + "Claim 1, reproduced below, is illustrative of the claimed subject matter:", + "1. A system configured to provide a virtual game to a user, the system comprising: one or more hardware processors configured by machine-readable instructions to: determine a view of a virtual game space for presentation to a user, the virtual game space including different spatial zones, the virtual game space further including a rechargeable resource that is available to the user within the virtual game space and that is configured to recharge over time; associate a limited number of discoverable items with individual ones of the spatial zones in the virtual game space such that a majority of the spatial zones in the virtual game space are not associated with discoverable items; receive a user selection of an action to be performed from among a set of potential actions, the set of potential actions including a harvesting action and a locator action, the harvesting action including obtaining a discoverable item, the locator action including obtaining an indication of a location of a discoverable item, wherein: the harvesting action is associated with a first cost, the first cost representing a deduction of a first amount of the rechargeable resource in the virtual game space; and the locator action is associated with a second cost, the second cost representing a deduction of a second amount of the rechargeable resource in the virtual game space; determine whether the selected action results in discovery of a discoverable item; deduct the first amount of the rechargeable resource, responsive to the harvesting action being the selected action; award the discoverable item to the user responsive to determining that the harvesting action results in discovery of a discoverable item; deduct the second amount of the rechargeable resource responsive to the locator action being the selected action; and indicate to the user whether the discoverable item would have been discovered if the selected action had been the harvesting action.", + "Claims 1, 4-9, 11-16, and 18 are rejected under 35 U.S.C. & 101 as directed to non-statutory subject matter.", + "Claims 1, 4-9, 11-16, and 18 are rejected on the ground of non- statutory double patenting over claim 1-22 of U.S. Patent No. 8,540,566.", + "Based on Appellants* arguments (Br. 4-7), we will decide the appeal of the claims at issue based on claim 1 alone.", + "37 C.F.R. 8 41.37(c)(1)().", + "To determine whether a claim falls within a judicially recognized exception to patent eligibility under 35 U.S.C. $ 101, we apply the two-step framework set forth in Mayo Collaborative Services V. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1293-94 (2012), and reaffirmed in Alice Corporation Proprietary LTD. V. CLS Bank International, 134 S. Ct. 2347, 2355 (2014).", + "For the first step, we determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea, law of nature, or natural phenomenon. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1296-97).", + "If so, we advance to the second step where *we consider the elements of each claim both individually and *as an ordered combination' to determine whether the additional elements transform the nature of the claim' into a patent-eligible application\" of the otherwise patent-ineligible concept. Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).", + "The Court has described this second step *as a search for an inventive concept--- i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.\" Id. (citing Mayo, 132 S. Ct. at 1294 (internal quotation marks and alterations omitted)).", + "Appellants raise several arguments in response.", + "None of Appellants' arguments persuade us of Examiner error.", + "First, we are not persuaded that claim 1 is directed to \"a specific technique to improve upon computer processes for utilizing computer technology, as Appellants contend.", + "Claims involving computer technology *might not succumb to the abstract idea exception\" if they purport \"to *improve the functioning of the computer itself,' or *improv[e] an existing technological process. \", Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2358-59).", + "But methods that use computer technology *merely as a tool\" may be considered directed to an abstract idea. Id. at 1336.", + "While the claimed techniques may improve a player's virtual gaming experience, Appellants do not explain how these techniques pertain to improvements to computer functionality.", + "Nor is it evident that they do so, as the Specification indicates that the claimed methods are implemented with standard computer and networking technology. Spec. 11 22-24, Fig. 1.", + "We are also not persuaded that claim I is patent eligible because it has limited preemptive affect.", + "That claim I may not preempt *an entire field\" is not relevant to whether claim 1 is directed to an abstract idea, because *the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow. \" buySAFE, Inc. V. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014) (citing Mayo, 132 S. Ct. at 1303); see also Ariosa Diagnostics, Inc. V. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (holding that \"*[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility\").", + "Although Appellants' position is not entirely clear, Appellants appear to be arguing that, under MeRO, a process implemented on a computer is not an abstract idea if the process is new.", + "We do not read McRO as altering the Federal Circuit's prior disagreement with the notion that \"the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete.' \" Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).", + "Thus, it is not dispositive that the prior art does not teach \"a non-computer implemented version\" of any computer-implemented process required by the claims on appeal.", + "See Synopsys, Inc. V. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 201 6) (holding that \"a claim for a new abstract idea is still an abstract idea. \").", + "Because we are not persuaded that the Examiner erred in rejecting claims 1, 4-9, 11-16, and 18 under 35 U.S.C. 8 101 as directed to patent- ineligible subject matter, we sustain the rejection.", + "Appellants have not responded to the Examiner's rejection of claims 1, 4-9, 11-16, and 18 on the ground of non-statutory double patenting over claims 1-22 ofU.S. Patent No. 8,540,566.", + "Therefore, Appellants have waived any argument of error, and we summarily sustain this rejection without reaching the merits thereof.", + "See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. .5 112, second paragraph, when the applicant failed to contest the rejection on appeal)." + ] +} \ No newline at end of file diff --git a/opinion_split/2017008638_DECISION.json b/opinion_split/2017008638_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0f239837b8a2dd5827ef5c4c3d7f0c02430bfb7b --- /dev/null +++ b/opinion_split/2017008638_DECISION.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "Appellants argue that Aono and Hu collectively do not teach or suggest sending application programs and their corresponding license credentials to a computer system and sending the application programs and their corresponding replacement license credentials to another computer system. App. Br. 5-8; Reply Br. 1-3." + ], + "examiner_findings": [ + "Claims 1, 4-8, 11-16, and 18-20 stand rejected under 35 U.S.C. 6 103(a) as being unpatentable over Aono (US 201 1/0061102 A1; Mar. 10, 2011) and Hu (US 2007/0150417 A1; June 28, 2007). Final Act. 3-13.1", + "Claims 2, 3, 9, 10, 17, and 21 stand rejected under 35 U.S.C. $ 103(a) as being unpatentable over Aono, Hu, and Lin (US 2009/0259838 A1; Oct. 15, 2009), Final Act. 13-15,", + "The Examiner finds that Aono discloses many recited elements of independent claim 1 including, among other things, sending application programs and their corresponding license credentials to a computer system, and sending the application programs and their corresponding replacement license credentials to another computer system. Final Act. 3-4; Ans. 2-3, 14-15.", + "Although the Examiner finds that Aono does not disclose sending an indication that the application programs\" corresponding license credentials are revoked in response to detecting the computer system's connection, the Examiner nonetheless cites Hu for teaching this feature in concluding that the claim would have been obvious over Aono's and Hu's collective teachings. Final Act. 4-5.", + "In response to Appellants\" argument that Aono sends different software versions to the same MFP 100 (see App. Br. 7), the Examiner quotes language from paragraph 157 of Aono: MFP 100a has issued a re-activation request in the situation that, after an application has been activated with a product key and then forcefully deactivated on the MFP 100a, the another one of the MFPs 100, or specifically the MFP 100b, has issued an activation request with the same product key. Ans. 14 (additionally citing Aono I 4; Fig. 1)." + ], + "ptab_opinion": [ + "Claims 1, 8. and 15 are independent claims.", + "The claims relate to *revoking licensed software in a computing environment.\" Spec. Abstract; see Spec. I 3.", + "According to the Specification, the licensed software is disabled *on a computer system that has been stolen or otherwise lost.", + "Thus, the licensee of the software may be able to obtain a replacement license to use the software without having to purchase an additional license.\" Id. 1 16.", + "Claim 1 is representative and reproduced below: 1.", + "A method for revoking a license to software, comprising: receiving a machine ID from a computer system; sending a plurality of application programs and a corresponding plurality of license credentials for the application programs, to the computer system; receiving one request to revoke the corresponding plurality of license credentials, the request identifying the machine ID; detecting a connection by the computer system based on the machine ID; sending, based on the request, an indication that the corresponding plurality of license credentials for the application programs are revoked in response to the connection; and sending the plurality of application programs and a corresponding plurality of ofreplacement license credentials for the application programs, to another computer system. App. Br. 11.", + "Under 103, has the Examiner erred in rejecting claim 1 by finding that Aono and Hu collectively would have taught or suggested (1) sending application programs and their corresponding license credentials to a computer system, and (2) sending the application programs and their corresponding replacement license credentials to another computer system?", + "We begin by construing the disputed limitation.", + "Claim construction is an issue of law that is reviewable de novo. Cordis Corp. 12. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009).", + "We give claims their broadest reasonable interpretation consistent with the Specification. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).", + "Here, claim 1 recites, in pertinent part: [a] sending a plurality of application programs and a corresponding plurality of license credentials for the application programs, to the computer system; [and] . [b] sending the plurality of application programs and a corresponding plurality of replacement license credentials for the application programs, to another computer system. App. Br. 11 (letter designations added for ease of reference).", + "Although claim I's ordering of the method steps places step [b] after step [a], method- steps are not ordinarily construed to require a specific order of performance of the method-steps unless the Specification or claims expressly or implicitly require the performance in that specific order. See Altiris V. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (citing Interactive Gift Express Inc. V. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001)).", + "Further, although a term of step [b] (i.e., the application programs) possesses antecedent basis in step [a], the fact that this term is present in steps [a] and [b] alone does not expressly or implicitly require that step [a] occurs before step [b].", + "Nor does step [b]'s **replacement* license credentials expressly or implicitly require that step [a] occurs before step [b].", + "The plain meaning of \"replacement\" is *one that replaces another\" (MERRIAM- 'EBSTER'S COLLEGIATE DICTIONARY 992 (10th ed. 1993)); \"replace,' in turn, means \"to take the place of (id.).", + "A second set of license credentials to take the place of a first set of license credentials does not expressly or implicitly require sending the second set of license credentials after sending the first set of license credentials.", + "Nor does Appellants\" Specification disclose a specific order of sending license credentials and replacement license credentials.", + "According to the Specification, obtaining a replacement license provides a way for a licensee of software to disable a computer system's licensed software. Spec. 9 16.", + "In one embodiment, a rightful user is granted a replacement license to use an application program on another computer system. Id. I 32.", + "Thus, we conclude the broadest reasonable interpretation of claim 1, consistent with the Specification, recites no temporal order between steps [a] and [b].", + "In the Final Rejection and Answer, the Examiner cites sections of Aono directed to a general multifunction peripheral (MFP) 100. Final Act. 3-4 (citing Aono 11 47, 58-60, 64; Fig. 2); Ans. 2-3.", + "We, therefore, presume that the Examiner intends to map Aono's MFP 100a to the recited computer system and MFP 100b to the recited another computer system.", + "Aono is generally directed to a license management server connected to a personal computer (PC) and multiple MFPs such as copiers, facsimiles, or printers. See Aono, Abstract, Fig. 1, 11 43, 45, 49.", + "Aono's PC, connected to the multiple MFPs, sends a license purchase request for a distribution package. Id. 11 46, 49, 58.", + "Aono's distribution package, also referred to as a *software component,\" is allocated a product ID and an indication whether the distribution package *requires activation (licensing).\" Id. 1 45, 52, 54.", + "In response to receiving the PC's license purchase request, Aono's license management server creates and transmits a product key to a license management database. Id. \" 58-59, 111.", + "Aono's license management server also transmits the product key to an MFP. Id.", + "Aono's MFP, in turn, requests a license file by providing the received product ID and the MFP's device ID to the license management server. Id. 11 59, 113.", + "Aono's license management server, in return, sends a distribution package and a newly created license file to the MFP. Id. \" 60, 116.", + "Aono's MFP installs the distribution package and sends an activation request including the product key and the MFP's device ID. Id. 11 75, 118, 122.", + "If one or more available licenses from the license management database are associated with the product key, then the MFP's distribution package is activated. Id. 11 75, 119, 122-23.", + "Figure 16 of Aono is reproduced on the following page.", + "Reproduction of Aono's Figure 16.", + "Aono's Figure 16 is a diagram illustrating a specific sequence of operations involving the deactivation of an activated MFP 100a and the activation of MFP 100b. Id. 99 33, 145.", + "Because MFP 100a performs an activation at steps $50 and $59, and MFP 100b performs an activation at step $54, in that sense, then, Aono at least suggests MFPs 100a and 100b each previously received a distribution package and product ID before the activations for reasons discussed above.", + "Thus, Aono teaches or suggests sending a distribution package (the claimed \"plurality of application programs\") and a corresponding product key (the claimed \"plurality of license credentials for the application programs\") to MFP 100a (the claimed **computer system\"), \"), and sending the distribution package and a corresponding product key (the claimed \"plurality of replacement license credentials for the application programs\") to MFP 100b (the claimed \"another computer system\").", + "Appellants' contention that Aono's activation (or re-activation) does not download (or send) a distribution package (or application), product, license, or product key to MFP 100b because the distribution package download is performed during a purchase or download request occurring before the activation, Reply Br. 2 (citing Aono 11 46, 58-63, 82-88, 117- 20), is unpersuasive because it is not commensurate with the scope of the claim.", + "That is, the claim does not preclude an MFP downloading a distribution package before the MFP's activation.", + "Nor does the claim preclude MFP 100b from downloading the distribution package before MFP 100a downloads the distribution package.", + "Nor does the claim limit sending a distribution package to an MFP with respect to the timing of sending the product ID to the MFP.", + "For the reasons discussed above, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's rejection of independent claim 1.", + "For similar reasons, we also sustain the Examiner* s rejection of independent claims 8 and 15, which recite similar limitations.", + "Further, we sustain the Examiner's s rejection of claims 4-7, 11-14, 16, and 18-20, which depend therefrom and were not argued separately.", + "We also sustain the Examiner's obviousness rejections of claims 2, 3, 9, 10, 17, and 21. Final Act. 13-15.", + "Because these rejections were not argued separately with particularity, we are not persuaded of error in those rejections for the reasons previously discussed." + ] +} \ No newline at end of file diff --git a/opinion_split/2017008766_DECISION.json b/opinion_split/2017008766_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0647d73a7f02e57b8eb6afde6ad7bdd0c632b778 --- /dev/null +++ b/opinion_split/2017008766_DECISION.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "Appellants argue that Shapiro in view of Bickel fails to disclose, teach or suggest the claimed invention as recited by independent claim 1, and similarly recited by independent claim 13. Appeal Brief7.", + "Appellants argue that, \"Shapiro describes a system where the user interactively and manually controls the placement of the actuators. In contrast, according to independent claim 1 of the present application, the user input identifies a target posture, and then 'in response to the user input identifying the target posture and based on the target posture, a location of each of a plurality of actuators for producing the target posture,' is determined.\" Appeal Brief 7- 8.", + "Appellants contend: Shapiro discloses and teaches that the user manually determines the location of the actuator using a mouse pointer.", + "In other words, as taught in Shapiro, the user uses the mouse to identify or point to a location for placing the actuator, and not to identify a target posture as an input to the system, let alone the system using the identified target posture to determine a location of each of a plurality of actuators for producing the target posture. Appeal Brief 8.", + "Appellants further argue that Shapiro fails to disclose the modeling limitations recited in independent claims 1, 7 and 13. Appeal Brief 8-9." + ], + "examiner_findings": [ + "The Examiner relied upon Bickel's disclosure to teach \"producing the deformable object in accordance with the modeling and determining the location of the plurality of actuators. Final Action 6, 8 (citing Bickel, paragraphs 11, 59 and paragraphs 87, 119, respectively)." + ], + "ptab_opinion": [ + "Appellants are appealing the final rejection of claims 1-20 under 35 U.S.C. , 134(a).", + "Appeal Brief2.", + "We have jurisdiction under 35 U.S.C. 6 6(b) (2012).", + "We affirm.", + "Introduction The invention is directed to a \"a posture guided design system and a method for use in producing a posture guided design of a deformable object\" wherein \"the expression *deformable object' can refer to any physical object configured to assume one or more predetermined postures or poses.\"", + "Abstract; Specification, page 6.", + "Illustrative Claim 1.", + "A method comprising: receiving a user input identifying a target posture for a deformable object; determining, in response to the user input identifying the target posture and based on the target posture; a location of each of a plurality of actuators for producing the target posture; modeling, in response to the user input identifying the target posture and based on the target posture, the deformable object using at least one material so as to enable the deformable object to reproduce the target posture; and producing the deformable object in accordance with the modeling and the determining of the location of each of the plurality of actuators.", + "Rejection on Appeal Claims 1-20 stand rejected under pre-AIA 35 U.S.C. 8 103(a) as being unpatentable over Shapiro (Ari Shapiro et al., Dynamic Animation and Control Environment, Proc. of Graphics Interface 61 (2005)) and Bickel (US Patent Application Publication 2003/0172376 A1; published March 1, 2012).", + "Final Action 3-9.", + "Rather than reiterate the arguments of Appellants and the Examiner's findings and conclusions, we refer to the Appeal Brief (filed October 21, 2016), the Final Action (mailed May 19, 2016) and the Answer (mailed January 26, 2017) for the respective details.", + "The Examiner finds and we agree: [U]sing the actuator to control and manipulate the objects is equivalent to a user input who decides on a target posture.", + "A user would have to choose the position of the object, and then move the actuator to manipulate the object like a puppet.", + "In addition, based on the desired position of the puppet, the user would then place the actuator in a particular location.", + "For example, if the user wants to move the puppet 's leg.", + "the actuator would not be placed on the puppet 's arm.", + "it would be placed on the leg.", + "Therefore, the location of the actuator is determined based upon the user input which identifies the target posture. Answer 2-3 (citing Shapiro, paragraphs 65-67).", + "We agree with Appellants' arguments that Shapiro does not disclose modeling as claimed by Appellants, however the Examiner did not rely upon Shapiro to disclose or suggest the modeling limitations.", + "Appellants do not address the merits of Bickel. See Appeal Brief 8-10 and 12.", + "`*Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.\" In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981)).", + "Accordingly, we sustain the Examiner's obviousness rejection of claims 1-20." + ] +} \ No newline at end of file diff --git a/opinion_split/2017009150_DECISION.json b/opinion_split/2017009150_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..29d47725e5da83c015a99c8862873b5a6519dbb1 --- /dev/null +++ b/opinion_split/2017009150_DECISION.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellants point out that Pisczak teaches that its clamp includes cushions (24) \"that reduce mechanical stress on bending portions of the clamped cable.\" Br. 7 (Pisczak 3:21-23).", + "Appellants also point out that Pisczak teaches that \"cushions 24 are formed of EPDM, neoprene, silicone, or other suitable material\" and *are \u00b7 \u25a0 \u00b7 compressed against the cable 12.\" Br. 7 (citing Pisczak 4:34-36, 63-64).", + "Based on these teachings, Appellants contend that clamping in Pisczak \"would deform (if any deformation results at all) the cushion 24 and not cable 12.\" Br. 7.", + "Thus, Appellants argue that Pisczak does not teach an **adjusting means that adjusts frictional force between the cylindrical part and the charging cable such that a deformation is formed in the charging cable that prevents axial movement of the cylindrical part while allowing rotational movement.\" See Br. 7." + ], + "examiner_findings": [ + "The Examiner maintains the rejection of claim I under 35 U.S.C. 9 103(a) as unpatentable over Karner ( US 2012/0193929 A1, published August 2, 2012) in view of Pisczak (US 6,595,472 B1, issued July 22, 2003) and in view of Cloud, Jr. (US 3,211,828, issued October 12, 1965). Final Act. 3-4; Ans. 2.", + "The Examiner also maintains the rejection of claims 2 and 3 under 35 U.S.C. $ 103(a) as unpatentable over Karner, Pisczak, and Cloud, Jr., and further in view of Tame (US 5,511,442, issued April 30, 1996). Final Act. 4; Ans. 2.", + "The Examiner finds that Karner discloses all the elements of claim I's middle gripper except for: (1) a cylindrical part put on a hook arranged on the charging stand, and (2) an adjusting means that adjusts frictional force between the cylindrical part and the charging cable such that a deformation is formed in the charging cable that prevents axial movement of the cylindrical part while allowing rotational movement. Final Act. 3.", + "The Examiner relies on Pisczak for teaching claim I's adjusting means. Id. at 4.", + "The Examiner finds that Pisczack's Figure 3, reproduced below, discloses a suspension clamp that includes an adjusting means (54) that adjusts frictional force between a cylindrical part (14 and 24) and the cable (12), such that a deformation is formed in the cable that prevents axial movement of the cylindrical part while allowing rotational movement. Id. (citing Pisczak 5:25-40; Fig. 3).", + "The Examiner finds that \"as cylinder part 24 clamps onto cable 12[.] some form of deformation will occur to the outer surface of the cable[,] and depending on how tight the screw 54 is tightened, the user may adjust the tightness of the clamp on the cable to allow some rotation of the cable about the lengthwise direction of the cable and not traverse movement[.]] Final Act. 4.", + "In the Answer, the Examiner explains that the tightness of the inner surface of Pisczaks' cushion 24 on the surface of cable 12 *will depend on how tight the user adjusts screw device 54 to cause the compression of cylinder part 24 onto cable 12 in the tightening direction.\" Ans. 4.", + "The Examiner finds that when \"the screw devices 54 are tightened harder\" it will *ensure a tight fit of cylinder part 24 onto the cable 12 and allow slight surface deformation of cable 12.\" Id." + ], + "ptab_opinion": [ + "The subject matter on appeal relates to a middle gripper attached to a charging cable of a charging stand for charging a battery of an electric vehicle.", + "Spec. 11 2-3, Figure 2 of the subject application is reproduced below.", + "Figure 2 above depicts a middle gripper attached to a charging cable that includes: middle gripper 4. charging cable 2. cylindrical part 41 formed to pass charging cable 2 therethrough, a gripping part 42 formed extending from cylindrical part 41 for grasping by a charging operator, and adjusting means 44, 45 that adjust frictional force (i.e., pressing force) between cylindrical part 41 and charging cable 2. Id. 99 15-20.", + "Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief, with key limitations emphasized as follows:", + "1. A middle gripper of a charging cable, attached to the charging cable extending from a charging stand, comprising: a cylindrical part formed to pass the charging cable therethrough and to be turnable around an axis of the charging cable and put on a hook arranged on the charging stand; a gripping part formed extending from the cylindrical part for grasping; and adjusting means that adjusts frictional force between the cylindrical part and the charging cable such that a deformation is formed in the charging cable that prevents axial movement of the cylindrical part while allowing rotational movement. Br. 11 (Claims App.).", + "It is well settled that the burden of establishing a prima facie case of unpatentability resides with the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "Figure 3 depicts an exemplary embodiment of Pisczak's cable suspension clamp.", + "A patent applicant is free to recite features of an apparatus either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).", + "Claim I's recitation of adjusting **frictional force between the cylindrical part and the charging cable such that a deformation is formed in the charging cable that prevents axial movement of the cylindrical part while allowing rotational movement\" describes how the claimed middle gripper's adjusting means functions, not what structure the adjusting means includes.", + "Functional recitations in an apparatus claim are given weight in that the corresponding prior art structure must possess the capability of performing the recited function. See Schreiber, 128 F.3d at 1477-78.", + "However, given Pisczak's teaching that cushion 24 \"reduce[s] mechanical stress on bending portions of the clamped cable, (Pisczak 3:22-23), we are persuaded by Appellants' argument that the Examiner has not established a reasonable basis for believing that tightening Pisczak's adjusting means 54 would have been capable of deforming cushion 24 along with cable 12, and not cushion 12 alone. Br. 7.", + "Even if we were to agree with the Examiner's reasoning that Pisczak's adjusting means 54 can be tightened to such an extent that it would have been capable of causing *slight surface deformation\" to cable 12, the Examiner has not established a reasonable basis for believing that the deformation formed in cable 12 *prevents axial movement of the cylindrical part [(14)] while allowing rotational movement.' \"", + "Thus, on this record, the Examiner has failed to establish a prima facie case of obviousness over the applied prior art.", + "Accordingly, we do not sustain the rejection of representative claim 1.", + "Because claims 2 and 3 depend from representative claim 1. and the rejections of those claims are deficient for the same reasons as discussed above, we also do not sustain the rejection of those claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2017009582_DECISION.json b/opinion_split/2017009582_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3af89aa42ca2bfcecf9991ca8c1b72e4772c4314 --- /dev/null +++ b/opinion_split/2017009582_DECISION.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "Appellants argue, among other things, that the cited references would not have made obvious the step of heating prion proteins bound to steel particles to 110 for 5 minutes, as recited in the claims on appeal. Appeal Br. 46.", + "Appellants argue that Collinge boiled its sample in SDS buffer at 100 for 10 minutes to dissociate prions from bead-bound antibodies, so that the prions could be detected in the supernatant. Id.", + "Appellants argue that Aslamkhan teaches heating to 85 \"well below the claimed 110C,\" and also teaches Proteinase K (\"PK\") treatment of its sample. Id." + ], + "examiner_findings": [ + "The claims stand rejected as follows: Claims 1-3, 6, 9-11, 16, and 17 under 35 U.S.C. 6 103(a) as obvious based on Collinge,\" Enari,' Healy, Tsuji,* Green, Aslamkhan,7 and Harlow* (Ans. 2) and Claim 14 under 35 U.S.C. $ 103(a) as obvious based on Collinge, Enari, Healy, Tsuji, Green, Aslamkhan, Luhr,? and Goodfellowlo (Ans. 14).", + "The Examiner has rejected all of the claims on appeal as obvious based on Collinge, Enari, Healy, Tsuji, Green, and Aslamkhan, combined with either Harlow, or Luhr and Goodfellow.", + "The Examiner finds that Collinge teaches a method meeting most of the limitations of claim 1, but teaches \"performing denaturation [of prion proteins] using reagent[s] such as detergent or chaotrope.\" \" Ans. 3.", + "The Examiner also finds that Collinge *does not specifically teach wherein the solid phase is composed of steel particles, and \u00b7 \u00b7 \u00b7 does not specifically teach heating steel particles to 110 for 5 minutes.", + "\u00b7 . . Collinge et al. also does not teach wherein the detergent is CHAPS and does not specifically teach diluting the sample with buffer in the range of 1:10 to 1:100.\" Id. at 4.", + "The Examiner finds that Enari teaches a device for detection of Prpse in which the Prpsc binds to stainless steel spheres. Id. at 4-5,", + "The Examiner finds that Healy teaches immunoassay methods *using a range of dilutions of each sample for analysis, teaching larger dilution factors (1:100-1:1000) as well as dilution factors of 1:5-1:10 \u00b7 . overlapping the ranges as instantly described.\" Id. at 5.", + "The Examiner finds that Tsuji teaches that sodium lauroylsarcosine (taught by Collinge) and CHAPS are equivalent surfactants for disrupting cell membranes. Id.", + "The Examiner also finds that Green teaches methods for detecting prions that include pre-treatment of samples with detergents, such as CHAPS, to remove bound lipids. Id. at 6.", + "The Examiner finds that Aslamkhan teaches denaturing PrpSc by heating it for 2-20 minutes. Id. at 7.", + "The Examiner concludes that it would have been obvious to have modified the invention of Collinge et al. to implement the stainless steel spheres (i.e. particles) of Enari et al. in place of the solid support beads of Collinge et al. because such a stainless steel device would advantageously preserve prions against degradation, and would allow direct binding to the surface (i.e. eliminate the need for a non-specific protein or capture antibody). Id.", + "The Examiner also concludes that it would have been obvious to perform sample dilutions using dilution factors in the range of 1:10 to 1:100, as described by Healy et al., when performing the method for the detection of abnormal prion protein in blood, as taught by the combination of the prior art in order to ensure that sample concentrations fall within the dynamic range for assay in order to allow accurate detection and quantitation of protein and \"dilution is a result effective variable that would be optimized through routine experimentation.' \" Id. at 8.", + "The Examiner concludes that it would have been obvious to substitute the detergent (surfactant) CHAPS, as taught by Tsuji et al. and Green, for the detergent sodium lauroylsarconsine [sic], as exemplified by Collinge et al., because CHAPS and sodium lauroylsarcosine were recognized in the prior art to be functional equivalents known for the same purpose, namely as solubilizing agents for disrupting cellular membranes and Green teaches that non-denaturing detergents such as CHAPS are preferred to remove bound lipids. Id. at 9.", + "The Examiner concludes that it would have been obvious \"to exclude chaotropic agents from the method of Collinge et al. because Green teaches it is preferable to rely on non-denaturing agents in order to maintain the secondary and tertiary structure of the protein, thereby reducing cross- reactivity of binding moieties.\" Id. at 10.", + "Finally, the Examiner concludes that it would have been obvious \"to have modified the heat treatment step of Collinge et al., teaching heating solid phase bound prion to 100 for 10 minutes, to 110 for 5 minutes as a matter of routine optimization because the teachings of Collinge et al. are on the same order of magnitude as the temperature and time instantly claimed. \" Id. at 11." + ], + "ptab_opinion": [ + "The same issue is dispositive for both rejections.", + "We agree with Appellants that the cited references would not have made obvious, at least, the step of claim 1 requiring heating prion proteins bound to steel particles to 110 for 5 minutes, before detecting abnormal prion proteins captured on the steel particles.", + "Collinge's disclosure therefore supports Appellants' position that Collinge included a heating step to dissociate the prions from the beads, whereas claim I requires \"detecting abnormal PrP captured on the steel particles,\" after heating to 110 for 5 minutes.", + "Thus, both Collinge and Aslamkhan disclose heating a sample to, at most, 100% C.", + "In Collinge, the heating step dissociates prions from a solid support (beads), while in Aslamkhan the heating denatures the prions.", + "However, neither reference suggests that heating to a temperature above 1002 C would have any benefit.", + "Thus, the evidence does not support the Examiner's position that it would have been obvious to a person of ordinary skill in the art to \"modif[y] the heat treatment step of Collinge et al, teaching heating solid phase bound prion to 100 for 10 minutes, to 110 for 5 minutes as a matter of routine optimization.\" Ans. 11." + ] +} \ No newline at end of file diff --git a/opinion_split/2017009599_DECISION.json b/opinion_split/2017009599_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..ad1b1b5f9f2fdf333e960e8131dd2961cd2cb314 --- /dev/null +++ b/opinion_split/2017009599_DECISION.json @@ -0,0 +1,40 @@ +{ + "appellant_arguments": [ + "APPELLANT'S CONTENTION Kim's notification to a user in a social media services format fails to describe posting media content to a social media service account linked to a unique identifier of the vehicle as recited by claim 1. App. Br. 6.", + "Appellant argues Kim's notification to a user in various formats is deficient in disclosing the disputed limitation because claim 1 requires (1) posting to a social media account which is different than sending a notification using a social media services format as disclosed by Kim, and (2) posting to a social media service account linked to a unique identifier of the vehicle, not to an account of Kim's user. App. Br. 6." + ], + "examiner_findings": [ + "Claims 1-6, 8-12, and 14-18 stand rejected under 35 U.S.C. a 102(a)(1) as being anticipated by Kim. Final Act. 4-9.", + "Claims 7, 13, 19, and 20 stand rejected under 35 U.S.C. 8 103 as being unpatentable over Kim and Davidson. Final Act. 9-13.", + "Claims 21-24 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Kim and Muetzel. Final Act. 14-16.", + "The Examiner responds, asserting Appellant's argument is an improper attack on the *references individually where the rejections are based on combinations of references.\" Ans. 17 (citation omitted.)" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. .6 6(b).", + "We affirm.", + "ANALYSIS Appellant's contention is unpersuasive of reversible Examiner error.", + "Except as otherwise discussed herein*, 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. 2-18, Ans. 4-16) and (2) the reasons set forth in the Examiner's s Answer in response to Appellant's Appeal Brief (Ans. 17-19) and concur with the conclusions reached by the Examiner.", + "We highlight the following for emphasis.", + "We note at the outset the Examiner's assertion addressing Appellant's argument in connection with the anticipation rejection of claim 1 is itself improperly based on law only applicable to obviousness rejections under 35 U.S.C. 8 103(a), not the argued rejection under 35 U.S.C. 8 102(a)(1). See id.", + "Nevertheless, we agree with the Examiner in finding Kim discloses every element of the invention arranged as in claim 1 and, therefore, anticipates that claim.", + "See Microsoft Corp. V. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017).", + "Although Kim does not disclose the recited limitation in haec verba, it is well established that for anticipation under 35 U.S.C. , 102, *the reference need not satisfy an ipsissimis verbis test.\" In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)).", + "Prior art references are to be \"considered together with the knowledge of one of ordinary skill in the pertinent art.\" In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citation omitted).", + "In that regard, *it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.' In re Preda, 401 F.2d 825, 826 (CCPA 1968).", + "As the Court of Appeals for the Federal Circuit explained, for anticipation, the dispositive question is \"whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.\" Eli Lilly and Co. V. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Medical Center, 849 F.3d 1073, 1074-75 (Fed. Cir. 2017) (citation omitted).", + "As to whether the recited posting to a social media service account is different than Kim's sending of a notification using a social media services format, Appellant does not distinguish between the two.", + "That is, we find no explanation of what is required of the claimed posting action that would not have been understood to be the same as and/or included in sending a notification to a user using a social media services format as disclosed by Kim.", + "Appellant's Specification discloses a vehicle-based computing system (VCS) *may be configured to automatically upload the captured media content instances 202 to the remote service 208\" (Spec. I 36) and *user interface 500 may include a post control 508 that, when selected, may be configured to cause the VCS[] to provide the media content instance 202 displayed in the presentation 502 to an account of the remote service 208\" (Spec. 54).", + "Thus, the requirement to post media content is satisfied by uploading (i.e., sending) the content to an account for viewing.", + "Therefore, we find one skilled in the art would have understood or reasonably inferred that using a social media services format to provide a notification as disclosed by Kim includes posting to a social media services account.", + "Addressing the second portion of Appellant's argument, i.e., that posting to a user' is account is not equivalent to posting to an account linked to a unique identifier of the vehicle, we disagree.", + "Appellant does not explain what is required of an account linked to a unique identifier of a vehicle that would meaningfully differ from an account of the user of the vehicle.", + "Appellant neither provides nor directs attention to a definition of the term \"linked\", nor are we able to identify such a definition in Appellant's Specification.", + "Instead, Appellant's s Specification discloses \"vehicles 31 may post their captured media content instances 202 to an account of the remote service 208 associated with an identifier of the vehicle 31 (e.g., to an account identified at least in part by the vehicle 31 VIN, to a user telematics account of the driver associated with the VCS 1, etc.).\" Spec. 1 38 (emphasis added).", + "Therefore, an account of a driver using a particular vehicle is associated with or *linked to\" that vehicle because it is identified by the person driving or using the vehicle, i.e., linked to a unique identifier of the vehicle (the driver).", + "Accordingly, under a broad but reasonable interpretation of the disputed limitation, in view of Appellant's Specification, Kim's notification to a user of a vehicle using a social media services format would have been understood or inferred to encompass posting to a social media account linked to a unique identifier of the vehicle (i.e., an account of a user associated with the user of the vehicle).", + "For the reasons discussed above, Appellant's arguments are unpersuasive of reversible Examiner error.", + "Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. $ 102(a)(1) together with the rejection of independent claims 8 and 14, argued on the same basis as claim 1, and the rejection of dependent claims 2-6, 9-12, and 15-18, which are not argued separately with particularity. App. Br. 6-7.", + "For similar reasons, we also sustain the rejection of dependent claims 21-24 under 35 U.S.C. & 103(a), these claims also not argued separately with particularity. App. Br. 7." + ] +} \ No newline at end of file diff --git a/opinion_split/2017010316_DECISION.json b/opinion_split/2017010316_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..faa78de07da18bba354ef0f1f160a45d611242bb --- /dev/null +++ b/opinion_split/2017010316_DECISION.json @@ -0,0 +1,28 @@ +{ + "appellant_arguments": [ + "Appellants argue, inter alia, that none of the cited references, alone or in combination, teaches or suggests spraying a composition *into the air at a level such that the composition agglomerates particulates in the air.\" Br. 6." + ], + "examiner_findings": [ + "Claims 1, 11-15, and 17-21 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Sherry,2 Tippett,3 Chang,* and Valpey.5 Ans. 2; Final Action 4.", + "Claims 1, 11-15, and 17-21 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Fox, Tippett, Sherry, Hasan,7 and Shannon.\" 8 Ans. 5; Final Action 9.", + "The Examiner argues that \"common sense dictates\" spraying dusty air in a coal mine as well as the surfaces, and that it would have been \"obvious to spray a dust suppression composition into or over any dust cloud with a trajectory that would further result in saturation of the dust producing material.\" \" Ans. 2.", + "In Rejection 2, the Examiner begins with Fox, which expressly teaches methods for precipitating airborne particles. Final Action 9 (citing Fox Abstract, pp. 2, 4).", + "However, as the Examiner acknowledges, Fox teaches \"a different mechanism of precipitation\" (Ans. 5), insofar as Fox imparts a unipolar charge to the liquid droplets, which is \"transferred between the liquid droplets and the airborne particles by contact which causes the airborne particles to precipitate due to mutual repulsion\" (Fox Abstract).", + "As with Rejection 1, the Examiner relies on Tippett as teaching a method for spraying a liquid formulation in the air to precipitate particulates. See Ans. 6." + ], + "ptab_opinion": [ + "The Specification relates to methods for reducing particulates in the air. Spec. 1:4.", + "Claim I is illustrative: 1. A method for reducing particulates in the air comprising the steps of: providing a composition, wherein said composition comprises: 1) about 0.001 % to about 0.2%, by weight of said composition, of a zwitterionic polymer, said zwitterionic- polymer is: CH, ou CH on, 1 CH, r CH, NH, on with X having a mean value of 0 to 50 mol%, y having a mean value of 10 to 95 mol%, z having a mean value of3 to 80 mol%, with x+y+z=100%, wherein x represents the mol% of units derived from the acrylamide monomer, y represents the mol % of units derived from the acrylic acid (sodium salt) monomer, and Z represents the mol % of units derived from the Diquat monomer, wherein I, which are identical or different, represent counterions; II) a propellant comprising a compressed gas; and III) an aqueous carrier, wherein said composition comprises a viscosity of about 1.0 to about 2.5 cps; and spraying said composition into the air such that said polymer agglomerates particulates in the air when said composition contacts particulates in the air. Br. 14-15 (Claims Appendix).", + "We agree.", + "The Examiner's reliance on Tippett as teaching a method of reducing particulates in the air (see Final Action 5; see also Ans. 2-3) is not sufficiently supported.", + "Specifically, the Examiner fails to cite any express teaching or suggestion in Tippett of spraying Tippett's dust-suppression compositions into the air rather than onto surfaces.", + "But even if it would have been obvious to spray air as well as surfaces, it does not necessarily follow that it would have been obvious to use the same compositions for both applications.", + "To be sure, the Examiner does not rely on Tippett for the components of the composition to be sprayed. See Final Action 5-6.", + "But missing from the record (whether in the cited passages of Tippett or the other references) is support for the inference that the ordinarily skilled artisan would reasonably expect compositions formulated to suppress dust on surfaces to likewise succeed in suppressing airborne particulates.", + "Therefore, on this record, we cannot sustain Rejection 1.", + "In the Examiner's view, *the basic premise of the methods is the same\" (Ans. 5), but the mechanism matters.", + "It is not clear from the record why Fox's teaching of using charged particles would motivate or otherwise guide the ordinarily skilled artisan in developing a polymer-based composition for agglomerating particulates. See Br. 11.", + "And as with Rejection 1. we find the Examiner's analysis leans too heavily on inferences drawn from Tippett rather than Tippett itself.", + "Accordingly, we cannot sustain Rejection 2 on this record." + ] +} \ No newline at end of file diff --git a/opinion_split/2017010415_DECISION.json b/opinion_split/2017010415_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..44ae38a774aafcf7f3408540d6849917e4b55d0c --- /dev/null +++ b/opinion_split/2017010415_DECISION.json @@ -0,0 +1,72 @@ +{ + "appellant_arguments": [ + "1. A (per)fluoroelastomer composition comprising: at least one (per)fluoroelastomer ((per)fluoroelastomer (A)) matrix comprising particles of at least one perfluoropolymer (polymer (F) having a melt flow index (MFI), measured at 372*C under a 5 Kg load according to ASTM D1238 standard, of less than 10 g/10 min and at least 1.8 g/10 min, said particles having an average size of less than 100 nm; wherein polymer (F) particles are present in an amount of at least 2 % by weight and at most 30 % by weight, with respect to the weight of (per)fluoroelastomer (A); wherein the polymer (F) is selected from the group consisting of oftFE/PAVE copolymers consisting essentially of recurring units derived from TFE and from perfluoromethylvinylether (MVE); wherein the (per)fluoroelastomer (A) has one of the compositions, consisting essentially of in mol %, selected from the group consisting of. (i) tetrafluoroethylene (TFE) 50-80 %, perfluoroalkyl vinyl ethers (PAVE) 20-50 %; and (ii) tetrafluoroethylene (TFE) 20-70 %, fluorovinyl ethers (MOVE) 30-80 %, perfluoroalkyl vinyl ethers (PAVE) 0-50 %; wherein the PAVE of (i) and (ii) are of formula CF:=CFOR, wherein Rris a C1-C6 perfluoroalkyl group; and wherein the MOVE of (i) and (ii) are of formula CFX:=CX:OCF-OR\" wherein X is F and R\"ris a group selected from from-CF2CF3 (MOVE1);-CF;CF.OCF, (MOVE2); or or-CF3 (MOVE3).", + "Appellants state that all the pending claims stand or fall together (Appeal Br. 5).", + "Appellants argue that there is no motivation to combine Chen and Apostolo (Appeal Br. 9).", + "In particular, Appellants urge that Apostolo's 's teaching that the very good dispersability is the result of polymerizing the fluoropolymer and the fluoroelastomer in the same reactor (id. at 9-10; Reply Br. 3).", + "According to Appellants, Apostolo teaches two methods of forming the composition, one method of which the fluoroplastic particles are simply mixed with the fluoroelastomer followed by a coagulation step, and the second method of which polymerizes the two components in two separate steps within the same reactor (Appeal Br. 10).", + "Appellants contend that Apostolo teaches that it is the second method, and not the specific particle size, that leads to the very good dispersion (id.).", + "Because Chen uses the first method, Appellants urge that the ordinary artisan would only be motivated to apply Apostolo's second method, not Apostolo's particle size, to achieve a very good dispersion (id. at 11).", + "In related arguments, Appellants contend that the Examiner's s selection of Apostolo's 's fluoroplastic particle size alone, while excluding other characteristics, entails impermissible hindsight reconstruction (Appeal Br. 13-14), and the Examiner overlooks potential technical difficulties creating the fluoroplastic having a high molecular weight, while maintaining a small particle size (id. at 15).", + "Appellants next argue that Morikawa's fluoroelastomer requires a component, a cross-linking agent comprising 0.3-0.6 mol% of the composition, that is excluded by claim I's recitation of a fluoroelastomer \"consisting essentially of' one of two copolymers, neither of which including a cross-linking agent (Appeal Br. 16; Reply Br. 9-10).", + "Appellants contend that the Examiner misinterprets the transitional phrase, \"consisting essentially of,\" as used in claim 1 as meaning \"comprising\" (Appeal Br. 17).", + "Appellants urge that, by using \"consisting essentially of,\" the recited fluoroelastomer expressly excludes Morikawa's cross-linking agent because the cross-linking agent would necessarily have an effect on the nature of the composition (id. at 18).", + "Appellants also note that this phrase excludes the embodiment in their Specification wherein the fluoroelastomer includes cyanide groups (id.).", + "Appellants next argue that the claimed invention provides a unique synergism due to the combination of the recited (per)fluoroelastomer with particles of perfluoropolymer of given MFI and size (Appeal Br. 19).", + "According to Appellants, this synergism provides a composition with an improved balance of mechanical properties, including tensile strength/elongation ratio (TS/EB), and improved sealing properties, which results Appellants contend are unexpected (id.).", + "In particular, Appellants direct our attention to the data in Tables 1 and 2 of the Specification (Spec. 11 88-89), and explain that, when only one of the particle size and the MFI limitations is fulfilled, the TS/EB ratio is much worse than when the fluoropolymer meets both particle size and MFI limitations (Appeal Br. 20).", + "Appellants urge, therefore, that when the fluoropolymer's particle size is sufficiently small, specifically not exceeding 100 nm, and molecular weight is sufficiently large, specifically with an MFI not exceeding 10 g/10 min, *there is a synergistic and unexpected improvement in the mechanical properties of the resulting product\" (id.).", + "In addition, Appellants state that *the two classes of perfluoroelastomers recited presently in the main claim possess similar mechanical features and therefore skilled artisans would expect compositions made using either \u00b7 \u00b7 to have similarly improved properties\" (id. at 21).", + "Appellants also argue that \"a skilled artisan would recognize that any variability in the composition reflected in the claims would be expected to have similar properties as those for the Example composition presented in the specification\" (Reply Br. 10)." + ], + "examiner_findings": [ + "The Examiner finds Chen discloses compositions including a fluoroelastomer and a fluoroplastic at a blend ratio by weight of 80:20, wherein the fluoroplastic includes perfluoropolymers such as tetrafluoroethylene perfluoro(alkoxy alkane) copolymers (Ans. 2).", + "In addition, the Examiner finds that the fluoroplastic has a melt flow index (MFI) of 2.2 g/10 min tested at 372 under a 5 kg load, and is a reaction product of a plurality of monomers including tetrafluoroethylene (TFE) and perfluorovinyl ethers such as perfluoromethylvinylether (PMVE) and perfluoropropylvinyl ether (PPVE) (id.).", + "The Examiner further finds the fluoroelastomer is the reaction product of a plurality of monomers, at least two of which include TFE and perfluorovinyl ethers (id.).", + "The Examiner concludes that it would have been obvious to substitute the PPVE in Chen's example with PMVE, not only because Chen suggests these two materials as alternatives for each other in the fluoroplastic, but also because one would expect similar compounds would have similar properties (id. at 2-3, citing In re Payne, 606 F.2d 303, 313 (CCPA 1979); In re Papesch, 315 F.2d 381 (CCPA 1963); In re Dillon, 919 F.2d 688 (Fed. Cir. 1990); and MPEP 6 2144.09).", + "The Examiner treats the transitional phrase, **consisting essentially of,\" as used in claim 1, as \"comprising\" because Appellants disclose non-limiting examples of suitable (per)fluorinated monomers for the (per)fluoroelastomer include functional fluoroalkylvinyl ethers (PAVE) (Ans. 3).", + "The Examiner acknowledges that Chen fails to disclose the average particle size of the perfluoropolymer is less than 100 nm, but finds Apostolo teaches TFE copolymers with one or more monomers containing at least one ethylene unsaturation in amounts ranging from 0.01-10 mol%, wherein the average particle size of the fluoropolymer is 10-100 nm (Ans. 3).", + "The Examiner finds Chen and Apostolo are analogous art in the same field of endeavor, namely compositions containing fluoroelastomer and fluoroplastic (id).", + "The Examiner concludes that it would have been obvious to provide Chen's fluoroplastic with an average particle size of 10-100 nm to obtain a good dispersion of the fluoroplastic particles in the fluoroelastomer as Apostolo teaches (id.).", + "The Examiner additionally acknowledges that Chen fails to disclose the (per)fluoroelastomer has one of compositions (i) or (ii), as recited in claim 1 (Ans. 3-4).", + "However, the Examiner finds Morikawa teaches perfluoroelastomer sealing compositions comprising 18-33 mo1% perfluoroalkylvinyl ether, 0.3-0.6 mol% of a monomer unit having a nitrile group, a carboxyl group, and/or an alkoxycarbonyl group, and 69.15-73.69 mol% TFE (id. at 4).", + "The Examiner finds Chen and Morikawa are analogous art in the same field of endeavor, namely molded articles prepared from fluoroelastomers containing TFE and fluorovinyl ethers (id.).", + "The Examiner concludes that it would have been obvious to substitute Chen's fluoroelastomer with a fluoroelastomer as taught in Morikawa because Morikawa teaches such provides excellent chemical, solvent, and heat resistance, and small compression set (id.).", + "As the Examiner finds, Chen's fluoroplastics are semicrystalline polymers having MFIs that overlap the range recited in claim 1 and are produced by emulsion polymerization (Ans. 6; Chen 4:7-22; 5:60-62).", + "Likewise, as the Examiner finds, Apostolo's fluoroplastic particles are semicrystalline polymers having particle sizes from 10-100 nm and produced by emulsion polymerization (Ans. 6; Apostolo 2:19-20, 41-49).", + "In addition, the Examiner finds, without dispute, that particle size would affect the viscosity and how well the fluoroplastic particles are mixed in the fluoroelastomer (Ans. 7).", + "As the Examiner finds (Ans. 9), Appellants' evidence is limited to two inventive examples and two comparative examples, each utilizing a single fluoroelastomer." + ], + "ptab_opinion": [ + "Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal.", + "Some paragraphing has been added to facilitate review.", + "In accordance with 37 C.F.R. 5 41.37(c)(1)(iv), we select claim I as representative in deciding the issues on appeal.", + "These arguments are not persuasive of reversible error.", + "Further, although Appellants urge that Apostolo's teaching regarding dispersability is only in reference to the second method, we disagree.", + "Apostolo teaches both methods in the same paragraph and concludes the paragraph by generally stating that \"[bly operating in this way, the fluoroelastomer should cover the semicrystalline fluoropolymer latex particles, allowing to obtain a very good dispersion of the latter in the fluoroelastomer\" (Apostolo 2:33-36).", + "Contrary to Appellants' argument, there is no clear indication that Apostolo intended to limit this dispersion benefit to only the second method as opposed to both methods.", + "Moreover, Appellants fail to provide persuasive technical reasoning or an evidentiary showing establishing any technical difficulties obtaining Chen's 's fluoroplastic particles having particle sizes of 10-100 nm.", + "Because Chen is silent as to the particle size of the fluoroplastic, it is reasonable to expect that the ordinary artisan would look to teachings in the same field of endeavor, including Apostolo, for guidance as to suitable particle sizes.", + "Thus, we are not persuaded that the Examiner's proposed combination of Chen and Apostolo depends on impermissible hindsight.", + "This argument is also not persuasive of reversible error.", + "\"It is necessary and proper to determine whether [the] specification reasonably supports a construction\" that would exclude or include particular ingredients such as those in the prior art.", + "Use of \"consisting essentially of\" language **opens the claims to the inclusion of ingredients which would not materially affect the basic and novel characteristics of appellant's compositions as defined in the balance of the claim.", + "\" In re Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963), Appellants have the burden of showing that the ingredients not specifically claimed, but taught in the applied prior art, would materially affect the basic and novel characteristics of the claimed invention.", + "The ingredients that are not disclosed in the Specification as detrimental to the desired properties of a claimed composition are not construed as materially affecting the basic and novel characteristics of a claimed invention.", + "Herz, 537 F.2d at 551-52; see also PPG Indus. V. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (Patentees \"could have defined the scope of the phrase `consisting essentially of for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention. \").", + "Here, Appellants argue not that Morikawa's cross-linking agent materially affects the basic and novel characteristics of the claimed invention, but that the cross-linking agent materially affects the basic and novel characteristics of Morikawa's invention.", + "Appellants do not carry their burden of establishing that their use of \"consisting essentially of' in claim 1 affects the basic and novel characteristics of the claimed composition by establishing that the cross-linking agent is required by Morikawa.", + "In addition, Appellants fail to direct our attention to a teaching in the Specification, or otherwise establish, that ingredients such as the cross- linking agent of Morikawa are, or would be, detrimental to the desired properties of the claimed invention.", + "We are, therefore, not persuaded that Appellants\" claim 1 should be read to exclude Morikawa's cross-linking agent.", + "Appellants' arguments and evidence is insufficient to establish unexpected results for the entire scope of claim 1.", + "The burden of establishing that unexpected results support a conclusion of nonobviousness rests with Appellants.", + "The relied-upon results must be commensurate in scope with the claims.", + "**Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of [the CCPA] that objective evidence of non- obviousness must be commensurate in scope with the claims which the evidence is offered to support.", + "Moreover, this evidence uses a single fluoropolymer, i.e., 98 mol% TFE, 2 mol% MVE, 6 and the same proportion of fluoropolymer to fluoroelastomer, i.e., 10:90 parts by weight (Spec. I 88, Table 1).", + "Appellants fail to establish that these few examples are sufficient to establish that the entire scope of fluoroelastomers, fluoropolymers, particle sizes, and MFIs recited in claim 1 would likewise exhibit similar unexpected synergism (Ans. 9).", + "Indeed, there is no evidence to suggest that MFIs up to 10 g/10 min and particle sizes up to 100 nm, let alone other fluoroelastomers and fluoropolymers having more or less TFE than those tested, would reasonably have been expected to be similarly synergistic.", + "However, Appellants fail to provide either persuasive technical reasoning or evidentiary support for this argument.", + "Therefore, the relied on results are insufficient when weighed against the applied prior art because these results are not commensurate in scope with claim 1.", + "Accordingly, we sustain the Examiner's obviousness rejection of claims 1, 7-9, and 11-15." + ] +} \ No newline at end of file diff --git a/opinion_split/2017010495_DECISION.json b/opinion_split/2017010495_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..492d6e93042e0d69fa8a60a1fa590d964086671d --- /dev/null +++ b/opinion_split/2017010495_DECISION.json @@ -0,0 +1,76 @@ +{ + "appellant_arguments": [ + "Appellants argue that Kim's sheets 120 and 130 are non-insulating material.", + "Appellants also argue that Kim does not teach multiple aerogel sheets.", + "Appellants argue that the Examiner does not provide a proper rationale for combining the teachings of Kim and Ou and argue that it would not have been obvious to remove sheets 120 and 130 of Kim (so that the layer configuration has exposed upper and lower surfaces as recited by claim 1) because Kim teaches that its sheets 120 and 130 are necessary to protect the **keeping warm material\" 110.", + "Appellants also argue that Kim requires workability/flexibility and that the Examiner's combination would not meet this goal.", + "In the Reply Brief, Appellants argue that the combined teachings of Kim and Ou would not meet the \"said rigid unified body is adapted to support and insulate the pipe or tank\" recitation of claim 1.", + "Appellants argue that Leeser does not teach both adhesives and mechanical fasteners and that it would have been redundant, would increase costs, and would make Kim less workable/flexible.", + "Appellants additionally argue that claim 8 requires a *dowel inserted into said voids,\" and the Examiner also finds that Leeser teaches staples or pins.", + "Appellants argue that the Examiner has not adequately explained why it would have been obvious to make use of an end block given that the Examiner cites no evidence in the prior art that teaches an end block.", + "As in regard to claim 13, Appellants argue that the Examiner has not adequately explained why this feature would have been obvious because the prior art does not teach a honeycombed pattern." + ], + "examiner_findings": [ + "Rejection 1. Claims 1-6 under 35 U.S.C. 8 103 as unpatentable over Kim in view of Ou. Ans. 2.", + "Rejection 2. Claim 7 under 35 U.S.C. 8 103 as unpatentable over Kim and Ou further in view of Leeser. Id. at 5.", + "Rejection 3. Claims 8-14 under 35 U.S.C. S 103 as unpatentable over Kim in view of Ou and Lesser. Id. at 6.", + "Rejection 4. Claims 15-20 under 35 U.S.C. S 103 as unpatentable over Kim in view of Ou and Lesser. Id. at 10.", + "The Examiner rejects claims 1-6 under 35 U.S.C. 8 103 as unpatentable over Kim in view of Ou.", + "The Examiner finds that Kim teaches a heat insulation sheet comprising a middle aerogel sheet 110 covered in polyurethane, epoxy, or Kevlar fiber sheets 120 and 130.", + "The Examiner finds that Kim teaches holes 140 (mating voids) in said sheets that are filled with polyurethane or epoxy adhesive for sticking the upper and lower sheets to the aerogel layer.", + "The Examiner further finds: Kim fails to teach the insulation material is a plurality of sheets of the same insulation material having exposed surfaces of said insulation defined by said upper and lower surfaces of the layered configuration; and, the insulation material is for supporting a pipe or tank or wherein said unified solid body is rigid and adapted to support and insulate the pipe or tank.", + "The Examiner finds that Ou teaches high strength aerogel panels where aerogel layers are sandwiched with a binder layer.", + "The Examiner determines that \"it would have been obvious to one of ordinary skill in the art to use the voided mating structure of Kim with the multiple layers of aerogel and binders of Ou for hybrid aerogel blankets that can resist high compression and flexural stress.\"", + "Moreover, the Examiner finds that Ou teaches that sheets 120 and 130 of Kim are optional.", + "The Examiner rejects claim 7 under 35 U.S.C. 9 103 as unpatentable over Kim and Ou further in view of Leeser.", + "The Examiner finds that Kim as modified by Ou fails to suggest stiffening rods inserted into said voids.", + "The Examiner finds, however, that Leeser teaches insulated aerogel building materials fastened by adhesives or mechanical means such as staples or pins (i.e., stiffening rods).", + "The Examiner finds that it would have been obvious to combine this teaching with Kim as modified by Ou to combine two means of fastening *to form a stronger or more durable final structure and in case one of the fastening means fails.\"", + "The Examiner rejects claims 8-14 under 35 U.S.C. . 103 as unpatentable over Kim in view of Ou and Lesser.", + "The Examiner explains in the Answer that Leeser's teaching regarding use of staples or pins would have suggested to a person of ordinary skill in the art the use of stiffening rods or dowels.", + "The Examiner appears to take the position that use of adhesives at the ends of the insulation sheet would form an end block.", + "The Examiner finds that the prior art teaches that the purpose of the voids and adhesive of the voids is to add rigidity and prevent flow of aerogel powder out from the aerogel layer.", + "The Examiner determines that it would have been obvious to adjust the placement or pattern of the voids to adjust these properties.", + "The Examiner rejects claims 15-20 under 35 U.S.C. . 103 as unpatentable over Kim in view of Ou and Lesser." + ], + "ptab_opinion": [ + "We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon.", + "After considering the evidence presented in this Appeal and each of Appellants\" arguments, we are not persuaded that Appellants identify reversible error except where otherwise explained below.", + "Thus, where we affirm the Examiner's rejections, we do so for the reasons expressed in the Final Office Action and the Answer.", + "We add the following primarily for emphasis.", + "Appellants do not separately argue claims 2-5,", + "We therefore limit our discussion to claim 1.", + "Claims 2-5 stand or fall with that claim.", + "Neither of these arguments is persuasive of reversible error because the Examiner's rejection is based upon combining teachings of both Kim and Ou as explained above.", + "The stated rejection does not rely upon Kim's sheets 120 and 130 as being insulating or Kim teaching multiple aerogel sheets.", + "In the Answer, the Examiner provides an expansive explanation as to why it would have been obvious to combine the teachings of Kim and Ou, and the Examiner better explains how the teachings of the references would have been combined.", + "Appellants do not persuasively dispute the Examiner's stated rationale to combine (see e.g. Ans. 16) in the Reply Brief.", + "Appellants do not persuasively dispute this finding, and this finding is supported by the preponderance of the evidence.", + "See Kim 2 (teaching that its upper and lower sheets may be formed, for example, from Kevlar fiber); Ou I 37 (suggesting a fibrous Kevlar layer in one embodiment and thereby suggesting that other embodiments do not require such a layer).", + "The Examiner's finding regarding Ou teaching the optional nature of Kim's sheets 120 and 130 undermines Appellants' argument that a person of skill in the art would have understood that these sheets are essential.", + "It is not clear, however, from Kim that flexibility is an essential property of the Kim insulation or that the Examiner's stated combination would be unduly inflexible.", + "Moreover, this argument does not persuasively rebut the Examiner's rationale that, e.g., *resist[ing] high compression and flexural stress, before rupture\" would provide reason to combine the reference's 's teachings.", + "At most, the evidence indicates that a person of ordinary skill in the art would have understood that combining the teachings of Kim and Ou would have certain predictable trade-offs.", + "Expected trade-offs do not negate obviousness.", + "We decline to consider this argument because it is raised for the first time in the Reply Brief without a showing of good cause why it could not have been raised in the principal Appeal Brief.", + "Because Appellants' arguments do not identify reversible error, we sustain the Examiner's rejection of claims 1-6.", + "Appellants, however, do not persuasively rebut the Examiner's stated reason as to why it would have been obvious to use both adhesives and pins.", + "A person of skill in the art would have understood that using two means of fastening would present both advantages (backup durability as stated by the Examiner) and disadvantages (cost and/or lack of flexibility).", + "Simultaneous advantages and disadvantages do not negate obviousness.", + "Moreover, Leeser suggests that both adhesive and mechanical fastening could be used.", + "Because Appellants' argument does not identify reversible error, we sustain this rejection.", + "Appellants\" arguments with respect to claims 8-12 are, except as addressed below, substantively the same as those presented with respect to claims 1 and 7.", + "Those arguments are unpersuasive for the reasons explained above.", + "Appellants do not dispute this determination in the Reply Brief.", + "Appellants' argument therefore does not identify reversible error.", + "Given the context of claims 8 and 13 and the Specification, end stops and the recited end block are the same structure.", + "The Examiner's position is reversible error because it construes *end block\" too broadly.", + "Figure 16A indicates that the end block/end stop is a structure separate from the sheets with adhesive.", + "Although not a definition, this disclosure is incompatible with an end block being a mere adhesive layer on top of a sheet.", + "Accordingly, we do not sustain the Examiner's rejection of claim 13.", + "Appellants do not persuasively dispute the Examiner's 's findings, and the Examiner's findings are sufficient to establish that placement and pattern of the voids is a result effective variable that would have been obvious to optimize.", + "We thus sustain the Examiner's rejection of claim 14.", + "Appellants' arguments with respect to claims 15-20 are substantively the same as those presented with respect to claims 1 and 7.", + "Those arguments are unpersuasive for the reasons explained above." + ] +} \ No newline at end of file diff --git a/opinion_split/2017011768_DECISION.json b/opinion_split/2017011768_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..c359dc82a6ed401cdf20f4792bbeda8450411770 --- /dev/null +++ b/opinion_split/2017011768_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "According to the Appellants, in the particular scenario discussed above, Schoeggl sets *an operating strategy to reduce damage to a component.\" (Id. at 8.)", + "In other words, when Schoeggl reduces the race car's maximum engine speed to extend the component's residual service life from 25 laps to 30 laps, the operating strategy is set such that the damage of the component decelerates." + ], + "examiner_findings": [ + "The Examiner rejects claims 1-4, 8, 10, and 13 under 35 U.S.C. 6 103 as unpatentable over Admitted Prior Art (\"APA\") and Schoeggl.4 (Final Action 5.)", + "The Examiner rejects claims 5-7 and 9 under 35 U.S.C. 103 as unpatentable over the APA, Schoeggl, and Tyron.3 (Final Action 9.)", + "The Examiner rejects claims 11 and 12 under 35 U.S.C. 8 103 as unpatentable over the APA, Schoeggl, and Official Notice.6 (Final Action 12.)", + "The Examiner's rejection of independent claims 1 and 13 rests upon Schoeggl teaching a method of operating a motor vehicle which takes into consideration the residual service life of a particular component. (See Final Action 6.)" + ], + "ptab_opinion": [ + "As discussed below, we are not persuaded by the Appellants' position.", + "We are unpersuaded because the Appellants' arguments focus on the prior art's teachings about one particular scenario, as opposed to what the prior art, as a whole, would impart to one of ordinary skill in the art.", + "We agree with the Appellants that Schoeggl does not teach that, in this particular scenario, the operating strategy should be set such that the damage of the component accelerates, rather than decelerates. (See Reply Br. 1-3.)", + "But we agree with the Examiner that Schoeggl teaches that, in a different scenario, an operating strategy should be set such that the damage of the component accelerates. (See Final Action 6.)", + "Thus, if 20 laps are still remaining in a race, and the expected residual service life of a certain component is 25 laps, Schoeggl teaches an operating strategy such that the residual service life of this component approaches zero after the last (20%) lap.", + "In other words, Schoeggl teaches setting an operating strategy such that the damage of the component accelerates and **fails earlier\" than 25 laps. (Answer 5.)", + "For example, the maximum engine speed could be increased to allow the racecar to travel faster.", + "Thus, we are unpersuaded by the Appellants' position that the Examiner errs in determining that the method steps recited in independent claims I and 13 would have been obvious over the prior art.", + "We, therefore, sustain the Examiner's rejections of claims 1-13 under 35 U.S.C. 8 103." + ] +} \ No newline at end of file diff --git a/opinion_split/2018000039_DECISION.json b/opinion_split/2018000039_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..68efac9886af2e402cf3753774212cbdb32a84f3 --- /dev/null +++ b/opinion_split/2018000039_DECISION.json @@ -0,0 +1,41 @@ +{ + "appellant_arguments": [ + "According to Appellant, the invention relates \"to pipe machining apparatuses for machining large diameter pipes.\" Spec. 12." + ], + "examiner_findings": [ + "REJECTIONS AND PRIOR ART2 The Examiner rejects the claims as follows: 1. Claims 2-4, 6-11, 21-23, 26-28, and 30-34 under 35 U.S.C. & 103 as obvious based on Hall et al. (US 2010/0162860 A1, pub. July 1, 2010) (hereinafter \"Hall\") and Dawson (US 2,635,270, iss. Apr. 21, 1953); and II. Claims 6, 24, and 25 under 35 U.S.C. S 103 as obvious based on Hall and Ikeda et al. (US 6,227,577 B1, iss. May 8, 2001) (hereinafter \"Ikeda\").", + "The Examiner rejects independent claim 6 as obvious based on Hall and Dawson.", + "The Examiner concludes that it would have been obvious to replace Hall's projection and receptacle with Dawson's projection 52 and indentation 56. See Final Action 6-9.", + "The Examiner does not rely on any portion of Dawson as describing the claimed engaging, inserting, and aligning, but instead finds that using Dawson's projection and indentation would *inherently provid[e] an alignment action.\" \" Answer 3-4.", + "Rejection II The Examiner rejects independent claim 6. and claims 25 and 26 depending therefrom, based on a combination of Hall and Ikeda.", + "The Examiner does not rely on any portion of Ikeda as describing the claimed engaging, inserting, and aligning, but instead finds that *due to the nature of the round shape of projection and receptacle of Ikeda, the round shape projection and receptacle are inherently capable of engaging each other misaligned and then aligning.\" \" Answer 4-5," + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Pursuant to 35 U.S.C. 8 134(a), Appellant appeals from the Examiner's s rejection of claims 2-4, 6-11, 21-28, and 30-34, We have jurisdiction under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "Claim 6 is the sole independent claim on appeal.", + "Below, we reproduce claim 6 as illustrative of the appealed claims.", + "6. A pipe machining apparatus comprising: a first section including a first portion ofa frame and a first portion of a tool carrier; a second section including a second portion of the frame and a second portion of the tool carrier, wherein the first section and the second section are adapted to be coupled together around a pipe, and, with the first and second sections coupled together, the frame is fixed relative to the pipe and the tool carrier is adapted to move relative to the frame and the pipe; and a coupling member adapted to couple the first section and the second section together, the coupling member including a first housing member coupled to the first section and including a projection having an arcuate surface, a second housing member coupled to the second section and defining a receptacle adapted to receive the projection ofthe first housing member, wherein the second housing member includes a curved surface at least partially defining the receptacle, an arm movably coupled to the first housing member, and an engagement member coupled to the arm, wherein the arm is adapted to move between a coupled condition, in which the engagement member engages the second housing member, and an uncoupled condition, in which the engagement member does not engage the second housing member; wherein, during assembly of the first and second sections, arcuate surfaces of the projection and the receptacle are adapted to engage each other with the first and second sections misaligned, allow the projection to insert into the receptacle with the first and second sections misaligned and to move the first and second sections into proper alignment for coupling together.", + "ANALYSIS Rejection I As set forth above, independent claim 6 recites, in relevant part, that during assembly of the first and second sections, arcuate surfaces of the projection and the receptacle are adapted to engage each other with the first and second sections misaligned, allow the projection to insert into the receptacle with the first and second sections misaligned[.] and to move the first and second sections into proper alignmentfor for coupling together. Appeal Br., Claims App. (italics added).", + "As an initial matter, because Appellant and the Examiner disagree as to the proper interpretation of this recitation (see, e.g., Reply Br. 6-7; see, e.g., Answer 3-4), we decide whether we interpret the claim recitation \"adapted to\" narrowly, as akin to specifically \"configured to\" or *designed to,\" or broadly, as merely \"capable of,\" providing the claimed objective.", + "See Aspex Eyewear, Inc. V. Marchon Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (The court indicated that claim language \"configured to\" is construed more narrowly than **capable of,\" and held that where claim language is construed consistent with \"configured to,\" the claim language requires that the structure must be \"designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose. \")", + "We look to Appellant's Specification to see how Appellant describes assembly of the claimed first and second sections vis-a-vis the projection and receptacle.", + "See In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014) (The court looked to the application's 's written narrative to determine whether the phrase **adapted to\" should be broadly construed as *capable of' or narrowly construed as *designed to. \").", + "Based on our review of Appellant's Specification, we interpret claim 6's recitation of **adapted to\" as \"configured to\" or \"designed to,\" rather than merely **capable of.\"", + "This is because Appellant's Specification describes that the projection and receptacle engage each other when the sections are misaligned, and *guide the two sections \u25a0 \u25a0 into the ultimate proper alignment.\" Spec. I 37.", + "Restated, the Specification clearly describes the projection and receptacle as designed or configured to accomplish the specific objective of engaging one another when the first and second sections are misaligned, allowing the projection to insert into the receptacle with the sections misaligned, and guiding the first and section sections into alignment.", + "We do not sustain the rejection, because the Examiner does not support adequately that the proposed combination discloses a projection and receptacle designed or configured to achieve the claimed result.", + "We disagree that Dawson would necessarily provide such alignment.", + "See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (\"Inherency . \u00b7 \u00b7 may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. \").", + "We recognize that Dawson illustrates a projection and indentation with cooperating arcuate surfaces, and that claim 6 recites that the projection includes an arcuate surface and the receptacle includes a curved surface. Dawson Fig. 2; Appeal Br., Claims App. (Claim 6).", + "Nonetheless, despite these similarities, the differences between Dawson's and Appellant's devices support our conclusion that simply because Appellant's 's projection and receptacle align the first and second sections does not necessarily mean that Dawson's projection and indention provide such alignment. Cf Dawson Fig. 2; Appellant's Figs. 5, 6, 8.", + "For example, Appellant's projection and receptacle are not complementary shapes extending from and formed within flat surfaces, as are Dawson's projection and indentation.", + "To us, it does not appear that such complementary shapes would allow for the claimed engaging one another when the first and second sections are misaligned, allowing the projection to insert into the indentation with the sections misaligned, and guiding the first and section sections into alignment.", + "Thus, we do not sustain the Examiner's rejection of independent claim 6.", + "Further, we do not sustain the Examiner's obviousness rejection of claims 2-4, 7-11, 21-23, 26-28, and 30-34 that depend from, and the Examiner rejects with, independent claim 6.", + "We do not sustain this rejection for reasons similar to the reasons we do not sustain the rejection of claim 6 based on Hall and Dawson.", + "Specifically, the Examiner does not support adequately that the proposed combination discloses a projection and receptacle designed or configured to accomplish the specific objective of engaging one another when the first and second sections are misaligned, allowing the projection to insert into the receptacle with the sections misaligned, and guiding the first and second sections into alignment.", + "We disagree that modifying Hall to include Ikeda's convex joining part 121 (i.e., protrusion) and concave joining part 122 (i.e., receptacle), as the Examiner proposes (Final Action 16-19), would necessarily provide the claimed function discussed above.", + "Rather, the differences between Ikeda's and Appellant's devices support our conclusion that simply because Appellant's projection and receptacle align the first and second sections does not necessarily mean that Ikeda's projection and receptacle provide such alignment. Cf Ikeda Fig. 9; Appellant's Figs. 5, 6, 8." + ] +} \ No newline at end of file diff --git a/opinion_split/2018000120_DECISION.json b/opinion_split/2018000120_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f1120280c8d5a0dd04149d70d60c818c3ccd29f3 --- /dev/null +++ b/opinion_split/2018000120_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Appellants contend Merriman fails to disclose \"calculating a geohash representation of the given point with a resolution equal to a magnitude value of the certain distance d,\" as recited in claim 1. App. Br. 13-21.", + "According to Appellants, one of ordinary skill in the art would understand the term \"resolution, in light of the Specification, as referring to \"the number of characters used to represent a geocode\" and, therefore. claim 1 requires that the number of characters of a geocode representation calculated in accordance with claim 1 *is constrained, limited, and/or otherwise forced to be equal to a magnitude of the certain distance d.\" App. Br. 14-15 (citing Spec. I 17).", + "Appellants argue Merriman discloses determining an identification boundary based on the length of a prefix, \"while in [claim 11, a distance d is already known and it is from this distance d. namely its magnitude, that the resolution of the geohash representation of the given point is calculated.' \" App. Br. 17.", + "Appellants further argue: Regarding paragraph [0004] of Merriman, the same simply discloses the following in pertinent part: \"The system can compute larger and larger boundaries by generalizing the hash value of the point of interest (e.g., by replacing the low order bits with pad values).[\" ] However, there is no mentioning in paragraph [0004] of Merriman of a particular resolution being used to generalize the hash value of the point of ofinterest, let alone that such resolution is equal to the magnitude value of a certain distance d within which k-nearest-neighbors are to be discovered. App. Br. 18-19.", + "Regarding the rejection of dependent claims 7-10 and 18-20, Appellants argue the additional references cited in the rejections of these claims do not teach the contested limitations of the independent claims. App. Br. 23-27." + ], + "examiner_findings": [ + "Claims 1-6 and 11-17 stand rejected under 35 U.S.C. 8 102 as being anticipated by Merriman, Final Act. 11-17.", + "Claims 7, 8, and 18 stand rejected under 35 U.S.C. 8 103 as being unpatentable over Merriman. Final Act. 18-19.", + "Claims 9, 10, 19, and 20 stand rejected under 35 U.S.C. 6 103 as being unpatentable over the combination of Merriman and Bogosian. Final Act. 19-20." + ], + "ptab_opinion": [ + "Appellants do not substantively argue claims 1-6 and 11-17 separately, but instead rely on the same arguments for all claims. See App. Br. 13-22.", + "In accordance with 37 C.F.R. 6 41.37(c)(1)iv), we select independent claim I as the representative claim.", + "Remaining claims 2-6 and 11-17 stand or fall together with claim 1.", + "We do not find Appellants' arguments persuasive.", + "The Specification, therefore, describes a geohash string as a series of characters with the first character representing an initial, or first, lat-lon box that covers a smaller, second lat-lon box represented by the second character (e.g., the second lat-long box is located within the first lat- lon box) and each subsequent character representing a smaller lat-lon box that is covered by, or within, each lat-lon box represented by preceding characters of the geohash string.", + "As such, consistent with the Specification, the broadest reasonable interpretation of **calculating a geohash representation of the given point with a resolution equal to a magnitude value of the certain distance a includes removing characters from a geohash representation of the given point such that the last character of the calculated geohash representation represents an area (e.g., a lat-lon box) covering the certain distance d from the given point.", + "Merriman discloses generating an identification boundary that *defines an area including the geohash values that are within the computed distance threshold.\"", + "The Examiner finds, and we agree, Merriman discloses generating the identification boundary by calculating a geohash string for a location of interest and replacing the low order bits of the geohash string with pad values (e.g., removing characters from the end of the geohash string). Ans. 5-6 (citing Merriman I 4); see also Merriman 11 66-70.", + "Merriman, therefore, discloses removing characters from a geohash representation of the given point such that the last character of the geohash representation represents an area covering the distance from the point of interest.", + "As such, Merriman discloses the disputed limitation.", + "Appellants' argument that \"to the extent that a stopping condition is mention [sic], it is directed to and necessarily involves the computation of two areas, namely (1) the area of the identification boundary and (2) the search area, as well as a comparison between the two areas, and further involves padding\" (App. Br. 19) is not persuasive because claim 1 does not prohibit performing these steps.", + "For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 1 and claims 2-6 and 11-17, which fall with claim 1.", + "For the reasons discussed supra, we are not persuaded the Examiner errs in finding Merriman teaches those limitations.", + "Accordingly, we sustain the Examiner's 6 103 rejections of claim 7-10 and 18-20." + ] +} \ No newline at end of file diff --git a/opinion_split/2018000148_DECISION.json b/opinion_split/2018000148_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..438fd190a086e6d6bff7aa1e6f06a34286559d48 --- /dev/null +++ b/opinion_split/2018000148_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Appellants' arguments urging reversal of the rejection focus on limitations recited in independent claims 12, 18, and 24.", + "Claim 24 Appellants argue that the Examiner \"has not established prima facie obviousness with respect to Claim 24 because the claim requires the formation of both NbBz and AhNb\" (Appeal Br. 9).", + "Appellants further argue that \"the combined teaching of Brupbacher and Pand[e]y does not disclose or suggest the formation of an Al&Nb-containing intermetallic in alloys of the type required by Claim 24.\" Id.", + "Appellants support these arguments by submitting **Exhibits A. B, and C of Applicants' response filed June 9, 2016.\" which allegedly *prove that Brupbacher's alloy described in Example 3 does not contain Al3Nb because it is thermodynamically more favorable to form NbBz than to form AlyNb.\" Id. at 5.", + "To meet this burden, Appellants refer to the Rule 132 Declaration executed by named inventor Dr. Hari Nadendla on October 4. 2017 (Reply Br. 1-4).", + "As described therein, Dr. Nadendla combined 50 wt% Al and 50 wt% Nb and B powders in a 1:2 atomic ratio to yield a 50 wt% NbBz second phase in an aluminum solvent metal matrix under the reaction conditions specified in Brupbacher's Example 3.", + "Dr. Nadendla then analyzed the reacted compact for the presence of Al,Nb peaks in X-ray diffraction patterns, but found no indication that Al3Nb was present.", + "In the alternative, Appellants make the following principal arguments urging reversal of the rejection of claims 12 and 18: (1) the Examiner's reliance on Brupbacher's claim 29 steps (a)-(d) *are irrelevant to Claims 12 [and] 18 \u00b7 \u00b7 \u25a0 because they recite different steps \u00b7 \u25a0 none of which are recited in the present claims\" (Appeal Br. 4); (2) **Exhibits A, B, and C of Applicants\" response filed June 9, 2016 prove that Brupbacher's alloy described in Example 3 does not contain Al3Nb because it is thermodynamically more favorable to form NbB2 than to form Al3Nb** (id. at 5; see also id. at 6-7); and (3) the Examiner's inference that Brupbacher's Example 3 contains A13Nb is based on the doctrine of inherency, which *cannot form a proper basis for rejecting the claimed invention as obvious under 8 103.\" Id. at 8.", + "Appellants counterargue in connection with arguments (1) and (2) that **[the steps recited in the combined references must yield the positively required Al3Nb intermetallic phase\" (Reply Br. 4).", + "In particular, Appellants assert that \"both in the evidence previously submitted [i.e., Exhibits A, B, and C of Applicants' response filed June 9, 2016] and Dr. Nadendla's 's declaration \u00b7 \u00b7 Brupbacher's protocols will not and do not result in a composition of matter having an Al3Nb intermetallic.\" Id." + ], + "examiner_findings": [ + "In rejecting claims 12 and 24, the Examiner finds that Brupbacher's Example 3 teaches or suggests mixing and heating niobium, boron, and aluminum powders to form a first composite comprising the claimed grain refiner NbB in an aluminum solvent metal matrix (Ans. 4, 6; see also Brupbacher 15:1-15).", + "The Examiner further finds Brupbacher teaches that diluting this first composite in aluminum metal results in the formation of a second composite, which comprises a dispersion of second phase particles, e.g., NbBz, within an intermediate metal matrix, e.g., the claimed grain refiner Al3Nb (Ans. 4 (citing Brupbacher Abstract, claim 29 step (c).", + "According to the Examiner: Brupbacher expressly discloses \u25a0 \u25a0 \u00b7 that after diluting [the] first composition of Example 3 in aluminum host metal, [this] will form a final composite comprising a dispersion of second phase particles within an intermetallic containing matrix.", + "Then Brupbacher's claims 40, 42 further demonstrate[ that] the intermetallic containing matrix comprises NbAl[3]; and claim 44 [requires that] the second phase particles [are selected from the group consisting of NbB[2]. (Ans. 4-5, citing Brupbacher Abstract, claim 29 (steps (c), (d) and (e).", + "Thus, the Examiner concludes that Brupbacher's Example 3 discloses or suggests the claimed process step (a) for refining the grain size of (i) an alloy comprising aluminum,* whereas Brupbacher's Abstract and claim 29 step (e) teach that the final composite comprises the claimed grain refiners NbB2 and A13Nb (Final Act. 3, 8).", + "The Examiner notes that Brupbacher \"does not expressly teach [that] the aluminum metal matrix comprises at least 3[]wt% silicon** as recited in claims 12 and 24.", + "However, the Examiner finds that Pandey's 's claim 10 \"teaches a method of preparing high strength aluminum alloy comprising 4-25 wt% silicon.' Id. at 4.", + "The Examiner further finds that Brupbacher and Pandey both teach methods aimed at increasing dispersion strength.", + "The Examiner thus determines that \"it would have been obvious to one of ordinary skill in the art, at the time of the invention to include [Pandey's] 's] at least 3 wt% of silicon \u00b7 \u00b7 \u00b7 in [Brupbacher's] process \u00b7 \u00b7 \u00b7 in order to provide solid solution and precipitation strengthening in the aluminum alloys\" (Final Act. 4).", + "In response, the Examiner asserts that none of Appellants' submitted exhibits reproduce the same process conditions as Brupbacher's Example 3 or claim 29 steps (a)-(d) (Ans. 5).", + "According to the Examiner, Appellants *did not compare the closest prior art of Brupbacher to demonstrate [that] forming AILJNb and NbB[2] is not possible.\" Id.", + "As the Examiner finds, Brupbacher's claims 40 and 42 disclose that the intermetallic containing matrix comprises NbAl3 and claim 44 requires that the second phase particles are selected from the group consisting of NbB> (Ans. 4-5, citing Brupbacher Abstract, claims 29 (steps (c), (d) and (e)." + ], + "ptab_opinion": [ + "Therefore, it is incumbent upon Appellants to show that Brupbacher's Example 3 and claim 29 steps (a)-(d) do not result in the formation of both NbB> and Al3Nb.", + "See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (\"Where \u00b7 \u00b7 \u00b7 the claimed and prior art products are identical or substantially identical \u00b7 \u00b7 \u00b7 , the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. \").", + "We find that Appellants have established that the Rule 132 Declaration of record is sufficient to show that Brupbacher's reaction conditions, as disclosed in Example 3, would not result in an alloy containing an Al3Nb intermetallic phase.", + "Thus, we determine from Dr. Nadendla's 's Rule 132 Declaration that the reaction conditions of Brupbacher's Example 3 is incapable of forming both NbB and Al3Nb as recited in claim 24.", + "Accordingly, we reverse the rejection of claim 24 for the reasons set forth above.", + "Even assuming that Dr. Nadendla duplicated the conditions specified in Brupbacher's claim 29 step (c) by diluting \"the Al-50wr%NbB, pellet\" resulting from Brupbacher's Example 3 *in liquid aluminum at 700 for 1 hour\" (see Rule 132 Declaration 3), Appellants do not direct our attention to any results from an X-ray spectroscopy or diffraction pattern analysis on this *second composite\" (see Brupbacher claim 29 step (c).", + "The Rule 132 Declaration of record merely provides that X-ray spectroscopy of four spots within *a compact formed according to Example 3 of Brupbacher is unlikely to yield a composition of matter having a Nb3Al or Al3Nb intermetallic\" (emphasis added) (Rule 132 Declaration 3).", + "Thus, Appellants have not demonstrated reversible error in the Examiner's finding that Brupbacher's *second composite,\" as recited in claim 29 step (c), suggests that it is comprised of a dispersion of second phase particles, such as NbBz, within an intermediate metal matrix, such as the claimed grain refiner Al3Nb (see Ans. 4).", + "Furthermore, Appellants have not met their burden under Best because Dr. Nadendla's Rule 132 Declaration fails to demonstrate that Brupbacher's claim 29 steps (a)-(d) would not result in an alloy containing an Al}Nb intermetallic phase.", + "Appellants' arguments are not persuasive.", + "With respect to argument (1), we agree with the Examiner that because the term \"comprising\" is used to introduce steps in method claims 12 and 18 for refining the grain size of aluminum-silicon and/or magnesium alloys, there is a presumption that the method may contain steps in addition to those explicitly mentioned in the claim (Ans. 3-4).", + "See, e.g., In re Skvoreez, 580 F.3d 1262, 1267 (Fed. Cir. 2009) ((citing CIAS, Inc. V. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (*In the patent claim context the term 'comprising' is well understood to mean *including but not limited to. \").", + "Appellants' arguments are not persuasive because Dr. Nadendla's analysis of a compact formed according to Brupbacher's Example 3 does *not constitute a teaching away from a broader disclosure.\"", + "See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (\"lilt is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art. \").", + "As set forth above, neither Appellants' Exhibits A, B, or C, nor Dr. Nadendla's Rule 132 Declaration described any comparison with the closest prior art of Brupbacher's claim 29 steps (a)-(d) to demonstrate that formation of both NbB2 and Al3Nb does not occur.", + "Appellants' argument (3) is not persuasive because it is well established that when claimed and prior art products are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.", + "This is true whether the rejection is under 35 U.S.C. S 102 (anticipation) or 35 U.S.C. . 103 (obviousness), and is based on the fact that the PTO is not in a position to manufacture products or to obtain and compare prior art products.", + "Accordingly, we affirm the rejection of claims 12 and 18 for the reasons set forth above and explained in the Examiner's Final Office Action and Answer." + ] +} \ No newline at end of file diff --git a/opinion_split/2018000427_DECISION.json b/opinion_split/2018000427_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..31e19370b795b6bb39ad6a66783d1159e2c2ec83 --- /dev/null +++ b/opinion_split/2018000427_DECISION.json @@ -0,0 +1,52 @@ +{ + "appellant_arguments": [ + "Appellant contends *one of ordinary skill in the art would know that the claims' recitation of *about' in the terms *about 80 um2, and *about 300 um2, is intended to account for the manufacturing variation, or 'tolerance,' in the size of the openings,\" and *infringement of the claims could be clearly determined by measuring the size of the openings of an accused device.\" Appeal Br. 5.", + "Appellant asserts that the term \"about\" as recited in the independent claims merely reflects the practicalities of manufacturing a filter material, and, in the context of the recited limitations, a person of ordinary skill in the art would understand this. Id. at 6.", + "Appellant argues that the Examiner erred in finding that Greenberg discloses that the size of the pores in its filter media are preferably 20 um in diameter. Appeal Br. 8.", + "Specifically, Appellant asserts, \"Greenberg's paragraph [0005] does not disclose *openings of a size \u00b7 \u00b7 no larger than about 300 um2,* , but rather, discloses pores of at least 10 um in diameter (area of 78.5 um2) or pores of at least 20 um in diameter (area of314 um2).\" Id.", + "In reply, Appellant contends that the range of pore sizes set forth in claim 18 applies to all the pores in the filter material, i.e., that the filter material does not allow passage of particles larger than the 300 um2 upper limit. See Reply Br. 1-3.", + "Consequently, according to Appellant, the disclosure in Greenberg of filter material having pores with diameters of at least 10 um (areas of at least 78.5 um2) fails to meet the requirement that the pores have openings of a size no smaller than about 80 um2 and no larger than about 300 um2. See id.", + "However, Appellant asserts that Greenberg teaches away from providing an upper limit of 300 um2 by disclosing that a pore diameter of at least 20 um (an area of 314 um2) is preferred. Appeal Br. 8.", + "Appellant contends that this disclosure in Greenberg encourages the use of pore sizes of 314 um2 and above, and, therefore, discourages the use of pore sizes of less than 314 um2. Reply Br. 2-3,", + "Appellant contends that the arguments discussed above apply to each of Rejections III- v and makes no separate arguments contesting any of these rejections. See Appeal Br. 7-9." + ], + "examiner_findings": [ + "The Examiner determines that the term \"about,\" as recited before the endpoints of the numerical ranges in each of independent claims 1, 16, and 18, renders these claims indefinite. See Final Act. 7-8.", + "Specifically, the Examiner states, \"the instant specification fails to disclose with sufficient specificity the degree to which the term *about' should be afforded.\" Id.", + "The Examiner likens claims 1, 16, and 18 to claims that were determined to be indefinite in Amgen, Inc. V. Chugai Pharm Co., Ltd., 927 F.2d 1200 (Fed. Cir. 1991). Id. at 3-4.", + "In response, the Examiner finds that Greenberg qualifies as \"close prior art\" as discussed in Amgen, and, therefore, given the lack of guidance provided by the Specification as to the meaning of the term \"about\" in claims 1, 16, and 18, these claims are properly rejected as indefinite. Ans. 4-5; see also Amgen, 927 F.2d at 1218.", + "The Examiner relies on Yodfat to teach many of the elements recited in claim 18, but relies on Greenberg to teach that, in a blood filtering element, a \"pore diameter should be at least 10um and preferably 20pm in diameter . . \u00b7 which would provide an open size range of 78.5 um2-314 um2. \" Final Act. 9-10; see also Greenberg ' 5.", + "Further, the Examiner determines that \"It would have been obvious to \u00b7 \u00b7 \u00b7 provide the filtering deflecting means of Adams with the open size range as disclosed by Greenberg since Greenberg discloses that this opening size is preferable for allowing blood flow while preventing the passage of clots and emboli (paragraph 5).\" Final Act. 10-11.", + "In response, the Examiner states: Greenberg teaches pores that encompass the disclosed range of between about 80pm2 and about 300pm2 which corresponds to no smaller than about 80pm2 and no larger than about 300pm2 by teaching \"pores of at least 10 um in diameter (area of 78.5 um2)* which discloses openings which are no smaller than about 80pm2 and no larger than about 300pm2. Ans. 9 (emphasis omitted).", + "Thus, the Examiner finds that Greenberg's disclosure of pores having diameters of at least 10 um (areas of at least 78.5 um2) satisfies the pore size requirement in claim 18 because this disclosure teaches pore sizes falling within (as well as above) the recited 80 pm2-300 um2 range.", + "Accordingly, the Examiner implicitly interprets claim 18 as allowing for pore sizes to also exceed the 300 um2 upper limit of the range.", + "The Examiner provides an alternate basis for rejecting claim 18, namely, that in light of the teachings of Yodfat and Greenberg, a person of ordinary skill in the art would have recognized the size of pores in a filter material as a result-effective variable. Final Act. 11.", + "Specifically, the Examiner finds Greenberg teaches open pore sizes may be in the recited range *for the purpose of preventing the passage of clots and emboli.\" Id. (citing Greenberg I 5).", + "From this, the Examiner determines that it would have been obvious to a person of ordinary skill in the art, as a matter of routine optimization, \"to provide the openings of a size no smaller than about 80 um2 and no larger than about 300 um2, for the purpose of preventing the passage of clots and emboli.\" Id. (citing In re Aller, 220 F.2d 454 (CCPA 1955)).", + "The Examiner relies on the same findings of fact and reasoning regarding modifications based on Greenberg in Rejections III-V as discussed above for Rejection II. See Final Act. 13-16, 20-22." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We AFFIRM.", + "Appellant has the better position.", + "The decision in Amgen included an explicit caution that the holding therein *should not be understood as ruling out any and all uses of [the term 'about'] in patent claims. It may be acceptable in appropriate fact situations \u00b7\u00b7\u00b7 even though it is not here. \" Amgen, 927 F.2d at 1218.", + "The Court also indicated that even without the use of the term \"about,\" the claims at issue were indefinite. Id. at 1218.", + "The Court's cautionary language highlights that the determination of indefiniteness based on the use of the word \"about\" is to be based on the facts presented in each case.", + "In Amgen, the two principal factors that the Court found probative were that the only available method to measure the *specific activity\" that was claimed using the term of degree \"about\" was itself an imprecise form of measurement and that the term \"about\" was a significant factor in the patentee's ability to obtain allowance of the claims at issue over the prior art. Id. at 1217-1218.", + "Here, the cross-sectional areas of the pores of the filter material are readily susceptible of being accurately measured by any number of methods inasmuch as they relate to physical dimensions of the pores.", + "Further, as will be seen in the ensuing discussion of the rejections based on the prior art, the claimed size of the openings is not critical to the patentability of the claims.", + "As such, the outcome in Amgen is not particularly germane to the present situation.", + "For these reasons, we do not sustain this rejection.", + "During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004),", + "The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.", + "And it is not simply an interpretation that is not inconsistent with the specification.", + "It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is \"consistent with the specification.\" In re Smith Int 7, Inc., 871 F.3d 1375, 1382-1383 (Fed. Cir. 2017) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).", + "Accordingly, the broadest reasonable interpretation of claim 18, consistent with the Specification, precludes using a filter material having pore sizes greater than 300 um2 inasmuch as the purpose of the filter material is to block particulate, and having pore sizes larger than 300 um2 would, by passing relatively large particles, frustrate the blocking effect of having pores with sizes inside the recited range.", + "Consequently, the Examiner's s finding that Greenberg's disclosure of pores having diameters of at least 10 um (areas of at least 78.5 um2) satisfies the pore size requirement in claim 18 is based on an unreasonably broad interpretation of claim 18.", + "The Examiner's finding that Greenberg teaches that the size of pores in filter material is recognized as a result-effective variable for blood filtering (Final Act. 11) is supported by a preponderance of the evidence. See Greenberg, Abstract, I 5.", + "Further, Appellant's argument that Greenberg teaches away from the pore size range recited in claim 18 is unavailing. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (*[A] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed \u00b7 \u00b7 \u00b7 is the preferred, or most desirable, combination.' .\"", + "The statement in Greenberg that a pore diameter of at least 20 um (area of at least 314 um2) is preferred, but also indicating that pore diameters of at least 10 um (areas of at least 78.5 um2) function to filter blood (Greenberg I 5), does not amount to teaching away from the use of pore diameters sizes limited to a range of 80 um2 to 300 um2 as recited.", + "Accordingly, we sustain the Examiner's rejection of claim 18, and claim 19 depending therefrom, as unpatentable over Yodfat and Greenberg.", + "Accordingly, for the same reasons discussed regarding Rejection II, we sustain Rejections III-V." + ] +} \ No newline at end of file diff --git a/opinion_split/2018000594_DECISION.json b/opinion_split/2018000594_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..7466020235b97a311bc848ebdd15aadf6f88ce2c --- /dev/null +++ b/opinion_split/2018000594_DECISION.json @@ -0,0 +1,111 @@ +{ + "appellant_arguments": [ + "As Appellants argue, the term *content item\" as recited in independent claims 1 and 15 refers to an item in a document capable of being edited, and requires that the item is part of content of the document. App. Br. 8.", + "Appellants do not argue that either the concept of a GUI, or the concept of a document authoring application, by themselves are novel.", + "Appellants argue the Examiner erred in rejecting claim I as being unpatentable as obvious over Keohane, Koivisto, Huffinan, and McKinney. App. Br. 9-11.", + "In particular, Appellants argue Koivisto fails to teach wa selectable image user interface (UI) representation of the content item, wherein the image UI representation is an image selected and sized within the document by a user of the document authoring application. ~ App. Br. 10-11.", + "Appellants argue that while Koivisto teaches the icon generation module 200 generating an icon, it does not teach, and in fact teaches away from, *an image selected and sized within the document by a user, as recited by independent claim 1. Id. at 11-12.", + "Moreover, Appellants argue, Koivisto's 's icon generation module is not within the document because it generates the icon, rather than enabling a user to select the icon. Id. at 12.", + "Appellants also argue that McKinney does not teach \"locking\" content of a content display area that is displayed over a portion of other content of a document. App. Br. 13.", + "In particular, Appellants argue McKinney is silent regarding a content display area over a portion of other content of a document. Id.", + "Appellants further argue that \"locking\" an electronic book as taught by McKinney teaches away from the annotation display taught in Huffman such that it would render Huffman unsatisfactory for its intended purpose. App. Br. 14-15; Reply Br. 9-10.", + "Appellants acknowledge Chinn teaches control palettes that may be resized. Id.", + "Yet, Appellants argue Chinn does not teach resizing and image, or an image UI representation, because Chinn at best teaches a group window 210 of control palettes (e.g., 220, 230) that may be resized by selecting a border 330 and dragging to a desired size. Id. at 17-18; Reply Br. 11-13.", + "Appellants argue Driskell does not teach displaying the maximum display based on a size and location of a selectable image UI representation. App. Br. 20.", + "In the Reply Brief, Appellants generally state, without further explanation, that Driskell *is silent regarding\" displaying a display area based on a size and location of its controls. Reply Br. 15.", + "In particular, Appellants argue Keohane and Hollander do not teach a scrollable content item in a defined location in a document relative to other content items in the document, as required by claim 15. App. Br. 21-24.", + "Additionally, Appellants argue Hollander does not teach a document viewing application displaying a scrollable content item in a defined location in a document when the document is displayed. App. Br. 26.", + "Appellants argue that Keohane's 's picture toolbar 230 is described as *floating,\" and therefore does not teach the limitation. Reply Br. 17.", + "Appellants then make a conclusory statement that Keohane does not teach *a scrollable content item in a defined location in a document relative to other content items in the document.\" Id.", + "Appellants also argue that Hollander's portion 254 does not appear to be a \"content item\" of a document. Reply Br. 18.", + "As Appellants argue, the term *content item, \" as recited in independent 15, refers to an item in a document capable of being edited, and the item is part of content of the document. App. Br. 8.", + "For example, Appellants argue that in Hollander, the annotations are in a different portion, and \"the text of the book in the first portion 252 may be scrolled up and down without affecting the location of the annotations 262, 264 in the second portion 254.\" Reply Br. 19." + ], + "examiner_findings": [ + "The Examiner rejected claims 1 and 15 under 35 U.S.C. 8 112 (pre- AIA), first paragraph. Final Act. 6.", + "The Examiner rejected claims 1-7 and 13 under 35 U.S.C. & 103 as being unpatentable over Keohane et al. (US 2008/0104505 A1, published May 1, 2008) (hereinafter \"Keohane\"), Koivisto et al. (US 2007/0124700 A1, published May 31, 2007) (hereinafter \"Koivisto\"), Huffman et al. (Patent No. 5,761,682 issued June 2, 1998) (hereinafter \"Huffman\"), and McKinney et al. (US 2013/0191728 A1, filed Jan. 20, 2012) (hereinafter \"McKinney\"). Final Act. 8.", + "The Examiner rejected claims 8 and 9 under 35 U.S.C. 8 103 as being unpatentable over Keohane, Koivisto, Huffinan, McKinney, and Hollander et al. (US 2006/0053364 A1, published Mar. 9, 2006) (hereinafter **Hollander\"). Final Act. 22.", + "The Examiner rejected claims 10 and 11 under 35 U.S.C. 9 103 as being unpatentable over Keohane, Koivisto, Huffman, McKinney, and Chinn et al. (US 6,970,749 B1, issued Nov. 29, 2005) (hereinafter \"Chinn\"). Final Act. 25.", + "The Examiner rejected claim 14 under 35 U.S.C. 6 103 as being unpatentable over Keohane, Koivisto, Huffinan, McKinney, and Driskell (US 6,801,230 82, issued Oct. 5, 2004). Final Act. 27.", + "The Examiner rejected claims 15 and 16 under 35 U.S.C. 6 103 as being unpatentable over Keohane, Hollander, and Huffman, Final Act. 29.", + "The Examiner rejected claim 18 under 35 U.S.C. 8 103 as being unpatentable over Keohane, Hollander, Huffman, and Allam et al. (US 2004/0139400 A1, published July 15, 2004) (hereinafter \"Allam\"). Final Act. 34.", + "The Examiner rejected claim 19 under 35 U.S.C. 6 103 as being unpatentable over Keohane, Hollander, Huffman, and Lapidous (US 6,874,126 B1, issued Mar. 29, 2005). Final Act. 36.", + "The Examiner rejected claims 17 and 20 under 35 U.S.C. 8 103 as being unpatentable over Keohane, Hollander, Huffman, and Pavley et al. (US 5,664,208, issued Sept. 2, 1997) (hereinafter **Pavley*). Final Act. 37.", + "The Examiner rejected claim 22 under 35 U.S.C. 9 103 as being unpatentable over Keohane, Hollander, Huffman, and Migos et al. (US 2012/0192118 A1, published July 26, 2012) (hereinafter \"Migos\"). Final Act. 39.", + "The Examiner finds the Specification does not support adding a *content item\" to a document, as recited in claims 1 and 15. Final Act. 7.", + "The Examiner finds the Specification is limited to describing adding a *content control\" to the document that is significantly different from just any content item being edited in the document. Id.", + "Rather, the Examiner finds Keohane teaches a selectable icon, which is a selectable image UI item. Ans. 8.", + "Keohane teaches that the user can edit document 220 in a variety of ways, including selecting icons within one or more application toolbars. Id. (citing Keohane 1 21).", + "Koivisto teaches that in one embodiment, a user may modify some aspects affecting the selection function, where the icon (which the Examiner maps to the selectable image UI representation of the content item) generation may be adapted according to user preferences. Id. (citing Koivisto 9 22).", + "As the Examiner explains, McKinney teaches an additional feature for locking content for reader users, while still allowing editor users to edit, insert and view rich content pop-up window display areas of the electronic book document. Ans. 12; McKinney \" 29, 30, 59.", + "Yet, as the Examiner finds, Keohane and Koivisto are relied upon for teaching the user selectable and sized image user interface (UI) representation, while Chinn is relied on for teaching the set of adjustable UI controls. Ans. 13.", + "Yet, the Examiner as the Examiner finds, Keohane and Koivisto are relied upon for teaching the \"selectable image UI representation,\" and \"Driskell teaches that the size of the control display is identified and the control display area is positioned such that it partially overlays a work area of a display zone.\" Ans. 16-17.", + "The Examiner finds that \"Figure 2A of Keohane teaches the Picture Toolbar 230 content control item added to the document 222, the Picture Toolbar 230 content control item having a size and location in the document relative to the other text and image content items in the document 222.\" Ans. 22.", + "Moreover, the Examiner additionally finds \"Figure 4A of Hollander teaches the scrollable content item having a defined size and location relative to other content items in the document and displaying the scrollable content item at the defined size and location relative to the other content items in the document.\" Id." + ], + "ptab_opinion": [ + "The invention is for a tool for adding content controls to a document. Spec. p. 7, II. 6-7.", + "Claims 1, 10, 14, and 15 are representative and reproduced below: 1. A non-transitory machine-readable medium storing a document authoring application which when executed by at least one processing unit of a first device provides a graphical user interface (\"GUI\") for the document authoring application, the GUI comprising: a document display area for displaying a document being authored with the document authoring application on the first device; and a document authoring tool for adding a content item to the document, the content item comprising: a selectable image user interface (UI) representation of the content item, wherein the image UI representation is an image selected and sized within the document by a user of the document authoring application; and a content display area for displaying editable content overlapping other content of the document upon selection in the document authoring application of the selectable image UI representation of the content item, wherein when the document is displayed by document viewing applications on a plurality of additional devices to which the authored document is distributed, the selectable image UI representation is displayed without overlapping other content of the document and selection of the UI representation causes the document viewing application to display the content display area with the content as edited by the document authoring application over a portion of the other content of the document, wherein the content as edited by the document authoring application is non-editable when displayed in the document viewing applications.", + "10. The non-transitory machine-readable medium of claim 1, wherein the user selects and sizes the image UI representation by adjusting a set of adjustable UI controls.", + "14. The non-transitory machine-readable medium of claim 1, wherein the document viewing application, upon receiving a selection of the UI representation, displays the content display area at a particular location over a particular portion of the document based on a size and location of the selectable image UI representation and a defined size of the content display area.", + "15. A non-transitory machine-readable medium storing a document authoring application which when executed by at least one processing unit provides a graphical user interface (\"GUI\") for the document authoring application, the GUI comprising: a display area for displaying a scrollable document being authored, the document comprising a first set of content items; and a document authoring tool for adding a scrollable content item to the document, the scrollable content item having a defined size and location in the document relative to other content items in the document, wherein the scrollable content item comprises a second set of content items and is separately scrollable when the second set of content items do not all fit within the defined size of the scrollable content item, wherein the document is for display in a document viewing application, the document viewing application displaying (i) the scrollable content item in the defined size and location in the document when the document is displayed in a first viewing mode and (ii) a selectable representation of the scrollable content item in a different location in a second viewing mode, wherein selection of the selectable representation in the second viewing mode causes the document viewing application to display the scrollable content item over a portion of the first set of content items of the document.", + "We disagree.", + "There is no requirement that the claimed invention be described in the identical wording that was used in the Specification; however, there must be sufficient disclosure to show one of skill in the art that the inventor *invented what is claimed.\" Union Oil Co. of Cal. V. Atl. Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)).", + "The Specification teaches that a *scrollable content control\" and a **superimposable content control\" are items of content in a document capable of being edited. Spec. p. 10, In. 13- p. 11, In. 11.", + "We agree with Appellants that these components are \"content items.\"", + "These controls are shown and described in figures in the Specification. Spec., Figs. 1-5 and 7-17.", + "Therefore, one of ordinary skill in the art reading the Specification would have understood *content item\" to be the \"scrollable content control\" or the \"superimposable content control.\"", + "Accordingly, we do not sustain the rejection of claims 1 and 15 under 35 U.S.C. 8 112, first paragraph, as failing to comply with the written description requirement.", + "Essentially, Appellants' invention is directed to a graphical user interface (\"GUI\") for a document authoring application.", + "Appellants make various arguments against the Section 103 references individually.", + "We do not find any of Appellants' arguments against the Section 103 rejections persuasive.", + "Instead, we find the Examiner has provided a comprehensive response to Appellants' arguments supported by a preponderance of evidence. Ans. 2- 13.", + "As such, we adopt the Examiner's findings and explanations provided therein. Id.", + "We address Appellants\" arguments in more detail below.", + "At the outset, we disagree that Koivisto teaches away from \"an image selected and sized within the document by a user.\"", + "\"[T]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed \u00b7 \u00b7 \u00b7 \u00b7 \" In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "Appellants identify no portion of Koivisto that criticizes, discredits, or otherwise discourages *an image selected and sized within the document by a user.\"", + "Moreover, the Examiner does not rely on Koivisto, alone, as teaching the elements of claim 1.", + "In one embodiment, the icon generation module 200 is implemented as part of a presentation editor application, and is thus within the document authoring application.", + "Moreover, an icon in Koivisto may be associated with a content item in various ways.", + "In one embodiment, the icon is \"part of the content item itself,\" and is therefore within the document. Koivisto I 26.", + "The icon generation may be *initiated by user input\" or automatically. Id.", + "The icon generation may be applied in (i.e., within the document) or by an application capable of opening a content item from which an icon is to be generated, either based on user initiation or automatically. Koivisto I 33.", + "Koivisto teaches one feature is scaling of the content item portion to correspond to a predetermined icon size, where a user can set the icon size. Koivisto I 36 (emphasis added).", + "Although Appellants argue in the Reply Brief that Koivisto does not teach that the user may himself size the icon within a document, Appellants mischaracterize the disclosures of Koivisto. Reply Br. 7.", + "Rather, Koivisto teaches that a user editing a presentation content item can initiate an icon generation for the presentation content item, where the image UI representation is the entire presentation content item image selected within the presentation document by the user of the presentation document authoring application, and that in one embodiment, the \"user can set the icon [image] size.\" Koivisto I 36.", + "Thus, directly contrary to Appellants' argument, the user can set the icon image size within a document.", + "Therefore, the combination of references cited by the Examiner teaches a selectable image UI representation of the content item where the content item image is selected and sized within the document by the user of the document authoring application.", + "However, the Examiner finds, and we agree, \"McKinney teaches that its electronic book document can be edited to insert and modify rich content, including interactive objects, such as pop-up window display areas.\" Ans. 11; see McKinney 11 29, 30, 59.", + "McKinney also teaches locking an electronic book for editing by readers, but not locking the book to authors, where the electronic book includes the interactive popup window display area. Id.", + "Thus, McKinney teaches locking the book document, including content of the pop-up window display area that is displayed over a portion of other content of a document. Id.", + "As with Appellants' previous **teaching away\" argument, we disagree that McKinney teaches away from annotation display as alleged by Appellants.", + "\"[T]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . \u00b7 ~ In re Fulton, 391 F.3d at 1201.", + "Appellants again identify no portion of McKinney that criticizes, discredits, or otherwise discourages annotation display.", + "In Allied Erecting V. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016), our reviewing court stated *[alIthough modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, *[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine\"\" ~ (quoting Medichem, S.A. V. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (citation omitted)).", + "In other Thus, McKinney does not prevent or teach away from users editing, inserting and viewing rich content pop-up window display areas and annotations of the electronic book document of Huffman. Id.", + "Appellants do not otherwise specifically challenge the motivation to combine the cited references.", + "Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. 8 103, and of claims 2-7 and 13, which were argued together with claim 1.", + "We are not persuaded by Appellants' arguments with respect to dependent claim 10.", + "Claim 10 depends from independent claim 1, and recites, \" wherein the user selects and sizes the image UI representation by adjusting a set of adjustable UI controls. \" App. Br. 17.", + "In other words, Keohane and Koivisto teach the user selectable and sized image UI representation, and Chinn teaches the claimed *set of adjustable UI controls.\"", + "In the absence of sufficient evidence or line of technical reasoning to the contrary, the Examiner's response is reasonable and we find no reversible error.", + "Accordingly, we sustain the rejection of claim 10 under 35 U.S.C. S 103, and of claim 11, which was argued together with claim 10.", + "We are not persuaded by Appellants' arguments with respect to dependent claim 14.", + "Claim 14 depends from independent claim 1, and recites, \"wherein the document viewing application, upon receiving a selection of the UI representation, displays the content display area at a particular location over a particular portion of the document based on a size and location of the selectable image UI representation and a defined size of the content display area.\"", + "However, mere argument and conclusory statements cannot establish patentability. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (citing In re Lindner, 457 F.2d 506, 508 (CCPA 1972)).", + "\"Accordingly, we sustain the rejection of claim 14 under 35 U.S.C. 9 103.", + "We are not persuaded by Appellants' arguments with respect to independent claim 15.", + "Figure 2A of Keohane is reproduced below. 200 210 215 205 was File ta Tools Hob Ex Toolber are Font Toolbar 240 Reviewing Toolbar 246 226 224 216 This \u203b exemplary document text. 232 Picture Toolbar 230 a 220 242 222 Image 225 , which Appellant argues differs from the claimed n NpUCCH (1.po) = NCCE + NO PUCCH + NpUCCH_offset- Appeal Br. 24." + ], + "examiner_findings": [ + "The Examiner rejects 1-4, 7-11, 13, 15-18, 20-25, 27-32, and 34 under 35 U.S.C. 9 103(a) as being unpatentable over Ahn et al. (US 2015/0092723 A1; published Apr. 2, 2015) (\"Ahn\"). Final Act. 3-21.", + "Ahn teaches reserving additional resources by applying an offset in the PUCCH (physical uplink control channel) resource index equation n (1) NPUCCH = NCCE + N(1) *PUCCH> where (1) \"Npucch represents a PUCCH resource index for transmitting ACK/NACK, N (1) PUCCH represents a signaling value transferred from an upper layer, and nece represents the smallest value of CCE indexes used for PDCCH transmission.\" Ahn ' 44; see also id. Eq. 1, 9 55.", + "In rejecting claim 1 as obvious, the Examiner finds Ahn's application of the offset in the resource index equation teaches or suggests a first offset which indicates a number of uplink control resource elements and a second offset, the first offset being determined by a field in the downlink control signal, and the second offset configured by a higher layer parameter. Final Act. 4-5 (citing, e.g., Ahn 11 43-44, Eq. 1); see also Ans. 22-24.", + "In rejecting claim 34 as obvious, the Examiner finds Ahn's equation 1 and Ahn's disclosure of *index modification information/n puech offset being an absolute or relative offset for the PUCCH index \u00b7 \u00b7 \u00b7 the offset being applied by being added in Equation I\" (Final Act. 21 (citing Ahn Eq. 1, 11 43, 59, 66)) teaches or suggests adding the term NPUCCILONISES, *the offset expressed in CCE units determined by the field in the resource allocation control signal\" (Final Act. 20). See also Ans. 32-34," + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We AFFIRM-IN-PART,", + "With respect the claim 1, we agree with and adopt as our own the Examiner's determinations as set forth in the Answer and in the Action from which this appeal was taken, and we concur with the Examiner's conclusions in light thereof.", + "We have considered Appellant's arguments, but do not find them persuasive of error.", + "We provide the following explanation for emphasis.", + "Appellant's arguments are unpersuasive.", + "Ahn's equation is nearly identical to the Specification's disclosed formula for placement of a downlink control information resource: Npucch (1.po) = NCCE + N(1) PUCCH> , where \"Po is an antenna port, noce is a minimum CCE number used for sending of the corresponding DCI \u00b7 \u00b7 \u00b7 , and N(1) PUCCH is a parameter notified by an upper layer.\" Spec. I 147: see also id. I 144, Eq. 1; Appeal Br. 5 (citing, e.g., Spec. I 147).", + "Both Ahn and the disclosed embodiments include the value NOCE. Compare Ahn Eq. 1, I 44 with Spec. Eq. 1, I 147.", + "In both cases, nece provides an offset from the implicit constant 0.", + "That is, in Ahn's 's equation (1) NPUCCH = NCCE + N(1) PUCCH = 0 + NCCE + (1) PUCCH (Ahn Eq. 1) while in the Specification's equation Npucch (1.po) = NCCE + (1) PUCCH = 0 + NCCE + N (1) PUCCH (Spec. Eq. 1).", + "Moreover, despite Appellant's contentions (Appeal Br. 12- 13), the Specification does not particularly define \"a field in the downlink control information.\"", + "Thus, Ahn's term NCCE represents a first offset, given a broad, but reasonable interpretation of the claimed a first offset determined by a field in the downlink control information.", + "Moreover, Ahn's term noce, in representing the smallest value of control channel elements indexes used for PDCCH transmission (Ahn I 44) teaches or suggests the first offset indicates a number of uplink control resource elements.", + "Whether Ahn explicitly identifies N (1) PUCCH as an offset in name is irrelevant given that Ahn's equation 1 uses this term, in practice, to offset the additional term noce and implicit constant 0. See Ahn Eq. 1.", + "Thus, Ahn's term N (1) PUCCH teaches or suggests a second offset configured by a higher layer parameter.", + "Appellant's remaining arguments with respect to claim I are conclusory and, therefore, unpersuasive. See Appeal Br. 14-15.", + "Accordingly, we sustain the Examiner's 35 U.S.C. 8 103(a) rejection of claim 1.", + "Appellant's arguments with respect to claims 2-4, 7-11, 13, 15-18, 20-25, and 27-32 are similar to those made with respect to claim 1 or are unpersuasively conclusory. See id. at 15-28; Reply Br. 7.", + "Therefore, we also sustain the Examiner's 35 U.S.C. 8 103(a) rejection of these claims.", + "We agree with Appellant the Examiner erred.", + "As discussed above, Ahn teaches or suggests the recitations of claim 1 because the disputed recitations, the claimed first and second offsets, when reasonably interpreted in light of the Specification, are broad enough to encompass the terms NOCE and N(1) PUCCH in Ahn's equation.", + "In contrast, claim 34 explicitly defines the first and second offsets as being offset from, rather than including, the term noce.", + "Moreover, rather than teaching or suggesting an additional offset term, the cited portions of Ahn merely describe using Ahn's equation to apply an offset. See Ahn 11 55, 59, 66.", + "Therefore, the Examiner's findings fail to show that Ahn teaches or suggests the claimed IMpUCCH_ofiset offset recited in the equation of claim 34," + ] +} \ No newline at end of file diff --git a/opinion_split/2018003203_Mail_Decision.json b/opinion_split/2018003203_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..458aa4717f71e623709ff156932b7b6370be67ea --- /dev/null +++ b/opinion_split/2018003203_Mail_Decision.json @@ -0,0 +1,70 @@ +{ + "appellant_arguments": [ + "Appellant argues the claims as a group for the purpose of the rejection under a judicial exception to 9 101. Appeal Br. 10-14.", + "Appellant first argues that the \"claims are directed to the realm of electronic learning using computing devices.\" \" Appeal Br. 11.", + "Appellant also argues that learning modules created according to the claims *can be stored, easily retrieved and reused for creating other course content. \" Appeal Br. 12.", + "Obviousness Appellant first argues that the rejection is improper because \"\"[t]he different education material of Packard appears to relate to different learning modules, not a learning module that is a set of at least two stored elements, those elements being the *one or more course content modules and assessment modules.[1]\" Reply Br. 3.", + "Appellant next asserts that \"the disclosed *tag' of Packard [']245 merely relates to a tag delineating the type of resource, not that the at least one stored learning module is electronically identifiably in connection with the use of the tag. ~ Reply Br. 3-4.", + "Appellant also argues that \"Packard [']245 fails to disclose that such overall competency level is derived *by considering the assigned weights factors for the at least one first learning objective and the at least one second learning objective. *** Reply Br. 4.", + "Lastly, Appellant argues that the Examiner's rejection only discloses adjustments to the individual learning plan, but not that the assessment modules are defined independently of the learning objective. Reply Br. 5." + ], + "examiner_findings": [ + "In the first step of the Alice inquiry, the Examiner rejects the claims, stating that the claims are drawn to the *abstract idea of designing an educational course.\" Ans. 2.", + "The Examiner identifies the claimed series of steps for designing an educational course as a \"process [that] can be practiced as a mental process performed in the human mind or by pen and paper.\" Ans. 3.", + "At Alice step 2, the Examiner additionally finds that the claims do not add a meaningful limitation to the abstract idea so as to amount to significantly more than the judicial exception. Id.", + "As the Examiner states, however, Packard *480 teaches that the modules may include both content and assessment. Ans. 24 (citing Packard *480 ' 50)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "OPINION Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. V. CLS Bank Int 7, 573 U.S. 208 (2014).", + "The Supreme Court instructs us to \"first determine whether the claims at issue are directed to a patent-ineligible concept,\" id. at 216-18, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea.", + "If this initial condition is met, we then move to the second step, in which we \"consider the elements of each claim both individually and *as an ordered combination* to determine whether the additional elements *transform the nature of the claim2 into a patent-eligible application.\" Id. at 217 (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).", + "The Supreme Court describes the second step as a search for *an *inventive concept'--i.e., an element or combination of elements that is *sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. *** Id. (quoting Mayo, 566 U.S. at 72-73).", + "Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, and mental processes) (\"Step 2A, Prong One\"); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP 8 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (\"Step 2A, Prong Two\").", + "Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under \"Step 2B,\" to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional\" in the field (see MPEP $ 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See generally Guidance.", + "As to this rejection, we select claim 1 as representative of the group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. 9 41.37(c)(1)().", + "We first examine whether the claim recites one of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. 9 101.", + "Claim 1 is directed to a method, which is one of the statutory classes (i.e., a process) under 35 U.S.C. 5 101.", + "We next look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas, i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, and mental processes.", + "In this instance, claim 1 recites steps that amount to mental processes.", + "Although these steps are claimed as being done by a computer, the activities themselves are all capable of being performed by a human without a computer, and fall into the abstract idea of mental processes. See, e.g., CyberSource Corp. V. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (\"That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk V. Benson. \").", + "We therefore determine that claim 1 recites the abstract idea of mental processes, which is a judicial exception to patent- eligible subject matter.", + "Following our Office guidance, having found that claim 1 recites a judicial exception, we next determine whether the claim recites \"additional elements that integrate the exception into a practical application\" (see MPEP 46 2106.05(a)-(c), (e)-(h). See Guidance, 84 Fed. Reg. at 54.", + "As noted above, each of the claimed steps is recited as being performed by a computer or storage device specified at a high level of generality and, does not result in an improvement in the functioning of a computer or other technology or technological field. See Spec. I 72, Fig. 1.", + "The recitations of the generic structures with which the recited steps are performed are merely instructions to use a generic computer system as a tool to perform the abstract idea.", + "Thus, claim 1 does not apply, rely on, or use the mental process steps in a manner that imposes a meaningful limit on those steps.", + "Rather, the claim is simply a drafting effort designed to monopolize the mental process steps of claim 1. See MPEP $ 2106.05(1) (\"Use of a computer or other machinery in its ordinary capacity for \u00b7 \u00b7 \u00b7 tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea \u00b7 \u00b7 \u00b7 does not provide significantly more. \").", + "In short, the additional elements discussed above: (1) do not result in an improvement to the functioning of a computer or other technology; (2) are not any particular machine; (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP 46 2106.05(a)-(c), (e)- (h).", + "Consequently, the claimed invention does not integrate the abstract idea into a *practical application. \"", + "For these reasons, the additional elements of claim 1 do not integrate the judicial exception into a practical application.", + "Thus, claim 1 is directed to an abstract idea, which is a judicial exception to patent-eligible subject matter under 35 U.S.C. 101.", + "We next consider whether claim 1 recites any additional elements, individually or as an ordered combination, that transform the abstract idea into a patent-eligible application, e.g., provide an inventive concept. Alice, 573 U.S. at 217-18.", + "The only additional elements are a computer, a storage device, and a course design module used for routine computer functionality to enact the method steps. Ans. 3.", + "These additional elements do not provide, either individually or as a combination, improvements to another technology or technical field or the functioning of the computer itself, but merely are conventional computing components included to perform the method.", + "According to Office guidance, under Step 2B, \"examiners should . . . evaluate the additional elements individually and in combination \u00b7 \u00b7 \u00b7 to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). \" See Guidance, 84 Fed. Reg. at 56 (emphasis added).", + "Thus, the second step of the inquiry (Step 2B) looks at the additional elements in combination. See BSG Tech LLC V. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (\"It has been clear since Alice that a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention *significantly more' than that ineligible concept. \").", + "As noted above, the storage device, computer, and course design module are invoked as conventional tools.", + "Apart from being used to perform the abstract idea itself, the generic computer system components only serve to perform well-understood functions (e.g., retrieving, determining, presenting, providing, etc.). See FairWarning IP, LLC V. latric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (\"[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter. \").", + "In our view, claim 1 fails to add a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional\" in the field, but instead *simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.\" \" See Guidance, 84 Fed. Reg. at 56.", + "That is, claim 1 is not directed to a specific application designed to achieve an improved technological result, as opposed to being directed to merely ordinary functionality of the above-recited additional elements to apply an abstract idea.", + "For the reasons discussed above, we find no additional element, alone or in combination, recited in claim 1 that contains any *inventive concept\" or adds anything *significantly more\" to transform the abstract concept into a patent-eligible application. See Alice, 573 U.S. at 221.", + "Although this may be true generally, the claims themselves are not specific to electronic learning per se.", + "The claims are merely directed to course design, which could be utilized with or without an electronic learning environment.", + "Again, although this may be true, this is merely a benefit of computerized storage over paper file storage, but in itself is nothing more than the expected advantages of such electronic storage.", + "In sum, all of the advantages touted by Appellant stem from performing the method by computer and could otherwise be performed by a human using traditional filing and course creation methods that are not computer-related.", + "Accordingly, we are not persuaded of error in the Examiner's rejection.", + "We further note that Packard *480 specifically states that \"lessons 302 in database 112 may include, for example, coursework \u00b7 \u25a0 as well as worksheets, problem sets, assigned readings, lesson notes or outlines, quizzes, tests, long term projects, [and] in-class projects.\" Packard *480 1 65.", + "Accordingly, Packard *480 does teach that the learning module includes both content and assessment modules.", + "Although this may be true with respect to the tag recited in 11 247 and 249, Appellant does not address Packard *245's disclosure of keywords in I 270.", + "Packard explains that \"various database records \u25a0 \u00b7 \u25a0 are associated with additional information, such as, for example, other database records in the same database, other database records in another database, identifying keywords, and/or the like\" and that \"the database records can be associated with the additional information in any suitable manner.' Packard *245 1 270.", + "This discussion discloses more than mere tags identifying a type of resource, but specifically discloses *identifying keywords\" to correlate records according to the content of the various resources.", + "We find this argument unpersuasive of error because Packard *245 specifically teaches weighting two different learning objectives and combining them to achieve an overall competency.", + "As clearly disclosed in Packard *245, *presentation of educational material associated with a first learning objective record can indicate 60% compliance of a standard and presentation of educational material associated with a second learning objective record can indicate 40% compliance of the standard.\" Packard *245 I 72.", + "Packard *245 then goes on to explain that \"[tlogether, presentation of educational material associated with the first learning objective record and presentation of educational material associated with the second learning objective record indicates full compliance with the standard.\" Id.", + "As such it is clear that an overall competency is derived from combining weighted competency of two different learning objectives.", + "Appellant's argument, however, does not address that the learning modules contain both assessment aspects as well as learning objectives, as discussed supra. See also Ans. 28-29.", + "Nothing in Packard suggests that these separate tests and quizzes, i.e., assessment modules, are not independent of the learning objectives.", + "Appellant does not provide any argument against the Examiner's additional rejection involving Elzinga.", + "Accordingly, we are not persuaded of error in the Examiner's rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2018003501_DECISION.json b/opinion_split/2018003501_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8edfce3d716ad090cd75758a80d5baffa2f646c2 --- /dev/null +++ b/opinion_split/2018003501_DECISION.json @@ -0,0 +1,63 @@ +{ + "appellant_arguments": [ + "INVENTION The invention is directed to a device that includes instructions to parse the contents of a messaging account to identify and obscure personal information in the messaging account. Abstract.", + "1. A device, comprising: a processor; and storage accessible to the processor and bearing instructions executable by the processor to: access a messaging account; parse at least a first message of the messaging account to identify personal information to at least obscure in the first message; permit access to the first message with personal information at least obscured; and present at least one user interface (UI) on a display accessible to the processor, the UI comprising a setting that is selectable to configure the device to automatically obscure personal information in messages associated with the messaging account based on personal information being identified. App. Br. 24 (Claims Appendix).", + "Appellants present several arguments directed to the rejection of individual claims with respect to the obviousness rejections; and Appellants argue the Examiner has not provided an adequate rationale to support the conclusion of obviousness. App. Br. 20-22.", + "Specifically, Appellants argue: Taking the rejection of Claim 1 as an example, the basis for the proffered motivation to combine the references is that Pittenger's system \"overcomes the drawbacks of using conventional redaction software\" but does not appear to explicitly discuss anything in relation to Narayanaswami.", + "At best, that amounts to nothing more than an allegation that a PHOSITA could have made the proposed combinations once presented with the references, not that a PHOSITA would have been motivated to make the proposed combinations as proven using evidence. App Br. 22.", + "Appellants argue the Examiner's rejection of claim 32, which depends upon claim 17, is in error as the Examiner has not shown the references teach sorting a message into a folder for messages that have been identified as having personal information. App. Br. 10-11, Reply Br. 2.", + "Appellants' argue that Figure 9 and the discussion in paragraph 47 of Pittenger, which the Examiner relies on to teach this feature, does not support the finding that the reference teaches the claim term.", + "Appellants argue Pittenger teaches a view for each instance of content that is rendered, but does not teach that the document containing the content is sorted into a view or that the document is sorted into a folder. App. Br. 10-12, Reply Br. 2-3.", + "Appellants argue that the Examiner has not shown that the combination of the references teaches instructions to obfuscate and remove information in a first message based on the first message being opened a first time as recited in claim 20.", + "Appellants argue that the Examiner has not shown that the combination of the references teaches instructions to delete one or more messages containing personal information in response to the identification of personal information as recited in dependent claim 8. App. Br. 16-17.", + "Appellants similarly argue that the combination of the references does not teach instructions to delete a message attachment as recited in claim 9.", + "Appellants argue that the Examiner has not shown that the combination of the references teaches parsing the contents of the message account at intervals to identify personal information to at least obscure in the messaging account, as recited in claims 14 and 29.", + "Appellants argue that Vidal, which the Examiner relies upon to teach this feature, is concerned with periodically checking time restrictions for a friend user's login credential and not an interval to parse the messages as claimed. App. Br. 19-20, Reply Br. 9-10." + ], + "examiner_findings": [ + "The Examiner has rejected claims I through 3, 17, 20, 27, 28, and 30 through 35 under 35 U.S.C. 8 103 (a) as being unpatentable over Narayanaswami (US 2009/0019553, published January 15, 2009) and Pittenger (US 2014/0033029, published January 30, 2014). Answer 3-17.", + "The Examiner has rejected claims 6, 8, 9, 11, 13, 14, 21, and 29 under 35 U.S.C. 8 103 (a) as being unpatentable over Narayanaswami, Pittenger and Vidal (US 2012/0324547, published Dec 20, 2012). Answer 17-24,", + "The Examiner responds to Appellants' arguments by finding that the secondary reference, Pittenger, teaches an improvement to an element disclosed in the primary reference and thus provides the motivation to combine the teachings of the references. Answer 28.", + "The Examiner finds that Pittenger teaches overcoming drawbacks of using conventional redaction software where a user must manually redact the document. Answer 28-29.", + "Further, the Examiner finds that this is describing an improvement to elements such as manual redaction, discussed in Narayanaswami. Answer 29.", + "The Examiner responds to Appellants' arguments stating the *the terms *sorting into a folder' have been interpreted as \"placing into a folder' and as such the view 170 in Figure 9 Note that view 170 of Figure 9 shows the documents themselves \u00b7 \u00b7 \u00b7 and not only the content of these documents.\" Answer 25.", + "The Examiner responds to Appellants' arguments stating: [T]he claim does not limit the action of 'opening' as being performed by the sender (first user) or the recipient (second user) and therefore a pre-view or pre-redaction view of a message by a sender to perform redaction has been interpreted as a first view as opposed to a view occurring after a preview or as opposed to a post-redaction view which teach a subsequent or second view.", + "Therefore redaction is performed based on the first message being opened a first time. Answer 26.", + "The Examiner provides the same response for both claims 8 and 9. stating that *viewing only a portion of the email messages and being unable to view the other portion, as in Vidal, may be interpreted as omitting or deleting the other portion.\" Answer 27.", + "The Examiner states in response that **applying a filter to a messaging account at pre-defined intervals to determine what portion may be accessed by a user discloses parsing the messaging account at intervals.\" Answer 28." + ], + "ptab_opinion": [ + "Claim 1 is illustrative of the invention and is reproduced below.", + "We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, and the Examiner's response to Appellants' arguments.", + "Appellants' arguments have persuaded us of error in the Examiner's obviousness rejection of claims 8, 9, 14, 20, 21, and 32 through 35.", + "However Appellants' arguments have not persuaded us of error in the Examiner's obviousness rejection of claims 1 through 3, 6, 11, 13, 17, and 27 through 31.", + "Rejection of independent claim 1. and the claims grouped with claim 1.", + "As the issue presented by this argument is the only one presented with respect to the rejection of many of the claims, we consider it first.", + "We concur with the Examiner.", + "We are not persuaded by Appellants' argument that this response is not supported by evidence to show that Narayanaswami includes manual redaction, and as such is insufficient to show motivation. Reply Br. 12-14.", + "While the Examiner's statement on pages 28 and 29 of the Answer does not cite to teachings in Narayanaswami, the detailed explanation of the rejection does cite to several sections of Narayanaswami, which discuss a user tagging information (manually selecting) to be designated as confidential and to be obscured (redacted). See Answer 4 (citing Narayanaswami para's 27, 28 and 30).", + "We have reviewed the cited teachings of Narayanaswami and find that there is sufficient evidence to support the finding that the reference involves a user manually selecting data to be redacted.", + "We also note that paragraph 19 of Narayanaswami provides additional support.", + "Thus, we concur with the Examiner's conclusion that the skilled artisan would combine the teachings of the references as the Examiner has provided a reasoned rationale based upon factual findings supported in the record.", + "As Appellants' arguments directed to this issue are the only arguments presented with respect to independent claims 1 and 17, and dependent claims 2, 3, 6, 11, 13, and 27 through 31, we sustain the Examiner's rejection of these claims.", + "Rejection of dependent claim 32", + "We disagree with the Examiner's finding that the view 170 of Figure 9 teaches sorting a message into a folder for messages that have been identified as having personal information.", + "As argued by Appellants, Pittenger teaches folders as separate from a view, and the documents are not sorted into the view, rather the view just contains an indication of which documents contain the information.", + "Accordingly, we do not sustain the Examiner'. s rejection of claim 32.", + "Rejection of independent claim 20", + "We disagree with the Examiner as we find the Examiner's claim interpretation is in error.", + "Claim 20 states \"based on a receipt of a first message \u00b7 \u00b7 , based on the first message being opened a first time.", + "Thus, the claim does recite that the message being opened a first time is the received message and not the sender opening in a pre- view or pre-redaction view as interpreted by the Examiner.", + "As the Examiner's finding of obviousness is based upon an improper claim interpretation, we do not sustain the Examiner's obviousness rejection of independent claim 20.", + "Claims 21, 33, 34, and 35 depend upon claim 20; accordingly, we similarly do not sustain the Examiner's rejection of these claims.", + "Rejection of dependent claims 8 and 9", + "We disagree with the Examiner's claim interpretation, as the Examiner has not shown that this interpretation is consistent with Appellants' Specification or presented evidence to support this claim interpretation.", + "Further, as argued by Appellants, the plain meaning of deleting is different from restricting access, or not displaying, a portion of information. Reply Brief9.", + "Accordingly, we do not sustain the Examiner's s rejection of claims 8 and 9.", + "Rejection of dependent claims 14 and 29", + "We disagree with the Examiner.", + "Claim 14 and claim 29 recite parsing the contents of the account at intervals to identify information.", + "As argued by Appellants, the disclosure of Vidal cited by the Examiner, paragraphs 141 and 142 (see Answer 22), discuss time and date restrictions (time intervals) on login, i.e. account access is being evaluated, not the content of the account as claimed.", + "Accordingly, we do not sustain the Examiner's rejection of dependent claims 14 and 29." + ] +} \ No newline at end of file diff --git a/opinion_split/2018003787_DECISION.json b/opinion_split/2018003787_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..aecf5abd044e013e81875ffd46b78b5ce75a24a0 --- /dev/null +++ b/opinion_split/2018003787_DECISION.json @@ -0,0 +1,64 @@ +{ + "appellant_arguments": [ + "Appellants explain that alternatives to traditional PVC-based coverings have been developed due to environmental issues with traditional PVC coverings.", + "Such alternative surface coverings, however, have presented several drawbacks, including poor mechanical properties, especially poor residual indentation, and softness in comparison to PVC- based surface coverings.", + "Appellants describe their invention as providing a PVC-free floor or wall covering, which has residual indentation properties similar to PVC-based surface coverings.", + "Appellants argue these claims as a group.", + "Appellants contend that (I) the Examiner fails to identify reasons with a rational underpinning to modify Viet in view of Harwood; (2) the combination of references fails to teach that the polymer having acid anhydride groups represents 10 to 40 parts per weight of the polymer matrix; and (3) the Examiner identifies no reasons with a rational underpinning to modify Viet in view of Schumacher.", + "Appellants argue that this rationale lacks rational underpinning because Viet already teaches a higher amount of filler loading than Harwood.", + "Specifically, Appellants compare Viet's use of metallocene polymers to achieve filler levels of 25-1000 phr with Harwood`s Example 1 use of acid-anhydride-containing-polymers to achieve a filler level of 275 phr.", + "Appellants suggest that one of ordinary skill in the art still would not have found it necessary to look to Harwood to increase filler levels because Viet already achieves a filler level up to 1000 phr.", + "On that point, however, Appellants rely on case law from the Board and our reviewing court.", + "Appellants also contend that modifying Viet with Harwood would actually reduce the amount of filler that can be used in the composition.", + "Appellants base that contention on the fact that Harwood's Example 1 achieves a filler level of approximately 275 phr.", + "Second, Appellants argue that, after normalization, the relative amount of an acid anhydride group containing polymer in Harwood is 4.8 to 9.1 phr, which is below the range of 10 to 40 phr recited in claim 16.", + "Appellants, on the other hand, merely point out that the high end of Harwood`s s range would have to be increased by more than 10% to overlap Appellants* claimed range.", + "Appellants advance a similar argument here as with Harwood--that is, that the Examiner's reasoning lacks rational underpinning because Viet already teaches a higher amount of filler loading than Schumacher.", + "Appellants assert that none of Schumacher's example compositions reach the 1000 phr level of filler disclosed in Viet, that Viet's use of 40 phr of mineral oil in Table II achieves 564 phr of filler, and that, to the extent Schumacher achieves a higher filler level than those disclosed in Viet's Table II, Schumacher requires a higher mineral oil level outside the scope of Appellants* claims.", + "Appellants argue that the Examiner erred in rejecting claims 19 and 30 as prima facie obvious for the same reasons discussed with respect to claim 16.", + "Appellants argue that the Examiner fails to demonstrate that Mauk teaches or suggests a **thermoplastic composition\" as recited in claim 32.", + "Appellants point out that Mauk discloses a composition with cross- linking agents such that any floor or wall covering resulting from that composition will be a thermoset elastomer instead of a thermoplastic composition.", + "Appellants, however, argue that an interpretation of the claim that allows for inclusion of peroxides and cross-linking agents would fail to give any meaning to the claim term *thermoplastic composition.\"", + "The Examiner contends that Appellants may not introduce encyclopedia definitions of a \"thermoplastic\" and \"thermoset plastic\" on appeal (Answer 13), but notwithstanding Appellants\" reliance on this encyclopedia, there is no dispute on the record that a thermoplastic is different than a thermoset and that the use of organic peroxides and cross- linking agents in Mauk results in a thermoset." + ], + "examiner_findings": [ + "The Examiner rejects claims 16-18, 21-29, 31, and 33-41 under 35 U.S.C. , 103(a) as obvious over Viet? in view of Harwood\" (as evidenced by Kang*) and Schumacher.\"", + "The Examiner relies on Viet for all of the limitations of claim 16 except (1) the inclusion of a polymer having acid anhydride groups in the polymer matrix and (2) the specific amount of mineral oil used in the composition.", + "The Examiner turns to Harwood and Schumacher for teaching those respective limitations.", + "First, the Examiner finds that it would have been obvious to modify Viet by including a polymer having acid anhydride groups as taught in Harwood to reduce costs, increase opacity, and improve layer adhesion by facilitating the inclusion of high amounts of filler in an ethylene/vinyl acetate (EVA) resin. Non-Final Action 6-7 (citing Harwood \" 25-26, 36).", + "The Examiner, however, finds that the combined disclosures of Viet and Harwood suggest amounts of the polymer having acid anhydride groups that *at least are close enough to the presently claimed amounts.\"", + "Third, the Examiner finds that Schumacher teaches the inclusion of about 2% to about 15% of mineral oil to facilitate high filler loadings in EVA blends, and for that reason, that it would have been obvious to include that amount of mineral oil in Viet's formulation. Non-Final Action 6 (citing Schumacher 4:44-48, 4:64-5:3).", + "The Examiner rejects claims 19 and 30 under 35 U.S.C. S 103(a) as obvious over Viet in view of Harwood (as evidenced by Kang) and Harwood, and further in view of Mayer.*", + "The Examiner rejects claim 32 under 35 U.S.C. 8 103(a) as obvious over Mauk.'", + "In response, the Examiner finds that because the claim contains the transitional phrase \"comprising,\" the claim is permissive as to what is included in the composition." + ], + "ptab_opinion": [ + "We select claim 16 as representative.", + "We agree with the Examiner that Appellants take an overly narrow view of the references (Answer 9), because the filler level of Harwood's s Example 1 is less than the filler level reported by Viet, only when one focuses on the portions of Viet's range that are above 275 phr (Appeal Br. 7-8; Reply Br. 7).", + "We, however, consider the entirety of Viet's disclosure, which contemplates a filler range of 25-1000 phr, because Appellants provide no reason why the ordinarily skilled artisan would have narrowly focused on the amounts in the range that are above 275 phr.", + "Here, Harwood's teaching of adding an acid anhydride binder polymer to an EVA resin is applicable to embodiments of Viet's compositions that would have been understood to achieve up to only 250 or 270 phr of filler.", + "Further, Harwood's teaching is applicable to the portions of Viet's filler range up to 250 or 270 phr.", + "See Harwood 1 26 (teaching that *[i] the absence of such a binder polymer, the practical maximum proportion of a filler \u00b7 \u25a0 may be found to be about 250 or 270 phr\" but \"[w]hen such a binder polymer is present in the composition, it has been found that higher proportions of the filler can be used\").", + "We are not persuaded, however, that those cases support a finding that adding Harwood's binder polymer (known to increase filler levels) to Viet's formulation (to increase filler levels) would have been nonobvious.", + "On the contrary, as the Examiner correctly points out, Appellants rely on nonbinding Board decisions that are **fundamentally different from the present case\" case\"--specifically, they *deal with different facts\" in the context of *mechanical patent applications.\"", + "Appellants' further reliance on our reviewing court's decision in In re Rouffet is not persuasive to establish reversible error because here, unlike there, the Examiner identifies a motivation to combine Viet and Harwood that is based on an express teaching in Harwood.", + "Id. (citing Harwood I 26); see also In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (explaining that \"the teachings of the prior art\" are a *source[ ] for a motivation to combine references,\" \" but determining that the Board did not rely upon this or other sources in support of a motivation to combine).", + "In addition, Appellants' argument is unpersuasive because the record does not support a conclusion that Viet's formulation offers the complete and only solution to facilitating higher filler amounts, such that one would not have considered or found obvious the use of additional components, including Harwood's binder polymer, to obtain even better results.", + "Appellants' suggestion that one simply could have increased the amount of metallocene polymers in Viet's composition to further increase filler amounts above 250 or 270 phr does not establish the nonobviousness of adding Harwood' s binder (instead of increasing the amount of metallocene polymer) for the same purpose to accomplish the same result.", + "In our view, the evidence supports a conclusion that it would have been obvious to one of ordinary skill in the art to begin with Viet's composition, which may contain up to 250 or 270 phr of filler, then follow Harwood's express teaching to add a binder polymer to further increase the filler amount.", + "The formulation of Harwood's is Example 1, however, is not the same as the formulation of Viet, as modified by Harwood, upon which the rejection is based.", + "The modified formulation of Viet includes Viet's metallocene polymer and, further, as discussed above, an amount of filler that may be less than 275 phr as disclosed in Viet.", + "Accordingly, we find unpersuasive Appellants\" argument that adding Harwood's binder polymer to Viet's composition would actually reduce the amount of filler that can be used in the modified composition--an argument, moreover, that is based on unsupported attorney argument.", + "The Examiner correctly explains that \"a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, \" which shifts the burden to Appellants to rebut the prima facie case.", + "Id. at 11-12 (citing Titanium Metals Corp. of Am. V. Banner, 778 F.2d 775 (Fed. Cir. 1985)).", + "Here, the Examiner reasonably finds that the range suggested by the prior art is close enough to the claimed range to expect the same properties, given that the difference between 9.1 phr and 10 phr is less than I phr.", + "In our view, Appellants' argument in that regard does not effectively rebut the Examiner*s finding that the difference is close enough that one of ordinary skill in the art would have expected the same properties.", + "The Examiner finds, and we agree, that Appellants take an overly narrow view of Viet and Schumacher by only considering the filler amounts disclosed in Table II (564 phr) and at the upper limit of Viet's range (1000 phr), when in fact Viet teaches a range of 25-1000 phr of filler.", + "Appellants argue that \"modifying Viet according to Schumacher would actually result in a decrease in filler loading in contrast to the Examiner's s assertion\" (Reply Br. 11), but the Examiner did not premise the rejection on a comparison of Schumacher to Viet's Table II (see Non-Final Action 6).", + "Appellants\" use of Table II as a *baseline* (Reply Br. 11) is not persuasive because a comparison to Table II alone does not establish that the use of mineral oil in the amount disclosed in Schumacher would cause the filler levels to fall below the acceptable range of 25-1000 phr taught in Viet or outside the range required by claim 16.", + "Accordingly, we sustain the Examiner's s rejection of claims 19 and 30 for the same reasons as set forth above.", + "An interpretation that allows components that produce a thermoset instead of a thermoplastic composition is broad but not reasonable.", + "Claim 32 recites a *thermoplastic composition,\" and \"[t]he open-ended transition *comprising* does not free the claim from [this] limitation[ 1\" Kustom Signals, Inc. V. Applied Concepts, Inc., 264 F.3d 1326, 1332 (Fed. Cir. 2001).", + "In other words, even if the transitional phrase \"comprising\" is permissive, it would be unreasonable to interpret claim 32 as allowing for additional components that change the nature of the composition from a **thermoplastic composition\" (as required by the claim language) to a thermoset." + ] +} \ No newline at end of file diff --git a/opinion_split/2018003933_DECISION.json b/opinion_split/2018003933_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..8c49ac41326903080ab1f236162014a8d438aae2 --- /dev/null +++ b/opinion_split/2018003933_DECISION.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Appellants' general argument seeking reversal of this rejection is that when an Examiner's determination of obviousness is based on a combination of references, *each of the claimed limitations must still be found somewhere within the disclosure of one of the individual references.\" (Reply Br. 4) (emphasis added).", + "Appellants assert that the Examiner' 's applied prior art fails to teach or suggest each and every step of method claim I (Appeal Br. 10-14; Reply Br. 1-5).", + "Appellants explain why each of the cited references differs from the claimed invention (see, e.g., Appeal Br. 12-13 (distinguishing Jang, Williams, and Barrett); see also Reply Br. 2-3).", + "For example, Appellants acknowledge that Jang generally suggests a plastic material for a housing (Appeal Br. 12).", + "However, Appellants argue that Jang fails to disclose or suggest \"a method for molding a pump housing using a set of molds and cores which are configured such that the axes of the inlet. outlet. and pressure relief valve ports are parallel to one another and do not intersect one another within the pump housing\" (id.).", + "Appellants argue that the Examiner's applied prior art does not disclose or suggest *providing a method for molding a pump housing which requires no more than de minimis secondary machining operations after molding\" (Appeal Br. 11).", + "Appellants distinguish the claimed invention from Williams, because **Williams is focused on providing a 'T-fitting' wherein the ports of the valve fitting have an intersecting, perpendicular geometry, and wherein at least one of the ports is internally threaded\" (Reply Br. 4 (citing Williams 3:29-32); see also Reply Br. 3).", + "Thus, Appellants argue that \"the Examiner's suggested modification of Williams to mold a part having ports with a parallel, non-intersecting geometry would have render[ed] Williams unsuitable for its original purpose\" (Reply Br. 5)." + ], + "examiner_findings": [ + "REJECTIONS (1) Claims 1-4 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Jang2 in view Williams? and Barrett.4 4 (2) Claims 5 and 6 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Jang in view of Williams and Barrett, and further in view of Gellert. 5", + "As the Examiner finds, Williams teaches an analogous method for molding a housing with molds and cores (see Ans. 9 (citing Williams Figs. 2-5)).", + "The Examiner further finds that \"Barrett teaches a housing having axes of the fluid inlet port, the fluid outlet port, and the pressure relief valve port[, which] are parallel and do not intersect\" (see Ans. 9 (citing Barrett in Figs. 2, 7, 8))." + ], + "ptab_opinion": [ + "Appellants do not offer separate arguments in support of claims 2-6 (see generally Appeal Br. 10-14; Reply Br. 1-5).", + "We select claim 1 as representative.", + "DISCUSSION Rejection (1) We have reviewed the arguments and evidence presented by Appellants in the Briefs seeking reversal of the obviousness rejection, and conclude that Appellants have not shown reversible error in the appealed rejection, essentially for the reasons set forth in the Final Action and the Answer.", + "We add the following primarily for emphasis.", + "We find this argument unpersuasive of reversible error because Appellants' argument is premised on an incorrect statement of law.", + "Obviousness can be proven by combining existing prior art references, whereas anticipation requires all elements of a claim to be disclosed within a single reference. MEHL/Biophile Int 'I Corp. V. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).", + "Furthermore, while the art must teach or suggest each of the claim limitations, they need not be found explicitly in any one reference. KSR Int 'I. Co. V. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (\"the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ\").", + "The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. 8 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (\"[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.\"). \").", + "To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).", + "Furthermore, the Examiner must articulate some *reasoning with some rational underpinning to support the legal conclusion of obviousness.\" In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006).", + "This reasoning must show that *there was an apparent reason to combine the known elements in the fashion claimed.\" KSR, 550 U.S. at 418.", + "The apparent reason need not appear in one or more of the references on which the examiner relies.", + "Instead, the examiner when analyzing the evidence may employ common sense not inconsistent with the ordinary level of knowledge and skill in the art at the time of the invention. Perfect Web Techs. V. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009).", + "However, it is well established that *one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on a combination of references.\" In re Keller, 642 F.2d 413, 426 (CCPA 1981).", + "This argument is not persuasive of reversible error, as the Examiner relies on Williams and Barrett to teach these features.", + "We agree with the Examiner that \"It would have been obvious to one with ordinary skill in the art at the time of the invention to substitute the relative positioning of the fluid inlet, fluid outlet and pressure relief val[v]e ports of Jang to incorporate the relative positioning of the fluid inlet, fluid outlet and pressure relief val[v]e ports of Barrett because this is a substitution of equivalent elements which yields predictable results\" (Ans. 4).", + "Furthermore, Appellants' arguments do not identify reversible error in the Examiner's conclusion that it would have been obvious for one of ordinary skill in the art that Williams' process would incorporate additional molds and/or cores resulting in the non-intersecting and parallel port axes suggested by Barrett and the plastic ports shown by Jang (id. at 6).", + "However, Appellants' argument regarding the claimed invention's 's allegedly de minimis manufacturing features are not persuasive because these features are not claimed. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that **[m]any of appellant's arguments fail from the outset because \u00b7 \u00b7 \u00b7 they are not based on limitations appearing in the claims. \").", + "Moreover, these advantages would necessarily be realized if the art were combined in the fashion envisioned in the rejection.", + "We note that Appellants present arguments for the first time in the Reply Brief filed February 28, 2018, directed specifically to the Examiner's findings first outlined on pages 3-4 of the Final Office Action (Reply Br. 4- 5).", + "It is generally improper for Appellants to discuss for the first time in the Reply Brief matters that could have been raised in the Appeal Brief. 37 C.F.R. 8 41.41(b)(2).", + "Even assuming Appellants' arguments were timely filed, these arguments are not persuasive because the Examiner relies on Williams' teachings for suggesting the requisite molding method, namely: (i) assembling the first and second molds facing one another with the first and second cores positioned adjacent one another in an end-to-end relationship within the molds, after which plastic is introduced, and (ii) separating, after the plastic cures, the molds and cores in a mold pull procedure consisting of a first linear pulling motion, wherein the molds are pulled opposite one another, and a second linear pulling motion, wherein the cores are pulled opposite one another and substantially perpendicular to the pull of the molds, to yield the net shape molded housing (see Ans. 3-4; see also Williams Figs. 2-5).", + "In other words, the Examiner does not propose modification of Williams's method to mold Williams' T-fitting with the requisite ports and features.", + "Rather, the Examiner's s proposed modification is directed to modifying Williams's manufacturing method to mold Jang's 's plastic pump housing using a set of molds and cores which are configured such that the axes of the inlet, outlet, and pressure relief valve ports are parallel to one another and do not intersect one another within the pump housing, as suggested by Barrett (see Ans. 2-6).", + "For the foregoing reasons, we affirm the obviousness rejection of claim 1.", + "Appellants do not offer separate arguments in support of claims 2- 4 (see Appeal Br. 13-14; Reply Br. 5).", + "Accordingly, dependent claims 2-4 fall with their respective independent claim. 37 C.F.R. 5 41.37(c)(1)().", + "Rejection (2) Appellants do not offer separate arguments in support of claims 5 and 6 (Appeal Br. 13-14; Reply Br. 5).", + "Accordingly, dependent claims 5 and 6 fall with independent claim 1. 37 C.F.R. S 41.37(c)(1)()." + ] +} \ No newline at end of file diff --git a/opinion_split/2018004287_Mail_Decision.json b/opinion_split/2018004287_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..97e0353cabacf2ae79f659e093d8016e6901b034 --- /dev/null +++ b/opinion_split/2018004287_Mail_Decision.json @@ -0,0 +1,71 @@ +{ + "appellant_arguments": [ + "Appellants contend that the Palanki '932 and the Palanki *272 references do not teach or suggest the claimed \"inserting channel or interference estimation modulation symbols into a sequence of data modulation symbols in accordance with the user-specific insertion period offset\" recited in independent claim 1. (App. Br. 6-9).", + "Appellants further distinguish *internal** and \"external\" steps in the internal multiplexing of the data symbols and the pilot symbols in the Palanki '932 and Palanki *272 references in an attempt to distinguish the claimed invention. (App. Br. 6-9; Reply Br. 2).", + "Appellants contend that the Palanki *272 reference does not disclose or suggest \"inserting channel or interference estimation modulation symbols into a sequence of data modulation symbols in accordance with the user- specific insertion period offset,\" \" as recited in claim 1.", + "Instead, Palanki *272 discloses transmitting the pilot symbol in a symbol [sic, period] reserved for the transmission of the pilot symbol, where the symbol reserved for the transmission of the pilot symbol is surrounded by two sets of symbols reserved for data transmission. (Reply Br. 3-4).", + "Appellants further contend that the Palanki '932 and Palanki *272 references do not teach or suggest **performing a discrete fourier transform (DFT) on a group of modulation symbols in the sequence of data modulation symbols, the group of modulation symbols including at least one of the channel or interference estimation modulation symbols\" or \"generating a single-carrier frequency domain modulated (SC-FDM) symbol stream based at least in part on an output of the DFT. \" (App. Br. 9-10).", + "Appellants further contend that the Palanki '932 and Nishikawa references do not teach or suggest \"wherein the channel or interference estimation modulation symbols for a SC-FDM symbol stream are further recovered based at least in part on a user-specific insertion period offset for a UE from which the SC-FDM symbol stream is received,\" as recited in independent claim 20. (App. Br. 10-12; Reply Br. 4-6).", + "Appellants contend that the Examiner* s reliance upon paragraph 46 of the Palanki '932 reference does not support the Examiner' s position because P, merely represents a number of symbol periods in which a pilot may be sent. (See Palanki '932 at I 46 (\"data may be sent in D1 symbol periods, then pilot may be sent in the next P, symbol periods \").)", + "Appellants contend that this number of symbol periods cannot be interpreted as a \"user- specific insertion period offset,\" as recited in claim 20. (App. Br. 11; see also Reply Br. 4-5)." + ], + "examiner_findings": [ + "Claims 20, 22, 25, 26, 28, and 30 stand rejected under 35 U.S.C. \u25cf 103 as being unpatentable over Palanki '932 in view of Nishikawa.", + "Claims 1, 2, 9, 10, 13, 14, 19, 24, and 29 stand rejected under 35 U.S.C. & 103 as being unpatentable over Palanki '932 in view of Palanki (hereinafter referred to as Palanki *272) and Nishikawa.", + "Claim 8 stands rejected under 35 U.S.C. & 103 as being unpatentable over Palanki in view of Palanki *272, Nishikawa and further in view of Jayaraman.", + "Claim 23 is rejected under 35 U.S.C. \u25cf 103 as being unpatentable over Palanki '932 in view of Nishikawa and further in view of Jayaraman.", + "Claims 3-6 and 15-17 stand rejected under 35 U.S.C. & 103 as being unpatentable over Palanki '932 in view of Palanki *272, Nishikawa and further in view of Kishigami.", + "Claims 11 and 12 stand rejected under 35 U.S.C. & 103 as being unpatentable over Palanki '932 in view of Palanki *272, Nishikawa, and further in view of Cho.", + "Claims 21 and 27 stand rejected under 35 U.S.C. & 103 as being unpatentable over Palanki '932 in view of Nishikawa, and further in view of Seki.", + "The Examiner maintains that Appellants' arguments concerning internal and external steps are not commensurate in scope with the express language of independent claim 1. (Ans. 3-4).", + "The Examiner further maintains that in the proposed modification Palanki '932, Fig. 10A, TDM control and Mux 1022 implement the pilot insertion based on user-specific insertion period offsets (Fig. 5 of Palanki *272 TDM pilots for user 1 and user 2 having different insertion period offsets (t, t+ 1 )). (Ans. 5).", + "The Examiner further clarifies the rejection is not that \"the reserved pilot periods are subject to any Fourier transformation'' but that a group of modulation symbols in the sequence of modulation symbols are subject to a Fourier transformation, and that group of modulation symbols includes at least one of the channel or interference estimation modulation symbols. (Ans. 6-7).", + "The Examiner maintains that insertion of channel or interference estimation modulation symbols (pilot symbols of Palanki) in accordance with the user-specific insertion period offset (e.g. t, t+ 1) occurs prior to the SC-FDMA modulation the Palanki *272 reference in paragraph 175 and as shown in Figures 1 and 15. (Ans. 7-8).", + "The Examiner maintains that that there is no definition for the term \"user-specific insertion period offset\" in the Specification that excludes the interpretation of P, of Palanki. (Ans. 9)." + ], + "ptab_opinion": [ + "Appellants' appeal under 35 U.S.C. & 134(a) from a rejection of claims 1-6, 8-17, and 19-30.", + "Claims 7 and 18 are canceled.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We affirm.", + "The claims are directed to a channel or interference estimation for SC- FDM symbol streams.", + "Claims 1 and 20, reproduced below, are illustrative of the claimed subject matter:", + "1. A method for wireless communication at a user equipment (UE), comprising: determining a user-specific insertion period offset for the UE, wherein the user-specific insertion period offset is different from another user-specific insertion period offset for another UE; inserting channel or interference estimation modulation symbols into a sequence of data modulation symbols in accordance with the user-specific insertion period offset; performing a discrete Fourier transform (DFT) on a group of modulation symbols in the sequence of data modulation symbols, the group of modulation symbols including at least one of the channel or interference estimation modulation symbols; and generating a single-carrier frequency domain modulated (SC-FDM) symbol stream based at least in part on an output of the DFT.", + "20. A method for wireless communication at a base station, comprising: receiving, at the base station, at least one single-carrier frequency domain modulated (SC-FDM) symbol stream from at least one user equipment (UE); performing an inverse discrete Fourier transform (IDFT) on a tone-demapped output of a discrete Fourier transform (DFT) for each of the at least one SC-FDM symbol stream, to recover a plurality of data modulation symbols and channel or interference estimation modulation symbols for each of the at least one SC- FDM symbol stream, wherein the channel or interference estimation modulation symbols for a SC-FDM symbol stream are further recovered based at least in part on a user-specific insertion period offset for a UE from which the SC-FDM symbol stream is received; estimating interference based at least in part on the channel or interference estimation modulation symbols; and decoding the data modulation symbols based at least in part on the estimated interference.", + "The prior art relied upon by the Examiner in rejecting the claims on appeal is:", + "Jayaraman et al. US 7,046,726 B2 May 16, 2006", + "Palanki et al. (932) US 2006/0203932 A1 Sept. 14, 2006", + "Palanki et al. (272) US 2007/0014272 A1 Jan. 18, 2007", + "Seki US 2007/0280365 A1 Dec. 6, 2007", + "Cho et al. US 2009/0227278 A1 Sept. 10, 2009", + "Kishigami et al. US 2010/0075693 A1 Mar. 25, 2010", + "Nishikawa US 2013/0223560 A1 Aug. 29, 2013", + "The Examiner made the following rejections:", + "We address the Appellants' arguments in the order set forth in the Appeal Brief.", + "With respect to claims 1, 2, 9, 10, 13, 14, 19, 24, and 29, Appellants do not set forth separate arguments for patentability. (App. Br. 6).", + "Consequently, we select independent claim 1 as the representative claimed for this group and address Appellants' arguments thereto. 37 C.F.R. \u25cf 41.37(c)(1)().", + "We agree with the Examiner that Appellants' arguments are not supported by the express language of independent claim 1 and that the proffered combination teaches or suggests the internal processing.", + "Appellants merely repeat that language of claim 1 and contend that the references do not teach or disclose the claimed invention.", + "Moreover, Appellants do not explain how the claimed invention differs from the combination of prior art references.", + "We may speculate that the Appellants intended the claimed invention to include a step of determining a specific location using the \"offset\" for the symbol insertion using the disclosed insertion policy identification module (Spec. I 88), but that is not commensurate in scope with the broadest reasonable interpretation of the claim language.", + "Claim terms in a patent application are given the broadest reasonable interpretation consistent with the Specification, as understood by one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).", + "However, great care should be taken to avoid reading limitations of the Specification into the claims. E-Pass Techs., Inc. V. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).", + "As a result, we find Appellants' argument unpersuasive of error in the Examiner's factual findings or conclusion of obviousness.", + "We agree with the Examiner and find Appellants' argument to be unpersuasive of error in the Examiner's 's factual findings or conclusion of obviousness of independent claim 1 and claims 2, 9, 10, 13, 14, 19, 24, and 29 not separately argued. See 37 CFR 41.37 (c)(1)(iv).", + "Because Appellants have not set forth separate arguments for patentability of dependent claims 3-6, 8, 11, 12, 15 -17, and 23 these claims will fall with representative independent claim 1.", + "With respect to claims 20, 22, 25, 26, 28, and 30, Appellants do not set forth separate arguments for patentability. (App. Br. 9).", + "Consequently, we select independent claim 20 as the representative claim for this group and address Appellants' arguments thereto. 37 C.F.R. & 41.37(c)(1)(iv).", + "But, Appellants do not identify why the number of symbols in the symbol periods cannot teach or suggest \"user-specific insertion period offset\" or what the specific scope of this claim limitation is to differentiate it from the prior art references.", + "We agree with the Examiner that the broadest reasonable interpretation of the claim limitation reads on Palanki '932.", + "We disagree with Appellants' interpretation of the teachings of the Palanki '932 reference.", + "Moreover, we find that Figure 5A of the Palanki '932 reference discloses plural sample periods including a first sampled period having data in a data symbol period D1 followed by a pilot symbol time period P1 followed by more data in a data symbol period Di followed by a second pilot symbol time period P, followed by more data in a data symbol period D1.", + "We note that the scope of independent claim 20 sets forth \"receiving, at the base station, at least one single-carrier frequency domain modulated (SC-FDM) symbol stream from at least one user equipment,\" and \"wherein the channel or interference estimation modulation symbols for a SC-FDM symbol stream are further recovered based at least in part on a user-specific insertion period offset for a UE from which the SC-FDM symbol stream is received.\" (Emphasis added).", + "The Palanki '932 reference discloses at least one single carrier frequency domain modulated symbol stream and the modulation symbols are recovered based upon their location which is specific to that user and there only needs to be a single user in the broadest reasonable interpretation of claim 20.", + "\"In the patentability context, claims are to be given their broadest reasonable interpretations . limitations are not to be read into the claims from the specification.\" In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).", + "Any special meaning assigned to a term \"must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.\" Multiform Desiccants, Inc. V. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (\"A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.\"). \").", + "Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. V. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).", + "Appellants have not identified how the claimed \"user-specific insertion period offset\" is different from the broadest reasonable interpretation of the claimed invention which the Examiner proffers is taught or suggested by the Palanki '932 reference.", + "Appellants have not shown error in the Examiner's factual findings or conclusion of obviousness with respect to representative independent claim 20 and claims 22, 25, 26, 28, and 30 not separately argued.", + "Because Appellants have not set forth separate arguments for patentability of dependent claims 21 and 27 these claims will fall with representative independent claim 20." + ] +} \ No newline at end of file diff --git a/opinion_split/2018004312_DECISION.json b/opinion_split/2018004312_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..3957da6f7db1c911c1f0ce86285916bed4e0b9e8 --- /dev/null +++ b/opinion_split/2018004312_DECISION.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "Among other arguments, Appellant argues Keller fails to teach or suggest the determining step recited in claims 1, 11, and 21. Appeal Br. 8-9,", + "In particular, Appellant argues Keller's cited portions (i.e., paragraphs 19 through 21) merely disclose using Session Announcement Protocol *to announce multicast based conferences, wherein, for instance, multimedia files (usually audio and video streams) are sent to multiple users at the same time.\" Appeal Br. 8 (quoting Keller I 20) (emphasis omitted).", + "Appellant asserts Keller's announcements, which are used in conjunction with a session that was established using Session Initiation Protocol (\"SIP\"), do not require responses to maintain sessions between the client and server once the Session Announcement Protocol is established.", + "Appellant argues that, because Keller does not need to respond to messages to maintain an already established session, Keller fails to disclose any mechanism for determining whether any requests require such a response, and, therefore, Keller does not teach or suggest the determining step recited in claim 21.", + "Appellant notes the Examiner appears to alter the rejection--i.e., the Examiner now finds Sen (rather than Keller) teaches or suggests the determining limitation. Reply Br. 3 (citing Ans. 3-4).", + "Appellant then argues Sen also fails to teach or suggest the determining limitation. Reply Br. 3-4.", + "Specifically, Appellant argues Sen relates to including quality of service (QoS) requirements in a SIP request message to reserve the necessary resources when initiating a session. Appeal Br. 10-1 1; Reply Br. 3-4.", + "Appellant asserts \"Sen is not directed to generating a response to a request to maintain a session, \" and Sen does not need to maintain a session. Appeal Br. 10-11; see Reply Br. 3-4 (asserting Sen *has no disclosure regarding the maintaining of a session between the client device and the SAP server. \")." + ], + "examiner_findings": [ + "REJECTION Claims 1-30 stand rejected under 35 U.S.C. 5 103 as obvious in view of Keller (US 2007/0253435 A1; Nov. 1, 2007) and Sen (US 6,845,389 B1; Jan. 18, 2005). Final Act. 2-5,", + "The Examiner initially finds (1) Keller teaches or suggests the parsing and determining steps recited in claim 21, (2) Sen teaches or suggests the sending step recited in claim 21, and (3) a person of ordinary skill in the art would have combined Sen's and Keller's teachings. Final Act. 2-3 (citing Keller 11 19-21; Sen 4:46-5:2).", + "In response to Appellant's argument that Keller fails to teach the determining step, the Examiner quotes the same portion of Sen that the Examiner finds teaches or suggests the sending step. Ans. 3-4 (quoting Sen 4:46-5:2)." + ], + "ptab_opinion": [ + "Appellant's arguments persuade us the Examiner erred in determining the combination of Keller and Sen renders independent claims 1, 11, and 21 obvious.", + "We do not see anything in Keller or Sen that teaches or suggests *determining if each of the one or more requests requires a response to maintain a session between the client mobile device and the\" server, as recited in independent claims 1, 11, and 21.", + "Keller and Sen clearly disclose establishing sessions and at least suggest maintaining a session (sessions must be maintained at least for some amount of time in order to provide communication between two endpoints). Keller \" 19-21; Sen 4:46-5:2, 7:50-65.", + "However, Keller and Sen fail to teach or suggest determining that a request from a server requires a response in order to maintain the session, as recited in the claims.", + "See Keller 11 45-48, Keller also describes ending a session and the associated call cleanup when one endpoint wishes to terminate the communication session, see Keller 11 51-57, but does not describe what is necessary in order to maintain a session.", + "Notably, nothing in Sen describes any protocol for maintaining an existing session, let alone that one session participant determines a request message requires a response in order to maintain the session.", + "In fact, Sen suggests that the session is maintained until a SIP BYE message is received. Sen 8:48-50.", + "Neither Keller nor Sen, however, describes any steps necessary to maintain a session or otherwise suggests evaluating any message sent from one session endpoint (e.g., the initiator/first player) to the other session endpoint (e.g., the target/second player(s)) to determine whether the message requires a response in order to maintain the existing session.", + "For these reasons, we are persuaded the Examiner erred in finding Keller, Sen, or some combination of Keller and Sen teaches or suggests the determining step recited in independent claims 1, 11, and 21.", + "Accordingly, we do not sustain the Examiner's rejection of claims 1, 11, and 21 as obvious in view of Keller and Sen.", + "Nor do we sustain the Examiner's rejection of claims 2-10, 12-20, and 22-30 as obvious in view of Keller and Sen because claims 2-10, 12-20, and 22-30 ultimately depend from, and incorporate the limitations of, claims 1, 11, and 21, respectively." + ] +} \ No newline at end of file diff --git a/opinion_split/2018004384_Mail_Decision.json b/opinion_split/2018004384_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..837bc580adbd59f8af612788f24301fae084cdd6 --- /dev/null +++ b/opinion_split/2018004384_Mail_Decision.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "ANALYSIS In this appeal, Appellant disputes a single issue regarding the Examiner's s rejections: whether a preponderance of the evidence supports the Examiner's finding that Figure 1 of Braun discloses bearing cones with different axial lengths, as recited in both independent claims 3 and 12. Appeal Br. 9-14.", + "Appellant argues that Braun actually teaches \"a conventional three- part spacer and bearing race configuration\" in which item 16 is a spacer situated between cones 22 and 24, although it \"might appear\" that spacer 16 and cone 22 are continuous in Figure 1. Appeal Br. 9.", + "Appellant argues that a skilled artisan would not view Figure 1 as disclosing items 16 and 22 as one piece because Braun describes item 16 as a separate, independent part. Appeal Br. 9-12 (citing Braun, 3:25-36, 4:6- 8, 7:14-16, Figs. 2-6).", + "In particular, referring to Figure 1, Braun discloses that the \"radially inner bearing races 22 and 24 are fitted into the primarily radially outer cylindrical surface of mountingsleeve 14\" and \"bearing spacer 16 is . \u25a0 . positioned onto the outer surface of mounting sleeve 14 between the inner bearing races 22, 24 of bearings 6 and 8.\" Braun, 3:23-28 (emphasis added).", + "Braun additionally describes the purpose of spacer 16 as \"positions the inner bearing races 22 and 24 in precise axial relationship to each other, along with their respective outer races 18, 20.\" Id. at 3:29-31.", + "Appellant argues that a skilled artisan would also recognize from the additional views of item 16, Figures 2-6, which show it as separate and independent of items 22 and 24, that items 16, 22, and 24 are separate parts. Appeal Br. 11-13.", + "Lastly, Appellant notes Braun teaches that the inventive vane for the described wheel hub and bearing assembly can be mounted directly to the axle 32 or mounting sleeve 14, \"On the absence of the bearing spacer. \" Id. at 11." + ], + "examiner_findings": [ + "Citing Figure 1 of Braun, reproduced below, the Examiner finds \"the cone 22 includes 16 which makes this bearings cone longer than the other bearings cone which only includes 24.\" Final Act. 3.", + "The Examiner counters that \"even if the drawing is made in error, the configuration illustrated by Braun was made available to the public prior to the invention by [Appellant] and thus the alleged invention by [Appellant] was disclosed prior to [Appellant's] submission.\" \" Ans. 3.", + "Based on this distinction in Figure 1, the Examiner finds that the length of bearing cone 22 includes the length of spacer 16 up to the line separating bearing cone 24 and, thus, shows a different axial length for bearing cones 22 and 24. Final Act. 3; Ans. 3.", + "The Examiner states, \"the drawing clearly does show a split line between 16 and 24, a similar line is not present between 22 and 16, this in combination with the parts having the same hatching is suggestive ve that they are actually one piece and not two as Appellant is alleging.\" \" Ans. 3 (emphasis added)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We REVERSE.", + "This is a close call, but we are persuaded the Examiner's finding that Braun discloses bearing cones with different axial lengths is not supported by a preponderance of the evidence.", + "Although Figure 1 of Braun may be sufficient to carry the Examiner's initial burden of showing Braun discloses bearing cones with different axial lengths, we find that the evidence and argument by Appellant rebuts persuasively this showing.", + "Our task, as it is here, is to evaluate all of the evidence and arguments to determine whether a preponderance of the evidence supports the Examiner'. s finding.", + "Appellant's rebuttal evidence and arguments persuade us that a skilled artisan would not view Figure 1 as clearly disclosing items 16 and 22 as a single piece.", + "Figure 1 is ambiguous because it is a drawing identifying the different parts of a wheel hub and bearing assembly and identifies, separately, bearing cone 22, bearing cone 24, and bearing spacer 16.", + "We are not persuaded that Figure 1 shows clearly to a skilled artisan that bearing cone 22 and bearing spacer 16 are a single structure simply because there is not a specific line identifying where the parts meet.", + "Once the description of Figure 1 is considered, however, it becomes clear that Braun would lead a skilled artisan to view bearing cone 22, bearing cone 24, and bearing spacer 16 as structurally separate parts.", + "In particular, Braun describes bearing cones 22 and 24 as being \"fitted into the primarily radially outer cylindrical surface of mounting sleeve 14\" and describes bearing spacer 16 as being **positioned onto the outer surface of mounting sleeve 14 between the [bearing cones] 22, 24 of bearings 6 and 8.\" Braun, 3:23-28 (emphasis added).", + "As a result, we find the Examiner* s finding regarding Braun's \"disclosure of bearing cones with different axial lengths to lack support by a preponderance of the evidence.", + "Therefore, because we find the Examiner's s rejection of independent claims 3 and 12 to be deficient, we do not sustain the Examiner's rejections of3, 4, 6-8, 12, 13, and 15-17." + ] +} \ No newline at end of file diff --git a/opinion_split/2018004533_DECISION.json b/opinion_split/2018004533_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..19da886698145977e5addaa42cf257f1ea329171 --- /dev/null +++ b/opinion_split/2018004533_DECISION.json @@ -0,0 +1,26 @@ +{ + "appellant_arguments": [ + "Put another way, Colletto \"does not teach using a winding and unwinding reel device as a solution to the problem of removing the starting assist device.\" \" (Reply Br. 11.)", + "And, as pointed out by the Appellants, the secondary references do not cure this shortcoming, as the straps disclosed therein are *not used to pull a footrest (or anything else for that matter) out of a pool. \" (Appeal Br. 13; see also id. at 14, 18.)" + ], + "examiner_findings": [ + "The Examiner rejects claims 1-5, 7, 20, and 21 under 35 U.S.C. 6 103 as unpatentable over Colletto, Nichols, and Rouhana. (Final Action 3.)", + "II. The Examiner rejects claim 6 under 35 U.S.C. 5 103 as unpatentable over Colletto, Nichols, Rouhana, and Carlson. (Final Action 6.)", + "III. The Examiner rejects claim 21 under 35 U.S.C. 8 112 as indefinite. (Final Action 2.)", + "The Examiner finds that Colletto discloses a backstroke-start apparatus having a footrest 20, a tube 26, and straps 24 coupling the footrest 20 to the tube 26. (See Final Action 3.)", + "And, the Examiner finds that Colletto's footrest 20 is shown in the \"retracted position\" in Figure 6, reproduced below. (Id.)", + "The Examiner's rejection relies upon Colletto to teach \"winding\" the straps 24 onto the tube 26 *for the removal of the starting footrest from the pool water\" (Answer 3), and, *removal from the pool corresponds with [the] retracted position of the footrest\" (Appeal Br., Claims App.).", + "The Examiner does indicate that it would have been obvious \"to modify Colletto to include an automatic winding and unwinding device for the purpose of storing the belts when not in use.' (Final Action 4.)", + "and the Examiner determines that **[c]laim 21 is indefinite as it is unclear what *the plurality of apparatuses' is referring to.\" (Final Action 2.)" + ], + "ptab_opinion": [ + "In other words, the straps are wound around the tube to remove the footrest from the pool after the start process.", + "The problem with the Examiner's position is that, as shown in Figure 6 reproduced above, Colletto does not teach winding its straps 24 around the tube 26 to move the footrest 20 to the retracted position.\"", + "But we agree with the Appellants that \"storing belts when not in use is different than automatically removing a footrest from a pool after a start process as claimed.\" (Appeal Br. 19.)", + "Thus, we do not sustain the Examiner's rejection of independent claim 1 as unpatentable over Colletto, Nichols, and Rouhana.", + "The Examiner's 's further findings and determinations with respect to the rest of the claims on appeal do not remedy the above-discussed deficiency in the rejection of independent claim 1. (See Final Action 5-6.)", + "Thus, we do not sustain the Examiner's rejection of claims 2-5, 7, 20, and 21 under 35 U.S.C. 8 103 as unpatentable over Colletto, Nichols, and Rouhana; and we do not sustain the Examiner's rejection of claim 6 under 35 U.S.C. & 103 as unpatentable over Colletto, Nichols, Rouhana, and Carlson.", + "However, we agree with the Appellants\" position that one of ordinary skill in the art would, upon reading the Specification (see e.g. Spec. 13, II. 6-13, Fig. 11), understand that claim 21 is claiming *two or more (i.e., a plurality) of the apparatus of claim 1.\" (Reply Br. 6.)", + "Thus, we do not sustain the Examiner's rejection of claim 21 under 35 U.S.C. , 112 as indefinite." + ] +} \ No newline at end of file diff --git a/opinion_split/2018004872_DECISION.json b/opinion_split/2018004872_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..050ddb49b010a378b11183020d2ede83bdfcd105 --- /dev/null +++ b/opinion_split/2018004872_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "Appellants seek our review under 35 U.S.C. S 134(a) of the Examiner's Decision rejecting claims 1-20.", + "Claims 1, 8, and 14 are independent.", + "Claims 2-7, 9-13, and 15-20 depend from claim 1. 8, or 14.", + "Claim 1 is reproduced below: 1. An engine and aftertreatment system comprising: an engine; an aftertreatment mechanism connected to the engine; and a controller connected to the engine and the aftertreatment mechanism; and wherein: the controller comprises an off-line portion having an optimization problem that computes maps, the computed maps prescribing optimal setpoints and constraints for measured variables from sensors and positions of engine actuators for a substantially all operating points of the engine to optimize operation of the engine, where the maps are parameterized by variables of the engine and the aftertreatment mechanism; and the maps are a basis incorporated in the optimization problem for optimizing performance of the engine and the aftertreatment mechanism integrated as one system and the controller is configured to set positions of the engine actuators to optimize operation of the engine by realizing the engine actuator optimal set points from the parameterized maps computed offline for the engine based on operating points of the engine.", + "Although the Final Office Action mailed May 4, 2017 is the subject of the instant appeal, Appellants acknowledge that it *inadvertently filed the Appeal Brief dated October 31, 2017, addressing the rejections of a previous Final Office Action, dated June 18, 2015.\" Reply Br. 2.", + "Appellants do not contend that the rejections presented in the June 18, 2015 Final Office Action are the same as those in the May 4, 2017 Final Office Action.", + "1,2 Appellants explain that \"Ti]n this Reply Brief, Appellant[s] will address the rejections from the current Final Office Action, dated May 4, 2017.\" Reply Br. 2." + ], + "examiner_findings": [ + "Claims 1-13 are rejected under 35 U.S.C. 8 102(b) as being anticipated by Frazier (US 2007/0245714 A1, published Oct. 25, 2007).", + "Claims 14-20 are rejected under 35 U.S.C. 8 103(a) as being unpatentable over Frazier and Kotwicki (US 6,502,550 B1, issued Jan. 7, 2003)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "Our rules generally prohibit new argument in the Reply Brief.", + "37 C.F.R. 5 41.41(b)(2).", + "Because the Appeal Brief fails to address the Final Office Action mailed October 31, 2017, which includes the currently pending rejections, Appellants fail to apprise us of error in those rejections.", + "We do not consider the new arguments raised for the first time in the Reply Brief." + ] +} \ No newline at end of file diff --git a/opinion_split/2018005045_DECISION.json b/opinion_split/2018005045_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5391209109054a91d14b1ccd4c675ad8be2f8ce9 --- /dev/null +++ b/opinion_split/2018005045_DECISION.json @@ -0,0 +1,100 @@ +{ + "appellant_arguments": [ + "Appellant appeals under 35 U.S.C. 8 134(a) from the Office Action finally rejecting claims 2, 5, 6, 8. and 11-26. Appeal Br. 1.", + "Claims 5, 11, and 13 are independent with claim 5 reproduced below.", + "5. A staging assembly for a shell press assembly sheet feeder assembly, the shell press assembly including an infeed and the sheet feeder assembly, the sheet feeder assembly including a feeder actuator, the feeder actuator having a first path and a second path, the staging assembly comprising: a staging assembly frame assembly defining a first sheet bay, a second sheet bay, a support bay, and a staging bay; the first sheet bay structured to temporarily support a first number of material sheets; the second sheet bay structured to temporarily support a second number of material sheets; the support bay structured to support the feeder actuator; the first sheet bay disposed immediately adjacent the support bay; the second sheet bay disposed immediately adjacent the support bay; the first sheet bay disposed immediately adjacent the staging bay; and the second sheet bay disposed immediately adjacent the staging bay. Appeal Br. 24 (Claims App.).", + "Appellant argues claims 2, 5, 6, 8, 11, 12, 21, 22, 24, and 25 as one group and claims 13-15 as another group. See Appeal Br. 10-20.", + "Appellant argues that Anater does not disclose a sheet bay structured to temporarily support material sheets. Appeal Br. 14.", + "Appellant argues that \"sheet bay\" is defined as \"structured to support generally planar members\" and \"structured to temporarily support material sheets I and is not structured to support such as cups or non-planar containers/boxes.\" See Appeal Br. 14 (quoting Spec. 10:24 and 11:7-9), Appellant also argues that *structured to\" is defined to mean \"the identified element or assembly has a structure that is shaped, sized, disposed, coupled and/or configured to perform the identified verb.\" Appeal Br. 14 (quoting Spec. 4:19-28).", + "Appellant acknowledges that \"immediately adjacent\" is not defined in the Specification, but argues that **adjacent* and *immediately adjacent\" are described in an embodiment. Id. at 16-17,", + "Appellant also argues that the *immediately adjacent\" means something other than \"adjacent\" and means *with no object or space intervening.\" Id. at 17-18.", + "Appellant argues that Anater discloses a considerable space between support bay 4 and sheet bays 24 so those elements are not immediately adjacent one another. Id. at 18.", + "Independent claim 13 recites a method with the first and second sheet bays \"structured to temporarily support a first number of material sheets.\" \" Appeal Br. 25 (Claims App.).", + "The Specification defines *material sheets\" as **generally planar members and specifically excludes other constructs such as cups and containers/boxes.\" Spec. 8:26-28.", + "Claim 14 depends from claim 13 and recites the step of disposing a first number of material sheets in the first sheet bay while utilizing the feeder actuator to move a number of material sheets from the second sheet bay to the staging bay.", + "Claim 15 depends from claim 14 and recites a similar method step for the second sheet bay. See Appeal Br. 26 (Claims App.).", + "Appellant argues that Hopwood' 's sensors inform the system that a majority of the plates have not been removed from stack 1 rather than no plates are available. Reply Br. 8.", + "Appellant argues that a **running low\" signal in Hopwood does not teach an Munavailable signal\" of claim 16.\" Id.", + "Appellant does not dispute that Hopwood' 's elements are planar.", + "Appellant argues that the elements are not part of a \"bay\" as defined in their Specification. See Reply Br. 9." + ], + "examiner_findings": [ + "Claims 2, 5, 6, 8, 11-15, 21, 22, 24, and 25 are rejected under 35 U.S.C. & 103 as unpatentable over Anater (US 2004/0071539 A1, pub. Apr. 15, 2004) and Bergeron (US 2008/0253871 AI, pub. Oct. 16, 2008).", + "Claims 16-20, 23, and 26 are rejected under 35 U.S.C. S 103 as unpatentable over Anater, Bergeron, and Hopwood (US 2012/0076632 AI, pub. Mar. 29, 2012).", + "The Examiner relies on Anater to disclose the elements of claim 5 to include first and second sheet bays (stacks 18 on stacking stations 24) and a support bay for robots 2, 4, and a staging bay (first conveyor 6), but not to disclose a staging frame assembly. Final Act. 2-5.", + "The Examiner relies on Bergeron to teach a staging frame assembly defining a first and a second bay (work stations 13) with support bay for robot 11 and a staging bay. Id. at 5.", + "The Examiner also finds that Bergeron discloses immediately adjacent spacing. Ans. 8.", + "The Examiner relies on Hopwood to teach planar sheet bay members and a feeder table disposed above the ground as recited in claims 23 and 26, which depend from claim 5. See Ans. 11; Final Act. 10-11.", + "The Examiner relies on Anater to teach sheet bays, support bay, and staging bay as discussed above for the rejection of claim 5.", + "The Examiner relies on Hopwood to teach planar support surfaces for bays. Ans. 11." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We AFFIRM.", + "We select independent claims 5 and 13 as representative. 37 C.F.R. 8 41.37(c)(1)(iv).", + "We agree with the Examiner that Anater discloses stacking stations 24 that correspond to the claimed sheet bays.", + "The Examiner correctly finds that stacking stations 24 provide a support surface structured to support stack 18 thereupon. Ans. 4-5,", + "Anater discloses stacking stations 24 supporting stack 18 of containers 8, which have planar bottoms. Anater, Figs. 1-4, 10-13.", + "Appellant has not explained persuasively how the definition of of\"sheet bay\" being *not structured to support such as cups or non-planar containers/ boxes\" (Appeal Br. 14; see Spec. 11:7-9) prevents stacking stations 24 from being \"sheet bays\" just because containers 8 of Anater are for baking.", + "We agree with the Examiner that Anater's working stations 24 are structured to support material sheets as claimed.", + "Appellant's Specification discloses first and second sheet bays 80, 90 *are substantially similar\" and \"the first sheet bay 80 includes a generally horizontal planar member 82. Spec. 11:1-4, see Fig. 1.", + "Anater discloses stacking stations 24 as generally horizontal planar members in Figures 1-5 that support a stack of containers 8 that have planar bottoms.", + "We have no contrary evidence or argument from Appellant on this point. See Reply Br. 2-6; Appeal Br. 14-16; Ans. 4-5.", + "Anater also discloses that the container management system can be used to process stacks of \"lids\" and other containers and objects of various shapes and sizes without alteration. Anater \" 5, 24.", + "A skilled artisan would understand from these disclosures that stacking stations 24 are configured to support planar material sheets.", + "Thus, the Examiner had a sound basis to find that Anater's stacking stations 24 are structured to support material sheets because the stations include a generally horizontal support like the structure used in Appellant's sheet bays to support material sheets. See Spec. 11:1-4.", + "The Examiner also correctly finds that Anater discloses sheet bays 24 to be \"immediately adjacent\" to support bay for robot 4 and to staging bay 6 because they are next to one another with no one or nothing between them. Final Act. 3-4: Ans. 7-8 (citing definition of \"immediately\" as *with no one or nothing between\" from Evidence Appendix Exh. 1).", + "The Examiner has the better position.", + "The Specification discloses that when sheet bays 80, 90, support bay 70, and staging bay 100 are \"generally square\" as viewed from above, the first and second sheet bays 80, 90 can be disposed adjacent or immediately adjacent to \"a lateral side of the support bay.\" Spec. 12:23-31.", + "The Specification does not indicate how, or even that, *immediately adjacent\" disposition differs from **adjacent\" disposition.", + "Figures 1 and 2 illustrate bays 70, 80, 90, 100 with generally square-shaped, planar floor members 72, 82, 92, 102.", + "The Specification does not indicate whether Figures 1 and 2 show sheet bays 80, 90 as *immediately adjacent\" or \"adjacent\" to support bay 70 and staging bay 100 or another arrangement. See id.", + "In any case, Figures I and 2 show frame members disposed between bays 70, 80, 90, 100.", + "Thus, both \"adjacent\" and \"immediately adjacent\" appear to allow for intervening structures between bays. See Reply Br. 9 (bays are separated by frame members 54 or other constructs).", + "Claim 5 does not require the first bay or the second sheet bay to contact a support bay or a staging bay.", + "Nor does claim 5 require the sheet bays to have planar or square floor members that contact a planar or a square support bay floor member or a planar or a square staging bay floor member.", + "As a result, the Examiner's interpretation of \"immediately adjacent\" to allow for space between the bays (Ans. 7) is reasonable when interpreted in light of Appellant's Specification and is consistent with the Specification.", + "We are not persuaded that we should interpret *immediately adjacent\" to mean that there is no space between some unclaimed elements of the bays or that the bays and other elements contact one another. Appeal Br. 18-19.", + "Appellant essentially urges us to interpret this limitation to require the sheet bays and support/staging bays to contact each other, i.e., to have no space between.", + "However, claim 5 does not require the sheet bays to contact the staging bay or the support bay.", + "The Specification does not disclose such an arrangement either.", + "Nor does claim 5 require the first and second bays to be immediately adjacent to a *lateral side\" of the support bay as disclosed in the Specification.", + "We agree with the Examiner that Anater's stacking stations 24 (sheet bays) are immediately adjacent to a support bay for robot 4 and staging bay (conveyor 6), i.e., with no intervening elements in Figures 1-4.", + "Appellant's asserted definition of \"immediately\" in Exhibit 1 to mean *with no one or nothing between\" is satisfied by Anater's teaching of stacking stations 24 immediately next to robot 4 and conveyor 16 with no intervening element(s).", + "Robot 4 thus can service the other bays 24, 16 with no intervening object to impede its reach or its operation.", + "The definition of \"immediately\" in Exhibit 2 to mean *in direct connection \u00b7 \u00b7 \" is inconsistent with the claim language and Specification.", + "The definition of \"immediately\" to mean *with no object or space intervening?' in Exhibit 3 is inconsistent with the claim language interpreted in light of the Specification and drawings, which disclose spaces between at least some bays in Figure 2.", + "Anater shows stacking stations 24 immediately adjacent to robot 4 and conveyor 16 (staging bay) with no elements in between and all within easy reach of robot 4 to reduce cycle time. Anater 99 24-27, 40-43, Figs. 1-4; Ans. 7-8.", + "The presence of a slight space between stacking stations 24 and robot 4 and conveyor 6 is consistent with our interpretation of *immediately adjacent\" in light of the Specification.", + "We are not persuaded that the space is a \"considerable space\" (Appeal Br. 18) because stations 24 and bay 16 are well within robot 4's reach. Anater, Fig. 1.", + "Moreover, we do not interpret *immediately adjacent\" to require the bays to contact one another, i.e., with no space in between.", + "Thus, we sustain the rejection of claims 2, 5, 6, 8, 11, 12, 21, 22, 24, and 25.", + "Appellant's argument that neither Anater nor Bergeron is structured to support *material sheets\" (Appeal Br. 20) does not apprise us of error in the Examiner's finding that Anater discloses this feature.", + "Anater discloses that stacking stations 24 have planar supports that are structured to support lids and objects of various shapes and sizes. Anater \" 5, 24, Figs. 1-5.", + "Thus, stacking stations 24 are structured to support material sheets as claimed.", + "See 37 C.F.R. $ 41.37(c)(1)(iv) (\"A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.\").", + "\"). Accordingly, we sustain the rejection of claim 13.", + "We agree with the Examiner that Anater discloses the steps recited in claims 14 and 15 of the feeder actuator (robot) moving material sheets from one sheet bay to the staging bay while material sheets are supplied to the other sheet bay. Ans. 9.", + "Anater discloses that when one stacking station 24 is almost empty, robot 2 requests another load of the same materials from storage, and transfer vehicle 26 delivers the requested materials to the other stacking station 24. Anater I 43.", + "Robot 2 continues to remove materials 8 from the first stacking station 24 until the materials are depleted, whereupon \"the first robotic device 2 automatically moves on to picking from the adjacent container stacking station 24, which was resupplied with materials that were delivered while robot 2 was removing materials 8 from the other stacking station 24 as claimed. See id.", + "Appellant's argument that Anatar does not disclose *simultaneous action\" (Appeal Br. 20; Reply Br. 6-7) is not commensurate with the scope of claims 14 and 15.", + "Moreover, a skilled artisan would understand that robot 2 moves materials 8 from a first stacking station 24 while a second, adjacent stacking station 24 is loaded with more materials 8. i.e., simultaneously.", + "Once materials 8 are depleted from the first stacking station 24, robot 2 automatically picks materials 8 from the adjacent, refilled stacking station 24. Anater I 43.", + "Thus, we sustain the rejection of claims 14 and 15.", + "We also agree with the Examiner that Hopwood discloses a \"feeder actuator control system structured to receive a first sheet bay unavailable signal and a second sheet bay unavailable signal\" as recited in claim 16.", + "Hopwood uses laser sensors 37, 38 to detect the presence or absence of plates 11 in a datum region so that control 36 can control elevators 26, 29. Final Act. 7-8.", + "Sensor 37 detects the presence or absence of a top plate and controls the advancement of elevator 26. Hopwood I 31, Figs. 5(a)-5(e).", + "Appellant's argument is not persuasive because Hopwood's sensors 37, 38 detect the presence or absence (i.e., the unavailability) of plates 11. Hopwood I 31.", + "Sensors 37, 38 signal control 36 to advance second elevator 29 so plates are in a proper position and both elevators are in active positions for an overlap period before the first stack 1 is finished. Id. ' 32.", + "Therefore, sensors 36, 37 signal the height of plates 11 so that control 36 can arrange and elevate stacks to provide a continuous stream of plates.", + "Appellant uses a similar unavailable signal with its first and second sheet bays.", + "Weight or proximity sensors are **structured to detect when the stack height has dropped to a predetermined level\" in the first and second sheet bays. Spec. 16:19-27.", + "An \"unavailable signal\" is generated when the stack height in a sheet bay falls below a predetermined level, i.e., before the sheet bay is completely empty with no sheets remaining.", + "Hopwood discloses a similar arrangement in which sensors 37, 38 generate an unavailable signal for control 36 when a stack falls below a predetermined level. Hopwood 19 30-32.", + "The Examiner's findings are consistent with claim 16 when interpreted in light of the Specification.", + "Accordingly, we sustain the rejection of claim 16 and claims 17-20, which are not argued separately. See Appeal Br. 20-23.", + "This argument is not persuasive because it amounts to an individual attack on the references.", + "This finding is reasonable given Anater's teaching of flat stacking stations 24 that support containers 8 with flat bottoms and that are structured to support lids and other objects of different sizes and shapes. Anater \" 5, 24, Figs. 1-4.", + "Thus, we sustain the rejection of claims 23 and 26." + ] +} \ No newline at end of file diff --git a/opinion_split/2018005063_Mail_Decision.json b/opinion_split/2018005063_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..c1423ebe0e50c9155f461bab542926262d238eee --- /dev/null +++ b/opinion_split/2018005063_Mail_Decision.json @@ -0,0 +1,26 @@ +{ + "appellant_arguments": [ + "Appellant argues that the Examiner fails to provide an evidentiary basis for asserting inherency, for two reasons: (1) Nooijen's 's polymerization process is not the same as the process described in the Specification; and (2) Nooijen's 's polyethylene compositions are different from those recited in claim 1.", + "Specifically as to Nooijen's polymerization process, Appellant argues that the properties of the granular polyethylene recited in claim 1 do not necessarily flow from Nooijen's teaching, because the process described in the Specification is different from Nooijen's polymerization process.", + "Appellant relies on two differences in the process described in the Specification: (1) a control step using oxygen tailoring to control SBDpe (id. (citing Spec. 9, 11. 5-8); and (2) a control strategy to balance intraparticle void volume, intraparticle porosity, and granular resin particle size by controlling Cr content in the catalyst and the reactor residence time, which in turn also balance SBDpE, D50pE, (Vintraparticle/Vinterpartie), and (Gintraparticle/Finterparticie) (id. at 12 (citing Spec. 9, 11. 14-21, Tables 1, 2)).", + "Appellant asserts that Nooijen does not teach oxygen tailoring, teaches an amount of Cr in the catalyst that is greater than the amount taught in Appellant's working examples, and is silent regarding reactor residence time." + ], + "examiner_findings": [ + "Claims 1 and 3-15 are rejected under pre-AIA 35 U.S.C. a 102(b) as anticipated by Nooijen, or in the alternative, under pre-AlA 35 U.S.C. 5 103(a) as obvious over Nooijen.", + "Claim 10 is rejected under pre-AIA 35 U.S.C. 9 103(a) as obvious over the combination of Nooijen and DesLauriers.", + "The Examiner finds that Nooijen discloses a granular polyethylene having a resin solid density and a Mw/Mn within the ranges recited in claim 1.", + "The Examiner further finds that Nooijen's polymerization process uses a spray-dried support for a Cr- based catalyst, which is the same polymerization process used by the Appellant.", + "The Examiner acknowledges that Nooijen does not disclose the granular resin settled bulk density, particle porosity ratio, or total resin porosity as recited in the appealed claims, but finds that those properties would flow naturally from Nooijen's polymerization process, which the Examiner finds is the same as the Appellant's.", + "The Examiner further finds that the properties of settled bulk density, particle porosity ratio, and total resin porosity are inherent to Nooijen's 's polyethylene because it teaches a substantially similar structure and chemical composition as the claimed invention." + ], + "ptab_opinion": [ + "We REVERSE.", + "We find that the differences between the polymerization process described in the Specification and the process described in Nooijen demonstrate that the properties of the polyethylene recited in the appealed claims do not necessarily flow from Nooijen's disclosure.", + "See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (\"[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. \")", + "In the Answer, the Examiner does not address Appellant's argument and evidence as to the differences between Nooijen's 's process and Appellant's process.", + "The Examiner reversibly erred in not addressing Appellant's position, and in determining that Appellant failed to support its argument as to the differences in Nooijen's composition by failing \"to provide comparative tests that demonstrate unexpected properties with respect to\" the claimed properties.", + "Accordingly, we reverse the rejection.", + "The rejection of dependent claim 10 is based on the same findings as discussed above for claim 1, and the Examiner does not address the differences between Nooijen's process and the process described in the Specification in connection with this rejection.", + "Therefore, we reverse the rejection of claim 10 for the same reasons as discussed above." + ] +} \ No newline at end of file diff --git a/opinion_split/2018005084_DECISION.json b/opinion_split/2018005084_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..39a9e01eea1de52634d44d37dce67a51cb03017f --- /dev/null +++ b/opinion_split/2018005084_DECISION.json @@ -0,0 +1,34 @@ +{ + "appellant_arguments": [ + "Final 2-3, The Appellants argue \"Bilbrey presents an image captured by a video camera, not an image retrieved from a service location,\" as required by claims 1 and 10.", + "Appeal Br. 3, 6; see also id. at 5 (\"[T]he claims recite that service information including a visual image of the system are downloaded from a network location. This recited feature is not found in the prior art, which uses images captured live by a camera on a mobile phone. \").", + "The Appellants argue *the art cited by the Examiner fails to teach, suggest or disclose findividually illuminated' LEDs that provide a diagnostics code and that are captured in an image with a service identifier to provide *service for the information handling system in response to the diagnostics code. \" Appeal Br. 6.", + "The Appellants argue \"Koshiba relates to a television that presents images, not individual LEDs.\" Id.", + "In their Reply Brief, the Appellants urge that *display pixels are not individually illuminated, but illuminated as a population from a graphics processor to present a visual image.\" Reply Br. 3.", + "\". In their Reply Brief, the Appellants also argue \"[the Examiner reads a display with plural pixels as being plural LEDs individually illuminated, but fails to explain how a display would fit in the recited *service identifier. \" Reply Br. 3.", + "The Appellants cite Declarations under 37 C.F.R. 8 1.132 as providing secondary indicia of nonobviousness. Appeal Br. 3-5; see id. at 6 (Evidence Appendix).", + "According to the Appellants, the declarations provide evidence of commercial success, long-felt need, and skepticism of experts in the field. Id. at 4." + ], + "examiner_findings": [ + "at 10. The Examiner finds Bilbrey teaches or suggests these claim 1 and claim 10 limitations.", + "The Examiner finds the combination of Bilbrey and Tsongas discloses an information handling device display that includes a quick response (QR) code with device address and service information. Final 5.", + "The Examiner acknowledges Bilbrey and Tsongas are silent as to the QR code including a model number, but finds the ordinary artisan would have modified the QR code to include the model number to facilitate retrieval of appropriate diagnostic information. See id. at 5-6.", + "The Examiner finds Koshiba discloses a mobile information handling device capable of taking an image of a diagnostic code from a light emitting display of an information handling apparatus and decoding the diagnostic code to enable making a service contact. Id. at 5.", + "The Examiner finds the ordinary artisan would have incorporated this feature into Bilbrey's system \"to enable determining the health state of controlled devices.\" Id.", + "The Examiner cites Scheibe as evidence that Koshiba's light emitting display \"contain[s] millions of LEDs individually illuminated to provide a multi-color display.\" Id." + ], + "ptab_opinion": [ + "We view this as an inadvertent error and consider patentability of claims 21 and 22 on the basis of the arguments made in support of patentability of claims 1 and 10, respectively.", + "The Appellants* argument is persuasive of reversible error in the Examiner's rejection of independent claims 1 and 10, and the rejections of their dependent claims 2-9, 11-17, 21, and 22.", + "The Examiner has not provided sufficient explanation and/or evidence to support a finding that any images, schema, or the like provided in Bilbrey's information layer would amount to an image of plural components disposed on a motherboard. See, e.g., Final 3; Ans. 3-4.", + "Accordingly, we do not sustain the rejections of claims 1-17, 21, and 22,", + "The Appellants\" arguments are not persuasive of reversible error in the Examiner's obviousness determination.", + "The evidence of record supports the Examiner's finding that Koshiba discloses the diagnostic error code may be displayed on a computer monitor which is a light emitting device. Ans. 10 (citing Koshiba I 46, Fig. 1).", + "The Appellants have not explained with sufficient clarity how the claim 18 language requiring a plurality of individually illuminated LEDs patentably distinguishes over a population of illuminated pixels.", + "We decline to consider this argument because the Appellants have not shown good cause why this argument was not raised in their Appeal Brief.", + "It is unclear whether the Appellants intended to rely on these declarations as evidence of nonobviousness as to claim 18.", + "Out of an abundance of caution, we have reviewed the declarations, but determine they do not provide persuasive evidence of nonobviousness because the evidence is not commensurate in scope with the claims.", + "In sum, having considered the totality of the evidence, including the Appellants' secondary considerations of nonobviousness, we determine a preponderance of the evidence favors the Examiner's conclusion of obviousness as to claims 18-20.", + "Therefore, we sustain the rejections of claims 18-20." + ] +} \ No newline at end of file diff --git a/opinion_split/2018005108_DECISION.json b/opinion_split/2018005108_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..0ade3583732a9e435368dd3a8bd9ac1c1216fb3d --- /dev/null +++ b/opinion_split/2018005108_DECISION.json @@ -0,0 +1,39 @@ +{ + "appellant_arguments": [ + "Appellant states, \"Scheib is silent as to the welding of a buttress\" and, thus, contends that \"Scheib fails to teach [that its end effector] is *activatable to \u00b7 . subsequently cut the welded first and second buttresses. ** App. Br. 5; see also Reply Br. 2.", + "Appellant contends that Scheib's 's \"tissue cutting member 130 is not capable of welding buttresses before cutting the buttresses\" because Scheib's member 130 is for cutting; not welding and then subsequently cutting as recited. App. Br. 6; see also Reply Br. 3-4 (*Scheib discloses that the tissue cutting member 130 provides \u25a0 'relatively little thermal spread*** (referencing Scheib I 47)." + ], + "examiner_findings": [ + "Claims 1-6 and 10 are rejected under 35 U.S.C. 8 103 as unpatentable over Hodgkinson and Scheib.", + "~2 The Examiner relies on Hodgkinson for disclosing an end effector having first and second buttresses/jaws, and a blade for cutting the buttresses, but acknowledges that Hodgkinson **fails to disclose that the blade is an ultrasonic blade activatable to weld the first and second buttresses.\" \" Final Act. 5.", + "The Examiner relies on Scheib for teaching an end effector having a (single) buttress and, more importantly, for disclosing *an ultrasonic blade \u00b7 \u00b7 activatable to weld and cut the buttress strip.\" \" Final Act. 5.", + "The Examiner thereafter explains that it would have been obvious \"to replace the blade\" of Hodgkinson for that of Scheib, and provides a reason to do so. Final Act. 6.", + "The Examiner explains that the combination of Hodgkinson and Scheib are **arranged exactly the same as Appellant's claimed invention\" such that \"the resulting function language [i.e., Mactivatable to weld\"] would naturally flow from that prior art apparatus.\" Ans. 2.", + "The Examiner explains that \"Scheib is capable of being activated to weld\" as recited. Ans. 3; see also id. at 2, 4.", + "This is because the Examiner alleges \"that the welding of buttresses 0 together are well known in the art.\" as evidenced by US T between the ultrasonic blades 54, the ultrasonic blades 54 weld the buttresses 50 together adjacent the central cut line CL.\" \" See also Spec. I 28." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "For the reasons explained below, we find error in the Examiner's rejection of these claims.", + "Accordingly, we REVERSE the rejection of claims 1-6 and 10.", + "We note that claim I recites the phrase, **subsequently cut the welded first and second buttresses\" (claim 10 recites \"subsequently cut \u00b7 \u00b7 \u00b7 the welded buttresses\").", + "Emphasis added.", + "We understand \"welded,\" as used here, to mean that the buttress weld has already transpired or taken place (i.e., has already been completed and cured).", + "In other words, the weld is no longer in a transitional, molten, unsolidified, or semi-fused state because the buttresses, prior to cutting, have previously been \"welded\" to each other.", + "Thus, according to claims 1 and 10, after the buttresses are welded together, the welded (i.e., set) buttresses are subsequently cut.", + "As indicated above, the Examiner relies on Scheib for disclosing an ultrasonic blade \"activatable to weld and cut the buttress strip.\" Final Act. 5.", + "However, Scheib is silent as to any disclosure of ultrasonic welding, and especially any buttress welding prior to buttress cutting. See also App. Br. 4- 6; Reply Br. 3-4.", + "As mentioned above, Scheib teaches cutting *with relatively little thermal spread.\" \" Scheib I 47.", + "Thus, Scheib does not teach welding buttresses with an ultrasonic cutter, or that an ultrasonic cutter is capable of welding buttresses.", + "Thus, to weld the buttresses together adjacent the cut line, the cut line must pre-exist.", + "This operation is not the same as that which is claimed, i.e., weld the buttresses together first, and then **subsequently cut the welded\" buttresses (i.e., subsequently make the cut line CL).", + "However, an enablement issue has not been raised by the Examiner and no such issue is before us for review.", + "No implication one way or the other is to be gleaned from our decision to not raise the issue ourselves.", + "However, claims 1 and 10 are directed to the use of ultrasonic energy (not RF energy) for welding; and as such, the '299 patent does not teach that ultrasonic welding is \"well known in the art\" as the Examiner states. Ans. 3.", + "Thus, the Examiner's reliance on the combination of Hodgkinson and Scheib as being **capable of\" the recited welding function is not properly grounded.", + "The Examiner provides no evidence that that ultrasonic cutter of Scheib is capable of welding buttresses.", + "It may be the case that Scheib has this capability, as Appellants do not identify any structural differences, between Scheib and the invention.", + "However, the Examiner has the burden to first establish the inherent capability in the prior art.", + "Accordingly, and based on the record presented, we do not sustain the Examiner's rejection of independent claims 1 and 10, or dependent claims 2-6, as obvious over Hodgkinson and Scheib." + ] +} \ No newline at end of file diff --git a/opinion_split/2018005267_Mail_Decision.json b/opinion_split/2018005267_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..d9be3c69dc32bc70e051365311313f9595e4f097 --- /dev/null +++ b/opinion_split/2018005267_Mail_Decision.json @@ -0,0 +1,43 @@ +{ + "appellant_arguments": [ + "As Appellants explain: In the present application, although claim 1 does not recite any specific mathematical formula, equation, or relationship, it does recite steps - i.e., steps (f), (g), (h) - that involve mathematical computations and manipulations, such as \"digitizing the analog detection signal, \" `\"mathematically processing the digitized detection data using a computer- implemented digital signal processing technique for determining the amplitude of the optical signal at the predetermined modulation frequency, and \"executing a computer-implemented algorithm.\" (Supp. Br. 1-2.)", + "Specifically, as Appellants' explain, \"the additional elements(s) [of their claimed invention, inter alia,\u3011 reflects an improvement to technology or a technical field,\" specifically, when viewed as a whole, Appellants' claimed invention, inter alia, \"improves the accuracy and efficiency of analyte detection technology by reducing inaccuracies introduced by optical cross-talk and ambient light without the need for an analog demodulator or filter circuit\" (Supp. Br. 2-4).", + "As Appellants explain, this is an improvement to *[p]rior art systems for applying synchronous detection[, which] relied upon analog filtering circuits to filter a signal from the signal detecting device\" (id. at 3).", + "As Appellants explain, Appellants' \"claim 1 integrates the mathematical concepts into a practical application, so claim 1 is not directed to an abstract idea.", + "Claim 1 is therefore eligible at Prong Two, and this concludes the eligibility analysis\" (Supp. Br. 5 (citing Revised Guidance, 84 Fed. Reg. 54).6", + "FF 3. Appellants' subsequently confirmed that \"[p]er the Interview Summary of May 4, 2017, [Appellants] understand[] that the double patenting rejection has been withdrawn\" (Appellants' May 12, 2017 Request for Pre-Appeal Brief Review 5).", + "FF 5. Appellants' Appeal Brief confirms that the \"obvious-type double patenting rejection \u00b7 \u00b7 \u00b7 has been withdrawn per the Interview Summary issued May 4, 2017\" (App. Br. 14, n. 1; see also Reply Br. 1 (\"[A]s noted in the footnote on page 14 of the Brief, the obvious-type double patenting rejections were withdrawn per the Interview Summary issued May 4, 2017\"); see also Reply Br. 2 (Examiner's s Interview Summary made *no indication that one of the obviousness type double patenting rejections was withdrawn and the other was not\")." + ], + "examiner_findings": [ + "Claims 1-3 stand rejected under 35 U.S.C. & 101.", + "Claims 1-3 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over the claims of Heinz.\"", + "FF 1. Examiner's Final Office Action: (1) rejected Appellants' \"[cllaims 1-3 \u25a0 \u25a0 \u25a0 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,718,948\" and (2) provisionally rejected Appellants' *`[cllaims 1-3 \u00b7 \u00b7 \u00b7 on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 14/222,160,\" now U.S. Patent No. 9,915,613 (Final Act. 8).", + "FF 2. Examiner and Appellants held an interview on April 28, 2017, wherein Examiner's Interview Summary states \"the [Elxaminer agreed that the Obviousness Double Patenting rejection in the instant application is improper and will be withdrawn in view of the restriction set forth in the parent application [(Application No. 13/404,437, now U.S. Patent No. 8,718,948)].\"", + "FF 6. Examiner's Answer withdrew the provisional rejection of Appellants' **[ellaims 1-3 \u00b7 \u00b7 \u00b7 on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 14/222,160,\" now U.S. Patent No. 9,915,613 (Ans. 2).", + "FF 7. Examiner's Answer maintained the rejection of Appellants' claims 1-3 \"on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 8,718,948,\" for the \"reasons of record,\" and asserted that \"Appellant has not presented any traversal argument specific to [this] ground[] of rejection\" (Ans. 5, 8)." + ], + "ptab_opinion": [ + "Subject Matter Eligibility: ISSUE Does the preponderance of evidence of record support Examiner's finding that Appellants' claimed invention is directed to patent ineligible subject matter?", + "In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice.", + "In accordance with that framework, we first determine what concept the claim is \"directed to.\"", + "If the claim is \"directed to\" an abstract idea, we turn to the second step of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application. ~, Alice, 573 U.S. at 221 (quotation marks omitted).", + "Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP S 2106.05(a)-(c), (e)-(h).", + "Only if a claim: (1) recites a judicial exception; and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not \"well-understood, routine, conventional\" in the field (see MPEP \u25cf 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.", + "ANALYSIS Applying the Revised Guidance to the facts on this record, we find that Appellants' claims are directed to patent-eligible subject matter.", + "In this regard, we recognize Appellants' Supplemental Briefing filed in response to the Revised Guidance (see Supp. Br. 1).5", + "The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim.", + "A method of deriving an analyte's 's concentration in a sample by detecting an optical signal emitted from a receptacle's contents is an abstract idea, specifically a mental process, because it is a correlation between an optical signal and an analyte concentration.", + "Having determined that Appellants' claim 1 is directed to a mental process, a judicial exception, the Revised Guidance directs us to next consider whether the claims integrate the judicial exception into a practical application.", + "On this record, we find that Appellants' claimed method includes additional elements sufficient to integrate the judicial exception into a practical application.", + "Because Appellants' claimed method includes additional elements that implement the judicial exception in conjunction with \"a particular machine or manufacture that is integral to the claim,\" see Revised Guidance, 84 Fed. Reg. 55, we are persuaded that Appellants' claimed method integrates the judicial exception into a practical application.", + "The preponderance of evidence of record fails to support Examiner's finding that Appellants' claimed invention is directed to patent ineligible subject matter.", + "The rejection of claims 1-3 under 35 U.S.C. \u25cf 101 is reversed.", + "Obviousness-type Double Patenting: ISSUE Did Examiner properly present the obviousness-type double patenting rejection for review in this Appeal?", + "The evidence of record establishes that Examiner withdrew the obviousness-type double patenting rejections set forth in Examiner's January 12, 2017 Final Office Action (see FF 2; cf FF 1; see also FF 4).", + "The evidence of record establishes that Appellants repeatedly stated their understanding that Examiner withdrew the obviousness-type double patenting rejections on this record (see FF 3 and 5).", + "Nonetheless, although given the opportunity, Examiner did not correct Appellants' understanding or identify that an obviousness-type double patenting rejection was maintained prior to Examiner's Answer and then incorrectly asserts that **Appellant has not presented any traversal argument specific to [this] ground[] of rejection\" (see FF 4, 6, and 7; cf FF 2, 3, and 5).", + "Given the foregoing, we find that Examiner withdrew the obviousness rejections on this record after the Final Office Action.", + "We find no evidence on this record that Examiner re-opened prosecution on this record to enter a rejection of claims 1-3 under the judicially created doctrine of obviousness- type double patenting as being unpatentable over the claims of Heinz, which would have necessarily included an appropriate time period for response.", + "Therefore, we find that Examiner fails to properly present the obviousness-type double patenting rejection for review on this record." + ] +} \ No newline at end of file diff --git a/opinion_split/2018005523_DECISION.json b/opinion_split/2018005523_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..2ceb9ecfa3b0bc2e40f74efde4702b6cc4c59a67 --- /dev/null +++ b/opinion_split/2018005523_DECISION.json @@ -0,0 +1,22 @@ +{ + "appellant_arguments": [ + "Appellants argue the Examiner errs in rejecting independent claim 25, because \"there is no reasonable interpretation of *alert reporting determined fraud event' in the claim [equivalent to] the generic raw data or identity records that are received in Cook.' Br. 6.", + "Specifically, Appellants contend that, *instead of teaching receiving alerts reporting determined fraud events, Cook teaches using information that it receives to determine the fraud in the first instance,\" whereas *in the claimed invention, the input to the system/method are alerts representing previously determined fraud.\" Id. at 9." + ], + "examiner_findings": [ + "Claims 25, 26, 35, and 40-42 stand rejected under 35 U.S.C. 9 103(a) as unpatentable over Cook and Howard.", + "Claims 27-34 and 36-39 stand rejected under 35 U.S.C. so 103(a) as unpatentable over Cook, Howard, and Sipple." + ], + "ptab_opinion": [ + "ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments.", + "Our review in this appeal is limited only to the above rejections and the issues raised by Appellants.", + "We are persuaded the Examiner errs.", + "We agree with Appellants that Cook's received records are not the recited *determined fraud events detected in external systems,\" because Cook receives all records without respect to any fraud determination.", + "To the extent Cook teaches determined fraud events, Appellants are correct in contending Cook's fraud events are determined *from the system and not received from an external system\" as claimed.", + "The Examiner does not cite Howard for the disputed limitation, nor does the Examiner explain why one of ordinary skill would modify Cook, so that the system receives determined fraud events detected in external systems.", + "Rather, the Examiner merely quotes portions of Cook without explaining how one of ordinary skill would fit the disparate paragraphs together.", + "Thus, the Examiner has not shown the claim limitation is obvious in view of the cited references.", + "We are persuaded the Examiner's rejection is in error.", + "Accordingly, we are constrained by the record to reverse the rejection of independent claim 25, and the claims that depend therefrom." + ] +} \ No newline at end of file diff --git a/opinion_split/2018005999_Mail_Decision.json b/opinion_split/2018005999_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..77a6ad292ff4ab3987b551c16aed6ea03e092a14 --- /dev/null +++ b/opinion_split/2018005999_Mail_Decision.json @@ -0,0 +1,75 @@ +{ + "appellant_arguments": [ + "Appellant argues that Goldberg uses yarn having from 30-150 denier at a high density of between 75-205 yarns/inch2, whereas sheer fabrics are *defined as being formed from yarns between 3 denier and 30 denier using a very low density knit.\" Appeal Br. 3, 4.", + "Appellant contends that both Clarke and Nononsense contradict the Examiner's finding that Goldberg teaches sheer fabrics because Clarke and Nononsense identify that sheer linear density must be less than 30 denier, whereas Goldberg discloses fabrics greater than 30 denier. ld. at 4.", + "As such, Appellant contends that the Examiner erred in finding Goldberg teaches sheer fabrics. Id.", + "Appellant further argues the Examiner's finding that Goldberg teaches a sheer fabric with improved thermal resistance is unsupported. Appeal Br. 4-6.", + "Appellant contends that although the Examiner determines that the proposed combination of prior art provides an embossed drapery by embossing patterns into the drapery while controlling fabric density to eliminate glare, filter harsh sunlight, and enhance fabric strength, none of these benefits provides a method for improving the thermal resistance of a sheer fabric. ld. at 6.", + "Appellant next argues that the Examiner's finding regarding Rouanet has been taken out of context and is in error. Appeal Br. 5.", + "In particular, Appellant contends that Rouanet teaches that permanent bonds between the fibers are achieved with an adhesive, rather than via thermal fusion. Id.", + "Appellant also contends that Rouanet's addition of adhesives, binders, aerogels, or latex rubber to Goldberg's fabric would make the fabric denser and heavier, which is inconsistent with the use of a sheer fabric. ld." + ], + "examiner_findings": [ + "The Examiner relies on the following prior art:", + "The Examiner maintains, and Appellant requests our review of, the rejection of claims 1, 3, and 5-7 under 35 U.S.C. $103 as unpatentable over Goldberg in view of DeFranks, Nielson, Majumdar, and Rouanet, and as evidenced by Nononsense and Clarke.", + "The Examiner finds that Goldberg teaches a method for improving thermal resistance of a sheer fabric as recited in claim 1, except wherein the calendaring is performed with a first steel roller and a second opposing composition roller, the fabric's fibers are fused, and the fabric is translucent. Ans. 4-5.", + "The Examiner finds that Goldberg teaches that the fabric's yarn may have a denier of 30, which the Examiner finds is a denier that is well-known in the textile industry to be sheer, as evidenced by Nononsense and Clarke. Id. at 4.", + "In addition, the Examiner finds that Goldberg teaches that the fabric density may be controlled to a desired level and that the fabric is breathable and waterproof to resist allergen transmission, which makes it suitable for mattress protectors. Id. at 5.", + "Next, the Examiner finds DeFranks teaches that both mattress covers and window treatments can be provided with waterproofing and antimicrobial properties. Ans. 5.", + "The Examiner finds that Nielson teaches window treatments are known to be sheer and lightweight translucent for screening out bright light to decrease or eliminate irritating glare and the harshness and temperature intensity of direct sunlight to make the interior more comfortable, and to provide daylight privacy. ld. at 5-6.", + "The Examiner also finds Nielson teaches that such fabries are known to be embossed using heat and pressure to enhance aesthetic appeal. Id. at 6.", + "Further, the Examiner finds Majumdar teaches that fabrics are known to be embossed using an embossed calendar comprising a hardened steel top metal roller and a softer composition roller. Id.", + "Finally, the Examiner finds that Rouanet teaches the temperature of hot calendaring is a result effective variable that affects the fabric density and enables the fabric fibers to be thermally bonded, i.e., fused, when compressed. Id.", + "The Examiner concludes that it would have been obvious to modify Goldberg's process to use 30 denier yarn for a sheer and translucent fabric, wherein the hot calendaring is performed using a hardened steel embossing roller and opposing softer composition roller while controlling the temperature, so as to improve the fabric's aesthetic appeal and strength. Ans. 6-7.", + "As the Examiner finds (Ans. 16), Goldberg teaches that the yarns used to make the fabric may have a denier **ranging from 30 to 150.\" Goldberg ' 30.", + "Notwithstanding this fact, as the Examiner notes (id. at 16), neither the Specification nor the claims provide any description, much less definition, of a sheer fabric, and in particular, the density of the fabric or its weave.", + "Also, the Examiner finds that Goldberg does not teach that the density of the fabric, and specifically a fabric using 30 denier yarn, is high or that a 75 yarn/inch2 fabric has a high density. Id. at 16.", + "To the contrary, the Examiner also finds that Goldberg teaches that \"other suitable densities may be employed\" (id. at 5; Goldberg ' 31), suggesting that density may be controlled to achieve a desired fabric density.", + "As the Examiner finds (Ans. 19), Goldberg specifically teaches that the fabric, which as discussed above may be sheer, is hot calendared, which entails compressing the fabric with heat and pressure to flatten and widen the yarns, thereby reducing interstitial voids within the fabric. Goldberg 1 40.", + "Although Goldberg does not appear to recognize that the result of this compression is an improvement in thermal resistance, the Examiner reasonably concludes (Ans. 19) that there would necessarily be some improvement in thermal resistance in the fabric since Goldberg's 's process achieves the same flattening of the yarns or fibers and reduction of interstitial voids which Appellant attributes the improvement in thermal resistance.", + "With regard to Appellant's contention that the benefits the Examiner finds in the prior art are not related to thermal resistance, as the Examiner explains (Ans. 13-15), these benefits would have motivated those of ordinary skill in the art to have combined the teachings of the prior art to arrive at the claimed invention.", + "As the Examiner explains (Ans. 19-20), Rouanet teaches that a fabric may be hot calendared using a hot calendar roll, which applies sufficient temperature and pressure to produce a fabric of desired density. Rouanet I 54." + ], + "ptab_opinion": [ + "Pursuant to 35 U.S.C. 134(a), Appellant' appeals from the Examiner's decision to reject claims 1, 3, and 5-7.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We AFFIRM.", + "The invention relates to a fabric processing method for reducing thermal energy transfer through the fabric. Spec. ' 2.", + "Appellant discloses that it would be beneficial to have an insulative window covering without any appreciable increase in thickness and weight, or impact on aesthetics and processability. ld. 1 7.", + "In addition, Appellant discloses that, if properly processed, the resulting material may be transparent or translucent. Id.", + "As such, Appellant discloses a method for processing fabrics to enhance thermal performance while maintaining their light and sheer decorating value and aesthetic appearance. ld. I 9.", + "Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. A method for improving the thermal resistance of a sheer fabric, comprising: providing a sheer fabric; passing the sheer fabric between a first steel roller and a second opposing composition roller; and compressing said sheer fabric using controlled heat and pressure to partially flatten and fuse fibers forming said fabric, wherein said flattened and fused fibers reduce interstitial voids within the fabric thereby enhancing a thermal resistance of said fabric said fabric remaining sheer and translucent.", + "We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon.", + "Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"Ilt has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections.\"). \").", + "After considering the argued claims and each of Appellant's arguments, we are not persuaded of reversible error in the Examiner's obviousness rejection.", + "Therefore, we affirm the stated rejection for substantially the fact findings, reasoning, and conclusion of obviousness set forth in the Examiner's Answer, which we adopt as our own.", + "We offer the following for emphasis only.", + "Appellant argues all the claims together.", + "We select claim 1 as representative; claims 3 and 5-7 stand or fall with claim 1.", + "37 C.F.R. $41.37(c)(1)(iv) (2017).", + "This argument is not persuasive of reversible error because it mischaracterizes the teachings of Goldberg, Clarke, and Nononsense.", + "Goldberg also teaches that relatively small denier yarns aid in decreasing the vacant spaces in between the intersection of the yarns. Ans. 16; Goldberg I 30.", + "Goldberg clearly contemplates the use of yarns of 30 denier, not just yarns greater than 30 denier.", + "Moreover, we note that Appellant fails to identify any evidentiary support for the assertion that sheer fabrics are defined to have a very low density knit. Ans. 18.", + "Appellant does not rebut or otherwise address this finding.", + "Although Appellant urges that Clarke and Nononsense teach that sheer fabrics use yarns of less than 30 deniers, Clarke teaches \"Ti]n the apparel industry, a material is generally considered to be sheer if it has linear fiber density of about 30 denier or less\" (Clarke I 23), and Nononsense teaches \"Sheer 30 Denier (By-OpacitySheer-30-Denier.Him)\" (Nononsense).", + "Contrary to Appellant's contentions, neither reference excludes 30 denier yarns within their definitions of sheer fabrics.", + "Therefore, a preponderance of the evidence supports the Examiner's s determination that Goldberg's s teaching encompasses sheer fabrics as it teaches using 30 denier yarns.", + "This argument is not persuasive of reversible error because Goldberg's method, as modified in light of the teachings of the remaining applied prior art, compresses fabrics, including a sheer fabric, using controlled heat and pressure to partially flatten and fuse fibers forming the fabric, such that interstitial voids with the fabric are reduced.", + "It is well settled that the reason for combining references need not be identical to that of the applicant in order to establish obviousness.", + "See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990), cert. denied, 500 US 904 (1991).", + "\"As 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 reasons contemplated by the inventor.\" In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).", + "The Supreme Court has articulated this same sentiment when emphasizing that the patentee's motivation and purpose do not control an obviousness determination: In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.", + "What matters is the objective reach of the claim.", + "If the claim extends to what is obvious, it is invalid under 9 103.", + "KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 419 (2007).", + "This argument is not persuasive of reversible error because Rouanet teaches, as an alternative to adhesive bonding, fusion bonding of the fabric's fibers in a process similar to that of Goldberg.", + "Rouanet further teaches that \"permanent bonds are formed when the fibers touch each other as a result of heat treatment, especially when the fibers are thermoplastic.\" Id. I 56.", + "In addition, Rouanet reinforces that, when using thermoplastic fibers, the fibers are fused together. ld. I 33.", + "Thus, the fact that Rouanet teaches adhesive bonding as an alternative does not negate Rouanet's fusion bonding teaching.", + "In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "We have considered Appellant's remaining arguments and find none that warrant reversal of the obviousness rejection for the reasons clearly articulated by the Examiner in the Examiner's Answer, which we adopt herein as our own.", + "Cf. In re Antor Media Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012).", + "Accordingly, we sustain the Examiner's a 103 of the claims on appeal over the applied prior art." + ] +} \ No newline at end of file diff --git a/opinion_split/2018006036_DECISION.json b/opinion_split/2018006036_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..fcc673c6b47633cb67c1937819864ce394c53fc5 --- /dev/null +++ b/opinion_split/2018006036_DECISION.json @@ -0,0 +1,89 @@ +{ + "appellant_arguments": [ + "Appellants argue the pending claims as a group. Br. 7-14.", + "Appellants argue that the claimed invention is not directed to an abstract idea. Br. 7-14.", + "According to Appellants, the claims are directed *to improving a computer-related technology, particularly in the area of exchange of user profile information,\" which are further directed *to improving this area of computer-technology by solving a technical problem and achieving technical advantages as discussed at paragraphs [0032] and [0033] of the published application.' Br. 8.", + "Appellants also contend that \"the claims amount to significantly more than the [judicial] exception.\" Br. 10.", + "Appellants contend various elements recited in the claim provide the necessary *inventive concept. \" Br. 10-12.", + "Appellants contend the Examiner's rejection is in error because characterizing the virtual identity platform of Schroeder as the recited *another device\" is inconsistent with the reference disclosure. Br. 17.", + "Appellants argue Figure 4A of Schroeder describes \"a necessary intermediary to permit A-Party to communicate with B-Party in the manner intended by the Schroeder system; that is, to permit A-Party to choose a virtual identity to be presented to B-Party without revealing A-Party's 's primary identity.\" \" Br. 17-18.", + "Additionally, Appellants argue that the Examiner's reliance on Nathan's method of managing a virtual avatar fails to provide the missing element of Schroeder. Br. 19.4" + ], + "examiner_findings": [ + "The Examiner determines that the claims are directed to \"a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more\" and \"do not include additional elements that are sufficient to amount to significantly more than the judicial exception.\" \" Final Act. 7.", + "The Examiner adds that: [C]laim I does not include limitations that are **significantly)\\' more than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.", + "The limitations are merely instructions to implement the abstract idea on computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known in the industry. Id.", + "The Examiner further finds that the recited features are directed to receiving and transmitting data which are well-understood, routine, and conventional. Ans. 8.", + "According to the Examiner, the claims\" additional elements merely \"recite conventional activities in the relevant field of art\" and *'utilize generic computing components with respect to the abstract idea.\" Id.", + "Based on these determinations, the Examiner concludes that the claims are ineligible under 8 101. Id.", + "The Examiner determined claim 1 does not recite an inventive concept because the additional elements in the claim do not amount to \"significantly more\" than an abstract idea. See Final Act. 7.", + "In rejecting claim 1, the Examiner finds Schroeder discloses all the recited elements of the claim but not \"providing access to one of the one or more user profiles based, at least in part, on registration of the apparatus with the profile exchange service and one or more access rights determined by the selected device identifier.\" for which the Examiner relies on Paragraphs 103-108 of Nathan. See Final Act. 9-12.", + "The Examiner further finds the combination would have been obvious to one of ordinary skill in the art because a user's virtual identity may share a plurality of attributes with another device. See Final Act. 12-13.", + "In response, the Examiner finds that the broadest reasonable interpretation of the disputed claim limitation contradicts with Appellants* assertion that \"there can never be a case or scenario where maintenance of the stored data in a memory of a device may be enumerated or accessed. \" Ans. 4 (citing Schroeder I 33).", + "The Examiner further explains that the disclosed communications services provide the recited communications and transmission to another device. Ans. 6-7 (citing Schroeder I 24).", + "With respect to Nathan, the Examiner focuses on providing access rights and providing information related to social events within the context of an avatar or virtual identity. Ans. 8 (citing Nathan I 103)." + ], + "ptab_opinion": [ + "Appellants' Specification describes systems and methods for *providing an exchange of profile information by using anonymous identifiers.\" Spec. 14.", + "Representative claim I under appeal reads as follows; 1. An apparatus comprising: at least one processor; and at least one memory including computer program code for one or more programs, the at least one memory and the computer program code configured to, with the at least one processor, cause the apparatus to perform at least the following, select one of a plurality of device identifiers which are associated to a user registered with a profile exchange service, wherein the plurality of device identifiers correspond to the apparatus; cause, at least in part, a transmission of the selected device identifier to another device separate from the apparatus, wherein the plurality of device identifiers are correlated with one or more user profiles associated to the registered user, wherein the one or more user profiles are stored on a database separate from the apparatus; providing access to one of the one or more user profiles based, at least in part, on registration of the apparatus with the profile exchange service and one or more access rights determined by the selected device identifier, wherein access is provided based on registration status of the apparatus; storing the one of the one or more user profiles on the another device; and presenting the one or more user profiles to another user of the another device via an application based on the storing.", + "Claims 1-20 stand rejected under 35 U.S.C. 5 101 for being directed to patent-ineligible subject matter. See Final Act. 7-9.", + "Claims 1, 2, 4-10, and 12-18 stand rejected under 35 U.S.C. $ 103(a) as unpatentable over Schroeder (US 2007/0105531 A1; Pub. May 10, 2007) and Nathan (US 2008/0120558 A1; Pub. May 22, 2008). See Final Act. 9- 16.", + "Claim 19 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Schroeder, Nathan, and Terry (US 6,681,108 B1; Iss. Jan. 20, 2004). See Final Act. 17.", + "Claims 3, 11, and 18 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Schroeder, Nathan, Ribaudo (US 2007/0030824 A1; Pub. Feb. 8, 2007), and Konomi (Snap-On Filters for Mobile Information Appliances, Proceedings of the Fifth Asia Pacific Conference on Computer Human Interaction, 2002, pp. 357-368). See Final Act. 17-19.", + "Claim 20 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Schroeder, Nathan, and Taylor (US 8,438,631 B1; Iss. May 7, 2013). See Final Act. 19.", + "Claims 1, 2, 4-10, and 12-18 stand rejected under 35 U.S.C. $ 103(a) as unpatentable over Schroeder and Ribaudo (US 2007/0030824 AI; Pub. Feb. 8, 2007). See Final Act. 20-29.", + "Claim 19 stands rejected under 35 U.S.C. & 103(a) as unpatentable over Schroeder, Ribaudo, and Terry. See Final Act. 30.", + "Claims 3, 11, and 18 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Schroeder, Ribaudo, and Konomi. See Final Act. 30-31.", + "Claim 20 stands rejected under 35 U.S.C. 8 103(a) as unpatentable over Schroeder, Ribaudo, and Taylor. See Final Act. 31-32.", + "Claims 1. 9, and 16 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Terry, Schroeder, and Nathan. See Final Act. 32-38.", + "Claims 1, 9, and 16 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Terry, Schroeder, and Ribaudo. See Final Act. 38-43.", + "Claims 1, 9, and 16 stand rejected under 35 U.S.C. 8 103(a) as unpatentable over Coffing (US 2008/0064374 A1; Pub. Mar. 13, 2008), Schroeder, and Nathan. See Final Act. 43-48.", + "Claims 1, 9, and 16 stand rejected under 35 U.S.C. S 103(a) as unpatentable over Coffing, Schroeder, and Ribaudo. See Final Act. 49-53.", + "As permitted by 37 C.F.R. 8 41.37, we decide the appeal based on claim 1. See 37 C.F.R. , 41.37(c)(1)(iv).", + "Section 101 of the Patent Act provides that *any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof\" is patent eligible. 35 U.S.C. S 101.", + "But the Supreme Court has long recognized an implicit exception to this section: *Laws of nature, natural phenomena, and abstract ideas are not patentable.\" Alice Corp. V. CLS Bank Int 7, 573 U.S. 208, 216 (2014) (quoting Ass 'n for Molecular Pathology V. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).", + "To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework.", + "The framework requires us first to consider whether the claim is \"directed to one of those patent-ineligible concepts.\" Alice, 573 U.S. at 217.", + "If so, we then examine *the elements of each claim both individually and *as an ordered combination' to determine whether the additional elements *transform the nature of the claim' into a patent-eligible application.\" Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).", + "That is, we examine the claims for an *inventive concept,' \" *an element or combination of elements that is *sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. \". Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73).", + "In January 2019, the USPTO published revised guidance on the application of $ 101. See 2019 Revised Patent Subject: Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (*Guidance\").", + "Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF Patent EXAMINING Procedure (MPEP) 66 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)).", + "Only if a claim (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field (see MPEP 8 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56.", + "Claim I is directed to an abstract idea because the claim recites a method of organizing human activities, one of the abstract idea groupings listed in the 2019 Eligibility Guidance. See 2019 Eligibility Guidance, 84 Fed. Reg. at 52, 53 (listing *[c]ertain methods of organizing human [activities] such as a fundamental economic practice\" as one of the **enumerated groupings of abstract ideas\").", + "The claimed apparatus provides *an exchange of profile information by using anonymous identifiers.\" Spec. I 4.", + "Claim 1 recites an apparatus comprising a processor, memory, and a program code stored therein to perform the recited functions. Br. 31 (Claims App'x.).", + "The claimed system is further programmed to \"select one of a plurality of device identifiers which are associated to a user registered with a profile exchange service, wherein the plurality of device identifiers correspond to the apparatus\" such that \"the plurality of device identifiers are correlated with one or more user profiles associated to the registered user, wherein the one or more user profiles are stored on a database separate from the apparatus\" based on *providing access to one of the one or more user profiles based, at least in part, on registration of the apparatus with the profile exchange service and one or more access rights determined by the selected device identifier.\" \" Claims App'x.", + "That is, the claimed apparatus performs functions or method steps that relate to managing interaction between people having user profiles.", + "To determine whether a claim recites an abstract idea, we (1) identify the claim's specific limitations that recite an abstract idea, and (2) determine whether the identified limitations fall within certain subject matter groupings, namely (a) mathematical concepts); (b) certain methods of organizing human activity*; or (c) mental processes.\" 3", + "Here, apart from the processor, memory and the computer code configured to cause the apparatus to perform the recited functions, every limitation of claim 1 recites an abstract idea, namely organizing human activity, or managing interaction or business relationship between people by providing access to the user profiles by other users who have registered with a profile exchange service.", + "This exchange of user profile does not require a machine, let alone a particular machine, to implement--fits squarely within the human activity organization category of the agency's guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of organizing human activity including (1) commercial interactions, and (2) managing interactions between people including following rules or instructions).", + "Although claim 1 recites an abstract idea based on these methods of organizing human activity, we nevertheless must still determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such that the claim is more than a drafting effort designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54-55.", + "We therefore (1) identify whether there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements individually and collectively to determine whether they integrate the exception into a practical application. See id.", + "Here, the processor, memory and the computer code configured to cause the apparatus to perform the recited functions as well as storing the user profile on the other device and presenting the profile to another user are the only recited elements beyond the abstract idea, but these additional elements do not integrate the abstract idea into a practical application when reading claim 1 as a whole.", + "Therefore, we are not persuaded that the claimed invention improves the computer or its components' functionality or efficiency, or otherwise changes the way those devices function.", + "In another words, the claimed invention here merely uses generic computing components to select a device identifier related to one or more user profiles and to provide access to those profiles---a generic computer implementation that is not only directed to fundamental human activity organization and mental processes, but also does not improve a display mechanism as was the case in McRO, Inc. V. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016).", + "Furthermore, the remaining elements recited in claim 1 do not integrate these abstract ideas into a practical application.", + "In addition to the steps discussed above, claim 1 recites \"a profile exchange service\" and *storing the one of the one or more user profiles on the another device.\"", + "The written description discloses that the recited service and storage encompass generic components such as a general-purpose computer. See, e.g., Spec. 11 97-100 (\"Although computer system 1500 is depicted with respect to a particular device or equipment, it is contemplated that other devices or equipment (e.g., network elements, servers, etc.) within FIG. 15 can deploy the illustrated hardware and components of system 1500.\").", + "Simply programming a general-purpose computer to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Eligibility Guidance, 84 Fed. Reg. at 55 (identifying *merely includ(ing] instructions to implement an abstract idea on a computer\" as an example of when an abstract idea has not been integrated into a practical application).", + "Thus, the claims do not integrate the judicial exception into a practical application.", + "The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for a generic computer), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP 86 2106.05(a)-(c), (e)-(h).", + "Because we determine claim 1 is *directed to\" an abstract idea, we consider whether claim 1 recites an *inventive concept.\" \"", + "We agree.", + "The additional elements recited in the claim include the \"a profile exchange service\" and *storing [and presenting] the one of the one or more user profiles on the another device.\"", + "The claim recites these elements at a high level of generality, and the written description indicates that these elements are generic computer components. See, e.g., Spec. 11 97-100.", + "Using generic computer components to perform abstract ideas does not provide the necessary inventive concept. See Alice, 573 U.S. at 223 (\"[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.\"). \").", + "Thus, these elements, taken individually or together, do not amount to *significantly more\" than the abstract ideas themselves.", + "However, these elements form part of the recited abstract ideas and thus are not **additional elements\" that **transform the nature of the claim' into a patent-eligible application.\" Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also 2019 Eligibility Guidance, 84 Fed. Reg. at 55 n.24 (\"USPTO guidance uses the term `additional elements' to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.\" (Emphasis added)).", + "We are not persuaded by Appellants' arguments the claims amount to significantly more the exception. See Br. 10-11.", + "Appellants' claims can be distinguished from patent-eligible claims such as those in MeRO, Enfish, LLC V. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and Bascom Global Internet Servs., Inc. V. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)), that are directed to \"a specific means or method that improves the relevant technology\" (McRO, 837 F.3d at 1314), \"a specific improvement to the way computers operate\" (Enfish, 822 F.3d at 1336), or \"solving a technology- based problem\" (BASCOM, 827 F.3d at 1349-52).", + "For at least the above reasons, we agree with the Examiner that claim 1 is \"directed to\" an abstract idea and does not recite an \"inventive concept. \"", + "Accordingly, we sustain the Examiner' is rejection of claim 1 and the remaining claims which fail to include additional elements that add significantly more to the abstract idea, under 35 U.S.C. a 101.", + "Based on a review of Schroeder, we are persuaded by Appellants' contention that the Examiner has not explained how the virtual identity platform, which is an intermediary to permit access, meets the claimed *another device.\"", + "As further pointed out by Appellants (Br. 17-18), the platform 150, rather than accessing a user profile, only acts as an intermediary to permit A-Party to choose a virtual identity to be presented to B-Party without revealing A-Party's primary identity.", + "In other words, the Examiner has not explained how the teachings of Schroeder, in combination with Nathan, relates to any user profile to be accessed and transmitted to another device based on a determined access right, as recited in claim 1.", + "Therefore, Appellants' arguments have persuaded us of error in the Examiner's position with respect to the rejection of independent claim 1 and independent claims 9 and 16, which recite similar limitations.", + "The Examiner has not identified any teachings in the other applied prior art that would make up for the above-mentioned deficiency.", + "We, therefore, do not sustain any of the 35 U.S.C. 8 103 rejections of claims 1, 9, and 16, as well as claims 2-8, 10-15 and 17-20 dependent therefrom." + ] +} \ No newline at end of file diff --git a/opinion_split/2018006134_Mail_Decision.json b/opinion_split/2018006134_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..b7c1c1d7f3daab1b5788f5149fe685fa1d987846 --- /dev/null +++ b/opinion_split/2018006134_Mail_Decision.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "Appellant argues that claims 1, 5, 7-9 and 15-17 can be considered together, specifically addressing the rejection of claim 1. Appeal Br. 11.", + "Appellant argues that the cited prior art does not teach or suggest that *the display panel is powered on while pixels in the display do not emit light,\" as recited in claim 1. Appeal Br. 12-19.", + "Appellant disagrees, arguing that Newman's white-on-black display emits light and, thus, the cited prior art does not satisfy the not-emitting-light limitation of claim 1. Appeal Br. 15.", + "Appellant notes that Newman does not state that it has a black screen display mode or that the pixels in its display panel do not emit light while the display panel is on. Id.", + "Appellant asserts that Newman simply stands for the principle that alternating text and background colors can save display power, not that pixels in a display would not emit light. Id.", + "Instead, Appellant merely argues that Newman does not state that fact. Reply Br. 5.", + "Appellant argues that the cited prior art does not teach or suggest *in response to detecting the writing utensil contacting a surface of the electronic device while the black screen display mode is activated, activating individual pixels corresponding to locations where the writing utensil contacted the electronic device to emit light,\" as recited by claim 1. Appeal Br. 19.", + "Appellant disagrees, arguing that Liu is silent as to any individual pixel activation during a black screen display mode. Appeal Br. 20; Reply Br. 7-10.", + "Appellant further argues that Newman does not disclose anything about pixel behavior during handwritten input. Appeal Br. 21; Reply Br. 9.", + "Appellant argues that Liu teaches away from the not-emitting-light limitation of claim 1 because Liu teaches (i) reducing power by not fully powering the processor (ii) while powering the display. Appeal Br. 16.", + "Appellant argues that these teachings in Liu would discourage an ordinarily skilled artisan from practicing the claimed invention. Id.", + "Appellant presents the same arguments for claims 2, 10, 18, 21, and 22 as for claim 1. Appeal Br. 23.", + "Appellant acknowledges that claim 3 is representative of the group of claims 3, 11, and 19. Appeal Br. 23.", + "Appellant argues that the cited prior art does not teach or suggest *storing the input result without powering on the display panel beyond the black screen display mode and the activated individual pixels,\" as recited by claim 3. Appeal Br. 24.", + "Appellant argues that neither Newman nor Liu individually teach saving inputs without powering on the display panel beyond the black screen mode and the activated individual pixels. Reply Br. 12." + ], + "examiner_findings": [ + "The Examiner finds that the combination of Liu and Newman discloses this limitation. Ans. 2-3.", + "In particular, the Examiner finds that Liu discloses a low power state in which its display 111 is triggered by the proximity of a stylus. Id.", + "Although the Examiner finds that Liu does not expressly teach the use of a dark background (Final Act. 3), the Examiner finds that Newman teaches displaying active pixels (text) as white with a black background. Final Act. 3; Ans. 3.", + "Further, the Examiner finds that black pixels in an OLED display, like Newman's background pixels, do not emit light. Ans. 3.", + "In addition, the Examiner determines that an ordinarily skilled artisan would combine the teachings of Liu and Newman because Liu teaches that power reduction is desirable and Newman teaches that power consumption is reduced by using a black background. Id. at 4.", + "The Examiner finds that the combination of Liu and Newman teach the activating limitation of claim 1. Ans. 4-5.", + "As discussed above, the Examiner finds that Liu discloses a low power state that is triggered by the presence of a stylus.", + "Also as discussed above, the Examiner finds that an ordinarily skilled artisan would combine Liu's lower power state with Newman's teaching of using white text on a black background.", + "Further, the Examiner finds that Liu activates pixels to show handwritten text, and that with Newman's white-on-black writing, the white pixels would be activated when the writing occurs. Id. at 5.", + "As discussed above, the Examiner's s finding that black pixels in an OLED do not emit light is undisputed.", + "Therefore, as the Examiner finds, for the OLED pixels to change from black to white and emit light, they must be activated. Ans. 4-5.", + "The Examiner finds that the combination of Liu, Newman, and Tsirkel teach this limitation. Ans. 5-6.", + "In particular, the Examiner finds that Liu teaches storing information input into the display.", + "Newman teaches using a black screen with activated pixels, and Tsirkel teaches storing data after a time out without user intervention. Id. at 6.", + "The Examiner determines that these combined findings teach the disputed limitation. Id." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. \uc6a9 6(b).", + "We AFFIRM.", + "We select claim 1 as representative of this group of claims.2", + "We are not persuaded by Appellant's arguments.", + "Appellant does not dispute the Examiner's finding that black pixels in an OLED display do not emit light. Ans. 3; Reply Br, generally.", + "A reference, however, need not state what is already known to an ordinarily skilled artisan. See Ex. A, 3 (*An OLED instead turns the pixel off entirely to produce the color black.\").", + "Therefore, the white text on a black background in Newman's display means that the pixels in that display with white text emit light, and the pixels that are part of the black background do not.", + "The latter are the recited \"pixels in the display [that] do not emit light.\" \" Claim 1 does not require that no pixels emit light, rather it merely requires that some pixels do not emit light.", + "And Newman's 's pixels in its black background satisfy that requirement.", + "Thus, we agree with the Examiner that the combination of Liu and Newman teaches the not-emitting- light limitation of claim 1. Ans. 2-3.", + "We are not persuaded by these arguments.", + "Accordingly, the writing of the white text on the black background taught by Newman activates the pixels that turn white, and we agree with the Examiner that the combination of Liu and Newman teaches the activating limitation. Id.", + "We are not persuaded.", + "We agree with the Examiner that the mere fact that Liu teaches one technique for reducing power (i.e., not fully powering the processor) would not discourage an ordinarily skilled artisan from additionally using another technique for reducing power (i.e., a black background). Ans. 3-4.", + "Appellant has not presented any persuasive argument or evidence indicating that the two techniques are incompatible, and we are not persuaded that the powering of the display in Liu would discourage the use of a black background.", + "As indicated above, black pixels in an OLED do not emit light even when the OLED's display is powered.", + "Thus, we agree with the Examiner that Liu does not teach away from the claimed invention, and we sustain the rejection of claim 1 and of claims 5, 7-9, 13 and 15-17, not separately argued. Appeal Br. 11.", + "Thus, we sustain the rejection of claims 2, 10, 18, 21, and 22.", + "Thus, we treat claim 3 accordingly.", + "That argument, however, is not responsive to the Examiner's rejection because the Examiner relies on the combination of Newman and Liu (with Tsirkel) for that limitation. Ans. 5-6.", + "`*Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.\" In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).", + "Accordingly, we sustain the rejection of claim 3 and of claims 11 and 19, not separately argued. Appeal Br. 23." + ] +} \ No newline at end of file diff --git a/opinion_split/2018006154_DECISION.json b/opinion_split/2018006154_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..127edfa7fc1404336fe32f24c3b3f22104daf477 --- /dev/null +++ b/opinion_split/2018006154_DECISION.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "Appellant disagrees. Appeal Br. 6-10.", + "Born's teachings do not support a finding that one of ordinary skill in the art would have understood that merely including elongated trailing end duct openings would have increased the stealth, or suppressed the infrared visibility, of the engine. Reply Br. 3.", + "In particular, column 1, lines 13-18 of Born, on which the Examiner relies (Final Act. 9), teach that a *method used [for infrared suppression was] to transform the generally round inlet of the exhaust duct to a two dimensional exhaust nozzle.\"", + "As Appellant points out, such a modification would have changed the principle of operation of Udall's flaps, potentially requiring significant re-engineering to implement. Appeal Br. 9-10; Reply Br. 2." + ], + "examiner_findings": [ + "REJECTIONS\" 1. Claims 1, 3-12, and 21 are rejected under 35 U.S.C. 8 103 as unpatentable over Udall (US 2008/0245925 A1, published Oct. 9, 2008); Norris (US 2012/0272656 A1, published Nov. 1, 2012); and Born (US 5,699,662, issued Dec. 23, 1997).3 Final Act. 6-15.", + "2. Claims 13-17 are rejected under 35 U.S.C. . 103 as unpatentable over Udall and Born. Final Act. 15-18.", + "With respect to both grounds of rejection, the Examiner proposes laterally elongating the trailing end duct openings of Udall's engines, without adding other structure taught by Born. Ans. 7-8.", + "More specifically, the Examiner concludes that it would have been obvious \"to modify Udall's invention to include wherein the first trailing end duct opening and the second trailing end duct opening are each laterally elongated in order to increase stealth and suppress infrared visibility of the aircraft as suggested and taught by Born in column 1, lines 13-18.\" Final Act. 9; see also id. at 15." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "OPINION The Examiner bears the burden of proving a factual underpinning for the rejections of these claims.", + "\" It is not clear from Born whether it is the two dimensional (that is, elongated) configuration of the exhaust nozzle alone, or a transition from a round configuration to a two dimensional (that is, elongated) configuration, that might have increased stealth or provided infrared suppression.", + "Because the Examiner has not shown that it necessarily was the former rather than the latter, the Examiner's s reasoning does not persuade us that one of ordinary skill in the art had reason to laterally elongate the trailing end duct openings of Udall's engines.", + "Likewise, the Examiner's findings do not show that it would have been obvious to add ducting to Udall's engine.", + "Accordingly, we do not sustain either the Examiner's decision to reject claims 1, 3-12, and 21 under 35 U.S.C. 8 103 over Udall, Norris, and Born; or the Examiner's decision to reject claims 13-17 under 35 U.S.C. 6 103 over Udall and Born." + ] +} \ No newline at end of file diff --git a/opinion_split/2018006513_DECISION.json b/opinion_split/2018006513_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..29225c970bb971d107eb401435f963d9fed67ccd --- /dev/null +++ b/opinion_split/2018006513_DECISION.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "According to the Appeal Brief, the real party in interest is Altova GmbH (hereinafter \"Appellant\"), Br. 2.", + "Disclosed Invention Appellant's disclosed invention relates to mobile application development and deployment. Spec. I 1.", + "Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: in a server residing in a network, receiving an application description file from a design system communicatively linked to the server, the application description file capable of targeting multiple application platforms and representing a workflow of an application for user equipment communicatively linked to the server; generating from the received application description file an application envelope comprising at least a subset of the application description file; sending the application envelope to a client application residing in the user equipment, the client application interpreting contents of the application envelope; and utilizing a shared execution model for the workflow, where some steps of the program logic are executed by the client application in the user equipment, whereas other steps are executed by the server, as needed.", + "Specifically, Appellant contends that each of Chene's mobile-forms application-definition files only targets a single application platform, in contrast to claim 1. which recites \"the application description file capable of targeting multiple application platforms.\" Br. 15-16.", + "Appellant also contends Chene does not teach *generating from the received application description file an application envelope comprising at least a subset of the application description file,\" as recited in claim 1. Br. 17-18.", + "Appellant further contends \"there is no client application residing in any mobile device in Chene, \" contrary to claim 1. which recites \"sending the application envelope to a client application residing in the user equipment.\" Br. 18-19.", + "Finally, Appellant contends the combination of Buzsaki with Chene fails to teach the **shared execution model\" recited in claim 1. Br. 19-22.", + "Appellant does, however, provide the following definition in the Appeal Brief: *To those of ordinary skill in the art, an envelope is commonly known as a wrapper and a wrapper generally refers to data that precedes or frames the main data or a program that sets up another program so that it can run successfully.\" Br. 17-18." + ], + "examiner_findings": [ + "Claims 1, 3, 7-9, 11, 15, 18-22, 24, 25, and 34 stand rejected under 35 U.S.C. & 103(a) as being unpatentable over Chene (US 2006/0161646 A1; Jul. 20, 2006) and Buzsaki (US 5,987,422; Nov. 16, 1999).", + "Claims 2 and 10 stand rejected under 35 U.S.C. 5 103(a) as being unpatentable over Chene, Buzsaki, and Nori (US 2012/0324069 A1; Dec. 20, 2012).", + "Claims 4. 5, and 27 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Chene, Buzsaki, and Chiluvuri (US 8,392,877; Mar. 5, 2013).", + "Claims 12, 14, and 16 stand rejected under 35 U.S.C. S 103(a) as being unpatentable over Chene, Buzsaki, and Wilkes (US 2012/0023116 A1; Jan. 26, 2012).", + "Claim 13 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Chene, Buzsaki, and Abjanic (US 2009/0216900 A1; Aug. 27, 2009).", + "Claim 17 stands rejected under 35 U.S.C. & 103(a) as being unpatentable over Chene, Buzsaki, and Hirsch (US 8,261,231 B1; Sep. 4, 2012).", + "Claims 23 and 26 stand rejected under 35 U.S.C. 8 103(a) as being unpatentable over Chene, Buzsaki, and Heller (US 2013/0253904 A1; Sep. 26, 2013).", + "Claim 29 stands rejected under 35 U.S.C. 8 103(a) as being unpatentable over Chene, Buzsaki, and Kito (US 5,946,464; Aug. 31, 1999).", + "The Examiner finds Chene describes some steps in the workflow of the mobile-forms application may be executed by the mobile- forms application client 18, while some steps may be executed by the policy- based mobile content engine 22. See Ans. 7-8; Final Act. 4.", + "Moreover, the Examiner also concludes Buzsaki teaches the claimed *shared execution model for the workflow\" by describing a workflow in which a server receives input from a client application and then uses the input. Ans. 8-9; Final Act. 4." + ], + "ptab_opinion": [ + "Appellant presents several arguments with respect to representative independent claim 1. See Br. 15-22.", + "We are not persuaded of Examiner error.", + "Chene describes a \"content management system for mobile forms applications [that] enables organizations to define and deploy mobile applications, forms, and business process workflow to mobile users across an enterprise.\" Chene, I 17.", + "The system includes a mobile-forms application designer 34, a policy-based mobile content engine 22, and a mobile-forms application client 18. Chene, I 21.", + "In an embodiment, \"a process for creating a mobile forms application, transmitting the mobile forms application, and receiving data via the mobile forms application\" begins when a user utilizes the mobile-forms application designer 34 to define a mobile-forms application-definition file 14. Chene, 1 $57.", + "\"The mobile-forms application-definition file 14 defines the data model, form navigation, form validation, behavior, look and feel for the form application, and the various processing states that a form document will transition through.\" *, Id.", + "The mobile-forms application-definition file 14 is transferred to the policy-based mobile content engine 22, which **generates client installation packages for installing the mobile form application onto the user devices.\" Chene, 11 59-60.", + "Then, *[t]he mobile forms application created by the mobile-forms application designer 34, is deployed to the user devices \u00b7 \u00b7 \u00b7 by the policy-based mobile content engine 22.\" Chene, 161.", + "*The mobile-forms application client 18 (FIG. 1) is available on a wide variety of user devices (PC, Laptop, Tablet, PDA, Blackberry, Smartphone, Browser- based thin-client, etc.) that allows end-users to interact with application data and content.\" Chene, I 62.", + "We conclude Chene teaches *in a server residing in a network, receiving an application description file from a design system communicatively linked to the server, the application description file capable of targeting multiple application platforms, as recited in claim 1.", + "Namely, Chene's policy-based mobile content engine 22 (the claimed \"server\") receives a mobile-forms application-definition file 14 (the claimed **application description file\") from a mobile-forms application designer 34 (the claimed *design system\"). See Chene, 11 57-59; Figs. 3, 4.", + "The mobile-forms application-definition file 14 is intended for use in deploying a mobile-forms application to devices on which the *mobile-forms application client 18 includes a plurality of rendering engines targeted for each Operating System (OS) enabled mobile device or browser enabled device that can be used as a thick and thin client.\" Chene, I 24.", + "That is, Chene's mobile-forms application client 18 supports mobile-forms application deployment on the operating systems of a number of different devices, and thus Chene's mobile-forms application-definition file 14 is **capable of targeting multiple application platforms,\" as recited in claim 1.", + "We are not persuaded by Appellant's argument that Chene's mobile- forms application-definition file 14 is **only capable of targeting one application platform\" because in Chene \"there are specific mobile-forms application clients for specific user devices.\" Br. 16.", + "As mentioned above, Chene discloses the mobile-forms application client 18 has \"a plurality of rendering engines targeted for each Operating System (OS) enabled mobile device\" (Chene, ' 24), which shows that Chene's mobile-forms application- definition file 14 can target multiple application platforms.", + "We also conclude Chene teaches \"generating from the received application description file an application envelope comprising at least a subset of the application description file,\" as recited in claim 1.", + "We note Appellant has not pointed to any express definition of **application envelope\" in the Specification.", + "Even taking Appellant's s interpretation as correct, and also noting that claim 1 requires the **application envelope\" include *at least a subset of the application description file,\" we conclude Chene's description of **client installation packages for installing the mobile form application onto the user devices\" (Chene, 1 60) teaches the claimed **application envelope.\"", + "One of ordinary skill in the art would have understood that Chene's installation package includes some data necessary for the installation, in addition to the data of the mobile-forms application itself.", + "Further, one of ordinary skill in the art would have understood that *at least a subset of' Chene's mobile- forms application-definition file 14 is included in the installation package because the application-definition file 14 defines the \"look and feel for the form application,\" and such information is necessary for Chene's mobile- forms application client 18 to render the mobile-forms application. See Chene, \" 24, 57.", + "Importantly, Appellant has not specifically explained why Chene's disclosure of installation packages--relied upon by the Examiner (Ans. 4-5; Final Act. 3)--fails to teach the claimed *application envelope.\" See Br. 17-18.", + "We further conclude Chene teaches \"sending the application envelope to a client application residing in the user equipment,\" as recited in claim 1.", + "Specifically, Chene's mobile-forms application client 18 meets the limitation ofa **client application residing in the user equipment.\" See Chene, I 62.", + "Appellant provides no persuasive explanation why Chene's mobile-forms application client 18 fails to teach the claimed *client application.\" See Br. 18-19.", + "Finally, we conclude the combination of Chene and Buzsaki teaches **utilizing a shared execution model for the workflow, where some steps of the program logic are executed by the client application in the user equipment, whereas other steps are executed by the server, as needed,\" \" as recited in claim 1.", + "In particular, Chene discloses \"the mobile-forms application client 18 is also able to display, update, capture and attach a wide variety of multi-media content to the form data\" and the policy-based mobile content engine 22 *guide[s] each instance of a mobile form through the business workflow process, including but not limited to, routing the form to different users and sending out notifications as the data fields of the mobile form are updated and actions are taken.\" Chene, 11 25, 29.", + "Appellant does not persuasively explain why these operations of Chene's mobile-forms application client 18 and policy- based content engine 22 fail to teach \"where some steps of the program logic are executed by the client application in the user equipment, whereas other steps are executed by the server, as needed, M as recited in claim 1. See Br. 19-22.", + "To wit, Buzsaki discloses \"[e]xecution of a workflow is initiated when the requestor submits input to the client application program 207 identifying a workflow. The client application program 207 \u00b7 \u00b7 \u25a0 communicates the request to execute a workflow to the client login process 216. . \u00b7 [T]he client login process 216 executes workflow engine program code to implement workflow engine 221 \u00b7 \u00b7 \u00b7 \" Buzsaki, col. 5, II. 31-46 (emphasis added).", + "We agree with the Examiner that the broadest reasonable interpretation of the claimed \"shared execution model for the workflow\" does not preclude a client application input step from being among the executed steps (see Ans. 9).", + "Thus, we agree with the Examiner that Buzsaki teaches a *shared execution model for the workflow.\" \"", + "We are, therefore, not persuaded the Examiner erred in rejecting independent claim 1, and dependent claims 2-5, 7-27, 29, and 34 not specifically argued separately." + ] +} \ No newline at end of file diff --git a/opinion_split/2018007086_DECISION.json b/opinion_split/2018007086_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..f6389d76fe01fb37795b81135fabec51f8325894 --- /dev/null +++ b/opinion_split/2018007086_DECISION.json @@ -0,0 +1,89 @@ +{ + "appellant_arguments": [ + "Appellants argue, among other things, that a person of ordinary skill in the art would not have looked to Fichot for possible modifications to Chow, given the different purposes for their respectively disclosed compositions (i.e, reducing the risk of obesity, reducing lipogenesis, and promoting beta-oxidation of fatty acids in Fichot, and treating or preventing formula intolerance or other gastrointestinal diseases in Chow).", + "Appellants also argue that the Examiner relies on certain health-promoting benefits discussed in Fichot's background section, but Fichot *does not teach that its mixture improves digestion or absorption of essential nutrients.'", + "Appellants also argue that Eicher and McCluer *do not provide any reason or motivation for the skilled artisan to look to Fichot (related to obesity) for possible acetylated, and neutral oligosaccharides (i.e., 6'SL, LNnT, and GOS, respectively), in amounts that fall with the claimed wt% ranges.", + "modifications to the method of Chow (improving growth and maturation of the gut barrier).\" Appeal Br. 9.", + "Appellants assert that the Examiner failed to provide a motivation to combine Sprenger and Georgi (Appeal Br. 21), particularly in view of the different purposes of the compositions disclosed in these references (prevention/treatment of infections, and improving oral tolerance, respectively).", + "Appellants next argue that the Examiner erred in finding that the skilled artisan would have used routine optimization to optimize the amounts of oligosaccharides.", + "Specifically, Appellants argue that \"the Examiner has not identified any features or characteristics as being result-effective variables to which the amounts of claimed specific oligosaccharides each should be optimized.\"", + "As to the Examiner's assertion (in the Jan. 23, 2018 Advisory Action) that McCluer shows that angiogenesis can be increased by administering an angiogenically-effective amount of oligosaccharide, Appellants state that McCluer merely tested the angiogenic effect of a mixture of human milk oligosaccharides, rather than the effect of each individual oligosaccharide contained in the mixture.", + "Thus, according to Appellants, **upon reading McCluer, the skilled artisan would not recognize the amount of each individual oligosaccharide as a variable to be optimized.\"", + "Finally, Appellants argue that McCluer discloses that its composition is administered by injection, and *[n]othing in McCluer discloses the effects of digestion and efficacy regarding stomach acid and enzymes.\" \" Appeal Br. 22.", + "Appellants rely on the same arguments for claim 17 as made for claim 1.", + "With respect to the rejection of dependent claims 2-10 and 14-16 over the combination of Georgi, Sprenger, Eicher, and McCluer, Appellants assert that the cited prior art fails to render obvious the additional limitations recited in each dependent claim.", + "With respect to dependent claim 11, Appellants assert that McCluer discloses that the oligosaccharides described therein are administered via injection, whereas claim 11 requires that the composition is in a form selected from the group consisting of a preterm infant formula, a human milk fortifier, a starter infant formula, a follow-on formula, a baby food formula, an infant cereal formula, a growing-up milk, a medical food product for clinical nutrition, and a supplement.", + "Appellants assert that \"even if combinable, this proposed combination of Georgi, Sprenger, Eicher, and McCluer would not have arrived at the elements of dependent Claim 11 in combination with the novel and non-obvious elements of independent Claim I from which Claim 11 depends.\"", + "Appellants assert that \"evidence of unexpected results rebuts any prima facie case of obviousness.\"", + "Appellants argue that the experiment disclosed in the Specification shows that addition of certain oligosaccharides to a control diet resulted in \"better expression of angiogenic growth factors and marker of angiogenesis than the two control compositions.\"", + "Appellants assert that better expression of these growth factors and marker indicates better vascularization.", + "Appellants assert that the oligosaccharide-containing diet demonstrated better **normalized mRNA expressions of CD34 and VEGFM and thus \"a better vascularization\" than the control diet.", + "Finally, Appellants argue that *there is no requirement that the claims recite the unexpected results.\"" + ], + "examiner_findings": [ + "The Examiner rejected the claims as obvious over the combination of Chow, Fichot, Eicher, and McCluer.", + "The Examiner found that Chow teaches pediatric formulas for use in treating or preventing gastrointestinal-related conditions and diseases.", + "The formulas comprise an oligosaccharide blend, LC-PUFAs, and can include a probiotic.", + "In relevant part, the Examiner found that Chow does not teach the claimed amounts of oligosaccharides.\"", + "The Examiner found that Fichot teaches amounts of oligosaccharides that overlap with the claims.", + "According to the Examiner, a person of ordinary skill in the art at the time the invention was made would have been motivated to combine Chow's formulas with the specific oligosaccharide amounts taught by Fichot because Fichot shows *an infant nutritional composition that enhances nutrient absorption in the intestines.\" and shows that certain oligosaccharides \"reduce lipogenesis and promote fatty acid beta-oxidation.", + "The Examiner reasoned that the \"nexus\" between Chow and Fichot is that both references disclose infant formulas supplemented with oligosaccharide mixtures.", + "The Examiner pointed to Fichot's disclosure stating that certain oligosaccharides are prebiotics, or non-digestible food ingredients that stimulate intestinal bacteria growth/activity, which can result in a number of health-promoting effects.", + "Further, relying on passages from Fichot's background discussion, the Examiner found that Fichot \"shows an infant nutritional composition that enhances nutrient absorption in the intestines.\"", + "The Examiner asserted that this is also **accomplished by the composition[] shown by Chow.\"", + "The Examiner rejected the claims as obvious over the combination of Georgi, Sprenger, Eicher, and McCluer." + ], + "ptab_opinion": [ + "After considering the evidence and arguments, we agree with Appellants that the Examiner has not adequately explained why a skilled artisan would have looked to Fichot to optimize the amounts of oligosaccharides in Chow's formulas.", + "Both references teach infant formulas, and thus are analogous art.", + "However, the formulas were developed with different purposes.", + "Fichot's formulas are directed to reducing the risk of obesity by reducing lipogenesis and promoting beta-oxidation of fatty acids (see, e.g., Fichot 4:15-26), whereas Chow's formulas are directed to treating or preventing formula intolerance or other gastrointestinal issues by improving growth and maturation of the gut barrier.", + "We do not agree with the Examiner that Fichot's background discussion demonstrates an infant formula that enhances nutrient absorption.", + "Rather, at best, these portions of Fichot merely provide a background discussion of the potential health-promoting effects of increasing helpful intestinal bacteria, such as by providing prebiotics, rather than a specific teaching about the ability of Fichot's formulas to improve absorption of essential nutrients.", + "We agree with Appellants that Fichot's teachings regarding the functions of its formulations are their ability to reduce the risk of obesity later in life, reduce lipogenesis, and promote beta-oxidation of fatty acids.", + "As such, we find that the Examiner has not identified a persuasive reason why a person of ordinary skill in the art would have modified Chow's formula to incorporate the amounts of oligosaccharides taught in Fichot.", + "Because the Examiner has not identified an adequate motivation to combine the teachings of Chow and Fichot, we reverse the rejection of claims 1-3, 5-11, and 14-17 as obvious over the combination of Chow, Fichot, Eicher, and McCluer.", + "We adopt the Examiner's findings of fact and reasoning made in connection with this rejection (see id. at 12-21; Ans. 33-46), and agree that the claims would have been obvious over this combination of prior art for the reasons the Examiner articulated.", + "We begin by addressing Appellants' arguments regarding claim 1, then address the remaining claims below.", + "We are not persuaded by these arguments.", + "The Examiner provided numerous reasons why a person of ordinary skill in the art would have been motivated to combine these references.", + "Further, in arguing that Georgi is **entirely directed to a composition for improving oral tolerance in low birthweight infants\" (Reply Br. 6), Appellants mischaracterize Georgi.", + "Georgi not only teaches improving oral tolerance, but also that its formulas are useful in the treatment and/or prevention of an infection, including intestinal tract infections and respiratory tract infections--the same types of infections addressed in Sprenger.", + "We are not persuaded by Appellants' arguments.", + "First, Sprenger discloses ranges of N-acetylated, sialylated, and neutral oligosaccharides that overlap with or encompass the claimed ranges.", + "Such overlap between the prior art ranges and the claimed range is evidence of obviousness and sufficient motivation to optimize the ranges.", + "Indeed, \"[a] prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.\"", + "Although evidence that claimed ranges are \"critical\" may constitute evidence of nonobviousness, In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997), Appellants have not directed us to persuasive evidence showing that the claimed ranges achieve unexpected results, as will be further discussed below.", + "Furthermore, Appellants have not addressed the Examiner's findings that a person of ordinary skill in the art would have been motivated to optimize the amount of oligosaccharides based on Georgi's s teachings about the effects of certain individual oligosaccharides.", + "Moreover, contrary to Appellants\" assertions, McCluer does not merely disclose the angiogenic effect of a mixture of oligosaccharides; it also discloses the angiogenic effects of individual oligosaccharides.", + "Accordingly, we find that the prior art did recognize that varying the amounts of individual oligosaccharides (and not just the overall mixture of oligosaccharides) could impact bodily functions.", + "\"A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.\"", + "Appellants have not persuaded us that the Examiner erred with respect to finding that a skilled artisan would have used routine optimization to arrive at the claimed amounts of oligosaccharides.", + "We are not persuaded by this argument, because McCluer specifically teaches that injection is not the exclusive mode of administration.", + "Further, although Appellants do not elaborate on the significance of \"the effects of digestion and efficacy regarding stomach acid and enzymes, we note that the prior art teaches that oligosaccharides are effective when administered enterally, which suggests no impediment to the enteral administration of oligosaccharides.", + "We conclude that Appellants have not established reversible error with respect to the Examiner's prima facie case of obviousness for claim 1.", + "We have addressed those arguments above, and that analysis also applies here.", + "We observe that Appellants\" arguments with respect to these dependent claims do not address the Examiner's detailed findings on where these particular limitations are recited in the prior art (see Final Act. 12-18; Ans. 39-45), but instead merely recite the claim language and assert that the cited prior art references do not render obvious the claimed subject matter.", + "Such arguments are not substantive arguments for patentability and are insufficient to establish error in the rejection.", + "37 C.F.R. 8 41.37(c)(1)(iv) (\"A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. \"); see also, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (\"[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. .", + "We are not persuaded by this argument, because as discussed above, McCluer is not limited to administration by injection.", + "Further, other references in the combination teach infant formulas, foods, and the like (see, e.g., Georgi 1 59, Sprenger 11:30-12:2; Eicher 4:22-26), and *one cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references.\"", + "We are not persuaded that Appellants have demonstrated unexpected results that overcome the prima facie case of obviousness.", + "Appellants must prove a nexus between the alleged unexpected results and the merits of the claimed invention.", + "However, on this record, the oligosaccharide content of the composition used in Appellants\" experiment is unclear.", + "While this may be the *usual* mixture, the Specification does not indicate whether the composition used in the reported experiment included this **usual* mixture.", + "But, even assuming that it did, the amount of N-acetylated oligosaccharides in this mixture is *about 30 wt%. M which is outside of the claimed \"0.25-20 wt%\" range recited in independent claims I and 17.", + "Accordingly, Appellants have not demonstrated a nexus between the alleged unexpected results and the claimed invention.", + "Even assuming that the tested composition falls within the scope of the claims, we agree with the Examiner that Appellants have not established unexpected results, given that the inventive composition was not compared to the closest prior art.\" ~", + "But the prior art cited by the Examiner taught compositions containing oligosaccharides and probiotics.", + "Accordingly, Appellants have not demonstrated unexpected results, at least because they did not compare their invention to the closest prior art.", + "Moreover, Appellants must demonstrate that the results were unexpected.", + "Even accepting Appellants* assertions as true, Appellants have not explained how these results are unexpected.", + "The prior art taught that oligosaccharides were known to promote angiogenesis.", + "Accordingly, better vascularization following administration of oligosaccharide compositions would have been expected.", + "Appellants have not persuaded us that the results reported in the Specification were unexpected.", + "See In re Gershon, 372 F.2d 535, 538 (CCPA 1967) (\"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.\").", + "Although we agree with this proposition, we do not find it to be a basis for reversal, because we do not read the Examiner's rejection as requiring that the alleged unexpected results be recited in the claims.", + "In view of the foregoing analysis, we determine that Appellants have not shown reversible error in the Examiner's rejection of claims 1-3, 5-11, and 14-17 as obvious over the combination of Georgi, Sprenger, Eicher, and McCluer." + ] +} \ No newline at end of file diff --git a/opinion_split/2018007584_DECISION.json b/opinion_split/2018007584_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..162e851d93656937011dfc5576aff14eb3c06be5 --- /dev/null +++ b/opinion_split/2018007584_DECISION.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "THE PRESENT INVENTION The present invention is directed to a media content presentation system, such as for a set-top box, television, or game system.", + "Abstract; Spec. I 1.", + "The basic system of the invention is illustrated in Figure 1 of the Appellant's Specification: % \u25cf MEDA REMOTE CONTENT NCEREKE 126 STREAM . 192 150 w) MEDIA CONTENT STREAM EPO an WETERFACE 13 INFORMATION 2 TUNER runer TUNER 1428 a \u25a0 BROWSER a \u25cf bever bever \u00b7 can 144 142 \u00b7 1441 BUFFER MANAGEMENT TUNER TUNER , not TUNER 106IC \u25a0 buffer BUFFER BUFFER 1460 see ^ ~ MEDIADENCE 106 140 10510 \u25a0 108 , NEMORY 18 14 BUFFERNIWAGER 130 148 PROCESSOR PEINARY SYSTEN EPG CONTENT 19 BUFFER \u25a0 122 PRESENTATION DEVICE TM INTERFACE 126 book on 124 will MEDIADEVICE 102 FIG. 1 Figure 1 of Appellant's Specification depicts a media device with tuners, buffers, and an audio-visual media presentation system.", + "As shown in Figure 1, the invention includes a plurality of tuners (tuners 142a, 142b \u00b7\u00b7\u00b7 142i) that receive different broadcast media content streams each including a streaming media content event.", + "Abstract; Spec. 9 37.", + "The system communicates a streaming media content event from the receiving tuner to a corresponding tuner buffer (146a, 146b \u00b7\u00b7\u00b7 146i) of the tuner system, and stores video and audio data for the event into the corresponding tuner buffer.", + "Abstract; Spec. I 44.", + "When a user requests a particular media content event of interest, the system transfers the stream of media for that event from a tuner buffer to a primary content buffer (122), which then streams the media to the media presentation system (106), such as a visual display (108) and audio devices (112).", + "Spec. \" 47-48.", + "Claim 1, reproduced with disputed language emphasized, is illustrative of the claims at issue: I. A media device, comprising: a plurality of tuner systems, wherein each tuner system comprises: a tuner configured to receive a media content stream, wherein the media content stream includes at least a selected media content event of interest that the tuner is configured to receive; and a tuner buffer configured to store the selected media content event of interest, wherein the selected media content event of interest includes at least a video portion and an audio portion; a buffer manager configured to manage operation of each of the plurality of tuner systems; and a primary content buffer communicatively coupled to the plurality of tuner systems, wherein the buffer manager controls a selected one of the plurality of tuner systems to output its stored selected media content event of interest to the primary content buffer, wherein the primary content buffer stores the selected media content event of interest received from the selected one of the plurality of tuner systems, and wherein the video portion of the received selected media content event of interest stored in the primary content buffer is communicated from the primary content buffer to a display and is presentable on the display, and wherein the audio portion of the received selected media content event of interest stored in the primary content buffer is communicated from the primary content buffer to one or more speakers and is reproducible by the one or more speakers.", + "Appeal Br. 19 (Claims Appendix).", + "Appellant subsequently canceled Claim 5.", + "See Response After Final 3.", + "Appellant responds that Blight does not disclose tuner systems each with a buffer communicatively coupled to a primary content buffer.", + "Appeal Br. 7.", + "Appellant argues that: More particularly, the recited feature of Claim I that is pertinent to the interpretation of the Blight disclosure is \"a primary content buffer communicatively coupled to the plurality of tuner systems.\"", + "This feature is not expressly or inherently disclosed in Blight.", + "In Blight, the program buffer 118 is not communicatively coupled to the enhanced history buffer 100 (or vice versa).", + "That is, the output of the Blight program buffer 118 is not disclosed as being communicatively coupled to the Blight enhanced history buffer 100.", + "Further, the output of the Blight enhanced history buffer 100 is not disclosed as being communicatively coupled to the Blight program buffer 118.", + "Therefore, the Blight program buffer 118 and the Blight enhanced history buffer 1 00 are not disclosed as being communicatively coupled together.", + "Rather, the output of the Blight the program buffer 118 is communicatively coupled to the media presentation device 110.", + "Similarly, output of the Blight enhanced history buffer 100 is also communicatively coupled to the media presentation device 110.", + "Furthermore, the input of the Blight 0 program buffer 118 is communicatively coupled to the Blight processor system 114.", + "Id. at 8." + ], + "examiner_findings": [ + "In the Final Office Action, the Examiner rejected claims I and 4-8 as being anticipated by Blight (US 201 2011/0307914 Al; published December 15, 2011).", + "Final Act. 3-6.", + "The Examiner rejected claims 2-3 as unpatentable over Blight in view of Rodriguez (US 2002/01 68178 A1; published November 14, 2002).", + "Id. at 6-9.", + "The rejection relies on Figure 1 of Blight (Final Act. 4-5), which is reproduced below: :10 PROGRAM CONTENT STREAM TUNER 120 ENHANCED *************************************************** toon HISTORY SUFFER cco: TUNER 130b MANAGER 324 PROGRAM CONTENT HISTORY BUFFER 136 184 J STREAM INDEX 14 152 INTERFACE MEDIADEVICE 182 LOGIC 2 MEMORY 1* PROCESSOR w SYSTEM DISCRETE PROGRAM 1M CONTENT FILE 104 ENHANGED HISTORY , BLIFFER . w PROGRAM PRESENTATION BUFFER 13 DEVICE INTERFACE the was it. . 122 as - as parch o OVR 120 MEDA DEVICE 102 110 FIG. 1 Figure 1 of Blight discloses a media device including tuners 130a and 130b, a program buffer 118, and an enhanced history buffer 100.", + "The Examiner finds that the \"plurality of tuner systems\" in claim 1 is met by tuners 130a and 130b of Blight, that the \"tuner buffer\" of claim 1 is met by the program buffer 118 of Blight, and that the \"program content buffer\" in claim 1 is met by the enhanced history buffer 100 of Blight.", + "Final Act. 3-5; Advisory Act.; Ans. 3.", + "The Examiner responds that \"the claim is not clear as to whether each tuner is directly connected to each buffer,\" and *[s]ince the phrase 'communicatively coupled' does not require a direct communication between tuners and buffers, Blight['s] enhanced history buffer 100 is disclosed as being communicatively coupled to the Blight program buffer 118.\"", + "Ans. 3." + ], + "ptab_opinion": [ + "We agree with Appellant that the Examiner erred in determining that Blight anticipates claim 1.", + "Claim 1 recites that each of the plurality of tuner systems includes storage in the form of \"a tuner buffer configured to store the selected media content event of interest. \"", + "Claim 1 also includes the limitation *wherein the buffer manager controls a selected one of the plurality of tuner systems to output its stored selected media content event of interest to the primary content buffer.\"", + "Claim I (emphasis added).", + "This limitation requires that the selected media content be output from data storage in the plurality of tuner systems (in the form of a tuner buffer or otherwise) to the primary content buffer.", + "Blight, however, does not disclose outputting media content from storage within a tuner system to a primary content buffer.", + "To the contrary, as shown in Figure 1 of Blight, the program buffer 118 (which the Examiner identifies as the claimed *tuner buffer\") and the enhanced history buffer 100 (which the Examiner identifies as the claimed *primary content buffer\") each receive media content directly from the tuners 130a and 130b through the processor system 114 without any intervening buffer or storage.", + "Blight, Figure 1; 11 24, 29-31, 38.", + "And program buffer 118 and enhanced history buffer 100 both output media content directly to the presentation device interface 122, which sends content to the audio-visual media display system.", + "Id.", + "Thus, enhanced history buffer 100 does not receive media content from program buffer 118, and program buffer 118 does not receive media content from enhanced history buffer 100.", + "Consequently, Blight does not disclose having \"a selected one of the plurality of tuner systems to output its stored selected media content event of interest to the primary content buffer,\" \" as claim I requires.", + "Accordingly, Appellant has demonstrated error in the Examiner's determination that claim 1 is anticipated by Blight.", + "We, therefore, reverse the Examiner's rejection of claim 1.", + "and of claims 2-4 and 6-8, which depend from claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2018007884_Mail_Decision.json b/opinion_split/2018007884_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..7b587c7c87f80459cfd6e6194ce218f0ce0ccfb7 --- /dev/null +++ b/opinion_split/2018007884_Mail_Decision.json @@ -0,0 +1,107 @@ +{ + "appellant_arguments": [ + "Appellant argues, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) that claim 1 is directed to a system for selecting locations from an area along a route while a user is traversing the route which is a specific improvement in route analysis and location based service technology. (Appeal Br. 23.)", + "In making this argument, Appellant relies on Berkheimer V. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).", + "Appellant argues that the recitations in the dependent claims have been glossed over by the Examiner and that there has been no proof that certain aspects of the dependent claims are conventional. (Appeal Br. 27.)" + ], + "examiner_findings": [ + "Claims 1, 4, 6, 7, 10-12, 17-19, 22, and 23 are rejected under 35 U.S.C. S 101 as directed to a judicial exception without significantly more.", + "Claims 1, 4, 6, 7, 10-12, 17-19, 22, and 23 are rejected under pre- AIA 35 U.S.C. S 103(a) as being unpatentable over Smith (US 7,324,896 B1; iss. Jan. 29, 2008), in view of Sadri (US 2006/0287810 A1; publ. Dec. 21, 2006).", + "The Examiner determines that the claims are directed to assessing locations of interest based on a user's current trajectory and transmitting location based service associated with the locations of interest to the user. (Final Act. 3.)", + "The Examiner also determines that the method claim collects location information regarding the route of a user, analyzes the information and transmits a point of interest.", + "The Examiner finds that the limitations as a combination merely instruct the practitioner to implement the abstract idea with high-level, generic technology executing routine functions. (Final Act. 4.)", + "The Examiner relies on Smith at column 10, lines 33-51 for teaching computing distances of the route segments as a predefined function of a predetermined threshold distance and a distance of the respective route segment between two points.", + "The Examiner relies on Sadri paragraphs 61-64 for teaching a weighted radius. (Final Act. 6.)" + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellant' seeks our review under 35 U.S.C. S 134 of the Examiner's final rejection of claims 1, 4, 6, 7, 10-12, 17-19, 22, and 23.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "THE INVENTION Appellant claims systems and methods to select locations of interest, i.e., identifying locations on a route and the processing of related transactions, such as payments made via credit cards, debit cards, prepaid cards, etc. associated with the identified locations. (Spec. 92, Title.)", + "Claim 1 is representative of the subject matter on appeal.", + "1. A computer-implemented method, comprising: providing a computing apparatus comprising: a route information receiver configured to communicate with a user device having a Global Positioning System (GPS) device to determine a current location of the user device, a route analyzer, and a locations information transmitter; receiving, in the route information receiver, from the user device a route selected for traverse; and while the user is traversing the route, identifying, by the route analyzer, a sequence of points along the route, wherein the points along the route define a plurality of route segment with each pair of adjacent points along the route defining a route segment; computing, by the route analyzer, distances of the route segments; for each respective route segment in the plurality of route segments, computing a weighted radius as a predetermined function of: a predetermined threshold distance, and a distance of the respective route segment between two points defining the respective route segment; selecting, by the computing apparatus, a number of locations from an area by, for each respective location of the number of locations, computing a distance between the respective location and a predetermined point on the particular route segment; comparing a weighted radius of the particular route segment with the distance between the respective location and the predetermined point on the particular route segment; and selecting the respective location as being within the area in response to a determination that the weighted radius of the particular route segment is large than the distance between the respective location and the predetermined point on the particular route segment; associating, by the computing apparatus, location based services with at least a subset of the locations; and transmitting, by the locations information transmitter of the computing apparatus, information regarding the location based services and the subset of location candidates to the user in real time while the user is traversing the route.", + "We will sustain the rejection of claims 1, 4, 6, 7, 10-12, 17-19, 22, and 23 under 35 U.S.C. S 101.", + "The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.", + "First, \u00b7 determine whether the claims at issue are directed to one of those patent-ineligible concepts.", + ". I \u00b7 If so, . . \u25a0 then ask, \"[w]hat else is there in the claims before us?\"", + "\u00b7 \u00b7 \u00b7 To answer that question, \u00b7 \u00b7 \u00b7 consider the elements of each claim both individually and \"as an ordered combination\" to determine whether the additional elements \"transform the nature of the claim\" into a patent-eligible application.", + ". . \u00b7 [The Court] described step two of this analysis as a search for an **inventive concept\" an element or combination of elements that is **sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.\" Alice Corp. Pty. Ltd. 17. CLS Bank Int 7, 573 U.S. 208, 217-218 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)) (citations omitted).", + "To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept.", + "The Federal Circuit has explained that \"the *directed to' inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether *their character as a whole is directed to excluded subject matter. *** See Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. 17. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).", + "It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an \"abstract idea\" for which computers are invoked merely as a tool. See id. at 1335-36.", + "In so doing we apply a *directed to\" two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, pp. 50-57 (Jan. 7, 2019) (\"Guidance\").", + "The Specification discloses that location based services may include loyalty programs which offer coupons or discounts related to retail locations or the user's locale but do not operate to draw the user's attention or encourage the user to visit a particular location that may be close to the user's route but which the user may not intend to visit. (Spec. I 47.)", + "In the instant invention, locations of interest can be predicted by predicting the likely route of the user. (Spec. I 48.)", + "Transaction data, such as records of transactions made via credit accounts, debit accounts, prepaid accounts, bank accounts, stored value accounts and the like is processed to provide information for various services, such as reporting, benchmarking, advertising, content or offer selection, customization, personalization, prioritization, etc. (Spec. 11 49-50.)", + "The location-based service includes real-time messages related to deals, coupons, or other alerts to the user that are tailored to the user's interest. (Spec. ' 261.)", + "In one embodiment, for example, an advertising network is provided based on a transaction handler to present personalized or targeted advertisements or offers on behalf of advertisers. (Spec. I 50.)", + "Consistent with this disclosure, claim 1 recites *receiving. . \u00b7 a route, ** *defining a route segment, \"selecting. \u00b7 \u00b7 a number of locations from an area, \" \"associating. . \u00b7 location based services,' \"transmitting. \u00b7 \u00b7 information regarding the location based services \u00b7 \u00b7 . to the user in real time .", + "We thus agree with the Examiner's findings that claim 1 recites assessing locations of interest based on a user's current trajectory and transmitting location based services associated with the locations of interest to the user.", + "The location-based information includes deals, coupons that are tailored to the user's interest and as such claim 1 recites sales and advertising activity.", + "Methods of sales and advertising activity are a certain methods of organizing human activity in the form of a fundamental economic practice which is a judicial exception. Guidance, 84 Fed. Reg. at 52.", + "Also, we find the steps of receiving route information, identifying a sequence of points along the route, computing distances of the route segments, selecting a number of locations, etc., constitute **analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.\" Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 201 6); see also buySAFE, Inc. V. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas).", + "Thus, we find that the claims recite an abstract idea of methods of organizing human activity and in the alternative a mental process. Guidance, 84 Fed. Reg. at 52.", + "Turning to the second prong of the \"directed to test, claim 1 requires a \"computing apparatus,\" and \"a user device. .", + "These recitations do not impose \"a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.' Guidance, 84 Fed. Reg. at 53.", + "We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (\"[Alfter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.\"). \").", + "We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing.", + "Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a \"practical application, . as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55.", + "In this regard, the recitation does not affect an improvement in the functioning of a computing apparatus or the user device or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. ld.", + "Thus, claim 1 is directed to a judicial exception that is not integrated into a practical application and thus claim 1 is directed to an *abstract idea. \"", + "Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas, the claims must include an *inventive concept\" in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73).", + "The introduction of a computer into the claims does not alter the analysis at Alice step two.", + "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.", + "Stating an abstract idea *while adding the words *apply it\" is not enough for patent eligibility.", + "Nor is limiting the use of an abstract idea \"to a particular technological environment. **", + "Stating an abstract idea while adding the words **apply it with a computer\" simply combines those two steps, with the same deficient result.", + "Thus, if a patent's recitation of a computer amounts to a mere instruction to **implemen[t]* an abstract idea *on \u00b7 a computer,\" that addition cannot impart patent eligibility.", + "This conclusion accords with the preemption concern that undergirds our $ 101 jurisprudence.", + "Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of *additional featur[e]* that provides any \"practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.\" Alice, 573 U.S. at 223 (alterations in original) (citations omitted).", + "Instead, \"the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . \u00b7 . on a generic computer.\" Id. at 225.", + "They do not.", + "Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional.", + "Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval---one of the most basic functions of a computer.", + "All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (\"Absent a possible narrower construction of the terms 'processing,' 'receiving,' and *storing,* . \u00b7 \u00b7 those functions can be achieved by any general purpose computer without special programming\").", + "In short, each step does no more than require a generic computer to perform generic computer functions.", + "As to the data operated upon, \"even if a process of collecting and analyzing information is flimited to particular content? or a particular `source,' that limitation does not make the collection and analysis other than abstract.\" SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).", + "Considered as an ordered combination, the computer components of Appellant's claims add nothing that is not already present when the steps are considered separately.", + "The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. V. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC V. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract).", + "The ordering of the steps is, therefore, ordinary and conventional.", + "Claim 1 does not, for example, purport to improve the functioning of the computer itself.", + "As we stated above, the claims do not affect an improvement in any other technology or technical field.", + "The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (See, e.g., Spec. 11 214, 261, 489, 496.)", + "Thus, claim 1 amounts to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer.", + "Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 573 U.S. at 226.", + "We have reviewed all the arguments (Appeal Br. 22-39; Reply Br. 5- 6) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. 101.", + "We find that our analysis above substantially covers the substance of all the arguments, which have been made.", + "But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same.", + "In DDR Holdings, the Court evaluated the eligibility of claims **address[ing] the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host's website after 'clicking' on an advertisement and activating a hyperlink.\" DDR, 773 F.3d at 1257.", + "There, the Court found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no *pre-Internet analog.\" Id. at 1258.", + "The Court cautioned, however, \"that not all claims purporting to address Internet-centric challenges are eligible for patent.\" Id.", + "For example, in DDR Holdings the Court distinguished the patent-eligible claims at issue from claims found patent-ineligible in Ultramercial. See DDR, 773 at 1258-59 (citing Ultramercial, 772 F.3d at 715-16).", + "As noted there, the Ultramercial claims were *directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.\" Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-16).", + "Nevertheless, those claims were patent ineligible because they *merely recite[d] the abstract idea of *offering media content in exchange for viewing an advertisement,' along with *routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet. \". Id.", + "Appellant's asserted claims are analogous to claims found ineligible in Ultramercial and distinct from claims found eligible in DDR Holdings.", + "The ineligible claims in Ultramercial recited \"providing [a] media product for sale at an Internet website;\" \"restricting general public access to said media product;\" \"receiving from the consumer a request to view [a] sponsor message,\" and *if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query.\" Ultramercial, 772 F.3d at 712.", + "Similarly, Appellant's asserted claims recite receiving, analyzing, modifying, and transmitting data.", + "This is precisely the type of Internet activity found ineligible in Ultramercial.", + "As we found above, neither the computing apparatus nor the user device has been improved in claim 1.", + "We are not persuaded of error on the part of the Examiner by Appellant's argument that the specific way in which the weighted radius is calculated for each route segment is a specific feature that could not possibly preempt any abstract idea.", + "While \"preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.\" Ariosa Diagnostics, Inc. V. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 201 5); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701, 193 (2015) (\"[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract. \").", + "And, \"*[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.' \" Ariosa, 788 F.3d at 1379.", + "We do not agree with Appellant that the Examiner has not established that the elements in addition to the abstract idea are well-understood, routine, and conventional. (Reply Br. 6.)", + "Appellant cannot reasonably contend, nor does Appellant, that there is an adequate factual basis for a position that the operations of the computing apparatus and the user device are anything other than well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, transmitting, and processing information.", + "Indeed, the Federal Circuit, in accordance with Alice, has *repeatedly recognized the absence of a genuine dispute as to eligibility\" where claims have been defended as involving an inventive concept based *merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.\" \" Berkheimer, 890 F.3d at 1373 (Moore, J., concurring) (internal citations omitted); see also BSG Tech. LLC V. BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) (\"BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well-understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept. \").", + "In addition, as we find above, the Specification discloses that the computing apparatus and the user device are generic equipment.", + "In view of the foregoing, we will sustain the Examiner's s rejection as it is directed to claim 1.", + "We will also sustain this rejection as directed to claims 10-12, 17, and 18 because Appellant has not argued the separate eligibility of these claims.", + "However, the subject matter recited in the dependent claims such as \"selecting. \u00b7 \u00b7 a radius\" in claim 4; *determining(whether] a respective location is within a . \u00b7 \u00b7 radius\" in claims 6 and 22; *compensating. . for asymmetric coverage\" recited in claims 7 and 23 and \"wherein the selected radius is a maximum of the weighted radii of the two adjacent route segments that both contain the first point\" recited in claim 19 further define the abstract idea.", + "The determination that the recitations in a claim are well- understood, routine, and conventional takes place in the second step of the Alice analysis.", + "In other words, when making a finding that the claim does not include significantly more than the abstract idea, the Examiner determines whether elements in the claims in addition to the abstract idea are well-understood, routine, and conventional. Guidance, 84 Fed. Reg. at 55.", + "There is no requirement that the abstract idea itself not be well- understood, routine, and conventional.", + "As such, we will sustain the rejection as it is directed to these claims as well.", + "We will not sustain this rejection because we agree with Appellant that the prior art does not disclose \"computing a weighted radius as a predetermined function of a predetermined threshold distance and a distance of the respective route segment between two points\" as recited in claim 1. (Appeal Br. 14).", + "We find that Smith at column 10, lines 33-51, discloses a hierarchy of grids and how the grids correspond to each other but does not disclose computing a weighted radius as a predetermined function of a predetermined threshold distance and a distance of the respective route segment between two points.", + "We find that Sadri paragraphs 61-64 disclose a weighted factor that is used to calculate a component score but does not disclose a weighted radius and therefore does not disclose computing a weighted radius as a predetermined function of a predetermined threshold distance and a distance of the respective route segment between two points.", + "In view of the foregoing, we will not sustain this rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2018008235_DECISION.json b/opinion_split/2018008235_DECISION.json new file mode 100644 index 0000000000000000000000000000000000000000..5b3d136cbb580d52f99f5248755e7a8ff8fdfff3 --- /dev/null +++ b/opinion_split/2018008235_DECISION.json @@ -0,0 +1,42 @@ +{ + "appellant_arguments": [ + "Appellant contends that Sitz fails to disclose the claimed internal sleeve. See Br. 10-13.", + "The claimed subject matter relates to a hand-held decanter having a pressurized gas cartridge vessel that is supportedly surrounded by a housing.", + "See Spec. 1 42, Fig. 15.", + "Claim 1 is illustrative of the claimed subject matter and recites: 1.", + "A decanter comprising: a vessel containing pressurized gas; a hand-held housing surrounding the vessel, the housing including an internal sleeve and an external wall, where the internal sleeve is sized to support the vessel laterally over at least half the length of the vessel; a dispensing device in communication with the vessel where the dispensing device comprises a dispensing mechanism to selectively permit passage of an amount of the pressurized gas from the vessel, and where the dispensing device includes a ring for connecting an upper side of the vessel with a top side of the housing, where the ring engages and retains the vessel within the internal sleeve; an adapter having a first, proximal end and a second, distal end with a path for fluid communication there between, where the first, proximal end connects to the dispensing mechanism through a swivel to receive an amount of the pressurized gas; and a nozzle in fluid communication with the adapter at the second, distal end of the adapter; wherein a user disposing the nozzle into a container of wine and operating the dispensing mechanism achieves dissolved oxygen content of at least 50% immediately." + ], + "examiner_findings": [ + "STATEMENT OF THE CASE' Appellant appeals under 35 U.S.C. 6 134(a) from the Examiner's decision to reject under 35 U.S.C. S 103(a): (1) claims 1-5, 7, 8, and 21-23 as unpatentable over Harris (US 4,518,541, issued May 21, 1985), Kutyev (US 2006/0000361 A1, published Jan. 5, 2006), and Sitz (US 2005/0199652 AI, published Sept. 15, 2005); and (2) claims 6, 9, 10, and 12-16 as unpatentable over Harris, Kutyev, Sitz, and Kateman (US 5,758,571, issued June 2, 1998).", + "For independent claims 1 and 21, the Examiner finds that the combined teachings of Harris and Kutyev fail to disclose, among other things, *a hand-held housing surrounding the vessel, the housing including an internal sleeve and an external wall, where the internal sleeve is sized to support the vessel.* \" See Final Act. 4-8; see also Br. 16, 20 (Claims App.).", + "The Examiner looks to the teachings of Sitz for the above cited limitation.", + "See Final Act. 8-9, In particular, the Examiner finds that Sitz discloses \"a hand-held housing (bottle 10) surrounding the vessel (bladder 30), the housing including an internal sleeve (interior of bottle 10) and an external wall (external wall of bottle 10), where the internal sleeve is sized to support the vessel laterally over at least half the length of the vessel.\" \" Ans. 4 (emphasis added)." + ], + "ptab_opinion": [ + "Claims 11 and 17-20 have been canceled.", + "We have jurisdiction under 35 U.S.C. 6 6(b).", + "We REVERSE.", + "Claims 1, 9, and 21 are independent.", + "ANALYSIS Obviousness over Harris, Kutyev, and Sitz Claims 1-5, 7. 8. and 21-23", + "Appellant's Specification does not explicitly define the term *internal sleeve.* See Spec., passim.", + "However, Appellant's Figure 15 illustrates 2 Appeal Brief (\"Br.\"), filed Nov. 3, 2017. housing 1515 including an internal sleeve and an external wall, wherein the internal sleeve is sized to support vessel 1510 laterally over at least half the length of vessel 1510.", + "See the Board's Annotated Version of Appellant's Figure 15 below.", + "\". 1035 **30 1520 1825 1040 1000 tobenal Stoved Housing 1045 1510 MIKING 15 sh Housing 1560 Kixiwerm) Wall \" Heaming 1555 Fig. 15", + "Appellant's Specification describes Figure 15 as \"a cross sectional view of an example decanter.\" Spec. I 18; see also id. I 42.", + "An ordinary and customary meaning of the term \"sleeve,\" which is consistent with Appellant's Specification and drawings, is \"a tubular part (such as a hollow axle or a bushing) designed to fit over another part. ~3", + "As illustrated in the annotated version of Appellant's Figure 15 above, the *internal sleeve\" of housing 1515 is a tubular part designed to fit over vessel 1510.", + "In this case, although we agree with the Examiner that Figure 2 of Sitz illustrates housing 10 having an external wall (see Ans. 4; see also Sitz, Fig. 2), a skilled artisan, upon review of Sitz's Figure 2, would not consider the *interior of bottle 10\" of Sitz to reasonably constitute the *internal sleeve\" as claimed.", + "See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) C (\"Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. \"); see also Br. 10-13.", + "Stated differently, it would be unreasonable for a skilled artisan to consider the interior space of bottle 10 of Sitz to constitute \"a tubular part \u00b7 . \u00b7 designed to fit over\" vessel 30.", + "See Ans. 4; see also Br. 10-13; Sitz, Fig. 2; Spec. 11 18, 42, Fig. 15, n.3 above.", + "For these reasons, we do not sustain the Examiner's rejection of claims 1-5, 7, 8, and 21-23 as unpatentable over Harris, Kutyev, and Sitz.", + "Obviousness over Harris, Kutyev, Sitz, and Kateman Claims 6, 9. 10, and 12-16", + "Independent claim 9 is directed to a device for decanting a liquid and includes language to an *internal sleeve\" similar to that found in claims 1 and 21.", + "See Br. 16, 18, 20 (Claims App.).", + "The Examiner relies on the same unsupported finding in Sitz for claim 9 as that discussed above for claims 1 and 21.", + "See Final Act. 11-14.", + "The Examiner does not rely on the teachings of Kateman to remedy the deficiency of Sitz.", + "See id. at 15-16.", + "Accordingly, for reasons similar to those discussed above for claims 1 and 21, we do not sustain the Examiner's rejection of claims 6, 9, 10, and 12-16 as unpatentable over Harris, Kutyev, Sitz, and Kateman." + ] +} \ No newline at end of file diff --git a/opinion_split/2018008336_Mail_Decision.json b/opinion_split/2018008336_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..e247fe9c38b9e81591b019003c118e63f5d7390d --- /dev/null +++ b/opinion_split/2018008336_Mail_Decision.json @@ -0,0 +1,38 @@ +{ + "appellant_arguments": [ + "STATEMENT OF THE CASE Appellant's disclosed and claimed invention \"relates generally to web application security and in particular to onboarding applications used in association with a Web portal.", + "Spec. p. 1, 11. 5-6.", + "Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method for automated on-boarding of a web application in association with a proxy that provides authentication and authorization functions on behalf of web applications that are coupled to the proxy, comprising: monitoring communications to and from the web application as a first set of users interact with the web application to discover data indicative of one or more application characteristics; analyzing the data against one or more rules to identify the one or more application characteristics; based on the one or more identified application characteristics determined by monitoring communications to and from the web application as the first set of users interact with the web application, generating a set of configuration data to be used to configure the web application to the proxy so that the proxy can thereafter provide the authentication and authorization functions on behalf of the web application; and applying the configuration data to the proxy to thereby on-board the web application so that the proxy thereafter provides authentication and authorization functions on behalf of the web application; wherein at least the monitoring and analyzing operations are carried out in software executing in one or more hardware processing elements.", + "Appellant argues that the cited combination fails to teach or suggest the recited generating and applying limitations of claim 1.", + "Appellant argues, for example, that Loveland's collected authentication information, i.e. the authentication bundle, is not configuration data applied to the proxy so that the proxy thereafter provides authentication and authorization functions on behalf of the web application.", + "Appeal Br. 9-10.", + "According to Appellant, Loveland's authentication bundle is for a particular user session, which is distinct from the claimed configuration data applied to the proxy so that the proxy thereafter provides authentication and authorization functions on behalf of the web application.", + "Id.", + "Appellant additionally argues that the Examiner's s interpretation excises web application out of the claim.", + "Reply Br. 2." + ], + "examiner_findings": [ + "THE REJECTIONS The Examiner rejected claims 1-3, 6, 8-10, 13, 15-17, and 20 under 35 U.S.C. 9 103 as unpatentable over Loveland (US 7,076,797 B2, issued Jul. 11, 2006;) and Loevenguth (US 2011/0251906 A1, published Oct. 13, 2011).", + "Final Act. 3-7.", + "The Examiner rejected claims 4, 5, 11, and 12 under 35 U.S.C. S 103 as unpatentable over Loveland, Loevenguth, and Zhang (US 9,244,976 B1, issued Jan. 26, 2016).", + "Final Act. 7.", + "The Examiner rejected claims 7 and 14 under 35 U.S.C. a 103 as unpatentable over Loveland, Loevenguth, and Roy-Chowdhury (US 2006/0230062 A1, published Oct. 12, 2006).", + "Final Act. 8." + ], + "ptab_opinion": [ + "ANALYSIS The $ 103 REJECTION Based ON LOVELAND AND LOEVENGUTH Claims 1-3, 6, 8-10, 13, 15-17, and 20 Based on the record before us, we are persuaded that the Examiner erred in finding that claims 1-3, 6, 8-10, 13, 15-17, and 20 are unpatentable over Loveland and Loevenguth.", + "We agree with Appellant.", + "Loveland collects information, such as the type of device used for the authentication attempt, such as telephone, computer, mobile phone, etc.", + "The collected information is synthesized into an authentication bundle that may be used by a security module to authenticate the user for a particular user session.", + "See Loveland, col. 2, 11. 30-52 and col. 12, 1. 65- col. 13, 1. 3.", + "On the other hand, the claimed invention recites identifying web application characteristics, generating a set of configuration data to configure the web application to the proxy, and applying the configuration data to the proxy to thereby on-board the web application so that the proxy thereafter provides authentication and authorization functions on behalf of the web application.", + "While Loveland's user access rights may arguably be integrated into the security module to provide access to network resources for that user session, it is unclear, based on the record before us, how the Examiner interprets Loveland's user access rights to be equivalent to the recited web application.", + "See, e.g., Ans. 3 (discussing the interpretation of on-boarding, but failing to consider the web application limitations).", + "In order for us to sustain the Examiner's rejection, we would need to resort to impermissible speculation or unfounded assumptions or rationales to supply deficiencies in the factual bases of the rejection before us.", + "In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).", + "Accordingly, we reverse the rejection of claims 1-3, 6, 8-10, 13, 15- 17, and 20 as unpatentable over Loveland and Lovenguth.", + "The REMAINING 9 103 Rejections Claims 4, 5, 7, 11, 12, and 14 As discussed above, based on the record before us, we are persuaded that the Examiner fails to sufficiently show that Loveland and Lovenguth combined teach or suggest the limitations of independent claims 1, 8, and 15.", + "The additionally cited prior art references fail to cure the deficiencies of Loveland and Lovenguth.", + "As such, we similarly reverse the rejections of dependent claims 4, 5, 7, 11, 12, and 14 as unpatentable." + ] +} \ No newline at end of file diff --git a/opinion_split/2018008500_Mail_Decision.json b/opinion_split/2018008500_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..e3c47df634f800d3b055108ece64bc512b7040ea --- /dev/null +++ b/opinion_split/2018008500_Mail_Decision.json @@ -0,0 +1,88 @@ +{ + "appellant_arguments": [ + "CLAIMED SUBJECT MATTER Appellant claims an aqueous sizing composition for glass fibers for reinforcing organic composite materials.", + "Appellant argues that one of ordinary skill in the art would not have combined the \"disparate teachings\" of Augier and Schell because Augier is \"directed only to highly alkaline inorganic composites,\" while Shell is directed to \"organic composites.\"", + "Appellant argues that \"Augier's s use of at least one phosphonic acid or phosphonic acid derivative occurs only in an embodiment where the glass fibers are reinforcing an inorganic material, namely, cement, which is alkaline.\"", + "Appellant argues that \"the compositions of Augier that comprise a phosphonic acid or a phosphonic acid derivative are taught as being useful for alkaline inorganic composites, but not for organic composites, which generally do not suffer from excess alkalinity. \" Id. at 8 (citing Augier col. 13, 11. 25-54 (Example 12).", + "Appellant argues that \"Schell describes polyolefin polymer composites, and \"it would have been clear to one of ordinary skill from the teachings of Augier that the phosphonic acid or a phosphonic acid derivative is present to neutralize the alkaline conditions in inorganic materials such as cement, and would not serve the same purpose in the organic composites of Schell.\"", + "Appellant argues that one of ordinary skill in the art, therefore, would not have had a reasonable expectation of success for the proposed combination of Augier and Schell, which \"are directed to non- analogous uses.\"", + "Appellant argues that \"one [of] ordinary skill in the art would not have combined Augier and Schell\" because the Examiner'. s \"proposed combination of Augier and Schell presents incompatibilities of chemicals of Augier with chemicals of Schell.\"", + "Appellant argues that \"Augier\" s compositions comprise a large amount of adhesive having an epoxy or a polyester functionality, and one of ordinary skill in the art would have expected that the primary amines disclosed in Schell could react with such epoxy and polyester groups to form amino-alcohols and amides, instead of forming an acid-amine component as recited in claim 1.", + "Appellant argues that one of ordinary skill in the art also would have understood that phosphonic acid is present in Augier' s sizing composition to neutralize alkaline conditions in cement, and if the basic primary amines disclosed in Schell were added to Augier's s inorganic cement composite compositions, the primary amines would decrease the neutralizing ability of Augier's composition, rendering it unsuitable for the intended purpose of neutralizing alkaline inorganic composite materials.", + "Appellant argues that Augier does not disclose a molar ratio of phosphorus-containing acid to amine of between about 0.1 and about 1 as recited in claim 1.", + "Appellant argues that Augier instead discloses that the maximum amount of silanes in Augier's s sizing composition should not exceed 25 % by weight, and the amount of phosphonic acid included in the composition is generally between 0 and 40 % by weight.", + "Appellant argues that these disclosures \"teach[] an infinite number of ratios of silane to phosphonic acid\" because \"if one takes the highest weight percent of phosphonic acid, 40 wt %, and divides by the lowest weight percent of amine, 0 wt. %, the ratio is infinite, since one cannot divide by zero\" and \"if one takes the lowest weight percent of phosphonic acid, 0 wt. %, and divides by the highest weight percent of amine, 25 wt. %, the ratio is zero.\"", + "Appellant argues that Schell teaches away from independent claim 1 \"by expressly using the conjugate base salts derived from phosphorus- containing acids instead of using the phosphorus-containing acids in their acidic form\" as recited in claim 1.", + "Appellant argues that the Declaration of inventor Jacob Cornelis Dijt filed December 29, 2014 includes experimental examples that *demonstrate unexpected benefits of embodiments of the claimed sizing compositions (Compositions A, B, and F-K) with respect to sizing compositions that employ the conjugate base form of the phosphorus-containing acid (Compositions D. E, and L-Q)\"", + "Appellant argues that \"Example 4 of the present application [also] demonstrates unexpected benefits of embodiments of the claimed sizing compositions (Compositions A and B) when compared with sizing compositions that employ the conjugate base form of the phosphorus- containing acid (Compositions D and E).\" Appeal Br. 12-13 (citing Spec. pg. 15, 1. 27-pg. 27, 1. 25).", + "Appellant argues that the Examiner relies on Schell's s disclosure \"that the film forming component is generally present\" in Schell' s sizing composition in an amount of from 50 to about 90 weight\" percent, while ignoring Augier' s explicit teaching of including a film former in Augier's s sizing composition in an amount of preferably less than 30 % by weight, which Appellant argues teaches away from using more than 30 % by weight film former in a sizing composition.", + "Appellant argues that \"[a] person of ordinary skill, upon reading the explicit teaching of Augier that the total amount of silanes [included in Augier's sizing composition] should not exceed 25 % by weight would not arrive at the instantly claimed range of from about 25 to about 40 weight on a total solids basis.\"", + "Appellant argues claims 9 and 36 together.", + "Appellant argues that claims 9 and 36 are patentable over Augier, Schell, and Hansen for the same reasons that claim 1 is patentable over Augier and Schell (discussed above) because Hansen does not cure the deficiencies of Augier and Schell, and because the \"unexpected results described above \u00b7 \u00b7 \u00b7 further support that non-obviousness of claims 9 and 36 over the combination of Augier, Schell, and Hansen.\"", + "Appellant also argues that \"a person of ordinary skill would find no teaching, suggestion, or motivation or other rational underpinning from Augier and/or Shell to add the phosphinic acid of Hansen to the composition of the purported Augier/Shell combination. \"", + "Appellant argues that Hansen teaches an aqueous binder composition comprising the water-soluble reaction product of an alkanolamine with a carboxylic anhydride.", + "Appellant argues that the alkanolamines are not primary amines, but instead are secondary or tertiary amines, which are not available to associate with phosphinic acid because \"they have already been reacted with a carboxylic anhydride.\"", + "To address this rejection, Appellant relies on the arguments Appellant presents for claim 1 (discussed above), and argues that the additional reference applied in this rejection (Puckett) fails to cure the deficiencies of Augier and Schell." + ], + "examiner_findings": [ + "REJECTIONS The Examiner maintains the following rejections in the Examiner's Answer entered June 14, 2018:3", + "I. Claims 1, 4-8, 11-17, 19-22, 24-35, 37, 39-44, 46, and 47 under 35 U.S.C. \u25cf 103(a) as unpatentable over Augier\" in view of Schell*;", + "II. Claims 9 and 36 under 35 U.S.C. \u25cf 103(a) as unpatentable over Augier in view of Schell and Hansen*; and", + "III. Claim 45 under 35 U.S.C. 5 103(a) as unpatentable over Augier in view of Schell and Puckett\".", + "Rejection I: claims 1. 4-8, 11-17, 19-22, 24-35, 37, 39-44, 46. and 47 under 35 U.S.C. 8 103(a) as unpatentable over Augier in view of Schell", + "The Examiner finds that although Augier discloses that the sizing composition can include \"other silanes generally acting as coupling agents,\" Augier does not disclose that such additional silanes include a primary amine, and the Examiner relies on Schell's disclosure of coupling agents having primary amines.", + "Based on these disclosures in Augier and Schell, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of Appellant's invention to substitute a functional organo silane coupling agent as disclosed in Schell for the silane coupling agent disclosed in Augier, because both silanes are taught to be useful as coupling agents in sizing compositions for coating glass strands used to reinforce organic composite materials.", + "As the Examiner explains (Ans. 21), however, \"where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.", + "Thus, **[n]ormally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification.\"", + "As also discussed above, the Examiner proposes substituting a functional organo silane coupling agent including a primary amine as disclosed in Schell for the silane coupling agent disclosed in Augier.", + "Rejection II: claims 9 and 36 under 35 U.S.C. 8 103(a) as unpatentable over Augier in view of Schell and Hansen", + "To address claim 36, the Examiner indicates that \"Augier in view of Schell is relied upon as set forth above in the ejection of claim 1.\"", + "The Examiner finds, however, that \"said combination does not suggest that the phosphorus containing acid is phosphinic acid,\" \" and the Examiner relies on Hansen for suggesting inclusion of phosphinic acid in a sizing agent composition.", + "Based on these disclosures in Hansen, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of Appellant's s invention to substitute phosphinic acid as disclosed in Hansen for the phosphonic acid disclosed in Augier, because phosphinic acid and phosphonic acid are both taught to be useful in sizing compositions for coating glass strands.", + "Rejection III: claim 45 under 35 U.S.C. 5 103(a) as unpatentable over Augier in view of Schell and Puckett" + ], + "ptab_opinion": [ + "FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant's timely contentions, 8 we affirm the Examiner\" s rejections of claims 1, 4-9, 11-14, 16, 17, 19-22, 24-37, and 39-47 under 35 U.S.C. 5 103(a), for the reasons set forth in the Final Action, the Answer, and below.", + "We review appealed rejections for reversible error based upon the arguments and evidence the appellant provides for each issue the appellant identifies.", + "We select claim 1 as representative of claims 1, 4-8, 11- 17, 19-22, 24-35, 37, 39-44, and decide the appeal as to claims 1, 4-8, 11- 17, 19-22, 24-35, 37, 39-44 based on claim 1 alone, and select independent claim 46 as representative of claims 46 and 47, and decide the appeal as to claims 46 and 47 based on claim 46.", + "As discussed above, however, Augier explicitly discloses that glass strands coated with the sizing composition of Augier's invention can **surprisingly and advantageously\" be used to reinforce organic materials.", + "And contrary to Appellant's s arguments, Augier' s disclosure of including at least one phosphonic acid or phosphonic acid derivative in the sizing composition described in the reference is not limited to only an embodiment in which glass fibers coated with such a sizing composition are used to reinforce alkaline inorganic materials, such as cement.", + "Rather, as discussed above, Augier more generally discloses that the sizing composition described in the reference can include at least one phosphonic acid or phosphonic acid derivative (claims 1 and 4), and this general disclosure does not specify any limitation as to the particular type of composite materials that can be successfully reinforced with glass fibers coated with such a sizing composition.", + "Augier thus differentiates between using the sizing composition described in the reference to coat glass strands for reinforcement of alkaline inorganic material such as cement, from using the sizing composition to coat glass strands for reinforcement of other materials, by indicating that differing amounts of phosphonic acid should be included in sizing compositions used for different applications.", + "In so doing, Augier implicitly indicates that phosphonic acid can be included in sizing compositions used to coat glass strands for reinforcement of materials other than alkaline inorganic materials.", + "In other words, Augier's is explicit disclosure of including a different amount of phosphonic acid in sizing compositions used to coat glass strands for reinforcement of alkaline inorganic materials (10 and 40%) than for inclusion in sizing compositions generally (0 and 40%), reasonably would have indicated to one of ordinary skill in the art that use of Augier's s sizing composition including phosphonic acid is not limited to applications in which the composition is used to coat glass strands for reinforcement of alkaline inorganic materials.", + "Augier's disclosures as a whole, therefore, would have indicated to one of ordinary skill in the art that the sizing composition of Augier* s invention comprising a phosphonic acid could be used to coat glass strands for reinforcement of organic materials.", + "In view of Schell's is disclosure of functional organo silanes suitable for use as coupling agents in a sizing composition applied to glass fibers for reinforcing thermoplastics such as polyolefins (organic materials), one of ordinary skill in the art reasonably would have been 1ed to use a functional organo silane coupling agent as disclosed in Schell as the silane coupling agent in Augier's s sizing composition, with a reasonable expectation of successfully using Augier' s modified sizing composition to coat glass strands for reinforcement of organic materials.", + "As discussed above, however, Augier's s disclosures as a whole would have indicated to one of ordinary skill in the art that suitable applications for Augier's sizing composition are not limited to reinforcement of alkaline inorganic composite materials.", + "Rather, Augier explicitly discloses that Augier's sizing composition can be used to coat glass strands for reinforcement of organic materials.", + "Contrary to Appellant\". arguments, the intended purpose of Augier\" s sizing composition is, therefore, not limited to neutralizing alkaline inorganic composite materials.", + "We find no evidence on the record before us establishing that adding primary amines as disclosed in Schell to Augier' s sizing composition would render the composition unsuitable for its intended purpose of coating glass strands used to reinforce organic materials.", + "Furthermore, Appellant does not provide any evidence to support the asserted chemical incompatibilities between the primary amines disclosed in Schell and the components of Augier' s sizing composition, including any evidence to support the assertion that one of ordinary skill in the art would have expected that the primary amines disclosed in Schell could react with such epoxy and polyester groups to form amino-alcohols and amides.", + "Appellant's s unsupported assertions do not constitute evidence that is necessary to establish the asserted chemical incompatibilities.", + "One of ordinary skill in the art seeking to produce a sizing composition as disclosed in Augier modified as suggested by Schell would have determined appropriate amounts of phosphonic acid and primary amine-containing functional organo silane coupling agent to include in the composition, and would have arrived at optimal amounts, such as amounts that would result in a molar ratio of phosphonic acid to primary amine of between about 0.1 and about 1 as recited in claim 1, through nothing more than routine experimentation.", + "On the record before us, Appellant does not argue, much less demonstrate, the criticality of the molar ratio range recited in claim 1, and Appellant's is argument that Augier does not disclose the molar ratio of phosphorus-containing acid to amine recited in claim 1 is, therefore, unpersuasive of reversible error.", + "Although Schell may disclose including conjugate base salts derived from phosphorus-containing acids in the sizing compositions described in the reference, rather than phosphorus-containing acids in their acidic form as recited in claim 1, \"mere disclosure of alternative designs does not teach away.\"", + "Rather, teaching away requires \"clear discouragement\" from implementing a technical feature.", + "We find no disclosure in Schell that criticizes, discredits, or otherwise would have discouraged one of ordinary skill in the art from using a phosphorous-containing acid in a sizing composition for a fiber glass strand as recited in claim 1, and Appellant does not identify any such disclosure in Schell.", + "Accordingly, contrary to Appellant's s arguments, Schell does not teach away from the sizing composition recited in claim 1.", + "It is well-established, however, that \"when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.\"", + "The relied-upon examples described in the Dijt Declaration comparing **claimed sizing compositions\" to compositions that included a conjugate base form of a phosphorus-containing acid, therefore, do not provide a comparison between the sizing composition recited in claim 1 and the sizing composition of the closest prior art, Augier.", + "Accordingly, the relied-upon comparison set forth in the Dijt Declaration does not support Appellant's s assertion of unexpected results.", + "Considering the totality of the evidence relied-upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner's conclusion of obviousness.", + "We, accordingly, sustain the Examiner's rejection of claims 1, 4-8, 11-17, 19-22, 24-35, 37, and 39-44 under 35 U.S.C. 5 103(a).", + "A range may be disclosed by multiple prior art references, however, where the various values disclosed in the prior art references are generally directed to the same subject matter.", + "Augier and Shell thus disclose a weight range of film forming material suitable for use in sizing compositions for glass strands used to reinforce organic materials that encompasses the range of about 49 to about 70 weight percent recited in claim 46, rendering the recited range prima facie obvious.", + "On the record before us, Appellant does not argue, much less demonstrate, the criticality of the film former weight range recited in claim 46.", + "Use of the term \"about\" in claim 46 to describe the lower limit of the aminosilane weight range indicates that the lower limit can be applied flexibly, allowing for an aminosilane weight percentage of somewhat below 25%.", + "Thus, the range of less than 25% by weight aminosilanes suggested by the combined disclosures of Augier and Schell overlaps the range of about 25 to about 40 weight percent aminosilane recited in claim 46, rendering the recited range prima facie obvious.", + "On the record before us, Appellant does not argue, much less demonstrate, the criticality of the aminosilane weight range recited in claim 46.", + "We, accordingly, sustain the Examiner' s rejection of claims 46 and 47 under 35 U.S.C. \u25cf 103(a).", + "We, accordingly, select independent claim 1 as representative, and decide the appeal as to claims 9 and 36 based on claim 36.", + "Because Appellant's arguments for claim 1 do not identify reversible error in the Examiner' s rejection of claim 1 for the reasons discussed above, Appellant's s arguments as to this rejection also do not identify reversible error in the Examiner': rejection of claims 9 and 36.", + "As discussed above, however, the Examiner' s proposed combination of Hansen with Augier and Shell does not involve adding the binder component of Hansen's composition, which Hansen discloses is obtainable by reacting at least one alkanolamine with at least one carboxylic anhydride, to the sizing composition of Augier as modified by Shell.", + "Rather, the Examiner proposes substituting the phosphinic acid sizing composition additive disclosed in Hansen for the phosphonic acid included in Augier's s izing _ composition as modified by Shell.", + "Thus, Appellant's s assertion that the alkanolamines in Hansen's binder component are not primary amines, and are not available to associate with phosphinic acid, does not address the basis for the Examiner's s proposed combination of Hansen with Augier and Schell, and, therefore, does not identify reversible error in the Examiner's s rationale for the proposed combination.", + "We, accordingly, sustain the Examiner' s rejection of claims 9 and 36 under 35 U.S.C. \u25cf 103(a).", + "Because Appellant\". s arguments for claim 1 do not identify reversible error in the Examiner' s rejection of claim 1 for the reasons discussed above, Appellant's arguments as to this rejection also do not identify reversible error in the Examiner's s rejection of claim 45, which we accordingly sustain." + ] +} \ No newline at end of file diff --git a/opinion_split/2018008762_Mail_Decision.json b/opinion_split/2018008762_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..5f95a42145dedbe2b2deb89c9a5ac82625be6192 --- /dev/null +++ b/opinion_split/2018008762_Mail_Decision.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellant argues that Kwong does not disclose or suggest a compound having an aromatic group with a substituent containing at least two atoms selected from silicon and germanium. (App. Br. 7.)", + "Appellant argues Kwong's disclosure is too broadly defined to arrive at the claimed compound without impermissible hindsight. (App. Br. 7.)", + "Appellant further argues the guidance provided by the Federal Circuit in Takeda Chem. Indus., Ltd. 17. Alphapharm Pty., 492 F.3d 1350, 1356-357 (Fed. Cir. 2007) is applicable to the facts at issue here because none of Kwong's preferred subgenera or species would have directed one of skill in the art to select a compound having at least two atoms selected from silicon and germanium as required by the claimed invention. (App. Br. 8-9.)", + "Appellant appears to dismiss Kwong's 's disclosure and asserts the Examiner\" s reliance on Kwong requires hindsight and selective picking and choosing of variables in the defined formula. (App. Br. 5.)" + ], + "examiner_findings": [ + "Claims 1, 2, 7, 15, 17, 18, 22, 25-30, 32, 34, 37, and 38 are rejected under 35 U.S.C. \u25cf 103(a) as unpatentable over Kwong (US Pub. No. 2003/0072964 A1; Apr. 17, 2003).", + "4 The Examiner found Kwong discloses a composition and a formulation comprising a first compound that is used as a dopant in an emissive layer of an organic light emitting device, wherein the emissive layer comprises host material doped with one or more of the disclosed compounds. (Adv. Act. 5; Kwong II 176-177.)", + "The Examiner found Kwong teaches a metal complex comprising a compound of formulas I-III that are within the scope of the claimed invention. (Adv. Act. 5-6; Kwong II 7-18.)", + "The Examiner found Kwong further teaches the R substituent is an organic group and can be further substituted by Si(RIl)3 at the R1-10 positions, wherein R\" is further substituted by Si(R 12)3, meaning it is within the scope of the formulae disclosed by Kwong that R be an organic group comprising at least two atoms of Si (II 11, 12, 13). (Adv. Act. 8.)", + "The Examiner concluded it would have been obvious to modify the base formulae disclosed by Kwong to contain multiple Si containing substituents in the R organic group because Kwong teaches this to be one of several effective substituent groups for a compound capable of functioning in the emissive layer of an organic light emitting device. (Adv. Act. 8-9.)", + "Examiner further determined the claimed invention would have been obvious because Kwong describes the same utility in organic light emitting devices as the present invention. (Adv. Act. 8; Kwong II 176-177.)" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. \u25cf 6(b).", + "We affirm.", + "After review of the respective positions provided by Appellant and the Examiner, we AFFIRM for the reasons presented by the Examiner.", + "Appellant\". s arguments lack persuasive merit.", + "However, Kwong teaches that the disclosed formulae I, II, and III contain embodiments comprising at least two silicon atoms. (Kwong II 7-15, 145- 152.)", + "As such, Kwong teaches that a compound comprising multiple silicon atoms is within the scope of the disclosed formulae.", + "Appellant has not asserted that K Kwong's compounds of formulae I, II, and III comprising two silicon atoms, as proposed by the Examiner, would result in a compound that does not fall within the scope of the claimed invention.", + "Appellant's reliance on Takeda (492 F.3d 1350) (App. Br. 7-9), is misplaced.", + "Contrary to Takeda, the person of ordinary skill in the art would have selected the compound from Kwong for the same reason as Appellant.", + "Here, Appellant does not purport to claim a new compound possessing new or unexpected properties.", + "Rather, the Examiner'. s rejection involves selection of known compounds that are used as dopants in an emissive material of an organic light emitting device.", + "This is the same utility for the claimed compound.", + "Contrary to Takeda, the compounds from Kwong and those encompassed by the present invention have the same utility.", + "Appellant has not directed us to evidence that establishes the claimed composition is different from the compounds of Kwong or possesses unexpected properties.", + "To the extent that Takeda may be relevant here, at all, we find it supports the Examiner'. s conclusion of obviousness.", + "In the instant case, Kwong describes compounds, including the selection of suitable substituents, suitable for emissive materials.", + "Accordingly, we affirm the Examiner's s prior art rejection of claims 1, 2, 7, 15, 17, 18, 22, 25-30, 32, 34, 37, and 38 under 35 U.S.C. 5 103(a) for the reasons presented by the Examiner and given above." + ] +} \ No newline at end of file diff --git a/opinion_split/2018008895_Mail_Decision.json b/opinion_split/2018008895_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..fc8456b9af58c15d0719a3a5329a6ef2f6885aec --- /dev/null +++ b/opinion_split/2018008895_Mail_Decision.json @@ -0,0 +1,69 @@ +{ + "appellant_arguments": [ + "Appellant argues that the written description rejection is in error as the disputed limitations are recited in the originally filed claims. App. Br. 5, Reply Br. 5.", + "Further, Appellant argues that the Specification discusses determining positons and orientation of the camera from images through the use of match moving techniques. App. Br. 5-11 (citing Spec. I I 12, 28, and 38), Reply Br.", + "Appellant asserts that the match move technique is a known technique to obtain camera position and orientation. App. Br. 9-10, Reply Br. 2-5.", + "To support this assertion, Appellant points out that Levin, a reference used in the obviousness rejections, teaches using match moving for the purpose of determining position and orientation information of cameras. Reply Br. 4-5.", + "Appellant argues that the Examiner's rejection of claim 1 is in error on pages 13 through 16 of the Appeal Brief.", + "Appellant argues that Tytgat does not teach a) providing first and second virtual cameras having locations and orientations coincident with their respective physical cameras; b) determining a perspective shift between the two physical cameras based upon determined positions; and c) performing a homograph shift based upon determined perspective shift. App. Br. 12-13.", + "Further, Appellant argues that Levin does not teach performing a homographic transformation to adjust the orientation of the virtual cameras based upon the determined perspective shift or performing equivalent homographic transformation on a set of images. App. Br. 14 (citing Final Act. 4, and Levin, col. 4, 1. 48 - col. 5 1. 23).", + "Appellant argues that Levin is concerned with adjusting physical cameras and does not perform a transformation on a set of images. App. Br. 16, Reply Br. 6.", + "Finally, Appellant argues that the Examiner's s rationale to combine the references is conclusory. App. Br. 17, Reply Br. 6-7.", + "Appellant has not presented arguments directed to the rejections of these claims other than they are similarly in allowable condition. App. Br. 16.", + "Appellant argues that the Examiner\" is rejection of claim 18 is in error as the combination of Tytgat, Levin, Chen, and Liu do not teach **warping [of the image] is in any way related to preserving natural characteristics of original photography.\" App. Br. 16.", + "Appellant argues on page 18 of the Appeal Brief that this application should be afforded the benefit of the filing date of the provisional application 61/667,135." + ], + "examiner_findings": [ + "REJECTIONS AT ISSUE The Examiner has rejected claims 1, 6 through 9 and 18 through 212 under 35 U.S.C. \u25cf 112 (a) as failing to comply with the written description requirement. Final Act. 7-9.", + "The Examiner has rejected claims 1, 6, 7, 9, and 19 through 20 under 35 U.S.C. & 103(a) as being unpatentable over Tytgat (US 2012/0007943 A1, published Jan. 12, 2012), and Levin (US 8,564,641 B1, issued Oct. 22, 2013). Final Act. 10-14.", + "The Examiner has rejected claim 8 under 35 U.S.C. 5 103(a) as being unpatentable over Tytgat, Levin, and Chen (US 8,194,993 B1, issued June 5, 2012). Final Act 14-15.", + "The Examiner has rejected claim 18 under 35 U.S.C. 5 103(a) as being unpatentable over Tytgat, Levin, Chen, and Liu (US 7,327,899 B2, issued Feb. 5, 2008). Final Act. 15.", + "The Examiner has rejected claim 21 under 35 U.S.C. 5 103(a) as being unpatentable over Tytgat, Levin, and Sambongi (US 2006/0222260 A1, published Oct. 5, 2006). Final Act. 15.", + "The Examiner rejected claim 1 as not complying with the written description requirement as: the specification does not indicate that the inventors had possession of the details of particular software or instructions that would implement \"receiving a first set of images from a first physical camera, and from the first set of images determining a position and orientation of the first camera\" and \"receiving a second set of images from a second physical camera, and from the second set of images determining a position and orientation of the second camera\". Final Act. 7-8.", + "Further, the Examiner states that the Specification does not demonstrate Appellant had possession of the details concerning un-warping and re-warping. Id.", + "The Examiner responds to Appellant's s arguments stating that the Specification does not proved an adequate written description of match moving and Appellant has provided insufficient evidence to show match moving is well known. Answer 3-4.", + "Thus, the Examiner considers there to be insufficient written description to demonstrate Appellant possessed the claimed invention. Answer 5-7.", + "Further, with respect to the limitation directed to un-warping and re-warping, the Examiner states that the Specification merely discloses using the steps of un-warping and re-warping but does not provide a written description. Answer 7.", + "The Examiner responds to Appellant's arguments, identifying that the arguments directed to the teachings of Tytgat are not persuasive because Levin was relied upon for teaching the first and second virtual cameras, determining the perspective shift, and performing the homographic shift. Answer 8.", + "Further, in response to Appellant's arguments directed to Levin, the Examiner states: Levin teaches adjusting stereo images by creating left and right images in a 3D virtual setting based on real left and right cameras (Col.4 lines 50-60).", + "Then the virtual cameras are transformed by homographic transformation, including camera tilt, roll, zoom, and pan (Levin: Col.12 liens 27-36), based on interocular distance between two cameras to correct discrepancies between the actual and recorded settings (Levin: Col.4 lines 61-67 to Col.5 lines 1-5).", + "Then the updated virtual camera settings can be used to modify the settings for the physical stereoscopic camera (Levin: Col.12 lines 37-44).", + "Levin adjusts virtual camera's tilt, roll, zoom and pan, i.e. homographic transformation, based on interocular distance, i.e. perspective shift, between real cameras. Answer 8.", + "The Examiner responds to Appellant's arguments stating: Appellant does not explicitly disclose what preserving natural characteristics of original photography entails.", + "Examiner interprets the limitation to be read by Liu because the main purpose of warping and stitching images is to create a panoramic image that preserves the natural characteristic of original image, alleviating distortion and perception problems associated with warped images (Liu: col.1 lines 17-22). Answer 10." + ], + "ptab_opinion": [ + "ANALYSIS We have reviewed Appellant's s arguments in the Briefs, the Examiner's s rejections, and the Examiner's s response to Appellant's arguments.", + "Appellant's s arguments have persuaded us of error in the Examiner's s rejections of claims 1. 6 through 9 and 18 through 21 under 35 U.S.C. 5 112(a), but have not persuaded us of error in the Examiner's rejections of claims 1, 6 through 9 and 18 through 21 under 35 U.S.C. \u25cf 103.", + "We agree with the Appellant that the Specification, which includes the originally filed claims, demonstrates Appellant possessed the claimed invention.", + "The written description requirement serves \"to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him; how the specification accomplishes this is not material.\" In re Wertheim, 541 F.2d 257, 262 (CCPA 1976).", + "As argued by Appellant, the originally filed claims, e.g., claim 5, recite determining the position of the cameras by using the match moving technique.", + "Further, as identified by Appellant, the originally filed Specification (9912, 15, 28, and 38) discusses using match moving for the purpose of determining position and orientation information of cameras from images.", + "Additionally, we find that Levin demonstrates that match making is a known technique for determining camera position from images to those having ordinary skill in the art. See Levin, Col. 4, 11. 21-28.", + "Thus, the discussion of using match making in Appellant's Specification would convey reasonably to the skilled artisan that Appellant possessed the claim limitations directed to determining positions and orientations of the camera from images as claim 1 recites.", + "Accordingly, we find the originally filed Specification demonstrates that Appellant possessed using the known technique in the claimed method.", + "With respect to the recitation directed to un-warping and re-warping (in appealed claims 8 and 18), these limitations were recited in Appellant's originally filed claim 8 and discussed in Appellant's Specification, see e.g., II. 18, 29, and 36. \u00b7", + "Thus, we find the originally filed Specification demonstrates that Appellant possessed using the known techniques in the claimed method.", + "Accordingly, we are persuaded of error, and do not sustain the Examiner*. s rejection of claims 1, 6 through 9 and 18 through 21 under 35 U.S.C. 5 112(a) as failing to comply with the written description requirement.", + "We concur with the Examiner and similarly find Appellant's arguments concerning Tytgat are not persuasive of error.", + "The Examiner's rejection relied upon Tytgat to teach the limitation of receiving images from a first and second camera to determine relative position and orientation of the cameras from the images and not for the limitations argued by Appellant. Final Act. 10.", + "We additionally note that Appellant's s arguments, when addressing the lack of written description rejection, identify that Levin's \"Matchmoving\" also teaches the feature of determining a camera position from a series of images. See, e.g., Reply Br. 4-5.", + "Further, Appellant's arguments directed to Levin are not persuasive of error.", + "Initially, we note that Appellant's arguments only addressed the Examiner* s finding concerning columns 4-5 of Levin and not the teachings in column 12 of Levin.", + "We concur that the cited portions of Levin teach adjusting the orientation of the first and second virtual cameras. See Levin, col. 5, 11. 8-12.", + "While we concur with Appellant that Levin teaches the physical cameras are adjusted based upon the modified settings from the adjusted virtual cameras (see id., e.g., col. 12, 11. 38-40), we also find that Levin teaches in other embodiments the images from the actual cameras are transformed based upon the modified settings from the adjusted virtual cameras (see id., e.g., col. 12, 11. 40-44 and col. 8, 11. 42-43, 52-58).", + "Further, we are not persuaded of error by Appellant's argument concerning the Examiner* rationale to combine the Tytgat and Levin.", + "In KSR, the Supreme Court stated that \"there must be some articulated reasoning with [a] rational underpinning to support the legal conclusion of obviousness.\" KSR Int'l Co. 12. Teleflex Inc., 550 U.S. 398, 418 (2007).", + "Here, the Examiner has provide a reasoned rationale based upon the teaching of the references. Final Act. 12 (citing Levin, Abstract and discussing reducing discrepancies).", + "We have reviewed this rationale and the evidence cited to support and consider the Examiner to have provide an adequate rationale.", + "That the rationale only cites to Levin is not persuasive of error because the rejection addresses the teaching of both references, and as discussed above, the Examiner relied upon Tytgat to teach determining the positions of two cameras from images, a feature with Appellant admitted is also taught by Levin.", + "As Appellant's arguments have not persuaded us of error in the Examiner's s rejection of claim 1, we sustain the rejection of claim 1, and claims 6, 7, 9. and 19 through 20, which are similarly rejected and not separately argued.", + "As Appellant has not persuaded us of error in the Examiner's s rejection of independent claim 1, we sustain the Examiner's s rejections of claims 8 and 21 for the same reasons.", + "We are not persuaded of error in the Examiner's rejection.", + "Appellant has not identified a definition or description in the Specification of what constitutes the \"natural characteristics\" of a photograph that are being preserved.", + "In the absence of any specific definition or description, we find the Examiner's s interpretation of Liu's teaching as preserving the natural characterizes of the original image is reasonable.", + "Accordingly, we sustain the Examiner's rejection of claim 18.", + "We note the prior art cited in the obviousness rejections all pre-date the filing date of the provisional application.", + "Thus, we do not reach this issue because it is not pertinent to deciding the appealed obviousness rejections." + ] +} \ No newline at end of file diff --git a/opinion_split/2018009182_Mail_Decision.json b/opinion_split/2018009182_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..6b097058d68096a98a46fda4f850a24059a83c8a --- /dev/null +++ b/opinion_split/2018009182_Mail_Decision.json @@ -0,0 +1,39 @@ +{ + "appellant_arguments": [ + "Appellant argues the cited references fail to teach a data network intercepting or suppressing uplink data traffic based on measurements of downlink congestion levels in the network. (Appeal Br. 9.)", + "Appellant also argues that Zahemszky teaches away from the combination because it discloses suppressing downlink transmission rates in response to downlink congestion, and is silent with regard to upstream transmission. (Id. at 10.)", + "Appellant further argues the Examiner uses improper hindsight in relying on the combination of Tsuruoka and Zahemszky. (Id. at 11.)" + ], + "examiner_findings": [ + "REJECTION The Examiner rejected claims 1-20 under 35 U.S.C. 103 as being unpatentable over Tsuruoka (US 2015/0156129 A1, pub. June 4, 2015) and Zahemszky et al. (US 2016/0164791 A1, pub. June 9, 2016). (Final Act. 3- 13.)", + "In rejecting the independent claims, the Examiner relies on the disclosure in Tsuruoka of a communication node which controls flow and congestion using a storage device to store packets in a queue in the uplink path, where the period of time for retaining the packets in the queue is controlled on the basis of the current bandwidth in the downlink path. (Final Act. 3-4; Ans. 4-5; Tsuruoka Fig. 5, 11 57-58, 60, 68-69, 76, 84.)", + "The Examiner also relies on the disclosure of Zahemszky of congestion management by means of a measuring node that takes action if a load threshold is exceeded. (Final Act. 4-5; Ans. 6-7; Zahemszky, Fig. 3, 11 13, 39, 73-74, 101.)", + "The Examiner found: [It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to in- corporate the indications of downlink congestion of Zahemszky into the congestion detection techniques taught by Tsuruoka in order to improve congestion management . . \u00b7 in the analogous art of congestion control for wireless communication networks. This provides an obvious motivation for combining. (Final Act. 5; see also Ans. 7-8.)", + "As the Examiner finds, Zahemszky teaches measuring congestion in both the uplink and downlink directions. (Ans. 6.)" + ], + "ptab_opinion": [ + "ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments that the Examiner has erred.", + "We disagree with Appellant's arguments, and 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. 3-13); and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (Ans. 3-9), and concur with the conclusions reached by the Examiner.", + "Appellant's conclusory attorney arguments asserting that Tsuruoka does not teach a data network intercepting or suppressing uplink data traffic based on measurements of downlink congestion levels in the network are directly contradicted by the portions of Tsuruoka relied on by the Examiner and cited above. (See also Ans. 4-5.)", + "In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (\"attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness\"); Meitzner V. Mindick, 549 F.2d 775, 782 (CCPA 1977) C *Argument of counsel cannot take the place of evidence lacking in the record. \").", + "Appellant's arguments are also unpersuasive as arguing the references separately, whereas the Examiner's is rejection is based on the combination of references.", + "Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the claimed invention to a person having ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).", + "Here, the Examiner has combined the teachings of Tsuruoka, which discloses the claimed relationship between suppression of uplink data traffic and measurement of downlink congestion, with Zahemszky, which discloses the required use of a threshold level. (Ans. 4-8.)", + "Appellant's argument that Zahemszky teaches away from the combination is unsound.", + "\"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.\" In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. V. SGS Importers Int'l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).", + "A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "This teaching of alternatives is not a **teaching away. \"", + "We agree with the Examiner that \"Zahemszky was introduced simply to teach expressly the element of a threshold level to which a downlink congestion level is compared,\" and \"\"[t]his teaching by Zahemszky [is a] proper combination with Tsuruoka.\" . (Ans. 8. (emphasis omitted).)", + "Based on the Examiner's articulation, set forth above, of why one of ordinary skill would have combined the references to reach the claimed subject matter, we are not persuaded the Examiner erred in so finding. (Final Act. 5; Ans. 7-8.)", + "In particular, we are unpersuaded the Examiner has used improper hindsight rather than considering the claimed subject matter as a whole.", + "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning.", + "However, so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Appellant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).", + "We are not persuaded that the Examiner strayed from these guidelines.", + "Moreover, Appellant does not point to any evidence of record that the resulting combination would be *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 (Fed. Cir. 2007) (citing KSR Int 'I Co. 17. Teleflex Inc., 550 U.S. 398, 418-19 (2007)).", + "The Examiner's is findings are reasonable because the skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" because the skilled artisan is \"a person of ordinary creativity, not an automaton.\" KSR, 550 U.S. at 420-21.", + "We are persuaded the claimed subject matter exemplifies the principle that \"[the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.\" KSR, 550 U.S. at 416.", + "Accordingly, we sustain the Examiner's rejections of independent claims 1, 8, and 15 over Tsuruoka and Zahemszky.", + "We also sustain the obviousness rejections of claims 2-7, 9-14, and 16-20 over Tsuruoka and Zahemszky, which rejections are not argued separately with particularity. (Appeal Br. 12.)" + ] +} \ No newline at end of file diff --git a/opinion_split/2019000089_Mail_Decision.json b/opinion_split/2019000089_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..60f9a89a34f5715c8efe632606d092361d8f6543 --- /dev/null +++ b/opinion_split/2019000089_Mail_Decision.json @@ -0,0 +1,62 @@ +{ + "appellant_arguments": [ + "Appellant contends the \"claimed invention is patent eligible under 35 U.S.C. S 101 because it is directed to an apparatus including features that solve a problem in PAT [photoacoustic tomography, an optical imaging technique], which is not merely an abstract idea.\"", + "Appellant argues \"even if the claims were to be characterized as being directed to an abstract idea, the combination of features in the claims includes a novel inventive concept that is significantly more than the abstract idea.\"", + "Appellant further argues: The claims of the subject application are directed to an apparatus that enables an improvement in PAT by including an absorption coefficient distribution acquiring unit and a background absorption coefficient acquiring unit in order to acquire information on a corrected absorption coefficient distribution inside of an object.\"", + "Appellant contends in view of \"the features of the claims and the technological problem solved with the claimed features in mind, it should be found that the claims are not merely directed to an abstract idea under the first step of the Alice test.\"", + "With respect to technological improvements, Appellant contends the claims include features that solve a problem arising from frequency-range sensitivity characteristics of the detector used to detect acoustic waves in in photoacoustic tomography (PAT).", + "Appellant argues \"the claims are directed to a specific technological application that solves a technological problem, not merely a mathematical algorithm.\"", + "According to Appellant, \"the initial acoustic pressure obtained by reconstructing measured signals is affected from [sie, *by'] the frequency-range characteristics of [the] probe [used to detect the pressure waves]\" such that \"it is not possible to obtain an accurate initial acoustic pressure that is based on the product of the absorption coefficient inside the object and the light intensity.\"", + "Appellant contends this limitation is not taught in the prior art.", + "Appellant contends Nakajima*s average effective attenuation coefficient is not equivalent to the claimed background absorption coefficient.", + "Appellant argues Nakajima's average effective attenuation coefficient is derived from both an optical absorption coefficient and equivalent scattering coefficient.", + "Appellant argues the claimed background absorption coefficient is related to light absorption, but not scattering, whereas, the effective attenuation relates both to absorption and scattering.", + "Appellant replies: \"[T]he term at issue is a background absorption coefficient.", + "The word *absorption* only implicates light absorption, not, for example, light scattering.", + "The Examiner's interpretation therefore goes against the wording of the term itself.\"", + "Appellant argues the Specification discloses the background absorption coefficient is calculated differently than is the background scattering coefficient." + ], + "examiner_findings": [ + "The Examiner finds the independent claims are drawn to an apparatus, a statutory category of invention, but are directed to capturing data, i.e., various absorption coefficient distributions, and analyzing the captured data.", + "The Examiner finds the Federal Circuit has held the capture, analysis, and display of the results of the analysis is an abstract idea.", + "The Examiner finds the remaining elements perform routine, conventional, and well-understood industry practices.", + "The Examiner finds Nakajima teaches the claimed *background absorption coefficient acquiring unit. \"", + "The Examiner finds the feature upon which applicant relies (i.e., background absorption coefficient being related ONLY to light absorption and not light scattering) is not recited in the claims.", + "The Examiner finds: \"[T]he average effective attenuation coefficient of Nakajima is also termed *attenuation coefficient' (i.e. absorption coefficient), and whether it should strictly be limited to light absorption and preclude light scattering is a feature not currently recited in the claims.\"", + "As such, the term \"background absorption coefficient,\" under the broadest reasonable interpretation, does not necessarily prohibit the coefficient from being related to light scattering." + ], + "ptab_opinion": [ + "We have reviewed the rejections of claims 1-3, 9, 11, 14, and 20-25 in light of Appellant's arguments that the Examiner erred.", + "We have considered in this Decision only those arguments Appellant actually raised in the Briefs.", + "Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived.", + "We consider Appellant's s arguments as they are presented in the Appeal Brief, pages 12 through 21 and the Reply Brief, pages 2 through 8.", + "Appellant argues these claims as a group without specific reference to any particular claim or claims.", + "Therefore, we decide the appeal of the 35 U.S.C. 101 rejection on the basis of illustrative claim 1 and refer to the rejected claims collectively herein as \"the claims.\"", + "We review the record de novo.", + "Based upon our review of the record in light of recent policy guidance with respect to patent-eligible subject matter rejection under 35 U.S.C. $ 101, we affirm the rejection of claims 1-3, 9, 11, 14, and 20-25 for the specific reasons discussed below.", + "Under the mandatory Revised Guidance, we reconsider whether Appellant's claims recite: 1. any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes), and 2. additional elements that integrate the judicial exception into a practical application (see MPEP 2106.05(a)-(c), (e)-(h).", + "Only if a claim, (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then reach the issue of whether the claim: 3. adds a specific limitation beyond the judicial exception that is not \"well-understood, routine, conventional\" in the field (see MPEP $ 2106.05(d)); or 4. simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.", + "The limitations recited in the body of the claim are analyzed in Table I against the categories of abstract ideas as set forth in the Revised Guidance.", + "Table I Claim 1 Revised Guidance [a] an absorption coefficient Insignificant extra-solution activity, distribution acquiring unit mere data-gathering. Revised configured to acquire, based on a Guidance, 84 Fed. Reg. 55, n.31. signal due to an acoustic wave which is generated from an object photoacoustically, information on an absorption coefficient distribution inside the object, the signal being obtained by detecting the acoustic wave with an acoustic wave detecting unit having a frequency-range sensitivity characteristic which is non-uniform; 13 [b] a background absorption Insignificant extra-solution activity, coefficient acquiring unit mere data-gathering. Revised configured to acquire information Guidance, 84 Fed. Reg. 55, n.31. on a background absorption coefficient of a background region of the object; and [c] a summing unit configured to Mathematical concepts, i.e., acquire information on a corrected mathematical relationships, absorption coefficient distribution mathematical formulas or equations, inside the object, which is higher mathematical calculations. Revised than the absorption coefficient Guidance, 84 Fed. Reg. 52. 14 distribution, by summing the absorption coefficient distribution and the background absorption coefficient.", + "In view of Table I, we find limitation [c] of independent claim 1 recites abstract ideas, i.e., mathematical concepts.", + "Under the Revised Guidance, Appellant's *directed to\" contention is addressed at Step 2A(ii).", + "If the claims recite a patent-ineligible concept, as we conclude above, we proceed to the \"practical application\" Step 2A(ii) wherein we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.", + "For the reasons which follow, we conclude that Appellant's claims integrate the judicial exception into a practical application.", + "In view of the foregoing, we find the claims improve a technology, i.e., photoacoustic tomography.", + "We note claim 1 is written in similar form as the independent claim at issue in Thales Visionix Inc. V. United States, 850 F.3d 1343 (Fed. Cir 2017).", + "We, therefore, do not sustain the rejection of Claims 1-3, 9, 11, 14, and 20-25 under a 101.", + "Therefore, we decide the appeal of the 35 U.S.C. 101 rejection on the basis of illustrative claim 1 and refer to the rejected claims collectively herein as \"the claims.\"", + "Because Appellant and the Examiner differ, we first construe the claims.", + "Claim construction is an important step in a patentability determination.", + "A determination of anticipation, as well as obviousness, involves two steps.", + "First is construing the claim, a question of law, followed by, in the case of anticipation or obviousness, a comparison of the construed claim to the prior art.", + "This comparison process involves fact-finding.", + "Appellant and the Examiner differ in their interpretation of the claimed *absorption coefficient.", + "The MPEP makes clear that the intrinsic record (e.g., the specification) must be consulted to identify which of the different possible definitions is most consistent with the invention's use of the terms.", + "In contrast to Appellant's construction, the Examiner's construction of the claimed \"absorption coefficient,\" relies upon the prior art, Nakajima, but does not refer to Appellant's Specification: In this case, the average effective attenuation coefficient of Nakajima is also termed *attenuation coefficient\" (i.e. absorption coefficient), and whether it should strictly be limited to light absorption and preclude light scattering is a feature not currently recited in the claims.", + "Contrary to the Examiner, the Specification distinguishes the absorption and scattering coefficients.", + "\"Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.\"", + "The Examiner applies Nakajima, but not the remaining art, to teach this disputed limitation.", + "In view of the foregoing, we decline to sustain the rejection of Claims 1-3, 9, 11, 14, and 20-25 under 35 U.S.C. $ 103." + ] +} \ No newline at end of file diff --git a/opinion_split/2019000500_Mail_Decision.json b/opinion_split/2019000500_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..95e99d13803ee3c74b3d1df8b88eff4208303ef4 --- /dev/null +++ b/opinion_split/2019000500_Mail_Decision.json @@ -0,0 +1,80 @@ +{ + "appellant_arguments": [ + "STATEMENT OF THE CASE Appellant claims a method of producing a high-brightness cocoa powder. Appeal Br. 3-4.", + "Appellant argues that \"[eJach of RD363032, Kajiwara and [Van Der Meer] explicitly teach away from cooling the cocoa nibs between the sterilization and the alkalization steps.\" Appeal Br. 12.", + "Appellant argues that although RD 363032 teaches that cocoa nibs may be alkalized at a temperature lower than the temperature of the nibs immediately after sterilization, \"nothing in RD 363032 teaches cooling the cocoa nibs before the alkalization process\" as recited in claim 18. Id (citing RD 363032 I 8).", + "Appellant argues that RD 363032 explicitly teaches away from such cooling by disclosing that after sterilization, the cocoa nibs are alkalized as soon as possible, preferably in the same reactor in which they were sterilized, to save time. Id (citing RD 363032 II 5-6).", + "Appellant argues that Kajiwara teaches against cooling cocoa beans between sterilization and alkalization steps because Kajiwara discloses \"preheating an alkali solution to 85 when adding it to cocoa beans at 85 so that there is no difference in the temperature of the cocoa bean prior to combining it with the alkali solution. ~ Appeal Br. 13-14 (citing Kajiwara \" 8, 30-31).", + "Appellant argues that Van Der Meer discloses a simultaneous sterilization and alkalization step, and, therefore, \"there is no temperature difference of cocoa bean between sterilization and alkalization processes.\" Appeal Br. 14 (citing Van Der Meer 3, 11. 13-19, 8, 11. 10-12).", + "Appellant argues that these teachings of RD 363032, Kajiwara, and Van Der Meer \"constitute a general understanding in the art . \u00b7 that there are several disadvantages of cooling the cocoa nibs between the sterilization step and the alkalization step.\" Appeal Br. 14.", + "Nonetheless, Appellant argues that \"the result of the claimed process is not equivalent to the result of the process disclosed in RD363032 at least for the reason that the alkalized cocoa nibs obtained from the claimed process have different color properties than those obtained from the process disclosed in RD363032, based on the Examiner* s finding in the Answer that \"RD363032 does not disclose a specific cocoa powder having color values of L less than about 16 . . \u00b7 as presently claimed.\" Reply Br. 7 (citing Ans. 38).", + "Appellant argues that the Declaration of inventor Ronald Heistek filed November 18, 2016 (\"the Heistek Declaration\") provides evidence of how one of ordinary skill in the art would have understood the disclosures of RD 363032. Appeal Br. 12-13.", + "Appellant argues that the Heistek Declaration explains that \"[plersons skilled in the art of cocoa production would not understand RD363032 to disclose a process for producing a cocoa powder that includes sterilizing cocoa beans, cooling the sterilized beans and alkalizing the cooled beans.\" Appeal Br. 13 (citing Heistek Decl. II 5-10).", + "Appellant argues that the Heistek Declaration \"provides cogent reasoning for this position\" by indicating that persons skilled in the art of cocoa production would not have cooled sterilized cocoa beans prior to alkalization because lowering the temperature between sterilization and alkalization adds an additional step and time to the process, lowering the temperature can introduce loss of sterilization, and the loss of energy from the cooled beans results in decreased activity during alkalization. Appeal Br. 13 (citing Heistek Decl. I 9).", + "Appellant argues that the Examiner \"has committed reversible procedural error\" by failing to address the Heistek Declaration. Appeal Br. 13.", + "Appellant argues that \"the combination of cited references fails to provide a roadmap of determining conditions used in processing cocoa nibs to obtain cocoa powder with the claimed values of L, C, H and a.\" Appeal Br. 17.", + "Appellant argues that Wissgot and Wiant each disclose that as a cocoa product is darkened, its brightness is reduced significantly, and neither reference discloses cocoa powder with a C (brightness) value above 18. Appeal Br. 16 (citing Spec. II 5-6 (discussing Wissgot and Wiant) and Heistek Decl. I 15).", + "Appellant argues that the Heistek Declaration explains that \"while alkalizations typically result in darker cocoa powders, such processes also make the resultant cocoa powders duller, i.e., they reduce the brightness or C color value of the resultant cocoa powders,\" demonstrating that it would not have been obvious \"how to adjust processing parameters to achieve an alkalized dark, but bright cocoa powder.\" Appeal Br. 16 (citing Heistek Decl. II 11-17).", + "Appellant argues that the Examiner's \"conclusion that 'it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the L, C, H and a values of alkalized cocoa through routine experimentation to obtain a cocoa powder of desirable color and attractiveness, ~ is, therefore, **factually and legally incorrect.\" Appeal Br. 17.", + "Finally, Appellant faults the Examiner for referring to our decision entered February 22, 2018 in parent application 11/867974 in the Examiner's s Answer, arguing that because the present application is a divisional of the parent application, \"a determination of the unpatentability of the product claims of parent application, as a matter of law, cannot support a determination of unpatentability of the method claims of the current application.\" Reply Br. 2-3.", + "Appellant points out that this rejection differs from Rejection I by relying on Wissgott as an applied prior art reference rather than Kajiwara, and argue that Wissgot discloses that intense alkalization results in darkening with reduced brightness of cocoa powder, and, therefore, shows that it was not apparent in the art how to process cocoa beans to achieve an alkalized, high brightness cocoa powder. Appeal Br. 17-18.", + "To address these rejections, Appellant relies on the arguments made for Rejections I and II (discussed above), and argue that the additional prior art references applied in these rejections fail to cure the deficiencies of the prior art applied in Rejections I and II. Appeal Br. 19-21." + ], + "examiner_findings": [ + "I. Claims 18 and 21 under 35 U.S.C. \u25cf 103(a) as unpatentable over RD 363032,\" in view of Smith, 4 Kajiwara, Van Der Meer, 6 and Kattenberg;7", + "II. Claims 18 and 21 under 35 U.S.C. \u25cf 103(a) as unpatentable over RD 363032 in view of Smith, Van Der Meer, Kattenberg and Wissgott, 8", + "III. IV. Claims 19, 20, 25, and 26 under 35 U.S.C. S 103(a) as unpatentable over RD 363032 in view of Shore,' Smith, Wiant, 10 Van Der Meer, and Kattenberg; and", + "IV. Claims 19, 20, 25, and 26 under 35 U.S.C. S 103(a) as unpatentable over RD 363032 in view of Shore, Smith, Van Der Meer, Kattenberg, and Raboud. 11", + "The Examiner determines that \"[w]hile the cooling step may occur during the alkalization step in RD 363032 since the alkalization temperature is lower than the temperature of the sterilized cocoa beans,\" the \"transposition of process steps or the splitting of one step into two (e.g., separating the cooling step from the alkalization step [as recited in claim 18), where the processes are substantially identical or equivalent in terms of function, manner and result,\" does not patentably distinguish the processes. Ans. 34.", + "Based on these disclosures, the Examiner determines that \"the color and brightness of the cocoa powder are variables that can be modified by adjusting the intensity of alkalization of the cocoa, and the color and brightness therefore \"would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. \" Final Act. 10.", + "The Examiner concludes that \"lilt would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the L, C, H, and b [sic: a] values of alkalized cocoa through routine experimentation to obtain a cocoa powder of desirable color and attractiveness.\" Id.", + "Moreover, as discussed above, the Examiner finds that transposition of process steps, or splitting one process step into two, such as separating cooling from alkalization in the method disclosed in RD 363032, where the original and modified process steps are substantially identical or equivalent in terms of function, manner and result, does not patentably distinguish the original and modified process steps.", + "The Examiner indicates in the Answer, however, that our decision in the parent application supports the position that, based on the disclosures of Van Der Meer and Kattenberg discussed above, \"it would have been within the bounds of routine experimentation, such as manipulating processing conditions (duration, temperature, and strength/concentration of the alkali agent), as well as the skill level of one of ordinary skill in the art, to produce a cocoa powder with a very wide range of colors, ranging from dark brown to very red.\" Ans. 40-41." + ], + "ptab_opinion": [ + "Upon consideration of the evidence relied upon in this appeal and each of Appellant's contentions, we affirm the Examiner's s rejections of claims 18-21, 25, and 26 under 35 U.S.C. 5 103(a), for the reasons set forth in the Final Action, the Answer, and below.", + "We review appealed rejections for reversible error based on the arguments and evidence the appellant provides for each issue the appellant identifies.", + "Appellant argues claims 18 and 21 as a group on the basis of claim 18, to which we accordingly limit our discussion. Appeal Br. 10; C.F.R. \u25cf 41.37(c)(1)().", + "Appellant's arguments are unpersuasive of reversible error in the Examiner's s rejection, however, for reasons that follow.", + "It is well-established that \"mere disclosure of alternative designs does not teach away.\"", + "Rather, teaching away requires \"clear discouragement\" from implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).", + "Although RD 363032 may not disclose a dedicated step of cooling shelled cocoa beans after sterilization and before alkalization, we find no disclosure in RD 363032 that criticizes, discredits, or otherwise would have discouraged one of ordinary skill in the art from cooling cocoa nibs after sterilization and before alkalization, or disclosure of any disadvantages of doing so, and Appellant does not identify any such disclosures in RD 363032. Appeal Br. 12-14.", + "Furthermore, as the Examiner points out (Ans. 35), claim 18 does not specify any particular degree to which the recited de- shelled cocoa beans must be cooled after sterilization, and, accordingly, claim 18 encompasses any degree of cooling.", + "One of ordinary skill in the art would have understood that some degree of cooling--however slight---- would occur during the time after the sterilization process disclosed in RD 363032 is completed and before the alkalization process begins, even if alkalization starts \"as soon as possible\" following sterilization.", + "We find no disclosure in Kajiwara of sterilizing the cocoa nibs before this alkalization process, and, consequently, find no disclosure that criticizes, discredits, or otherwise would have discouraged one of ordinary skill in the art from cooling cocoa nibs following sterilization and before alkalization, or of any disadvantages of doing so.", + "Although Van Der Meer discloses a simultaneous sterilization and alkalization process, we similarly find no disclosure in this reference that criticizes, discredits, or otherwise would have discouraged one of ordinary skill in the art from cooling cocoa nibs following sterilization and before alkalization, or of any disadvantages of doing so.", + "Accordingly, contrary to Appellant's s arguments, RD 363032, Kajiwara, and Van Der Meer, alone or in combination, do not teach away from cooling cocoa nibs following sterilization and before alkalization, as recited in claim 18.", + "Nor do the teachings of the references \"constitute a general understanding in the art \u00b7 \u00b7 . that there are several disadvantages of cooling the cocoa nibs between the sterilization step and the alkalization step\" as Appellant asserts. Appeal Br. 14.", + "Although Appellant argues that \"the Examiner provides no evidence to support that a process in which the de- shelled cocoa beans are cooled with water after sterilization, and alkalized after cooling the sterilized, de-shelled cocoa beans, as required in the independent claims, is equivalent in terms of either of function, manner[, or] result\" to the process disclosed in RD 363032 (Reply Br. 7), \"[there is nothing in the instant record which indicates that the particular order of steps [recited in claim 18] produces results differing in any way from those which would be brought about if another order of steps were followed.\"", + "Under the principles of Burhans and Gibson set forth above, the order of performing the known process steps recited in claim 18 of sterilizing, cooling, and alkalizing de-shelled cocoa beans in a process for producing cocoa powder does not impart patentability to the process steps, absent a showing of the criticality of the recited order of the steps, such as a showing that the recited order produces unexpected results.", + "On the record before us, Appellant does not point to a direct comparison between cooling de-shelled cocoa beans after sterilization and before alkalization as recited in claim 18, and the process disclosed in RD 363032. Appeal Br. 10-17.", + "Appellant, therefore, does not demonstrate that cooling de-shelled cocoa beans before alkalization produces results that would have been unexpected relative to results achieved with the process disclosed in RD 363032.", + "Although cocoa powder produced according to the process disclosed in RD 363032 may have a different L value than cocoa powder produced according to the method recited in claim 18, Appellant does not provide any evidence establishing that the difference in L values can be attributed to when cooling de-shelled cocoa beans occurs in the respective processes relative to alkalization of the beans, due to numerous other differences in the processes disclosed in RD 363032 and recited in claim 18.", + "In other words, a cause-and-effect relationship between when de-shelled cocoa beans are cooled relative to when they are alkalized and the L value of cocoa powder ultimately produced is lost in multiple unfixed variables.", + "Accordingly, on the record before, Appellant does not provide persuasive evidence demonstrating the criticality of the order of the process steps recited in claim 18.", + "We point out initially that the Examiner explains in the Answer that the Examiner addressed the Heistek Declaration at paragraphs 147-154 of the January 20, 2017, Office Action. Ans. 34.", + "In addition, as discussed above, any difference between the order of process steps recited in claim 18 and disclosed in RD 363032 does not impart patentability absent a persuasive showing of unexpected results, which Appellant does not provide on the record before us. Appeal Br. 10-17.", + "Furthermore, although the Heistek Declaration may provide \"cogent reasoning,\" neither the Declarant nor Appellant provides any objective evidence corroborating the Declarant's conclusory assertions that lowering the temperature between sterilization and alkalization \"can\" introduce loss of sterilization, and that loss of energy from the cooled beans results in \"decreased\" activity during alkalization. Appeal Br. 10-17; Heistek Decl. II 5-17.", + "In particular, neither the Declarant nor Appellant provides any objective evidence demonstrating that such purported loss of sterilization, or decreased activity during alkalization, would be detrimental to a process for producing cocoa powder as disclosed in RD 363032. Appeal Br. 10-17.", + "Moreover, as discussed above, claim 1 encompasses any degree of cooling before alkalizing, and neither Appellant nor the Declarant provides any showing that a very slight degree of cooling, as encompassed by claim 1, would result in any loss of sterilization, or decreased activity during alkalization.", + "Moreover, although the Declarant asserts that one of ordinary skill in the art would not have cooled sterilized cocoa beans prior to alkalization because lowering the temperature between sterilization and alkalization adds an additional step and time to a process for producing cocoa powder, such additional time alone would not have discouraged one of ordinary skill in the art seeking to produce cocoa powder from cooling sterilized cocoa beans before alkalization.", + "The uncorroborated opinions provided in the Heistek Declaration are, therefore, of limited probative value.", + "As discussed above, however, Van Der Meer discloses that alkalizing cocoa nibs during production of cocoa powder imparts a brighter and more intense red color to the cocoa powder.", + "As also discussed above, Kattenberg discloses that the degree of alkalization performed during preparation of cocoa powder affects the intensity and redness of the cocoa powder produced, with greater alkalization resulting in a more intense and deeper red color.", + "These disclosures in Van Der Meer, Kattenberg, Wissgott, and Wiant evidence that there was a recognition in the art at the time of Appellant's invention that alkalization conditions affect the color of cocoa powder, and the color's s brightness and intensity.", + "Alkalization conditions are, therefore, result-effective variables.", + "One of ordinary skill in the art seeking to produce cocoa powder according to the process disclosed in RD 363032, involving sterilizing, cooling, and alkalizing de-shelled cocoa beans, reasonably would have been led by the disclosures discussed above in Van Der Meer and Kattenberg to adjust the conditions used during alkalization to impart a desired color with an appealing intensity and brightness to the cocoa powder, and would have arrived at a desired color, brightness, and intensity, such as a high-brightness cocoa powder having L, C, H, and a values within the ranges recited in claim 18, through nothing more than routine adjustment of the alkalization conditions.", + "Accordingly, although the applied prior art references do not explicitly disclose particular alkalization conditions that result in L, C, H, and a values recited in claim 18, and may disclose cocoa powders having L, C, H, and a values that differ from those recited in the claim, there was a recognition in the art that alkalization conditions could be adjusted to achieve a desired color having an appealing intensity and brightness, and one of ordinary skill in the art seeking to produce a high-brightness cocoa powder, therefore, would have adjusted alkalization conditions to achieve a desired color, brightness, and intensity, such as a color having a combination of L, C, H, and a values recited in claim 18, through routine experimentation within the level of ordinary skill in the art. Applied Materials, 692 F.3d at 1297; Boesch, 617 F.2d at 276; Aller, 220 F.2d at 456.", + "Contrary to Appellant's s arguments, the Examiner'. s conclusion that it would have been obvious to one of ordinary skill in the art at the time of Appellant's invention to optimize the L, C, H, and a values of alkalized cocoa through routine experimentation to obtain a cocoa powder of desirable color and attractiveness is, therefore, based on supported factual findings, and is not \"legally incorrect.\" Appeal Br. 17.", + "Although the Heistek Declaration indicates that \"[w]hile alkalizations typically result in darker cocoa powders, such processes also make the resultant cocoa powders duller, i.e., they reduce the brightness or C color value of the resultant cocoa powders,\" neither Appellant nor the Declarant addresses the disclosures in Van Der Meer, Kattenberg, Wissgott, Wiant, and Onwulata discussed above indicating that while alkalization conditions affect the color of cocoa powder, and the color's brightness and intensity, one of ordinary skill in the art nonetheless could have adjusted the conditions to achieve a desired color, brightness, and intensity, through routine experimentation. Heistek Decl., I 12.", + "By failing to address these particular disclosures in Van Der Meer, Kattenberg, Wissgott, Wiant, and Onwulata, the Declarant does not take into consideration the state of the art as a whole at the time of Appellant's invention.", + "We, therefore, accord little weight to the opinion provided in the Declaration.", + "As discussed above, the Examiner's position is based on sound factual findings grounded in prior art of record in the current appeal.", + "Furthermore, although restriction may be required between two or more independent and distinct inventions claimed in a single application, each such invention may nonetheless be unapatentable over one or more common prior art references. See, e.g., M.P.E.P. 5 801.01.", + "Considering the totality of the record in this appeal, a preponderance of the evidence weighs in favor of the Examiner': s conclusion of obviousness.", + "We, accordingly, sustain the Examiner's s rejection of claims 18 and 21 under 35 U.S.C. 5 103(a) as unpatentable over RD 363032 in view of Smith, Kajiwara, Van Der Meer, and Kattenberg.", + "As discussed above, however, one of ordinary skill in the art seeking to produce cocoa powder according to the process disclosed in RD 363032, involving sterilizing, cooling, and alkalizing de-shelled cocoa beans, reasonably would have been 1ed by the disclosures discussed above in Van Der Meer and Wissgott to adjust the conditions used during alkalization to impart a desired color with an appealing intensity and brightness to the cocoa powder, and would have arrived at a desired color, brightness, and intensity, such as a high-brightness cocoa powder having L, C, H, and a values within the ranges recited in claim 18, through nothing more than routine adjustment of the alkalization conditions. Boesch, 617 F.2d at 276; Aller, 220 F.2d at 456.", + "We, accordingly, sustain the Examiner's s rejection of claims 18 and 21 under 35 U.S.C. \u25cf 103(a) as unpatentable over RD 363032 in view of Smith, Wissgott, Van Der Meer, and Kattenberg.", + "Because we are unpersuaded of reversible error in Rejections I and II for the reasons discussed above, Appellant's position as to these rejections is also inadequate to support reversal." + ] +} \ No newline at end of file diff --git a/opinion_split/2019000582_Mail_Decision.json b/opinion_split/2019000582_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..cd40223408287c16b49f5a317e5325d807e7cbad --- /dev/null +++ b/opinion_split/2019000582_Mail_Decision.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "Appellant argues the combination of Krishnaswamy, Sadek, and Wang does not teach the claim 1 limitation directed to \"transmitting, to the cellular network base station, one or more reports \u00b7\u00b7\u00b7 wherein the one or more reports include. \u00b7\u00b7 (ii) an indication of which frequency bands associated with the detected signals the mobile terminal is actively transmitting data using a non-cellular network protocol.\" Appeal Brief. 11- 17.", + "Specifically, Appellant argues that Wang, the reference the Examiner relies upon to teach this limitation, does not teach the limitation, but rather teaches that the mobile station transmits a report on the quality of signals received by the mobile station, which is not a report of frequency bands the mobile station is actively transmitting on. Appeal Br 14-15. Reply. Br. 3-4." + ], + "examiner_findings": [ + "The Examiner has rejected claims 1. 3, and 6 through 16 under 35 U.S.C. & 103 as being unpatentable over Krishnaswamy (US 2010/0246506 A1, Sept. 30, 2010), Sadek (US 2015/0063323 A1, Mar. 5, 2015) and Wang (US 2008/0214182 A1, Sept. 4, 2008). Non-Final Act. 3- 26.", + "The Examiner has rejected claim 4 under 35 U.S.C. 5 103 as being unpatentable over Krishnaswamy, Sadek, Wang and Song (US 2011/0249642 A1, Oct. 13, 2011). Non-Final Act. 26-27.", + "The Examiner has rejected claim 17 under 35 U.S.C. 5 103 as being unpatentable over Krishnaswamy, Sadek, Wang and Shi (US 2013/0137435 A1, May 30, 2013). Non-Final Act. 27-28.", + "The Examiner finds Wang teaches generating a report including an indication of which frequency bands the mobile device is actively transmitting on. Non-Final Act 8-9 (citing Wang Fig. 5, TI 26, 29, 50, 51, 53, 56, and 60).", + "Further, in response to Appellant' s arguments, the Examiner finds that Wang teaches the base station assigns a channel (time slot and subcarrier). Answer 2 (citing Wang I 64).", + "The Examiner finds that Wang teaches that the report of channel strength is transmitted on the assigned channel. Answer 2 (citing Wang I 51).", + "Thus, the Examiner concludes: Appellant's claims includes the word *indicating*, which may be interpreted as any sort of reference to something.", + "Since Wang's channel measurement report refers to the channel assigned to the mobile station (MS1), the channel measurement report indicates the channel assigned to the mobile station (MS1).", + "Therefore, it is reasonable to interpret Appellant's indication of which frequency bands associated with the detected signals the mobile terminal is actively transmitting data to include Wang's MS1 sending a channel measurement report indicating the channel quality of only the serving relay station. Answer 3." + ], + "ptab_opinion": [ + "We have reviewed Appellant's s arguments in the Briefs, the Examiner' s rejections, and the Examiner' s response to Appellant's arguments.", + "Appellant's s arguments have persuaded us of error in the Examiner' s rejection of all of the disputed claims under 35 U.S.C. \u25cf 103.", + "We disagree with the Examiner* s finding that Wang teaches the mobile unit transmitting a report indicating the frequency bands associated with detected signals the mobile terminal is actively transmitting data on using a non-cellular network protocol, as is recited in independent claim 1 (and similarly recited in independent claims 13 and 14).", + "As argued by Appellant, the report in Wang transmitted by the mobile station is a channel measurement report, which indicates channel quality for signals received by the mobile station. Wang I 51.", + "Thus, the report is not indicative of the signals transmitted by the mobile station, let alone the frequency band associated with the signals as recited.", + "Further, we disagree with the Examiner' s statement that a channel is allocated to the mobile unit and as such the report is also indicative of the signals transmitted by the mobile unit.", + "The Examiner has not demonstrated how the report of measurement of channel quality includes or refers to a measurement of the assigned channel and thus indicates the channel frequency band.", + "The channel assignment discussed in Wang's paragraph 64, cited by the Examiner, are assignments of downlink channels (channels which are used by the base station to communicate with the mobile unit).", + "Wang discusses the uplink channels are also assigned, see paragraphs 25, 30, 31, 70; however, the Examiner has not shown, nor do we find that that Wang teaches the uplink (UL) and down link (DL) channels are the same.", + "Thus, we do not find that the Examiner has shown that independent claims 1, 13, and 14 are obvious over the combination of Krishnaswamy, Sadek, and Wang.", + "Accordingly, we do not sustain the Examiner's obviousness rejection of claims 1, 3, and 6 through 16.", + "The Examiner's s rejection of dependent claims 4 and 17 similarly rely upon the combination of Krishnaswamy, Sadek, and Wang to teach the limitations of independent claims 1, 13, and 14.", + "The Examiner has not shown that the additional teachings of either Song and Shi, remedy the deficiency discussed above in the rejection of claims 1, 13, and 14.", + "Accordingly, we similarly do not sustain the Examiner's is obviousness rejection of claims 4 and 17." + ] +} \ No newline at end of file diff --git a/opinion_split/2019000819_Mail_Decision.json b/opinion_split/2019000819_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..a966b715ea6526b96a1f3a7e58e2c45b16c735ac --- /dev/null +++ b/opinion_split/2019000819_Mail_Decision.json @@ -0,0 +1,77 @@ +{ + "appellant_arguments": [ + "Appellant relies on page 25, lines 22-29 of the Specification to support a contention that \"[a] person skilled in the art, after reading the specification of the application would understand the meaning of the term *thin. \"", + "Appellant contends the combinations are made using impermissible hindsight and that they lack supporting evidence.", + "Appellant contends that \"there is no evidence that quickening the curing or [drying] would be beneficial to the coatings disclosed in Kinlen.\" \"", + "Appellant contends that different curing methods are not necessarily interchangeable.", + "Appellant contends Domes's s organic film forming agent already includes synthetic resins that are stable at pH values less than or equal to 9 or, in particular, less than or equal to 5, and there would be no motivation for a person skilled in the art to add something else with the same effect.", + "Appellant further contends that Kinlen is silent as to pH and there is no suggestion in Kinlen that this would be a desirable property.", + "According to Appellant, the fact that a property may be useful in some instances does not provide a motivation or suggestion that it will be useful or desirable in other instances.", + "Appellant contends that the ordinary artisan would only find a reason to use TiF& and ZrFo: based on Appellant's s disclosure.", + "Appellant contends that Oka's binders are inorganic binders while Appellant's binders are organic.", + "Appellant contends that \"Kinlen, Domes, Sinko or Hartwig are all silent on the need for an additional binder, and the only motivation to include a binder comes from the present application.\"", + "Appellant acknowledges that Paar discloses the use of a cationically stabilized epoxy resin as a binder in aqueous coatings.", + "Appellant contends that \"[n]o evidence is provided to suggest that a binder would be beneficial or desirable to the coating composition disclosed in Kinlen, Domes, Sinko or Hartwig\" and that \"all four cited references are completely silent on the need for an additional binder, and the only motivation to include a binder comes from the present application.\"", + "Appellant contends that there is no evidence to support the Examiner's s conclusion." + ], + "examiner_findings": [ + "A. Claim 46 is rejected under 35 U.S.C. \u25cf 112 I 2.", + "B. Claims 31, 33, 34, 38, 41, 45-49, 55, 66, 67, 69, 70, 97, 100, 103, and 113 are rejected under 35 U.S.C. S 103(a) as being unpatentable over Kinlen2 in view of Domes,\" Sinko,4 and Hartwig, as evidenced by Harper. 6", + "C. Claim 40 is rejected under 35 U.S.C. 5 103(a) as being Harper and Duc. 7,8", + "D. Claim 63 is rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over Kinlen, Domes, Sinko, Hartwig, as evidenced by Harper and Pal. 9,10", + "E. Claims 43, 44, and 63 are rejected under 35 U.S.C. 5 103(a) as being unpatentable over Kinlen, Domes, Sinko, Hartwig, as evidenced by Harper, and further in view of Okali and Gros. 12", + "F. Claim 112 is rejected under 35 U.S.C. & 103(a) as being unpatentable over Kinlen, Domes, Sinko, and Hartwig, as evidenced by Harper, and further in view of Paar. 13", + "G. Claim 42 is rejected under 35 U.S.C. \u25cf 103(a) as being Harper, in view of Oka and Gros, and further in view of Paar.", + "H. Claims 38 and 56 under 35 U.S.C. \u25cf 103(a) as being unpatentable over Kinlen, Domes, Sinko, and Hartwig, as evidenced by Harper, and further in view of Assaf. 14", + "I. Claims 68 and 71 are rejected under 35 U.S.C. \u25cf 103(a) as being unpatentable over Kinlen, Domes, Sinko, and Hartwig, as evidenced by Harper, and further in view of Tomono. 15", + "OPINION Rejection A: Indefiniteness of Claim 46 The Examiner rejects claim 46 under 35 U.S.C. 5 112 I 2 as indefinite.", + "The Examiner determines that \"thin\" is unclear and indefinite because it is a relative term and the Specification provides no standard for ascertaining the requisite degree.", + "Kinlen does not teach drying the coated metallic surface at elevated temperature and, thus, the Examiner turns to Domes.", + "The Examiner concludes that it would have been obvious to the ordinary artisan to heat the coating composition of Kinlen because elevated temperature would facilitate or quicken the curing and drying of the coating and the temperature the ordinary artisan would use would be arrived at through routine optimization.", + "Acknowledging that Kinlen does not teach coating the ICP onto an inorganic core particle, the Examiner turns to Sinko.", + "In rejecting claim 63, the Examiner relies on Oka as teaching applying a second composition that is a dispersion and contains a binder system.", + "However, Examiner provides a reason to use the binder of Paar, i.e., to provide stability and anti-corrosive properties.", + "Rejection H: Obviousness of Claims 38 and 56 adding Assaf To reject claims 38 and 56, the Examiner adds Assaf.", + "As the Examiner found in the rejection of claim 31, Kinlen teaches using molybdate (MoOF) as a corrosion-inhibiting anion.", + "Hartwig provides evidence of the obviousness of using TIF and ZrFo: as corrosion inhibitors and alternatives to chromates and molybdates.", + "Because Kinlen and Hartwig do not disclose the use of tungstate (WO.2), the Examiner relies on Assaf as evidence that wo.\" was known to function as a corrosion inhibitor and to support the conclusion that it would have been obvious to use this known corrosion inhibitor in the corrosion inhibiting composition." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We AFFIRM.", + "The Specification does not support Appellant's s contention.", + "The Specification does not equate \"thin\" coatings with any of the five recited ranges and the five ranges overlap each other and are termed example thicknesses.", + "The Specification does not support Appellant's s contention because the ranges recited in the Specification do not provide any reasonably clear boundary for \"thin, but instead indicate that \"thin\" might mean several different things.", + "It might be referring to the \"from > 1 to 100 nm\" range or the \"from > 10 to 1000 nm (1 um)\" range.", + "Or \"thin\" might not correlate with the ranges at all.", + "Thus, the claim language is not as reasonably precise as the circumstances permit.", + "See In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (Affirming an indefiniteness rejection because Packard had been given the opportunity to bring clarity to his claim language stating that \"Ti]n some cases it is difficult enough for courts to construe claims when the draftsperson has made every effort to be clear and concise, let alone when the claims have readily observable ambiguities or incoherencies within them. \").", + "Appellant has not identified a reversible error in the Examiner's s determination of indefiniteness.", + "Turning to the Examiner' s rejection of claims 31, 33, 34, 38, 40, 41, 45-49, 55, 63, 66, 67, 69, 70, 97, 100, 103, and 113 as obvious over Kinlen in view of Domes, Sinko, and Hartwig, as evidenced by Harper, Pal (for claim 63), and Duc (for claim 40), we note that Appellant does not argue any claim apart from the others.", + "We select claim 31 as representative to resolve the issues on appeal.", + "After considering the evidence relied on by the Examiner and Appellant, we determine a preponderance of the evidence supports the Examiner'. s findings of suggestions within the prior art to make the necessary modifications to arrive at the claimed invention.", + "However, based on the similarities in chemistry between the two coating formulations and the suggestion in both Kinlen and Domes of using UV curable coating compositions, a preponderance of the evidence supports the Examiner's s finding.", + "Appellant has not provided persuasive evidence that faster curing would not have been desired when using such compositions.", + "Although true, this does not negate the evidence tending to show that heat would speed curing in the type coating system used by the prior art.", + "Appellant's arguments lack merit because Sinko articulates a need *for a conducting ICP that resists conversion to an insulating form when in the presence of alkaline environments\" and teaches an inorganic core that fulfills this need.", + "Sinko's expressed desire is more than adequate to provide a reason to make the modification to Kinlen's conductive ICP particles.", + "See KSR Int'l V. Teleflex Inc., 550 U.S. 398, 420 (\"[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. \").", + "Thus, a preponderance of the evidence supports the Examiner*. s finding of a reason to use the inorganic core particles coated with ICP of Sinko in anti-corrosion coating compositions, particularly those that are used in alkaline environments.", + "Given the desire of Kinlen to produce an anti-corrosion coating composition, a preponderance of the evidence supports the Examiner's s finding of a suggestion to include Hartwig's hexafluorotitanate (TiFs 2-) or hexafluorozirconate (ZrFs 2-) anions in an anti-corrosion coating also including the conductive particles taught by Sinko.", + "This argument ignores the teachings of Hartwig and is, thus, not persuasive.", + "Rejection E: Obviousness of Claims 43, 44, and 63 adding Oka, and Gros We now turn to Rejection E, the Examiner's s rejection of claims 43, 44, and 63 as obvious over Kinlen, Domes, Sinko, Hartwig, as evidenced by Harper, and further in view of Oka and Gros.", + "But it is the two-step coating application that is relied on by the Examiner.", + "The Examiner is not relying on the binder system of Oka.", + "This is incorrect.", + "Appellant points out limitations recited in claim 43, but does not set forth an argument that is specific enough to identify a reversible error in the Examiner'. s findings of fact or application of the law.", + "Appellant has not identified a reversible error in the Examiner's s rejection.", + "We now turn to the Examiner's s Rejections F and G, which add Paar to reject claims 42 and 112.", + "Appellant has not identified a reversible error in that finding.", + "However, the evidence supports a finding that the various anions were known for their anti-corrosion affects in anti-corrosion compositions including those recited in claims 38 and 56.", + "\"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.\"", + "Using the known anions for the known anti-corrosive properties would have been obvious to one of ordinary skill in the art in the absence of a showing of unexpected results.", + "Appellant has not identified a reversible error in the Examiner's s rejection.", + "Rejection I: Obviousness of Claims 68 and 71 adding Tomono Appellant does not argue against the Examiner's Rejection I, i.e., the rejection of claims 68 and 71 under 35 U.S.C. .5 103(a) as being unpatentable over Kinlen, Domes, Sinko, and Hartwig, as evidenced by Harper, and further in view of Tomono.", + "Thus, Appellant has not identified a reversible error in this rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2019000914_Mail_Decision.json b/opinion_split/2019000914_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..a46cb0249ff8d08439f54a500b072e3b7e0e8e1f --- /dev/null +++ b/opinion_split/2019000914_Mail_Decision.json @@ -0,0 +1,100 @@ +{ + "appellant_arguments": [ + "Appellant initially contends *[a]dditional authority binding on this Honorable Board includes the MP EP 2106. This section of the MPEP serves to further refine the metes and bounds of the Alice test in view of recent decisions of the Court of Appeals for the Federal Circuit.* Appeal Br. 5.", + "Appellant contends claim 1 is not *an un-instantiated concept, plan or scheme or mental process,* but is \"connected or tied to concrete and/or tangible devices and systems (i.e., entities).\" Appeal Br. 8.", + "Appellant contends the claims are not directed to an abstract idea under the first prong of the Alice test at least because the claims are clearly focused on a specific asserted technological improvement. Id.", + "Appellant argues prior art systems provide plain text (i.e., semantic) keyword search of databases to identify relevant records.", + "Appellant identifies a **technical problem\" in the prior art, i.e., database table columns that consist of Boolean operators? (e.g., 0/1, Yes/No, TRUE/F ALSE, NULL/X, etc.) do not contain any semantic information that identifies relevant records.", + "In other words, including search terms such as \"yes\" or \"T\" in a keyword search does not typically assist in identifying desired records. Id. at 8-9 (citing Spec. 1:1- 10).", + "According to Appellant, the inventive method receives a query comprising one or more search terms and determines whether one or more search terms correspond to a language-dependent table column name. Appeal Br. 9 (citing Spec. 3:24-26, 5:1-5).", + "Appellant explains metadata associates the language-dependent table column name with a column of Boolean operators. Id. (citing Spec. 5:1-5, 12-15).", + "Appellant argues that, as a solution to the identified problem, the query is modified to replace the search term with the metadata technical name of the column, and then the modified query is run. Id. (citing Spec. 6:15-23).", + "With respect to technological improvements, Appellant contends \"the claims are clearly directed to a technological improvement realized by the invention (e.g, performing a plain text keyword search where the database records include Boolean operators), and not only receiving and determining data.\" Appeal Br. 11.", + "Citing Finjan's and Core Wireless, Appellant contends *the claims are directed to reciting specific steps to accomplish a desired result, and to an improvement in the functioning of computers. Reply Br. 2 (citing Appeal Brief, 11-12).", + "Appellant argues: The claims provide a specific implementation of a technical solution (performing a plain text keyword search where the database records include Boolean operators) to a particular technological problem (when table columns in a stored database record include Boolean operators, they do not contain any semantic information which is usable to identify relevant records), and thus are not directed to an abstract idea. Id.", + "Similarly, Appellant argues performing a semantic (natural language) search of a database comprising Boolean operators will fail to return viable results. Appeal Br. 9 (citing Spec., 1:1-10).", + "Appellant argues the claims use the database metadata to convert a plaintext keyword search into a mixed semantic and Boolean query. See Appeal Br. 11 (citing Spec. 3:26-30, 6:5-10, 6:15-19, 20-23).", + "Appellant argues these claims as a group in view of the recitations of claim 1. Appeal Br. 14.", + "Appellant contends the cited art fails to teach code to cause the computing device to add a condition to the query to change the query, the condition specifying a technical name of the table column as determined from metadata and the value of the table column. Appeal Br. 16.", + "Appellant contends Elder fails to determine that a search term corresponds to a language-dependent table column name identified by metadata. Reply Br. 3.", + "Appellant argues instead, Elder simply describes capturing metadata that defines a target concept model and discloses an algorithm processes the model to enable search of multiple databases using natural language. Id. (citing Elder I 31).", + "Appellant argues Elder discloses a target concept model comprises entities logically mapped to a table and multiple repositories (databases) are linked and organized to answer a natural language request. Id. (citing Elder 11 32, 34).", + "Appellant contends Jones fails to cure the deficiencies of Elder, Rajak, Berger, and SQL. Appeal Br. 20-21." + ], + "examiner_findings": [ + "1. Claims 1, 2, 4, 6-9, 11, 13-16, 18 and 20-22 stand rejected under 35 U.S.C. 8 101 as directed to a judicial exception without significantly more. Non-Final Act. 2-13.", + "2. Claims 1, 4, 6-8, 11, 13-15, 18, and 20-22 stand rejected under 35 U.S.C. 8 103 as being unpatentable over Elder, Rajak, Berger, and SQL. Non-Final Act. 14-20.", + "3. Claims 2, 9, and 16 stand rejected under 35 U.S.C. S 103 as being unpatentable over Elder, Rajak, Berger, SQL, and Jones. Non- Final Act. 20-21.", + "The Examiner finds the claims are directed to the abstract idea of receiving and determining data and then adding a condition based on metadata and Boolean operator for a received query. Non-Final Act. 2.", + "The Examiner finds that, absent additional limitations, a process that merely receives and determines existing information in order to generate additional information is not patent eligible. Id. at 3 (citing generally Classen, 5 and Electric Power Group).", + "Contrary to Appellant's assertion, the Examiner finds: Exemplary claims 1, 8 and 15 are directed to the abstract idea of providing a query with addition of a condition to the change the query by manipulating a Boolean operators of the table column by determination of the column type and applying translation rules to convert data that is understandable. This is similar to other ideas found to be abstract by various courts, not patentable by courts as per case law Electric Power Group which considers abstract idea as \"Collecting Information, analyzing it and displaying certain results of the collection and analysis. Ans. 23.", + "The Examiner finds Elder teaches target models comprising \"terms\" which are mapped, through a natural language search, to a table in a target data source and each attribute is mapped to a column in the table. Ans. 38 (citing Elder 11 31, 32).", + "The Examiner finds the search is conducted through natural language and metadata associated with the target source. Id. (citing Elder I 34).", + "The Examiner cites Rajak as teaching the table column comprises Boolean operators. Id.", + "The Examiner does not apply Jones to the limitations discussed above. See Ans. 39." + ], + "ptab_opinion": [ + "The claims relate to a computer implemented system for determining whether a search term corresponds to a table column comprising Boolean operators. See Abstract.", + "Invention Claims 1, 8, and 15 are independent. Appeal Br. 2.", + "An understanding of the invention can be derived from a reading of claim 1, which is reproduced in Table I.", + "We have reviewed the rejections of Claims 1-2, 4, 6-9, 11, 13-16, 18, and 20-22 in light of Appellant's arguments that the Examiner erred.", + "We consider Appellant's arguments as they are presented in the Appeal Brief, pages 5-21.", + "Guidance documents do not establish legal requirements and, therefore, the PT AB is not bound by them. See, e.g, Ex parte Rama, 2017 WL 6816891 (Dec. 15, 2017).", + "This does not mean that the PT AB will avoid mentioning a Guidance in its decisions.", + "Instead, the PT AB may refer to a Guidance and, through it, cite and rely upon the underlying case law to inform its decision. See, e.g, Ex parte Tryggvason, 2017 WL 394203 (Jan. 26, 2017).", + "De novo review.", + "We reviewed the record de novo. SiRF Tech., Inc. Int 7 Trade Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (\"Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.\"); see also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed. Cir. 2013); Dealertrack, Inc. V. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); and In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc), affd, 130 S. Ct. 3218 (2010).", + "However, that legal conclusion \"may contain underlying factual issues.\" Accenture, 728 F.3d at 1341.", + "Based upon our review of the record in light of recent policy guidance with respect to the subject matter rejection under 35 U.S.C. 8 101, we reverse the rejection of claims 1-2, 4, 6-9, 11, 13-16, 18, and 20-22 for the specific reasons discussed below.", + "Section 101 provides that a patent may be obtained for *any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.\" 35 U.S.C. 101.", + "The Supreme Court has long recognized, however, that section 101 implicitly excludes \"`l]aws of nature, natural phenomena, and abstract ideas\" from the realm of patent- eligible subject matter, as monopolization of these \"basic tools of scientific and technological work\" would stifle the very innovation that the patent system aims to promote. Alice Corp. Pty. Ltd. V. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (quoting Ass'n for Molecular Pathology V. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72-78 (2012); Diamond 1/. Diehr, 450 U.S. 175, 185 (1981).", + "Under the Revised Guidance, we consider whether Appellant's claims recite: 1. any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes), and 2. additional elements that integrate the judicial exception into a practical application (see MPEP $2106.05(a)-(c), (e)-(h).", + "Only if a claim, (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then reach the issue of whether the claim: 3. adds a specific limitation beyond the judicial exception that is not \"well-understood, routine, conventional\" in the field (see MPEP 8 2106.05(d); or 4. simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.", + "The Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract-idea exception includes the following groupings of subject matter, when recited as such in a claim limitation or combination of limitations: (a) mathematical concepts, i.e., mathematical relationships, mathematical formulas, equations, and mathematical calculations; (b) certain methods of organizing human activity--fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) mental processes--concepts performed in the human mind (including observation, evaluation, judgment, opinion).", + "The preamble of independent claim 1 recites: \"A system comprising.", + "The limitations recited in the body of the claim are analyzed in TableI I against the categories of abstract ideas as set forth in the Revised Guidance, 84 Fed. Reg.", + "Claim 1 Revised Guidance, An additional element that adds [a] a data storage device storing data; insignificant extra-solution activity to a judicial exception. Revised Guidance, 84 Fed. Reg. at 55. [b] a computing device comprising: Generic computer component. [c] a memory storing processor- executable program code; and [d] a processor to execute the processor-executable program code in order to cause the computing device to: [e] receive a query comprising one or more search terms; mere data-gathering. Revised Guidance, 84 Fed. Reg. at 55 n.31. [f] determine that one of the one or more search terms corresponds to a language-dependent table column name associated with a table column in metadata, the table column comprising Boolean operators; [g] determine a value ofthe table column corresponding to TRUE; and [h] add a condition to the query to change the query, the condition specifying a technical name of the table column as determined from metadata and the value of the table column.", + "In view of T Table I, we find limitations [f]-[h] of independent claim 1 recite abstract ideas, i.e., mental processes.", + "Thus, claim 1 recites a judicial exception.", + "If the claims recite a patent-ineligible concept, as we conclude above, we proceed to the *practical application\" Step 2A(ii) wherein we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.", + "For the reasons which follow, we conclude that Appellant's s claims do, in fact, integrate the judicial exception into a practical application.", + "MPEP $2106.05(a) \"Improvements to the Functioning of a Computer or to Any Other Technology or T Technical Field.\"", + "\"In determining patent eligibility, examiners should consider whether the claim *purport(s) to improve the functioning of the computer itself*\" or *any other technology or technical field. MPEP S 2106.05(a).", + "The Enfish Court found the claims provided an improvement in computer function because \"the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self- referential table for a computer database.\" \" Enfish, LLCv. 1/. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).", + "We agree with Appellants that, similarly to Finjan, \"the claims recite more than a mere result. Instead, they recite specific steps \u00b7 . that accomplish the desired result.\" Finjan, Inc., 879 F.3d at 1305.", + "Further, similarly to Core Wireless, \"these claims are directed to a particular manner of summarizing and presenting information in electronic devices.\" Core Wireless, 880 F.3d at 1362.", + "We conclude that Appellant's claims do, in fact, integrate the judicial exception into a practical application by improving the functioning of a computer and are thus, subject matter eligible.", + "In view of the foregoing, we decline to sustain the rejection of Claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20-22 under 35 U.S.C. 8 101.", + "Therefore, we decide the appeal of the S 103 rejection on the basis of representative claim 1 and refer to the rejected claims collectively herein as \"the claims.\" See 37 C.F.R. $41.37(c)(1)(); see also In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).", + "Claim 1 recites, inter alia, \"add a condition to the query to change the query, the condition specifying a technical name of the table column as determined from metadata and the value of the table column.\"", + "Elder discloses an enabled natural language algorithm (ENL algorithm) begins by capturing the metadata associated with a target data source, such as a database spreadsheet XML file. Elder I 31.", + "Elder discloses the metadata defines a target concept model which is processed by the ENL algorithm to enable data base searching through natural language queries. Id.", + "Elder further discloses the concept model comprises entities which are logically-mapped to a table and each entity comprises at least one attribute which is logically mapped to one column in the table. Elder I 32.", + "We find no disclosure in Elder that teaches or suggests changing a semantic query to specify a technical name of the table column as determined from metadata and the value of the table column, as claimed.", + "In view of the foregoing, we decline to sustain the rejection of claims 1, 4, 6-8, 11, 13-15, 18, and 20-22 under 35 U.S.C. 5 103(a).", + "In view of the foregoing, we decline to sustain the rejection of claims 2, 9, and 16 under 35 U.S.C. 8 103(a).", + "I agree with the Majority Opinion's decision to reverse the rejection of claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20-22 under 35 U.S.C. 9 103.", + "I write separately, however, because I respectfully disagree with the Majority Opinion's decision to reverse the Examiner's rejection of claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20-22 under 35 U.S.C. 5 101.", + "Instead, I agree with the Examiner's findings and conclusions and, therefore, I would affirm the rejection of claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20-22 under 35 U.S.C. 8 101.", + "I agree with the Majority that the determining steps and the adding step are mental processes.", + "I disagree, however, that representative claim 1 integrates the abstract idea into a practical application.", + "Because the steps of accessing the metadata and adding a condition to the query based on the metadata are mental steps that make up the abstract idea of modifying a query to search databases including columns identifying the presence of certain characteristics using Boolean values, I find no additional elements sufficient to integrate the abstract idea into a practical application.", + "That the claim requires each step to be performed by a *computer device\" does not remove those limitations from properly being considered a mental process. See Revised Guidance, 84 Fed. Reg. at 52 n. 14.", + "Moreover, these steps do not provide a level of detail suggesting an improvement to electronic searching or another technology.", + "Instead, the claims recite a result of adding a search term using metadata to identify records including Boolean values, rather than particular technical details of how the added search terms are determined.", + "Moreover, I agree with the Examiner, and I would find all the additional elements (the data storage device, computing device, memory, and processor) as well as the additional receiving a query step, alone or in combination and considered in light of the claim as a whole, are generic computer components recited at a high level or pre-solution data gathering that simply apply the abstract idea on a generic computer to automate the mental steps. See Ans. 33-35, Revised Guidance, 84 Fed. Reg. at 55.", + "These additional limitations cannot integrate the mental processes into a practical application because they simply recite using a generic computer as a tool to perform the abstract idea and do not reflect an improvement in the functioning of the computer itself. See Revised Guidance, 84 Fed. Reg. at 55.", + "As an analogy, the claimed process is similar to the mental steps a person would perform if asked to look up information in a spreadsheet that included data with Boolean values.", + "As an example, at a small company, I may maintain a spreadsheet with employee information that included various information, including marital status stored in a column labeled \"Married\" represented by a \"T\" in the record (row) for an employee who is married and an \"F\" in the row for an employee who is not married.", + "Continuing this example, if I wanted to find all employees who work in IT and are married, I would search the spreadsheet for \"IT\" (or something similar) in the content, probably focusing on particular fields (e.g, department, organization, specialties).", + "Of the records that match, I would then look in the \"Married\" column to identify only records having a \"T\" in that column.", + "Because I agree with the Examiner that representative claim 1 is directed to an abstract idea, I next look to whether the claim provides an inventive concept. See Revised Guidance, 84 Fed. Reg. at 56.", + "The claimed use of generic computing devices to carry out the abstract idea *simply appends well-understood, routine, conventional activities previously known to the industry.* See Revised Guidance, 84 Fed. Reg. at 56.", + "Indeed, the Specification concedes that the computer components used are well-known, routine, and conventional. See Spec. 7:28-8:24, Fig. 5.", + "Appellant's arguments that the claims improve computer functionality are not persuasive.", + "This is made clear by the fact that the steps can each be performed in the human mind or with pen and paper.", + "Accordingly, claim 1 does not add any inventive concept.", + "For these reasons, I would sustain the Examiner's s rejection of claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20-22 under 35 U.S.C. 9 101.", + "Accordingly, I dissent." + ] +} \ No newline at end of file diff --git a/opinion_split/2019001527_Mail_Decision.json b/opinion_split/2019001527_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..6e853ee8e638b06ede10b14f57cfb3bb3659167e --- /dev/null +++ b/opinion_split/2019001527_Mail_Decision.json @@ -0,0 +1,116 @@ +{ + "appellant_arguments": [ + "Appellant also attempts to analogize the claims to those involved in McRO. Reply Br. 12-13.", + "Beyond that, Appellant argues no more than the benefits of the conceptual idea to use conventional distributed processing." + ], + "examiner_findings": [ + "The Examiner determines the claims to be directed to calculating a fraud detection score and reporting an abnormal or anomalous entity based on the calculated fraud detection score. Final Act. 3." + ], + "ptab_opinion": [ + "ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired.", + "ANALYSIS STEP 12 Claim 1, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. 5 101.", + "The issue before us is whether it is directed to a judicial exception without significantly more.", + "To perform this test, we must first determine what the claims are directed to.", + "This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea).", + "Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims **apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\" \" Revised Guidance, 84 Fed. Reg. at 54.", + "If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception.", + "STEP 2A Prong1 At a high level, and for our preliminary analysis, we note that method claim 1 recites generating and obtaining fraud warning data, computing fraud weight data and fraud detection score data, and in response to the score meeting criteria, labeling data and generating report data.", + "Obtaining data is data reception.", + "Computing data is mathematical algorithmic analysis.", + "Determining each of a response and whether data meet criteria are data analysis.", + "Thus, claim 1 recites generating, receiving, and analyzing data.", + "None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired by any and all possible means.", + "From this we see that claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature.", + "Like those concepts, claim 1 recites the concept of managing response to commercial fraud.", + "Specifically, claim 1 recites operations that would ordinarily take place in advising one to report entities having anomalous scores based on fraudulent transactions flagged by fraud warnings.", + "The advice to report entities having anomalous scores based on fraudulent transactions flagged by fraud warnings involves detecting fraudulent entities, which is an economic act, and obtaining fraud warnings, which is an act ordinarily performed in the stream of commerce.", + "For example, claim 1 recites \"detecting fraudulent entities, \" which is an activity that would take place whenever one is protecting against commercial fraud.", + "Similarly, claim 1 recites *obtaining \u00b7 \u00b7 \u00b7 a plurality of fraud warnings,\" \" which is also characteristic of commercial fraud prevention.", + "The steps in claim 1 result in managing response to commercial fraud by reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings absent any technological mechanism other than a conventional computer for doing so.", + "As to the specific limitations, limitations 1-5 recite generic and conventional generating, receiving, and analyzing of commercial transaction data, which advise one to apply generic functions to get to these results.", + "The limitations thus recite advice for reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings.", + "To advocate reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings is conceptual advice for results desired and not technological operations.", + "Thus, all this intrinsic evidence shows that claim 1 recites managing response to commercial fraud.", + "This is consistent with the Examiner'. s determination.", + "This in turn is an example of commercial or legal interactions as a certain method of organizing human activity because managing response to commercial fraud is how commercial interactions protect against improper transactions.", + "The concept of managing response to commercial fraud by reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings is one idea for such management.", + "The steps recited in claim 1 are part of how this might conceptually be premised.", + "Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter.", + "Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of generating, receiving, and analyzing data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning, 839 F.3d at 1093-94.", + "Claim 1, unlike the claims found non- abstract in prior cases, uses generic computer technology to generate a fraud-detection score that is weighted based on an inverse frequency for the fraud type and does not recite an improvement to a particular computer technology. See, e.g., MeRO, Inc. V. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract because they \"focused on a specific asserted improvement in computer animation\").", + "As such, claim 1 recites generating, receiving, and analyzing data, and not a technological implementation or application of that idea.", + "From this we conclude that at least to this degree, claim 1 recites managing responses to commercial fraud by reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings, which is a commercial and legal interaction, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea.", + "STEP 2A Prong2 The next issue is whether claim 1 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application. Alice, 573 U.S. at217 (citations omitted).", + "Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details.", + "Steps 1 and 2 are data gathering steps.", + "Limitations describing the nature of the data do not alter this.", + "Step 5 is insignificant post solution activity, such as storing, transmitting, or displaying the results.", + "Steps 3 and 4 recite generic computer processing expressed in terms of mathematical algorithm results desired by any and all possible means and so present no more than conceptual advice and abstract mathematical algorithms.", + "All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results.", + "Viewed as a whole, Appellant's claim 1 simply recites the concept of managing response to commercial fraud by reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings as performed by a generic computer.", + "This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and do not recite any particular implementation.", + "Claim 1 does not, for example, purport to improve the functioning of the computer itself.", + "Nor does it effect an improvement in any other technology or technical field.", + "The 17+ pages of specification do not bulge with disclosure, but only spell out different generic equipment? and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing response to commercial fraud by reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings under different scenarios.", + "They do not describe any particular improvement in the manner a computer functions.", + "Instead, claim 1 at issue amounts to nothing significantly more than an instruction to apply managing response to commercial fraud by reporting entities having anomalous scores based on fraudulent transactions flagged by fraud warnings using some unspecified, generic computer.", + "Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.", + "None of the limitations reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.", + "We conclude that claim 1 is directed to achieving the result of managing response to commercial fraud by advising one to report entities having anomalous scores based on fraudulent transactions flagged by fraud warnings, as distinguished from a technological improvement for achieving or applying that result.", + "This amounts to commercial or legal interactions, which fall within certain methods of organizing human activity that constitute abstract ideas.", + "The claim does not integrate the judicial exception into a practical application.", + "STEP 2B The next issue is whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception.", + "They do not.", + "Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional.", + "Using a computer for generating, receiving, and analyzing data amounts to electronic data query and retrieval---one of the most basic functions of a computer.", + "All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC V. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).", + "See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) C Absent a possible narrower construction ofthe terms 'processing, 'receiving,' and 'storing,' \u00b7 \u00b7 \u00b7 those functions can be achieved by any general purpose computer without special programming?).", + "None of these activities is used in some unconventional manner nor does any produce some unexpected result.", + "Appellant does not contend it invented any of these activities.", + "In short, each step does no more than require a generic computer to perform generic computer functions.", + "Considered as an ordered combination, the computer components of Appellant's claim 1 add nothing that is not already present when the steps are considered separately.", + "The sequence of data generation-reception- analysis is equally generic and conventional. See Ultramercial, 772F.3d at 715 (sequence of ofreceiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC 12. Bed Bath & Beyond, Inc., 876F.3d 1372, 1378 (Fed. Cir. 201 (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two- Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring).", + "The ordering of the steps is therefore ordinary and conventional.", + "We conclude that claim 1 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception.", + "REMAINING CLAIMS Claim 1 is representative.", + "The remaining method claims merely describe process parameters.", + "We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept.", + "As to the structural claims, they are no different from the method claims in substance.", + "The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.", + "As a corollary, the claims are not directed to any particular machine.", + "LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations.", + "From this we conclude the claims are directed to the judicial exception ofthe abstract idea of ofcertain methods of organizing human activity as exemplified by the commercial and legal interaction of managing response to commercial fraud by advising one to report entities having anomalous scores based on fraudulent transactions flagged by fraud warnings, without significantly more.", + "APPELLANT'S ARGUMENTS As to Appellant's Appeal Brief arguments, we adopt the Examiner's determinations and analysis from Final Action 2-7 and Answer 3-12 and reach similar legal conclusions.", + "We now turn to the Reply Brief.", + "We are not persuaded by Appellant's argument that the claims are analogous to those in Enfish, LLCv. v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Reply Br. 9-11.", + "The claims differ from those found patent eligible in Enfish, where the claims were \"specifically directed to a self- referential table for a computer database. \" 822 F.3d 1327, 1337 (Fed. Cir. 2016).", + "The claims thus were *directed to a specific improvement to the way computers operate\" rather than an abstract idea implemented on a computer. Id. at 1336.", + "Here, by contrast, the claims are not directed to an improvement in the way computers operate.", + "Though the claims purport to accelerate and improve the accuracy of the process of fraud detection, our reviewing court has held that speed and accuracy increases stemming from the ordinary capabilities of a general purpose computer \"do[] not materially alter the patent eligibility of the claimed subject matter.\" Bancorp Servs., L.L. C. 12. Sun Life Assurance Co. ofCan. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).", + "Instead, the claims are more analogous to those in FairWarning, supra, wherein claims reciting \"a few possible rules to analyze audit log data\" were found directed an abstract idea because they asked \"the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades. \" 839 F.3d at 1094, 1095.", + "We are not persuaded by Appellant's argument that the claims use electronic rather than paper and pencil data. Reply Br. 9.", + "This simply argues context, which cannot confer eligibility.", + "In McRO, the court held that, although the processes were previously performed by humans, \"the traditional process and newly claimed method. . \u00b7 produced. \u00b7 \u25a0 results in fundamentally different ways.\" FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from those in McRO).", + "In McRO, \"it was the incorporation of the claimed rules not the use of the computer, that improved the existing technology process, because the prior process performed by humans *was driven by subjective determinations rather than specific, limited mathematical rules.\" 837 F.3d at 1314 (internal quotation marks, citation, and alterations omitted).", + "In contrast, the claims of the instant application merely implement an old practice of using decision criteria in making fraud detection decisions in a new environment.", + "Appellant has not argued that the claimed processes of selecting transactions apply rules of selection in a manner technologically different from those which humans used, albeit with less efficiency, before the invention was claimed.", + "Merely pigeon holing the objects of decision making in tiers to aid decision making is both old and itself abstract.", + "The claims in McRO were not directed to an abstract idea, but instead were directed to \"a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. \"", + "We explained that \"the claimed improvement [was] allowing computers to produce *accurate and realistic lip synchronization and facial expressions in animated characters' that previously could only be produced by human animators. *, The claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers. FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from those in MeRO).", + "We are not persuaded by Appellant's argument that *[n]ot only does the report instruct an investigating entity to investigate the respective entity, but the report is only generated as a result of the significant, concrete, and tangible steps of the instant claims. \" Reply Br. 14.", + "Instructing someone is basic human communication, among the most abstract of operations.", + "The content of the instruction is non-functional information, and so no more than conceptual ideas.", + "The purported *significant, concrete, and tangible steps of the instant claims\" are data generation, reception, and analysis.", + "These operations are determined to be conventional and generic operations ofany conventional computer under Step 2B supra.", + "We are not persuaded by Appellant's argument that the claims contain an inventive concept that is also found in the specific ordered combination of the limitations, similar to the Federal Circuit's findings in BASCOM (BASCOM Global Internet V. AT& TMobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Reply Br. 14.", + "Initially, we remind Appellant that BASCOM did not find claims eligible on the substance, but rather that the Appellees did not provide sufficient evidence to support a 12(b)(6) motion to dismiss in which facts are presumed in the non-movant's favor.", + "The key fact in BASCOM was the presence ofa a structural change in \"installation of a filtering tool at a specific location, remote from the end- users, with customizable filtering features specific to each end user.", + "This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. \", BASCOM, 827 F.3d at 1350.", + "The instant claims have no analogous structural benefit.", + "We are not persuaded by Appellant's argument that using a fraud server reduces resources at the organizational server. Reply Br. 15.", + "Merely reciting a server does not confer eligibility.", + "The use and arrangement of conventional and generic computer components recited in the claims--such as a database, user terminal, and server--- do not transform the claim, as a whole, into \"significantly more\" than a claim to the abstract idea itself.", + "We are not persuaded by Appellant's argument that \"system can use received fraud warnings to generate the fraud-detection scores and the fraudulent entity report without having to process sensitive information from the entities under investigation. Reply Br. 15.", + "This only argues that the information is improved, not the technology." + ] +} \ No newline at end of file diff --git a/opinion_split/2019001605_Mail_Decision.json b/opinion_split/2019001605_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..5734a92d8142bd4b5a6d28fd08c98680244cec78 --- /dev/null +++ b/opinion_split/2019001605_Mail_Decision.json @@ -0,0 +1,130 @@ +{ + "appellant_arguments": [ + "This interpretation is further confirmed by Appellant's arguments that the other prior art sensors in Stirling and Coza \"can only measure distances between sensors or between a sensor and a reflective surface, and thus could not measure body parts of a person. \" Appeal Br. 22.", + "Here, as Appellant argues at Appeal Brief 18-19, we find the claims do recite some technological implementation in applying this concept.", + "But as Appellant contends, Stirling's measurement is not via three dimensional depth sensing." + ], + "examiner_findings": [ + "Claims 1-16 and 20 stand rejected under 35 U.S.C. 101 as directed to a judicial exception without significantly more.", + "Claims 1-13 and 20 stand rejected under 35 U.S.C. 103(a) as unpatentable over Coza, Adeyoola, and Stirling.", + "Claims 14 and 15 stand rejected under 35 U.S.C. 9 103(a) as unpatentable over Coza, Adeyoola, Stirling, and Alten.", + "Claim 16 stands rejected under 35 U.S.C. S 103(a) as unpatentable over Coza, Adeyoola, Stirling, and Schwartz.", + "The Examiner determines the claims to be directed to determining recommendations based on a user state. Final Act. 6.", + "The Examiner appears to base his determination on the commercial availability of the components.", + "The Examiner determines that Coza describes most of the claim 7 limitations, and that Adeyoola describes measuring via three dimensional depth sensing and Stirling describes measuring one or more physical dimensions of one or more body parts of the user. Final Act. 11-14.", + "The Examiner responds that Stirling describes using sensors in a garment to measure physical dimensions of body parts. Ans. 21." + ], + "ptab_opinion": [ + "Anurag Bhardwaj, Neelakantan Sundaresan, and Robinson Piramuthu (Appellant) seek review under 35 U.S.C. 5 134 ofa a final rejection of claims 1-16 and 20, the only claims pending in the application on appeal.", + "We have jurisdiction over the appeal pursuant to 35 U.S.C. 9 6(b).", + "The Appellant invented a way of providing user targeted recommendations on a device.", + "Specification para. 2.", + "An understandingof of the invention can be derived from a reading of exemplary claim 7, which is reproduced below (bracketed matter and some paragraphing added).", + "7. A method for providing recommendations, the method comprising: [1] creating first sensor data by directly measuring, via three dimensional (3D) depth sensing, using at least one sensor included in an item worn by a user, one or more physical dimensions of one or more body parts of the user while the item is worn by the user; [2] determining a user state based on the first sensor data that includes the body measurement data; and [3] in response to a state change being satisfied by at least the user state, determining, using at least one processor, a recommendation that includes [a description of] an article of clothing from an inventory to present on an electronic mobile device associated with the user,[2] the recommendation being determined based on the user state and a profile associated with the user.", + "The Examiner relies upon the following prior art: Name Reference Date Schwartz US 2007/0219059 A1 Sept. 20, 2007 Alten US 2008/0218310 A1 Sept. 11, 2008 Stirling US 7,602,301 B1 Oct. 13, 2009 Coza US 2013/0274040 A1 Oct. 17, 2013 Adeyoola US 2014/0176565 A1 June 26, 2014", + "The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired.", + "The issues of obviousness turn primarily on whether the prior art described \"directly measuring, via three dimensional (3D) depth sensing, using at least one sensor included in an item worn by a user, one or more physical dimensions of one or more body parts of the user. \" Claim 7, limitation 1.", + "The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance ofthe evidence.", + "Facts Related to the Prior Art Coza 01.", + "Coza is directed to monitoring an object during an athletic activity, and more particularly, monitoring the movement ofa sport ball used by an individual during an athletic activity. Coza para. 2.", + "Adeyoola 02.", + "Adeyoola is directed to generating and sharing a virtual body model of a person combined with an image of a garment, generating an image of a user in a garment, generating garment size recommendations, visualizing/generating make-up and hairstyle recommendations, generating a virtual body model of a user, sharing a virtual body model of a person, and enabling users to interact with virtual body models. Adeyoola para. 2.", + "Stirling 03.", + "Stirling is directed to measuring and analyzing movements ofa a body and for communicating information related to such body movements over a network. Stirling 1:34-37.", + "PrimeSense 04.", + "PrimeSense is directed to describing the PrimeSense 3D sensors.", + "05.", + "PrimeSense sensors perform 3D depth sensing by coding the scene with near-IR light, and reading the coded light back from the scene using a standard off-the-shelf CMOS image sensor.", + "This is the process that enables depth acquisition. PrimeSense 2.", + "06.", + "PrimeSense made three sensor models: Carmine 1.08, Carmine 1.09, and Capri 1.25. PrimeSense 3.", + "07.", + "The Carmine 1.08 sensor had a visual range of of0.8-3.5 meter.", + "08.", + "The Carmine 1.09 sensor had a visual range of of0.35-1.4 meter.", + "Tech Journal 09.", + "The Tech Journal is directed to describing the PrimeSense Capri 1.25 sensor.", + "10.", + "The Capri 1.25 sensor had a visual range of0.8-3.5 meter. Tech Journal 1.", + "Bury 11.", + "Bury is directed to describing body sizing pods.", + "12.", + "These pods use the same sensors as used in Microsoft Kinect (PrimeSense sensors-see Wong, infra) to measure waist, bust, hips, and leg length. Bury 1.", + "Wong9 13.", + "Wong is directed to describing how Kinect works. Wong, Title.", + "14.", + "Microsoft Kinect relies on PrimeSense sensors to sense in three dimensions. Wong 1-2.", + "Initially we construe the limitation \"directly measuring, via three dimensional (3D) depth sensing, using at least one sensor included in an item worn by a user, one or more physical dimensions of one or more body parts of the user. \" Claim 7, limitation 1.", + "On its face, this requires measuring a user's body part dimension.", + "This is done using three dimensional (3D) depth sensing to directly measure the dimension with a sensor.", + "The Specification describes examples of several sensors, but only one is described as using three dimensional (3D) depth sensing.", + "This is the series of PrimeSense sensors manufactured by PrimeSense Americas of Los Altos, California. Spec. I 44.", + "The Specification does not describe any other examples and does not describe how such sensors could be constructed or how to otherwise perform three dimensional (3D) depth sensing.", + "The Specification enables the claims only by using PrimeSense sensors.", + "PrimeSense, in its product literature, explicitly refers to its sensing as depth sensing as recited in the claims and that its sensors can measure sizes.", + "It does so using 3D sensing technology that gives digital devices the ability to observe a scene in three dimensions.", + "It translates these observations into a synchronized image stream.", + "Thus, directly measuring as recited in the claims means measuring by directly sensing the objective by the sensor to observe a scene in three dimensions and not by indirectly measuring from comparisons of data among multiple sensors or relying on otherwise known measurements between sensors.", + "Of particular relevance is that the claims recite that the sensors are included in an item worn by the user.", + "All PrimeSense sensors at the time of filing had a sensing distance range of 0.35-1.4 meter to 0.8-3.5 meter.", + "The import is that the sensor had to be minimally 0.35 meter (13-14 inches) from what was being observed to so measure.", + "The manner of wearing as claimed necessarily accommodated this requirement or else the sensor could not generate and receive proper data for the recited measurement.", + "That PrimeSense sensors were an enabling embodiment that could measure body parts as recited is confirmed by their use in Bodymetrics' Body Sensing Pods which measured body part measurements as recited in the claims, albeit as part of a dressing room like structure rather than a worn garment.", + "We therefore construe the phrase \"directly measuring, via three dimensional (3D) depth sensing, using at least one sensor included in an item worn by a user, one or more physical dimensions of one or more body parts of the user\" as meaning measuring one or more physical dimensions of one or more body parts of the user by directly observing a scene in three dimensions including the body parts by the sensor that is included in a garment worn so as to accommodate the sensor range requirements.", + "Claims 1-16 and 20 rejected under 35 U.S. C. 5 101 as directed to a judicial exception without significantlymore more STEP 110 Claim 7, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. S 101.", + "The issue before us is whether it is directed to a judicial exception without significantly more.", + "STEP 2 The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.", + "First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts.", + "Ifso, we then ask, \"[w]hat else is there in the claims before us?", + "To answer that question, \u00b7 consider the elements of each claim both individually and \"as an ordered combination\" to determine whether the additional elements *transform the nature of the claim\" into a patent- eligible application.", + "[The Court] described step two of this analysis as a search for an **inventive concept*' mie, an element or combination of elements that is **sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.\" Alice Corp. Pty. Ltd. 12.", + "CLS Bank Int 'I, 573 U.S. 208, 217-18 (2014) (citations omitted) (citing Mayo Collaborative Servs. V. Prometheus Labs, Inc., 566 U.S. 66 (2012)).", + "To perform this test, we must first determine what the claims are directed to.", + "This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea).", + "Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims **apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.", + "See Revised Guidance, 84 Fed. Reg. 54.", + "If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception.", + "STEP 2A Prong1 At a high level, and for our preliminary analysis, we note that method claim 7 recites creating sensor data, determining user state data, and determining recommendation data.", + "Creating data is generating data.", + "Determining data is rudimentary data analysis.", + "Thus, claim 7 recites generating and analyzing data.", + "From this we see that claim 7 does not recite the judicial exceptions of either natural phenomena or laws of nature.", + "Under Supreme Court precedent, claims directed purely to an abstract idea are patent in-eligible.", + "As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include: (1) mathematical concepts; (2) certain methods of organizing human activity; and (3) mental processes.", + "Among those certain methods of organizing human activity listed in the Revised Guidance are commercial or legal interactions.", + "Like those concepts, claim 7 recites the concept of managing sales activity.", + "Specifically, claim 7 recites operations that would ordinarily take place in advising one to recommend an article for sale based on its applicability to a customer's changing needs.", + "The advice to recommend an article for sale based on its applicability to a customer's changing needs involves providing recommendations, which is an economic sales act, and determining a recommendation that includes an article of clothing from an inventory, which is an act ordinarily performed in the stream of commerce.", + "For example, claim 7 recites \"providing recommendations, *, which is an activity that would take place whenever one is proposing a sale.", + "Similarly, claim 7 recites *determining \u00b7 \u00b7 a recommendation that includes an article of clothing from an inventory,\" which is also characteristic of proposing an inventory item for sale.", + "The preamble to claim 7 recites that it is a method for providing recommendations.", + "The steps in claim 7 result in managing sales activity by recommending an article for sale based on its applicability to a customer's changing needs absent any technological mechanism other than a conventional computer for doing so.", + "As to the specific limitations, limitations 1-3 recite generic and conventional generating and analyzing of user data, which advise one to apply generic functions to get to these results.", + "The limitations thus recite advice for recommending an article for sale based on its applicability to a customer' s changing needs.", + "To advocate recommending an article for sale based on its applicability to a customer' s changing needs is conceptual advice for results desired and not technological operations.", + "The Specification at paragraph 2 describes the invention as relating to providing user targeted recommendations on a device.", + "Thus, all this intrinsic evidence shows that claim 7 recites managing sales activity.", + "This is consistent with the Examiner's determination.", + "This in turn is an example of commercial or legal interactions as a certain method of organizing human activity because managing sales activity is a way of directing human commercial interaction for sales.", + "The concept of managing sales activity by recommending an article for sale based on its applicability to a customer'. s changing needs is one idea for qualifying customers for sales.", + "The steps recited in claim 7 are part of how this might conceptually be premised.", + "From this we conclude that at least to this degree, claim 7 recites managing sales activity by recommending an article for sale based on its applicability to a customer's changing needs, which is a commercial and legal interaction, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea.", + "STEP 2A Prong2 The next issue is whether claim 7 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application.", + "Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed with implementation details.", + "Claim 7, step 1 recites creating sensor data using a sensor in a worn item to directly measure body parts.", + "Claim 7 step 2 recites determining some user state based on this sensor data that includes the body measurement data.", + "The final step uses this data.", + "As we construe supra, this means measuring one or more physical dimensions of one or more body parts of the user by directly observing a scene in three dimensions, including the body parts, by the sensor that is included in a garment worn so as to accommodate the sensor range requirements and determining a state based on actual body part dimensions as measured by 3D depth sensors.", + "Thus claim 7 recites a specific technological means for acquiring actual physical measurement data to infer some bodily state.", + "Contrary to the Examiner's response at Answer 4-7, we cannot say this recites acquiring data by any and all possible means devoid of technological implementation details.", + "But using commercially available components in inventive ways may be patent eligible.", + "We conclude that claim 7 is directed to achieving the result of the concept of managing sales activity by recommending an article for sale based on its applicability to a customer' s changing needs as performed by a generic computer.", + "But claim 7 does so by creating sensor data using a sensor in a worn item to directly measure body parts in three dimensions and determining a user's state based on actual body part dimensions as measured by 3D depth sensors.", + "This is inventive given that the garment must be worn in an atypical manner to accommodate the minimum distance between sensor and objective (body parts) required by the known enabled sensor ranges at date of filing.", + "The claim therefore integrates the judicial exception into a practical application.", + "Claims 1-16 and 20 rejected under 35 U.S. C. 5 103(a) as unpatentable over Coza, Adeyoola, and Stirling We are persuaded by Appellant's argument that contrary to what is stated in the Final Office Action, the prior art fails to teach or suggest \"the at least one sensor to create first sensor data by directly measuring one or more physical dimensions of one or more body parts of the user while the item is worn by the user. \" Br. 20.", + "We are persuaded by Appellants' argument that Stirling and Adeyoola fail to describe measuring as recited in the claims. Br. 20-22.", + "The only way to do so described in the record is by PrimeSense sensors, and none of the applied references even suggest using such sensors or equivalents.", + "There is no evidence of record that equivalents to PrimeSense sensors existed or that one of ordinary skill would have known of or that there existed other or equivalent ways to measure as recited." + ] +} \ No newline at end of file diff --git a/opinion_split/2019001820_Mail_Decision.json b/opinion_split/2019001820_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..8e3c1b3bcc35af34428038163a125dfa3d1811a3 --- /dev/null +++ b/opinion_split/2019001820_Mail_Decision.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "Appellant argues claims 1-5 and 8 as a group.", + "Appellant argues that, because Gutierrez measures impedence in a fluid, \"if the drug in solid form is placed in the device of Gutierrez as suggested by the final Office Action, this modification would render inoperative the drug delivery device of Gutierrez for its intended purpose. Appeal Br. 7.", + "Specifically, Appellant contends that if a drug in solid form is placed inside chamber 101 of Gutierrez's device, Gutierrez's electrodes \"would determine an impedance that is neither the impedance of the fluid' nor the impedance of the solid, but rather a mixture of the two impedances. Id. at 8.", + "According to Appellant, \"detecting an impedance that corresponds neither to the fluid nor to the solid, 0 would not help with the accuracy of *fluid delivery,' which is the intended purpose of the device in Gutierrez.' Id.", + "Appellant asserts that placing a drug in solid form in the device of Gutierrez \"would degrade the impedance measurements that are used to detect the volume changes and flow rate, which would [render] unsatisfactory the Gutierrez's device for its intended purpose,\" and thus, *one skilled in the art would not modify the device of Gutierrez \u00b7 \u00b7 \u00b7 as proposed by the final Office Action, because the device of Gutierrez is designed to work only with fluids, not solids. \" Id.", + "Appellant replies that \"there is no evidence supporting the Examiner*. s assertion that the solid drug, if placed in the device of Gutierrez, would dissolve 0 to form a fluid\" allowing Gutierrez'. s impedance measurement system 103 to determine the impedance of the fluid. Reply Br. 6.", + "Appellant contends that using a solid drug in Gutierrez and measuring its impedance *is not supported by any evidence and the burden is on the Office to support the proposed modification, and not on the Appellant to show that the modification would not work.\" Id.", + "Appellant next argues that the Examiner fails to establish prima facie obviousness, because the rejection relies on both the embodiment of Figure 4 of Gutierrez having one port, and the embodiment of Figure 1 of Gutierrez having two ports, without explaining why Figure 4 would be modified to have two ports.", + "Appellant argues that claim I's recitation of \"the reservoir stor[ing] a drug in solid form,' is a structural difference that is not disclosed by the applied art combination. Appeal Br. 11.", + "Appellant contends that the Examiner relies on an unsupported assertion that \"the device in Gutierrez is capable of performing such features, but there is no indication that indeed the device in Gutierrez can perform such features when the device has only one port and no drug in solid form.\" Id.", + "Appellant argues that the Examiner erred in finding that Meng's catalyst corresponds to the claimed reformer, because \"it is not clear whether (1) the catalyst is also the electrode because both of them are made of', 'platinum or (2) the catalyst is added separately from the electrode.\" Appeal Br. 12.", + "Appellant notes that independent claim 21 differs from claim 1 because claim 21 does not recite a reformer as in claim 1 and because claim 21 recites \"an orifice\" instead of an inlet orifice and an outlet orifice. Appeal Br. 13.", + "Appellant contends that the arguments regarding Gutierrez and Gordon \"above are also applicable to Claim 21,\" and \"are incorporated herein by reference,\" , and that reversal of Rejection III is warranted based on those arguments. Id." + ], + "examiner_findings": [ + "I. Claims 1-5 and 8 stand rejected under 35 U.S.C. & 103 as unpatentable over Gutierrez, Meng, and Gordon. Final Act. 4.", + "II. Claims 6, 7, and 9-12 stand rejected under 35 U.S.C. 5 103 as unpatentable over Gutierrez, Meng, Gordon, and Liu. Final Act. 8.", + "III. Claims 21, 22, and 24 stand rejected under 35 U.S.C. 5 103 as unpatentable over Gutierrez and Gordon. Final Act. 10.", + "IV. Claims 23, 25, and 28 stand rejected under 35 U.S.C. 5 103 as unpatentable over Gutierrez, Gordon, and Meng. Final Act. 12.", + "V. Claims 26 and 27 stand rejected under 35 U.S.C. & 103 as unpatentable over Gutierrez, Gordon, Meng, and Liu. Final Act. 14.", + "The Examiner finds that Gutierrez discloses most of the limitations of the drug delivery device of claim 1, including a pump having a chamber and a reservoir, but does not disclose a reformer positioned within the chamber or the reservoir storing a solid drug. Final Act. 5.", + "The Examiner relies on Meng to teach a reformer, concluding that it would have been obvious to modify Gutierrez to add Meng' s reformer to \"render the electrolysis reversible and quickly reforms the gas back into liquid which is necessary for subsequent drug delivery.\" Id. at 6.", + "The Examiner relies on Gordon to teach a reservoir storing a solid drug, concluding that it would have been obvious \"to have modified the drug of Gutierrez to be a drug in solid form for the purpose of choosing a drug most suited for the intended therapeutic goal of the procedure or patient.\" Id.", + "The Examiner responds that one skilled in the art \"would understand that a fluid composed of a combination of materials (bodily fluid and dissolved drug) would also necessarfily] exhibit an impedance as a part of the fluid's overall properties that would be measurable by the impedance system of Gutierrez.\" Ans. 15.", + "The Examiner asserts that, because a solid drug placed in the device of Gutierrez would be \"dissolved in bodily fluid and is, therefore, a fluid itself which has a measurable impedance . \u00b7 \u00b7 the fluid comprising dissolved drug is wholly compatible with the system of Gutierrez since the system is configured to measure the impedance of a fluid.\" Ans. 15-16.", + "The Examiner finds that, even if Gordon's device may include drugs that are solid at some point, \"the solid drug [of Gordon] is dissolved in bodily fluid and is, therefore, a fluid itself which has a measurable impedance.\" Ans. 15.", + "The Examiner responds that the combination of Gutierrez and Gordon discloses a solid drug in the reservoir, and \"once combined, the pump of modified Gutierrez is fully capable of performing the function of the claimed electrolytic pump since the device comprises all of the required elements. \" Ans. 17.", + "The Examiner notes that the modified Gutierrez pump *is fully capable of performing the stated function since Gutierrez discloses that the singular fluid path may be replaced with two separate fluid paths to act as an inlet and outlet [paths]. Id. (citing Gutierrez, 8:30-36).", + "The Examiner responds that Meng distinguishes the electrodes from the catalyst because \"Meng consistently refers to the at least two electrodes as 'the electrodes.' When discussing the existence of a reformer, which is designed to recombine gasses in the pump, Meng discloses the reformer as *a catalyst.' This notable change in terminology signifies the reformer being separate from the electrodes.\" Ans. 17." + ], + "ptab_opinion": [ + "We select independent claim 1 as representative of the group. See 37 C.F.R. $ 41.37(c)(1)(iv) (2017).", + "Claims 2-5 and 8 stand or fall with claim 1.", + "The Examiner has the better argument here.", + "The Examiner' s findings are supported by Gordon, which discloses that a solid drug *is dissolved,' and that \"Ithe release of the drug is controlled by the solubility of the drug in gastric fluid.\" Gordon I 6.", + "Thus, although Gordon's drug may start out solid, it is dissolved.", + "Appellant does not persuade us that an impedance of the dissolved drug would not be measurable.", + "A preponderance of the evidence, therefore, supports the Examiner's s position that the bodily fluid having a drug dissolved therein is a fluid similar to those measured by Gutierrez, and has a measurable impedance.", + "We are apprised of no intended purpose of Gutierrez for which the modified device would be unsuitable.", + "We are not persuaded by this argument. See Appeal Br. 8- 10; see also Reply Br. 7-8.", + "Thus, Gutierrez explicitly suggests use of the embodiments of its Figures 1 and 4 together.", + "Moreover, as the Examiner correctly notes, Gutierrez also discloses that the features of the invention comprise *[i]nclusion of one or more paths for fluid exchange to the fluid container such that the container may be filled or emptied through the paths. The inlet and outlet paths may be the same or separate, and multiple paths may be used for either filling or emptying.\" Gutierrez, 8:30-34: see also Ans. 16.", + "Because Gutierrez discloses that the inlet and outlet paths may be the same or separate, the Examiner need not provide an additional reason for making the paths separate.", + "Appellant's arguments are not persuasive.", + "We discern no error in the Examiner's determination that Gutierrez' s reservoir is capable of holding a drug in solid form (see Gordon I 46) that is dissolved by a bodily fluid (see Gordon I 6) and expelled through an outlet. See Final Act. 5; see also Ans. 17.", + "Thus, Appellant's s argument is not persuasive, because it does not address the combination of references proposed by the Examiner, which includes the inlet and outlet of Gutierrez and the solid drug of Gordon that is dissolved by a bodily fluid.", + "The Examiner has the better position.", + "As such, Meng distinguishes between electrodes (anode and cathode) that actuate electrolysis (produce oxygen and hydrogen), and a catalyst that if present speeds the reaction when voltage polarity is reversed resulting in recombination and reforming.", + "Although we appreciate that Meng's electrodes and catalyst both could be platinum, because Meng's electrodes could also be gold or palladium that are used with a platinum catalyst, a preponderance of the evidence supports the Examiner's s position that the catalyst (reformer) is separate from the electrode. Cf Spec. 10:12-13 and 13:2.", + "We have considered each of Appellant's arguments for the patentability of claim 1, and are not persuaded of Examiner error.", + "Accordingly, we sustain the Examiner'. rejection under 35 U.S.C. 5 103 of claim 1 as unpatentable over Gutierrez, Meng, and Gordon.", + "Claims 2-5 and 8 fall with claim 1.", + "For the reasons set forth above, we sustain Rejection II.", + "For the reasons set forth above, Appellant's s arguments do not persuade us of Examiner error.", + "For the same reasons as in Rejection 1, we sustain Rejection III.", + "For the reasons set forth above, we sustain Rejections IV and V." + ] +} \ No newline at end of file diff --git a/opinion_split/2019002086_Mail_Decision.json b/opinion_split/2019002086_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..e00c6a6c407ed225a37fab105c0e44ab5ef54f29 --- /dev/null +++ b/opinion_split/2019002086_Mail_Decision.json @@ -0,0 +1,19 @@ +{ + "appellant_arguments": [ + "Appellant argues that although \"Frame Sync and Control signal 200 provides . \u00b7 \u00b7 information indicating \u00b7 \u00b7 \u00b7 which of the subframes \u00b7 \u00b7 \u00b7 are uplink subframes and which are downlink subframes, it fails to indicate \"which of these subframes \u00b7 . \u00b7 are assigned to the first wireless apparatus\" as opposed to being **assigned to a completely different second wireless apparatus. \" Appeal Br. 10." + ], + "examiner_findings": [ + "The Examiner finds that Cai *discloses the Frame Sync and Control signal 200 defines the subframe structure of the entire frame, \" including \"the directionality 202 of each subframe (i.e., whether the subframe is used for downlink or uplink transmissions).' \" Ans. 3-4 (citing Cai I 65, Fig. 2).", + "According to the Examiner, in Cai, the word ***uplink' refers to transmissions from a Mobile Station (MS) to a Base Station (BS)\" whereas the word \" **downlink* refers to transmission from BS to MS.\" Id. at 4 (citing Cai I 19).", + "Therefore, the Examiner determines that \"a person of ordinary skill in the art will understand that the Frame Sync and Control signal 200 is a resource assignment because MS uses Frame Sync and Control signal 200 to determine when to use the resource (subframe) for transmission to the BS (uplink) and when to expect transmissions from the BS (downlink). Id." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We REVERSE.", + "We agree with Appellant.", + "Even if Cai taught a \"special case\" where there was only a single sender and a single recipient, see Cai I 19, the claims require that \"the non-legacy control data comprises . . \u00b7 [the] resource assignment assigned to the wireless communications apparatus,' not that the assignment can be inferred from the control data.", + "Therefore, the Examiner has not sufficiently shown how Cai's directionality teaches or suggests this limitation.", + "The Examiner does not rely upon the additional references Kobayashi and Ho-A-Chuck to make up for the deficiency in Cai.", + "Accordingly, we do not sustain the Examiner's rejection of claims 1- 20 and 23." + ] +} \ No newline at end of file diff --git a/opinion_split/2019002478_Mail_Decision.json b/opinion_split/2019002478_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..e5ce1fcbd644cd6be8f348e38f133eca797b0399 --- /dev/null +++ b/opinion_split/2019002478_Mail_Decision.json @@ -0,0 +1,25 @@ +{ + "appellant_arguments": [ + "Appellant argues that the Examiner erred in relying on Dobrovnik's drawings as allegedly showing a curved seam because Dobrovnik's drawing is not explicitly made to scale. App. Br. 7.", + "Appellant also argues that portions of Dobrovnik teach *that its seams or *connnecting lines represent weak points' and that *the invention permits a minimization of the seam' by locating the seams in an area where *the total length of the connecting lines is minimal. *** App. Br. 10 (citing Dobrovnik translation, p. 2, I 8).", + "Appellant's 's assertion is that Dobrovnik's minimization of seam length would lead one of skill in the art to understand \"that a curved seam will be longer than a straight seam\" and so Dobrovnik's seams must be straight.", + "Lastly, Appellant argues that Dobrovnik does not actually teach a seam because Dobrovnik teaches overlapping of the shoe portions so as to allow for a single pattern to be used in making multiple sizes of shoes." + ], + "examiner_findings": [ + "Claims 21-41 stand rejected under 35 U.S.C. 103(a) as unpatentable over Dobrovnik and Sokolowski. Final Act. 3." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "Although it is generally true that drawings cannot be relied upon for precise measurements, here the Examiner does not rely on Dobrovnik for such precision.", + "The claim requires only a curved seam and Dobrovnik's drawing is sufficient to show that the seam shown therein is curved. See Dobrovnik, drawing (showing curvature along edge regions 32a, 32b, 33a, 33b).", + "Dobrovnik itself does not teach that seams should be straight, merely that seams should be as short as possible.", + "Given the shape of shoes, we do not understand Dobrovnik as teaching that all seams in a shoe should be straight in order to minimize seam length.", + "Further, the seam in Dobrovnik's Figure between 32a and 32b is clearly curved.", + "Regardless of the overlapping, the portions being mated together are still curved and would require some kind of curved seam.", + "One of skill in the art would not utilize a straight seam to connect two curved edge portions as shown in Dobrovnik.", + "Furthermore, although overlapping might allow for a single pattern to be utilized for smaller shoes, such overlap does not mean that a seam is not required, and when used for the largest size, overlapping would be minimal if done at all.", + "Lastly, although not necessary to support the rejection, we note that Sokolowski specifically teaches that sewing machines have limitations whereas *`[a]rticles including adhesive element based seams, on the other hand, may have any desired shapes, including irregular, non-linear shapes, sharp angles, small-radius curves, scalloped edges, pinked edges, or other complex features.\" Sokolowski col. 17, 11. 20-24.", + "Given this teaching, it is clear that using adhesive tape was well-known when dealing with non- straight seams." + ] +} \ No newline at end of file diff --git a/opinion_split/2019002608_Mail_Decision.json b/opinion_split/2019002608_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..930e92995043e3415a2c6c443aad048cec137dc8 --- /dev/null +++ b/opinion_split/2019002608_Mail_Decision.json @@ -0,0 +1,48 @@ +{ + "appellant_arguments": [ + "Appellant disagrees with the Examiner's underlying factual findings and ultimate legal conclusion of obviousness: Sethi is silent as to a \"video controller adjustling] an attribute of the capturing of the video image by the video sensor, ,, as required by claim 1.", + "Additionally, Sethi is silent as to providing a \"throttling signal, \" as claimed.", + "Appellant submits that a user selecting one particular stream, over another particular stream, fails to teach or reasonably suggest a throttling signal that is used to alter the content captured for the conference.", + "The teachings of Sethi are limited to an ability to select one stream from several streams.", + "It is a conference participant that makes the decision as to which stream to select (see, Sethi, col. 7, lines 10-16).", + "Sethi may provide a selection option of a stream but such a selection may be based on a viewer' s preference or other motivation which, by happenstance, a need for a particular bandwidth. Appeal Br. 4 (alteration in original)." + ], + "examiner_findings": [ + "The Examiner finds Sethi teaches \"a video controller configured to receive a throttling signal, via the network interface, from an endpoint receiving the video image. \" Final Act. 4 (citing Sethi, col. 7, lines 4-34).", + "In the Answer, the Examiner clarifies that the claimed \"throttling signal\" is being read on the request described in Sethi (Col 7, lines 4-34) for a lower or higher bit rate or no video at all. Ans. 13 (emphasis added).", + "The Examiner reads the \"video sensor\" of claim 1 on a **multipoint video conference system\" found in Sethi. Final Act. 4; Ans. 4.", + "In the Answer, the Examiner clarifies the mapping of the \"video controller\" recited in claim 1.", + "The Examiner now finds the \"video controller\" is inherently taught by processor 802, in Figure 8 of Sethi. See Ans. 13.", + "The Examiner finds *Sethi does not disclose adjusting an attribute of the capturing of the video image by the video sensor. \" Final Act. 5.", + "The Examiner turns to Ruefto teach or suggest what is found missing in Sethi. Id.", + "The Examiner finds: Ruef discloses telepresence facilitating collaboration by two or more persons (abstract), wherein [?] detects the available bandwidth on the network and adjusts [the] frame rate and picture quality associated with the video (claim 5 of the patent).", + "Therefore, it would have been obvious to one with ordinary skill in the art before the filing date of the claimed invention to modify Sethi in order to improve the system and allow more predictable results. Final Act. 5 (emphasis added)." + ], + "ptab_opinion": [ + "Under 35 U.S.C. 9 103, we focus our analysis on the argued limitations of claim 1 that we find are dispositive regarding Rejection A of independent claims 1, 11, and 17.", + "Issue: Did the Examiner err by finding that Sethi and Ruef collectively teach or suggest the dispositive \"throttling signal\" limitation: a video controller configured to receive a throttling signal, via the network interface, from an endpoint receiving the video image; wherein the thro ttling signal comprises a conference mode of a conference, the conference being provided by a host and the conference comprising the video image provided by the communication device and another conference portion provided by another device; and wherein, in response to the thro ttling signal, the video controller adjusts an attribute ofthe capturing ofthe video image by the video sensor, the attribute effecting the encoding of the video image uploaded to the host via the network interface for receipt, as a portion of the conference, by a number of devices associated with a number of conference participants, the conference comprising the video image as adjusted[,] within the meaning of independent claim 193 Appeal Br. 10 (emphasis added), see also Final Act. 4-5.", + "However, in reviewing the Final Action (id.), we find the Examiner does not identify the specific element or feature found in Sethi (at col. 7, lines 4-34) that teaches or suggests the claimed \"throttling signal. *, Claim 1.", + "Turning to the evidence, we reproduce the cited portion of Sethi below:", + "As an initial matter of claim construction, we focus our analysis on the claim term \"throttling signal. \" Claim 1.", + "Turningtogeto the Specification for context, we find non-limiting, exemplary descriptions, for example, at paragraphs 7-9:", + "The embodiment described in paragraph 7 (id.) corresponds to independent claim 1 (\"A communication device\").", + "Paragraphs 8 and 9 of Appellant's Specification describe alternative embodiments, corresponding to independent claim 11 (\"A method\") and independent claim 17 (\"A server\"), respectively:", + "However, in reviewing the evidence, we find no literal **multipoint video conference system\" in Sethi.", + "Presumably the Examiner is reading the *video sensor\" recited in claim 1 on the conference system shown in Sethi's Figure 1, which is described as \"a physical conferencing data distributed system that includes a single conference data dispatch system that dispatches conference data to multiple conference participant computing systems.' \" Sethi, col. 2, 11. 32-35.", + "In the absence ofa more precise mapping from the Examiner, we read the claimed \"video sensor\" on the various cameras that capture video in each of the cited Sethi and Ruef references.", + "We note Sethi only mentions a literal *camera* once, at column 8, lines 15-16, referring to \"panoramic cameras.\"", + "Presumably, at least laptop computer 702B, as depicted in Sethi's Figure 7, would also include a camera for capturing video of each respective conference participant.", + "We note Ruef is directed to: A method and system providing wireless personal telepresence facilitating collaboration by two or more persons, each in different locations, on a task at one ofthe locations and requiring visualization by multiple persons.", + "We note Ruef expressly depicts a video camera 30 (i.e., \"video sensor\") in Figure 2.", + "However, Appellant's claim 1 further requires: wherein, in response to the thro ttling signal, the video controller adjusts an attribute ofthe capturing ofthe video image by the video sensor, the attribute effecting the encoding of the video image uploaded to the host via the network interface for receipt, as a portion of the conference, by a number of devices associated with a number of conference participants, the conference comprising the video image as adjusted.", + "Turning to the evidence, we find the functions performed by Sethi's processor 802 are only described in general terms: e.g, \"[a]s illustrated in FIG. 8, in its most basic configuration, a computing system 800 typically includes at least one processing unit 802 and memory 804. \", Sethi, col. 11, 11. 58-60 (emphasis added).", + "However, instead of citing to the detailed description of Ruef as evidence, the Examiner relies upon claim 5 of Ruef for teaching the adjusting of**an attribute of the capturing of the video image by the video sensor, as recited in claim 1.", + "Because the Examiner omits what specific element in Ruef adjusts the frame rate and picture quality of the video, we reproduce claim 5 of Ruef here:", + "We note claim 1 of Ruef (from which claim 5 depends) describes the management console as an element that compresses video and audio: \"a management console disposed with the first person, the management console for compressing video and audio generated by the first person and transmitting the compressed video and audio over the network. \" (Emphasis added.)", + "Significantly, the management console in Ruef* detects the available bandwidth on the network and adjusts frame rate and picture quality associated with the video based upon detection ofthe available bandwidth on the network, and not based upon a throttling signal, as required by the express language of claim 1, and also by the similar language of claim 17: a processor, configured to receive by the second device and via the network interface, a first indicia of a presentation mode ofthe conference portion selected by a user of the second device, in response to the first indicia, transmit to the first device, via the network interface, a throttling signal to cause a video sensor of the first device to adjust the capturing of an image captured thereby. Claim 17 (emphasis added).", + "As also persuasively argued by Appellant: *Appellant submits that a user selecting one particular stream, over another particular stream, [in Sethi] fails to teach or reasonably suggest a throttling signal that is used to alter the content captured for the conference.' Appeal Br. 4 (emphasis added).", + "We find the Examiner has not fully developed the record to show how the \"request\" found in Sethi (Col. 7, lines 4-34), when modified by Ruef, teaches the disputed \"throttling signal\" wherein, in response to the thro ttling signal, the video controller adjusts an attribute ofthe capturing of the video image by the video sensor, the attribute effecting the encoding of the video image uploaded to the host via the network interface for receipt, as a recited in independent claim 1, and recited in similar form having commensurate scope in independent claim 17.", + "Independent method claim 11 is somewhat broader than claims 1 and 17, and recites a step of signaling instead of a literal throttling signal to cause a video sensor of the first device to adjust the capturing of an image captured thereby: receiving a conference mode indicia from the second conference device, wherein the conference mode indicia is associated with the conference content as displayed on the second conference device; and signaling the first conference device to alter the capturing of the video portion capturedby by a video sensor ofthe first conference device providing conference content in accord with the conference mode indicia. Claim 11 (emphasis added).", + "Even though the adjective **throttling** is omitted from the \"signaling\" recited in method claim 11, we find the positively-recited step of of**signaling\" in claim 11 is not taught or suggested by the Examiner's relied-upon combination of Sethi and Ruef, for essentially the same reasons argued by Appellant in the Briefs, as further discussed above." + ] +} \ No newline at end of file diff --git a/opinion_split/2019002925_Mail_rehearing_decision.json b/opinion_split/2019002925_Mail_rehearing_decision.json new file mode 100644 index 0000000000000000000000000000000000000000..53154c4cbe503f39d39865abc64326088bbd2102 --- /dev/null +++ b/opinion_split/2019002925_Mail_rehearing_decision.json @@ -0,0 +1,14 @@ +{ + "appellant_arguments": [ + "Appellant's Request for Rehearing is limited to asking us to designate our affirmance of the Examiner's rejections under 35 U.S.C. $ 103(a) as including new grounds of rejection.", + "Specifically, Appellant argues that our Decision includes undesignated new grounds of rejection for each of Rejections I, II, and III because our \"Decision goes beyond the grounds of rejection relied upon by the Examiner\" by relying on \"new facts . \u00b7 that go beyond those relied upon and presented by the Examiner in both the Final Office Action and in the Examiner's Answer,\" and *rationales not previously raised or presented by the Examiner in support of the rejections.\" Req. Reh'g 4-5.", + "Appellant argues that although our Decision discusses paragraphs 31 and 35-40, 57, and 58 of Ludwig, these disclosures were not *relied upon the Examiner to support\" Rejections I, II, and III. Req. Reh'g 'g 4-5." + ], + "examiner_findings": [], + "ptab_opinion": [ + "We find Appellant's arguments persuasive.", + "The 103(a) rejections as discussed in our Decision include new grounds of rejection.", + "In the interests of fairness and due process, we, therefore, agree that the S 103(a) rejections should be designated as new grounds of rejection, to afford Appellant a full opportunity to respond.", + "We, accordingly, grant Appellant's request to designate Rejections I, II, and III as new grounds of rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2019003025_Mail_Decision.json b/opinion_split/2019003025_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..5cb5c4ea17dc7af0646ec97e1ebce208a2491c09 --- /dev/null +++ b/opinion_split/2019003025_Mail_Decision.json @@ -0,0 +1,39 @@ +{ + "appellant_arguments": [ + "CLAIMED SUBJECT MATTER- Appellant describes the invention as relating to a method for detecting error in a signal. Spec. 1.", + "Appellant explains that in the field of data transmission, there is a need to balance the desire for a sophisticated digital encoding scheme with the desire for being able to exchange data with high throughput and simple implementation and architecture. ld. at 1-2.", + "To improve this \"trade-off between robustness with respect to distortions, a simple implementation of the architecture and a high throughput of data, ~ Appellant discloses a receiver circuit that indicates an error where certain time periods do not meet a predetermined verification relationship. Id. at 2.", + "Appellant argues that the Examiner has not established that Matsumoto teaches or suggests claim 1's recitation \"wherein the receiver is adapted to indicate an error, if the determined first and second time periods do not fulfill a predetermined verification relationship with respect to one another.\" Appeal Br. 3-6 (emphasis modified)." + ], + "examiner_findings": [ + "REJECTIONS The Examiner maintains (Ans. 3) the following rejections on appeal:", + "A. Claims 1-7, 18, and 20 under 35 U.S.C. 8 103 as obvious over Matsumoto. Final Act. 5.", + "B. Claim 8 under 35 U.S.C. S 103 as obvious over Matsumoto in view of Hammerschmidt. Id. at 7-8.", + "The Examiner rejects independent claims 1 and 18 as obvious over Matsumoto. Final Act. 5.", + "The Examiner finds that, \"Matsumoto disclose[s] the predetermined verification relationship with respect to one another based on two cycles of rate transition of rate transition. \" Final Act. 5; see also Ans. 5.", + "The Examiner determines that \"adapting the verification relationship based on one rising edge interval and one falling edge interval of data transition is within the scope of one of ordinary of skill in the art, \" that it would have been obvious \"to use a predetermined verification relationship with respect to each other, \" and that \"[the motivation or suggestion to do so is to increase the data rate. . Final Act. 5-6; see also Ans. 5.", + "The Examiner determines that implementing such a verification would have been within the skill of a person of ordinary skill in the art and that a person of skill in the art would have been motivated \"to increase the data rate.\" Ans. 5." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Pursuant to 35 U.S.C. 134(a), Appellant' appeals from the Examiner's decision to reject claims 1-8, 18, and 20.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We REVERSE.", + "Claim 1 and 18 are the independent claims on appeal.", + "Claim 1 is illustrative, we reproduce it below with emphasis added to recitations at issue on appeal: 1. A receiver, comprising: a receiver circuit to receive a pulse width encoded signal having a first transition in a first direction, a second transition after the first transition in a second direction, a third transition after the second transition in the first direction and a fourth transition in the second direction of the signal, wherein the receiver circuit is adapted to determine a first time period between the first and third transitions and to determine a second time period between the second and fourth transitions, and wherein the receiver circuit is adapted to determine a datum based on at least one of the first time period and the second time period; and wherein the receiver is adapted to indicate an error, if the determined first and second time periods do not fulfill a predetermined verification relationship with respect to one another. Appeal Br. 8 (Claims App.).", + "Claim 18 recites a method for detecting an error and includes recitations similar to claim 1. Id. at 9-10.", + "REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal:", + "Name Reference Date Matsumoto US 5,315,299 May 24, 1994 Hammerschmidt et al. US 2010/0002821 A1 Jan. 7, 2010 (\"Hammerschmidt\")", + "OPINION The Examiner has the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. 5 103.", + "In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (\"[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. \").", + "To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. KSR Int 'I Co. V. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).", + "To resolve the issues before us on appeal, we focus on the Examiner's findings and determinations that relate to the error Appellant identifies.", + "We agree.", + "Claim 1 requires that the receiver be adapted to evaluate some comparison of the first and second time periods.", + "For example, the periods could be compared to determine whether or not they deviate from each other by more than a given percentage. Spec. 18-19.", + "Similarly, claim 18 recites, \"indicating an error, if the determined first and second time periods do not fulfill a predetermined verification relationship with respect to one another. \u00b7\u00b7", + "Matsumoto determines various counter values, inputs the output of the interval measurement counter to a reception decoder circuit, and may indicate an error based on unexpected counter values. Matsumoto 6:49-7:28; Figs. 5, 6.", + "The Examiner has not adequately explained, however, how Matsumo teaches or suggests determining whether two time periods fulfill a predetermined verification relationship with respect to one another (i.e., by making some comparison of the two time periods).", + "The Examiner, however, does not cite evidence or provide sufficient reasoning to adequately support these positions.", + "We agree with Appellant that the Examiner has not adequately explained why Matsumoto suggests such a modification. Appeal Br. 5." + ] +} \ No newline at end of file diff --git a/opinion_split/2019003208_Mail_Decision.json b/opinion_split/2019003208_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..adb8be4c4b4ca42be55fa797720e40f27446666a --- /dev/null +++ b/opinion_split/2019003208_Mail_Decision.json @@ -0,0 +1,55 @@ +{ + "appellant_arguments": [ + "Appellant also argues the **current claims involve a highly-specific set of operations that provide a clear technical benefit (e.g., faster processing ).\" Reply Br. 6." + ], + "examiner_findings": [ + "The Examiner cites Meisel's s paragraphs 1-4 for teaching the disputed claim limitation.", + "The Examiner applies the same findings and conclusions (discussed above) to both claims 69 and 84." + ], + "ptab_opinion": [ + "We disagree with Appellant's arguments.", + "To the extent consistent with our analysis below, we adopt the Examiner's findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer.", + "Because all of the italicized functions can be performed by a human using a pen and paper, they are like the mental processes in CyberSource and Synopsys.", + "For example, a person can *receiv[e] \u00b7 \u00b7 \u00b7 one or more messages associated with one or more actions to be performed in the hospital`' via paper, and \"plac[e] . . \u00b7 the one or more messages in a queue\" by drawing a queue on paper.", + "Further, a person can *assess[] \u00b7 . \u00b7 a queued message, in combination with one or more other messages, against one or more misleading message patterns stored \u00b7 . . , wherein the one or more misleading message patterns comprises two or more messages comprising at least one misleading message, wherein the at least one misleading message is at least in part a fictional message, wherein the fictional message is a message that is initiated or entered into a system by user even though the message is known to not reflect actual conditions or needed actions, wherein the fictional message is entered or initiated for administrative purposes for the purpose of bed hiding\" mentally or by using a pen and paper.", + "Similarly, a person can *determin[e] \u00b7 \u00b7 \u00b7 that the combination of the queued message and the one or more other messages matches one or more of the misleading message patterns so as to indicate or suggest that the message is a misleading message based on the message being at least in part a fictional message entered or initiated for administrative purposes for the purpose of bed hiding\" mentally or by using a pen and paper.", + "In addition, a person can **remov[e] \u00b7 \u00b7 \u00b7 upon determining that the queued message matches a pattern so as to indicate or suggest that the message is a misleading message based on the message being at least in part a fictional message, the message from the queue or modifying the message\" by crossing off the message from the queue, or modifying the message on paper.", + "As a result, we conclude claim 44 recites mental processes, and thus an abstract idea.", + "Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant's assertions (Appeal Br. 12-15, Reply Br. 2-8), claim 44 does not recite additional elements that integrate the judicial exception into a practical application.", + "In particular, Appellant's argument that \"the current claims \u00b7 involve a particularly inventive technical improvement\" (Reply Br. 6) is unpersuasive because \"a claim for a new abstract idea is still an abstract idea.\"", + "However, our reviewing court has declared: While the claimed system and method certainly purport to accelerate the process of analyzing audit log data, the speed increase comes from the capabilities of a general-purpose computer, rather than the patented method itself.", + "Applying this reasoning to the rejected claims, we similarly find any purported *faster processing\" (Reply Br. 6) comes from the capabilities of general-purpose computers (the recited **environmental services management system implemented on one or more computing devices\" and \"a queue manager of the environmental services management system\"), rather than the claimed functions.", + "Similar to the claims of FairWarning, claim 44 is *not directed to an improvement in the way computers operate\" and \"the focus of the claims is not on \u00b7 \u00b7 \u00b7 an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.\"", + "Further, Appellant's argument (Reply Br. 7-8) about McRO, Inc. V. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) is unpersuasive.", + "This case is different from McRO because unlike the claims of McRO, claim 44 is not directed to \"a specific asserted improvement in computer animation, \" let alone \"us[ing] a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.'", + "Contrary to the claims of McRO and as discussed above, claim 44 is directed to patent-ineligible mental processes.", + "Further, Appellant's arguments about DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Appeal Br. 12-14) are unpersuasive.", + "Unlike the claims of DDR, claim 44 does not \"specify how interactions with the Internet are manipulated to yield \u00b7 \u00b7 \u00b7 a result that overrides the routine and conventional sequence of events\" or provide similar technology improvements.", + "Further, this case is distinguished from DDR because claim 44 recites an invention that merely uses computing devices as tools---the opposite of what the claims of DDR represent.", + "As a result, we conclude claim 44 does not recite additional elements that integrate the judicial exception into a practical application.", + "Turning to Step 2B of the Guidance (Alice step two), Appellant does not persuasively argue any specific limitation is not well-understood, routine, or conventional in the field.", + "Nor does Appellant persuasively argue the Examiner erred in that aspect.", + "As a result, Appellant has not persuaded us the Examiner erred with respect to the Guidance's Step 2B analysis.", + "In particular, Appellant cites BASCOM Global Internet Services, Inc. 17. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 14-15), but does not persuasively explain why that case is similar to the present case.", + "Unlike the claims of BASCOM, claim 44 is not directed to an *installation of a filtering tool at a specific location, remote from the end- users, with customizable filtering features specific to each end user\" or similar improvements.", + "Nor does claim 44 \"give[] the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server\" or provide similar benefits.", + "To the contrary and as discussed above, claim 44 is directed to a new abstract idea.", + "Further, Appellant's argument about prior art rejection (Appeal Br. 15) is unpersuasive, because prior art rejections are determined under 35 U.S.C. 55 102-103, which are different statutory requirements.", + "Our reviewing court further guides that \"[elligibility and novelty are separate inquiries.\"", + "As a result, Appellant has not persuaded us the Examiner erred with respect to the Guidance's Step 2B analysis.", + "Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner's rejection of claims 44 under 35 U.S.C. S 101.", + "We also sustain the Examiner's rejection of claims 46, 47, 49, 50, 53- 69, and 84, as Appellant does not advance separate substantive arguments about those claims.", + "We have reviewed the Examiner's rejection in light of Appellant's contentions and the evidence of record.", + "We concur with Appellant's contentions that the Examiner erred in determining the cited portions of Shine, Shanahan, Tallman, and Meisel collectively teach \"the fictional message is entered or initiated for administrative purposes for the purpose of bed hiding,\" as recited in independent claim 44.", + "We have reviewed the cited Meisel portions, and they do not discuss \"the fictional message is entered or initiated for administrative purposes for the purpose of bed hiding, , as required by claim 44.", + "Absent further explanation from the Examiner, we do not see how the cited Meisel portions teach the disputed claim limitation.", + "Further, we disagree with the Examiner's s assertion about intended use (Ans. 9).", + "Claim 44 (and claim 69) is a method--not a product--claim, and Schreiber's intended-use doctrine is inapplicable here.", + "In any event, the Examiner has not established why the disputed limitation merely constitutes intended use or result, and should not have patentable weight.", + "In addition, the Examiner asserts the doctrine of non-functional descriptive material (Ans. 5-6), but does not adequately explain why that doctrine applies to the disputed limitation.", + "Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner's rejection of claim 44.", + "Therefore, for similar reasons, we reverse the Examiner's rejection of independent claims 69 and 84.", + "We also reverse the Examiner's rejection of corresponding dependent claims 46, 47, 49, 50, and 53-68.", + "Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcome the deficiency discussed above in the rejection of claim 44." + ] +} \ No newline at end of file diff --git a/opinion_split/2019004338_Mail_Decision.json b/opinion_split/2019004338_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..b52eb556f6b7572c5f146518f6e137eccc917db0 --- /dev/null +++ b/opinion_split/2019004338_Mail_Decision.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "Appellant does not dispute that these steps are known in the art but argues instead that \"none of the references cited by the Examiner relates to the process recited in Appellant's claims.\"", + "More specifically, Appellant argues that Tossavainen is non-analogous art because it *is directed to the production of a lactose-free milk product\" and *do[es] not even generally relate to a process of producing colorless vat milk by removing riboflavin \u00b7 \u00b7 \u00b7 \" Id. at 15, 16.", + "See Appeal Br. 17 (arguing instead that Nagasawa *relate[s] to the production of white lactose from whey\" and does not *relate to a process of producing colorless vat milk\"), 17 (arguing instead that Moeller does not *relate to a process of producing colorless vat milk\"), 18 (arguing instead that Carver's s system *is completely different from the system subjected to reverse osmosis in the process\" at issue).", + "Appellant also argues, without elaboration, that a skilled artisan would not have combined these references.", + "Appellant, on the other hand, argues that Etzel *criticize[s] a variety of isolation techniques such as reverse osmosis\" and therefore teaches away from the recited reverse osmosis step.", + "Appellant repeats the argument that both T Tikanmaki and T ossavainen \"relate to the production of lactose-free milk but has nothing to do with the production of colorless vat milk and the production of ofriboflavin as claimed herein.'", + "Remaining Claims With regard to claims 6, 10, 15, 20, and 23, Appellant argues no more than the additional references do not *cure the deficiencies\" of those cited for claim 1." + ], + "examiner_findings": [ + "Claims 1, 2, 9, 11, 13, 14, 16-18, 22, and 24 are rejected under 35 U.S.C. 9 103 as being unpatentable over ossavainen in view of Nagasawa, Moeller, and Carver.", + "Claims 3 and 19 are rejected under 35 U.S.C. 9 103 as being unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and Tikanmaki.", + "Claims 6 and 20 are rejected under 35 U.S.C. 9 103 as being unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and Holst.", + "Claims 7 and 21 are rejected under 35 U.S.C. 9 103 as being unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and Etzel.", + "Claims 10 and 23 are rejected under 35 U.S.C. S 103 as being unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and Koizumi.", + "Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and Norris.", + "Claim 12 In rejecting claim 1, the Examiner finds that the prior art teaches or suggests every recited step.", + "Compare Appeal Br. 15-16, with Final Act. 15 (finding that Appellant's s field of endeavor is milk component separation processes).", + "Compare Appeal Br. 16, 17, with Final Act. 3-4 (explaining, for example, that a skilled artisan would have combined Moeller and Nagasawa with Tossavainen based on T Tossavainen's teaching at paragraphs 14, 15, 60, and 62, the Nagasawa' teaching 1:16-22 and 2:44-54, as well as Moeller's teaching at 1:25-31).", + "The Examiner cites Etzel for the teaching that reverse osmosis may take place at *temperatures less than 40. \", Final Act. 12 (citing Etzel I 4).", + "The Examiner relies on T ossavainen as disclosing reverse osmosis but finds that T ossavainen does not disclose that reverse osmosis is performed at a temperature within the claimed range.", + "See Final Act. 12 (explaining that because T Tossavainen does not provide specific operating conditions of reverse osmosis, \"[t]o the extent performing the reverse osmosis at room temperature would not simply be obvious in light of the lack of any particular preferred temperature, a skilled practitioner would be motivated to consult Etzel et al. to confirm an appropriate reverse osmosis temperature\").", + "The Examiner merely cites Etzel to show that the recited temperature range for reverse osmosis was known in the art at the time of Appellant's invention." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S $6(b).", + "OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon.", + "Cf Ex parte Frye, 2010 WL 889747, *4 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"It has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections. \").", + "After having considered the evidence presented in this Appeal and each of Appellant's contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner's S 103 rejections for the reasons expressed in the Final Office Action and the Answer.", + "We add the following primarily for emphasis.", + "Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.", + "Appellant's argument does not apply these criteria to address the Examiner's findings and is therefore unpersuasive to show that the reference is non-analogous.", + "Appellant's argument is unpersuasive because it does not address - and does not identify error in - the Examiner's finding that the claims at issue are in the same field of endeavor as Tossavainen.", + "We further note that *KSR \u00b7 \u00b7 \u00b7 directs us to construe the scope of analogous art broadly, \" stating that \"familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. \"", + "Appellant's s argument that Tossavainen does not solve the same problem as the inventor here does not show sufficiently that T Tossavainen is non-analogous art.", + "Appellant's arguments with regard to the remaining references are likewise unpersuasive for failing to analyze whether the references are from the Appellant's field of endeavor and reasonably pertinent to the problem with which the Appellant is involved.", + "We are not persuaded first and foremost because such bare assertions do not serve as persuasive arguments for patentability.", + "See Microstrategylne. Inc. V. Business Objects Am., 238 F. App'x 605, 610 (Fed. Cir. 2007) (\"The recitation of the applicable law, however, does not prevent the waiver of an argument unless that recitation is accompanied by an explanation of how the law applies to the facts of the particular case. \").", + "We are not persuaded also because Appellant's arguments do not address the Examiner's rationale in support of the rejection.", + "The rejection of claims 1, 2, 9, 11, 13, 14, 16-18, 22, and 24 is sustained as a result.", + "Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention.", + "A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.", + "The claim language at issue, however, does not require any particular protein isolation purity or protein profile.", + "Appellant has not identified error in the Examiner's fact finding, nor the Examiner's s rationale in support of the rejection.", + "We sustain the rejection of claims 7 and 21 as a result.", + "As analyzed supra, this argument is unpersuasive to show that Tikanmaki or Tossavainen is non-analogous art.", + "Appellant's remaining argument that a skilled artisan would not have combined T ikanmaki and T ossavainen because they use hydrolysis at different stages of the process is also unpersuasive.", + "From the outset, the argument is unsupported by evidence.", + "Such *[alttorneys' argument is no substitute for evidence. \"", + "The argument is unpersuasive also because it is not within the scope of the open-ended claim which does not exclude hydrolysis.", + "Finally, Appellant has failed to explain, in any detail, why the alleged timing of hydrolysis in Tikanmaki and Tossavainen would have discouraged one of ordinary skill from the combination proposed by the Examiner.", + "The rejection of claims 3 and 19 is sustained based on the foregoing.", + "For the reasons discussed above, there are no deficiencies that require curing by the additional references.", + "We accordingly sustain the rejections of claims 6, 10, 15, 20, and 23." + ] +} \ No newline at end of file diff --git a/opinion_split/2019005089_Mail_Decision.json b/opinion_split/2019005089_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..7129977824152b81f81306df267841fdf03f5662 --- /dev/null +++ b/opinion_split/2019005089_Mail_Decision.json @@ -0,0 +1,88 @@ +{ + "appellant_arguments": [ + "Appellant argues that Scott does not disclose \"a body having a container-side end and an opposing, device-side end, as recited in claim 1.", + "According to Appellant, cylinder 229 *is not an end much less a container-end of the female component 204 (body), nor is there any other end (device-side end) of the female component 204 that is opposite the cylinder 229.\"", + "Appellant, however, acknowledges that \"Scott's cylinder is a body that includes opposing ends that engage respectively the male component 202 and electronic cigarette 276.\"", + "Appellant next argues that the Examiner reversibly erred in finding that Scott slot 220a discloses *an inner cavity sized to receive therein a matching portion of the valve for connection therewith\" as recited.", + "Appellant acknowledges that Scott discloses tongue 208a which *defines the side of a cavity into which the tab 208a is sized to fit when the adapter is engaged\" as the Examiner finds.", + "Appellant also acknowledges that \"the tongue 208a is actually a component of a valve assembly 200.\"", + "Appellant, however, argues that **tongue is not a valve.\"", + "Appellant does not address this aspect of the rejection but only argues that the Examiner's s findings are *not consistent with Scott.\"", + "~ Appellant argues that the Examiner reversibly erred in finding that strut 257 and collar 238 in Scott are the first and second valve members recited in claim 21.", + "Appellant argues that the Examiner erred in rejecting claim 1 over Kribs because \"the Examiner concedes that *Kribs . . . is silent to the nozzle further comprising a valve. ..", + "Appellant argues that the Examiner erred because spring loaded ball 30 and teeth 84 \"are completely separate components, with the teeth 84 in fact not having any connection to the spring-loaded ball 30.\"", + "With regard to the limitation that \"the inner cavity being sized to receive therein the matching portion of the second valve member, \" Appellant acknowledges that Levitz discloses a second valve member (spring loaded ball 30) \"pressed into contact with\" an airflow port (chimney 50).", + "Appellant argues that the Examiner reversibly erred in finding that spring loaded ball 30 of Levitz is a valve body which *defines the first valve member and the second valve member\" as recited in claim 21.", + "Appellant argues that the Examiner reversibly erred in finding that Levitz discloses a \"container-side end [that] is configured to engage a valve of the container\" as recited in claim 17.", + "Appellant argues that that \"Levitz at best discloses that the device-side end (and not container-side end) is configured to engage the valve of the container.\"", + "Appellant cites as support Levitz's disclosure that \"\"[the flexible ball valve assembly 211 is positioned within the neck 207 of the refill interface 200 . . \u00b7 . ~ Id. (citing Levitz I 20).", + "Appellant also argues that the Examiner erred in finding Levitz sidewall 243 is the recited mating port because \"the base portion 241 and sidewall 243 are completely separate and distinct elements[.]\"", + "Appellant argues that no portion of valve assembly 211 *is received within any cavity defined by the flange 247.\"", + "Appellant lastly argues that the Examiner erred in the findings of the filling port.", + "Appellant argues that the Examiner reversibly erred in finding that crown 32 of Levitz is a valve.", + "In arguing that the Examiner reversibly erred here, Appellant argues that crown 32 of Levitz *does not define the ball 30.\"" + ], + "examiner_findings": [ + "The Examiner rejects claims 21 and 22 under 35 U.S.C. $ 112(a) or 35 U.S.C. S 112 (pre-AIA), first paragraph.", + "Claims 1-5, 7, 8, and 10-12 are rejected under 35 U.S.C. 9 102(a)(2) as being anticipated by Scott.", + "Claims 1 and 6 are rejected under 35 U.S.C. S 102(a)(2) as being anticipated by Kribs.", + "Claims 8, 12, 13, and 16-19 are rejected under 35 U.S.C. 9 102(a)(2) as being anticipated by Levitz.", + "Claim 15, 21, and 22 are rejected under 35 U.S.C. 5 103 as being unpatentable over Levitz.", + "Claim 21 is rejected under 35 U.S.C. S 103 as being unpatentable over Scott.", + "Moreover, the Examiner points out that the recited \" ``container-side end does not require the discussed structure of being outside of the electronic cigarette or smoking device and does not require where the claimed adapted cannot or does not fit within the smoking device.\" ~ Ans. 15.", + "In rejecting claim 8, the Examiner finds that the prior art structure is identical to the recited adapter structure where as \"the interaction of the adapter with the container of aerosol precursor composition and the aerosol delivery device having a refillable reservoir is considered to be intended use of the adapter.\" \" Final Act. 3, 9 (Thus the interaction between the adapter and the aerosol delivery device is considered to be intended use and not structurally limiting on the adapter itself.\").", + "As the Examiner points out correctly, **Appellant is conflating two different claimed embodiments in this argument that is not commensurate in scope with the two different claimed embodiments reflected in claims 1 and 8.\" Ans. 18.", + "In rejecting claim 8, the Examiner finds, among others, that Levitz discloses a ball valve 26, spring loaded ball 30, and teeth 84 meeting the recited valve, depressible valve body and first valve, respectively.", + "The Examiner finds that \"[the pressing of the ball into the chimney can be considered to be a matching portion that is receiving by the cavity of the chimney\" because \"at least a portion of the ball valve fits into the cavity of the chimney in order to facilitate the taught closing the of the valve.\"", + "The Examiner reasons that \"lilf the portion did not match, i.e. fill the cavity space, then the device would not function as taught where the valve blocks the air passage while the precursor solution flows into the reservoir.' \" Id." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. a 6(b).", + "We AFFIRM.", + "OPINION Written Description Appellant does not address the Examiner's rejection of claims 21 and 22 for failing to meet the written description requirement.", + "The written description is summarily affirmed.", + "To the extent that Appellant's argument implies that the recited *container-side end\" excludes a prior art structure having \"a terminating surface which is proximal to the container of aerosol precursor solution\" and which is an undisputed finding by the Examiner (Ans. 15) - Appellant has not sufficiently explained why.", + "Appellant does not argue otherwise.", + "No error has been identified in this aspect of the rejection.", + "This argument is not persuasive because it is incommensurate in scope with the claim language which requires only that *an inner cavity sized to receive therein a matching portion of the valve a \u00b7 \"", + "Appellant also argues that **the side of a cavity\" is not itself a cavity\" (id.) which is incommensurate in scope with the claim language and therefore unpersuasive.", + "The rejection is sustained as no reversible error has been identified.", + "We are not persuaded as Appellant's argument does not structurally distinguish the prior art and does not identify error in the Examiner's findings.", + "Appellant's remaining arguments including that \"the partially inwardly extending portion 264 is not a port much less a filling port\" do not support the argument with evidence or specificity.", + "The rejection is accordingly sustained.", + "Appellant's conclusory statement that *the stopper 241 clearly does not define the strut 257 or the collar 238\" (id.) is unelaborated and does not identify error in the Examiner's findings.", + "Appellant's other arguments including that the modification of the prior art structure would render the prior art unsatisfactory for its intended purpose (id.) are likewise unelaborated and unsupported with evidence.", + "With regard to Appellant's argument that the recited *unitary valve body\" means \"a single body,\" (id.) even under Appellant's interpretation, the Examiner's finding is unchallenged that \"it has generally been recognized that making the parts integral or separable when the operation of the device is not otherwise changed is within the level of ordinary skill in the art.", + "The rejection of claim 21 over Scott is sustained as a result.", + "Appellant's argument, however, is not based on the Examiner's findings with regard to claim 1 over Kribs but instead based on the Examiner's statement with regard to the rejection of a different claim in a previous office action.", + "Appellant's remaining arguments are conclusory and do not identify reversible error in the Examiner's findings.", + "For example, Appellant argues that second portion 126 of Kribs does not define the bore 132 (filling port) without explaining why the Examiner erred.", + "The rejection of claim 1 over Kribs is sustained as a result.", + "Appellant's argument is not persuasive because it is not supported by evidence.", + "Moreover, Appellant's argument is not persuasive because it is incommensurate in scope with the claim language which does not require the recited components to be connected.", + "Appellant argues that *the Examiner fails to establish that Levitz explicitly or inherently discloses that at least a portion of the ball valve fits into the cavity of the chimney\" (Reply Br. 10) without addressing the Examiner's findings.", + "Because Appellant fails to identify reversible error in the rejection, the rejection of claim 8 over Levitz is sustained.", + "Appellant's conclusory statement that spring loaded ball 30 *does not define the teeth 84\" (id.) is unelaborated and does not identify error in the Examiner's findings.", + "Appellant's other arguments including that the modification of the prior art structure would render the prior art unsatisfactory for its intended purpose (id.) are likewise unelaborated and unsupported with evidence.", + "With regard to Appellant's argument that the recited *unitary valve body\" means \"a single body,\" (id.) even under Appellant's interpretation, the Examiner's finding is unchallenged that \"it has generally been recognized that making the parts integral or separable when the operation of the device is not otherwise changed is within the level of ordinary skill in the art.\"", + "The rejection of claim 21 over Levitz is sustained as a result.", + "We are not persuaded because the cited portion of Levitz does not support Appellant's argument.", + "The disclosure that Levitz valve assembly 211 \"is positioned within the neck 207\" does not preclude base portion 241 to be configured to engage valve assembly 211 as the Examiner finds.", + "We are not persuaded by this argument because the argument is incommensurate in scope with the claim language which requires only that \"the container-side end defining separate and distinct mating and filling ports.\"", + "We further note that the Examiner's finding is supported by the record as Appellant acknowledges that \"the base portion surround[s] the sidewall.\"", + "Appellant, however, does not elaborate on why the Examiner reversibly erred in finding that components 211/213/215 which are shown to be connected with flange 247 discloses the recited *inner cavity sized to receive therein a matching portion of the valve for connection therewith.\"", + "Appellant, however, does not identify error in the Examiner's finding that a **passageway could have the filling port at the beginning of the passageway, as taught by Levitz.\"", + "Absent identification of reversible error in the Examiner's findings, the rejection is sustained.", + "Appellant, however, does not structurally distinguish the prior art from the component recited in the claim.", + "Appellant's argument is also unelaborated without sufficient explanation as to why the Examiner erred in finding that crown 32 of Levitz discloses the recited component.", + "We therefore decline to disturb the Examiner's fact finding here.", + "As to Appellant's argument that spring loaded ball 30 and teeth 84 (which the Examiner finds to disclose the recited valve body and first valve member, respectively) are unconnected, the argument is incommensurate in scope with the claim language.", + "More specifically, the claim language that a *valve includes a depressible valve body including a first valve member and a second valve member\" does not require a particular physical configuration of the valve body and the first valve member.", + "The rejection of claim 19 is sustained.", + "The argument is unelaborated and does not identify error in the Examiner's findings.", + "Appellant's other arguments including that the modification of the prior art structure would render the prior art unsatisfactory for its intended purpose (id.) are likewise unelaborated and unsupported with evidence.", + "With regard to Appellant's argument that the recited *unitary valve body\" means \"a single body,\" (id.) even under Appellant's interpretation, the Examiner's finding is unchallenged that \"it has generally been recognized that making the parts integral or separable when the operation of the device is not otherwise changed is within the level of ordinary skill in the art. \" Compare Appeal Br. 24, with Final Act. 20.", + "The rejection of claim 22 over Levitz is sustained as a result.", + "CONCLUSION The Examiner's rejections are affirmed." + ] +} \ No newline at end of file diff --git a/opinion_split/2019005135_Mail_Decision.json b/opinion_split/2019005135_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..0b6c34cd76275dbbbbf5dab7f729736280effefc --- /dev/null +++ b/opinion_split/2019005135_Mail_Decision.json @@ -0,0 +1,69 @@ +{ + "appellant_arguments": [ + "Appellant argues \"[the claimed subject matter applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, and that *[t]he claimed subject matter has specific and identifiable consequences for a computer that could not be achieved without a computer. \" Appeal Br. 34, 36.", + "In particular, Appellant points to the patent matter proceedings (PMP) graph described in the Specification to show integration of a judicial exception into a practical application. See id. at 34- 36.", + "Appellant also argues that claim 21 recites a process that \"is different from the process previously performed by patent attorneys, patent litigators, or patent examiners, similar to the patent-eligible \"rules with specific characteristics\" in MeRO, where there was no evidence that *the process previously used by animators [was] the same as the process required by the claims. \" Reply Br. 5 (quoting McRO, 837 F.3d 1299, 1313-1314 (Fed. Cir. 2016)), 6.", + "Appellant argues claim 21 recites an inventive concept. Appeal Br. 37-41." + ], + "examiner_findings": [ + "Claims 21, 22, and 24-40 stand rejected under 35 U.S.C. 8 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Final Act. 4-9.", + "Claims 21, 22, and 24-40 stand rejected under 35 U.S.C. 101 as being directed to patent-ineligible subject matter. Final Act. 10-27.", + "The Examiner finds there is no written description support for the following claim 21 limitation: determining, by the processor of the computer, entity similarity for each identified patent by calculating, for each of the plurality of patent matter proceedings where each identified patent is asserted, the number of peer companies that participate in the patent matter proceeding and that are included in the list of one or more peer companies received from the user device, and selecting a maximum among the calculated numbers of peer companies as the entity similarity for each asserted patent. Final Act 5.", + "The Examiner asserts there is a difference between what the Specification discloses and the claim limitation at issue, namely, that [the Specification] describes that the maximum is by default equal to a single number (i.e., the number of peer companies participating in the same proceeding ng where the corresponding patent matter is at issue) whereas the current claim language recites that the maximum is a value from among many values (e.g, among the calculated numbers of peer companies as the entity similarity for each asserted patent). Final Act. 7.", + "The Examiner also finds there is no written description support for the claim 21 limitation *determining, by the processor of the computer, based on the graphical model and the entity similarity for each identified patent, non- textual similarity between the input portfolio and each identified patent in the reference database. \"", + "The Examiner notes the claim limitation at issue determines \"non- textual similarity between the input portfolio and each identified patent in the reference database, \" where the input portfolio is defined in the claim as **includ[ing] a plurality of input patents, a textual description of the input portfolio, and a list of one or more peer companies. \", Final Act. 8.", + "The Examiner finds the Specification \"does not explain that the determined entity similarity would have been based on either the input patents or the text description aspects of the input portfolio because these data are not referenced in the description of *entity similarity' at [1 73]. \" Id.", + "The Examiner also finds Appellant only had possession of a single species of determining non-textual similarity based on a graphical model and an entity similarity measure--i.e., \"a linear combination of the two or more similarity measures with weights assigned to each similarity measure\" \"but claim 21 *encompasses any known or unknown technique. \" Final Act. 9.", + "The Examiner identifies a number of specific limitations in claim 21 (see Final Act. 12-13) and concludes that the recited limitations are abstract ideas because they cover activities comparable to those *performed by patent attorneys, patent litigators, or patent examiners,[] and can reasonably be carried out as, mental activity of these professionals. \" Ans. 13." + ], + "ptab_opinion": [ + "We disagree.", + "We find, however, that the Specification would have conveyed to one of ordinary skill in the art that the maximum number described in the Specification includes embodiments where the maximum number is determined to be the highest number of peer companies involved in any of a number of proceedings where a given patent matter is at issue.", + "We agree with Appellant that the term \"maximum\" implies the largest number out of a set of numbers. See Appeal Br. 14.", + "One of ordinary skill in the art would have recognized the aim of the described system to use the maximum number of peer companies in any of a number of proceedings that involve a particular patent matter to get the most accurate similarity measure for the patent matter.", + "We disagree.", + "But claim 21 does not require the entity similarity measure to factor in every aspect of the input portfolio in order to contribute to the overall non-textual similarity of the input portfolio.", + "Rather, claim 21 simply recites that the ``non-textual similarity between the input portfolio and each identified patent\" is \"based on the graphical model and the entity similarity. \"", + "It is sufficient to meet the written description requirement that the Specification describes the entity similarity measure being determined according to one aspect of the claimed input portfolio, to wit, \"a list of one or more peer companies. \"", + "Appellant has persuaded us of Examiner error because the Specification sufficiently supports the breadth ofthe claim 21 limitation *determining . based on the graphical model and the entity similarity for each identified patent, non-textual similarity between the input portfolio and each identified patent. \"", + "In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice.", + "In accordance with that framework, we first determine what concept the claim is \"directed to.\"", + "If the claim is \"directed to\" an abstract idea, we turn to the second step of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an finventive concept sufficient to 'transform' the claimed abstract idea into a patent- eligible application. \" Alice, 573 U.S. at 221 (quotation marks omitted).", + "Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of P Patent Examining Procedure (\"MPEP\") 65 2106.05(a)-(c), (e)-(h).", + "Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim (3) adds a specific limitation beyond the judicial exception that is not \"well-understood, routine, conventional\" in the field (see MP EP 8 2106.05(d); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.", + "We agree with the Examiner's conclusion that claim 21 falls with one of the four statutory categories of patentable subject matter because claim 21 falls within the process category.", + "Under Step 2A, Prong 1 of the Revised Guidance, we determine whether the claims recite any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes).", + "We agree with the Examiner that claim 21 recites a number of abstract ideas.", + "For example, claim 21 recites the following steps: **identifying patents that were asserted in proceedings and are similar to patents included in an input portfolio specified by a user;\" *accessing \u00b7 \u00b7 \u25a0 information regarding a plurality of patent matter proceedings;\" \"retrieving \u00b7 \u00b7 the information \u25a0 \u00b7 metadata related to the information for each of the patent matter proceedings[], wherein the information comprises a case name for each of the patent matter proceedings, and one or more patents asserted in each of the plurality of patent matter proceedings, and wherein the case name includes one or more parties involved in each of the patent matter proceedings;\" *storing the graphical model and the identified patents;\" and \"receiving \u00b7 \u00b7 . an input portfolio that is specified by the user and includes a plurality of input patents, a textual description of the input portfolio, and a list of one or more peer companies. \"", + "Under the broadest reasonable interpretation, these steps cover identifying, accessing, receiving, and storing patent-related information, which are among the duties of patent professionals, such as patent attorneys.", + "This handling of patent-related information is a subset of commercial or legal interactions, which fall within the certain methods of organizing human activity category of abstract ideas identified in the Revised Guidance.", + "Claim 21 also recites the following steps: *generating . a graphical model that includes a plurality of nodes corresponding to the case names based on the metadata, wherein each of the plurality of nodes includes one or more attributes associated with the corresponding patent matter proceeding that are obtained from the metadata, and wherein the plurality of nodes are linked to one another based on shared parties;\" *creating \u00b7 \u00b7 a single query text by extracting and concatenating text from each of the plurality of input patents;\" *determining \u00b7 \u00b7 based on textual description and the single query text, textual similarity between the input portfolio and each identified patent;\" *determining \u00b7 \u00b7 \u00b7\u00b7 \u00b7 entity similarity for each identified patent by calculating, for each of the plurality of patent matter proceedings where each identified patent is asserted, the number of peer companies that participate in the patent matter proceeding and that are included in the list of one or more peer companies \u00b7 \u00b7 \u00b7 and selecting a maximum among the calculated numbers of peer companies as the entity similarity for each asserted patent;\" *determining . \u00b7 \u00b7 based on the graphical model and the entity similarity for each identified patent, non-textual similarity between the input portfolio and each identified patent;\" **assigning \u00b7 \u00b7 . a similarity score to each identified patent based at least in part on the textual similarity and the non-textual similarity,\" \"ranking \u00b7 . \u00b7 the identified patents by similarity score,\" and \"producing . . a list of one or more identified patents that are most similar to the plurality of input patents in the input portfolio, wherein the list is ordered by similarity score. \"", + "Under the broadest reasonable interpretation, these steps cover a decision-making process for comparing a patent portfolio to other patents that a patent professional could perform mentally, or with pen and paper.", + "This process, which results in a list of the patents most similar to the patent portfolio, amounts to an evaluation and judgment, which falls within the mental processes category of abstract ideas identified in the Revised Guidance.", + "We, therefore, agree with the Examiner's conclusion that claim 21 recites abstract ideas.", + "Under Step 2A, Prong2 of the Revised Guidance, we next determine whether the claims recite additional elements that integrate the judicial exception into a practical application.", + "We are not persuaded by Appellant's argument.", + "To the extent this description forms support for the claim 21 limitation \"generating \u00b7 \u00b7 \u00b7 a graphical model that includes a plurality of nodes corresponding to the case names, \" generating a graphical model made of nodes linked according to patent matter proceeding attributes, such as the parties involved, is itself an abstract idea in the mental processes category, as discussed above.", + "Appellant has not shown the claimed *graphical model\" improves the functioning of a computer or applies the abstract idea in any other meaningful way.", + "Rather, the additional claim 21 limitation that this step is performed \"by the processor ofthe computer\" is merely an instruction to implement the abstract idea on a computer.", + "We are not persuaded by this argument.", + "Here, the argued limitations--generating, by the processor ofthe computer, a graphical model\" and *determining, by the processor ofthe computer, entity similarity for each identified patent\". -do not recite specific rules where the rules themselves define a technological improvement. Reply Br. 5.", + "Rather, the only technological aspect to the argued **generating\" and \"determining\" is that they are performed \"by the processor of the computer. \"", + "For example, a patent professional could, looking at a set of information about patent matter proceedings, draw a graphical model with pen and paper with nodes labeled for each case name and links between the nodes based on common parties to the cases, as in the \"generating . . \u00b7 a graphical model\" limitation.", + "A patent professional could also, mentally or with pen and paper, add up the number of companies involved in each of the set of patent matter proceedings where a given patent is asserted that coincide with a reference list of companies, and then select the highest number of such companies as a similarity measure for the patent, as in the *determining \u00b7 \u00b7 . entity similarity\" limitation.", + "In short, the McRO case focused on a limitation that defined a technological advance.", + "In contrast, claim 21 does not recite the specific details ofa a technological solution that distinguish the claimed steps from activities that could be performed by patent professionals.", + "For these reasons, Appellant has not persuaded us of Examiner error with respect to Step 2A, Prong2 of the Revised Guidance.", + "Under Step 2B of the Revised Guidance, we next determine whether the claims recite an \"inventive concept\" that *must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.", + "Appellant has not persuaded us of Examiner error.", + "Claim 21 recites the following limitations (italicized) in addition to those that constitute the recited abstract ideas: \"accessing, through a communication port ofa computer, a network-accessible data repository that include information;\" *retrieving, using a crawler for the computer, the information from the network accessible data repository, the crawler crawling metadata \u00b7 .from the network-accessible repository; **generating, by the processor ofthe computer, a graphical model;\" *storing the graphical model . \u00b7 \u00b7 in a reference database; ~ *receiving, through an input device of the computer, from a user device associated with a user;\" an input portfolio; \"creating, by the processor of the computer, a single query text;\" *determining, by the processor ofthe computer, textual similarity between the input portfolio and each identified patent in the reference database; .54 *determining, by the processor ofthe computer, entity similarity \u00b7 . in the list of one or more peer companies received from the user device;\" *determining, by the processor, \u00b7 . non-textual similarity between the input portfolio and each identified patent in the reference database; **assigning, by the processor ofthe computer, a similarity score,\" \"ranking, by the processor ofthe computer, the identified patents;\" and \"producing, through an output device ofthe computer, a list. \"", + "As shown above, the additional limitations include a computer that has a processor, a communication port, an input device, and an output device; a network-accessible data repository; a crawler; a reference database; and a user device.", + "The Examiner finds, and we agree, that such generic computer components were well-understood, routine, and conventional.", + "Moreover, Appellant's Specification confirms the generic, conventional nature of these components. See, e.g., Spec. 11 188-199.", + "Appellant has not persuasively identified, nor have we found, an ordered combination of these elements that amounts to significantly more than the claimed abstract idea.", + "For these reasons, we agree with the Examiner that the claims do not recite an *inventive concept\" sufficient to transform the claims from an abstract idea to a patent eligible application.", + "We, therefore, sustain the patent-ineligible subject matter rejection of claim 21.", + "We also sustain the rejection of independent claims 28 and 37, which Appellant argues are patent-eligible for the same reasons.", + "We also sustain the rejection of dependent claims 22, 24-27, 29-36, and 38- 40, for which Appellant relies on the same arguments." + ] +} \ No newline at end of file diff --git a/opinion_split/2019005393_Mail_Decision.json b/opinion_split/2019005393_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..ffba7979dc52315e83fc5e169f84321b417abb7e --- /dev/null +++ b/opinion_split/2019005393_Mail_Decision.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "ANALYSIS With respect to independent claim 1, Appellant contends the Examiner erred because P Papanikolaou does not teach or suggest \"encoding or decoding the video data with a codec in aggressive deployment. \"", + "In particular, Appellant proposes construing *aggressive deployment\" according to the alleged definition in paragraph 27 of the Specification, which *includes voltage and/or frequency moved out of their worst case ranges. \"" + ], + "examiner_findings": [ + "REJECTIONS- Claims 1-3, 8-10, and 15-17 stand rejected under 35 U.S.C. S 103 as unpatentable over the combination of Papanikolaou et al (US 8,037,430 B2; issued Oct. 11, 2011) (P (*Papanikolaou\")) and Eleftheriadis et al. (US 8,436,889 B2; issued May 7, 2013) (\"Eleftheriadis\").", + "Claims 4, 11, and 18 stand rejected under 35 U.S.C. 8 103 as unpatentable over the combination of Papanikolaou, Eleftheriadis, and Smith et al (US 9,226, 193 B2; issued Dec. 29, 2015) (\"Smith\").", + "Claims 5, 12, and 19 stand rejected under 35 U.S.C. 103 as unpatentable over the combination of Papanikolaou, Eleftheriadis, and Dare et al (US 8,615,581 B2; issued Dec. 24, 2013) (\"Dare\").", + "Claims 6, 7, 13, 14, 20, and 21 stand rejected under 35 U.S.C. 8 103 as unpatentable over the combination of apanikolaou, Eleftheriadis, and Vaidyanathan (US 7,010,030; issued Mar. 7, 2006)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 9 6(b).", + "We reverse.", + "We differ with Appellant regarding the proper construction of *aggressive deployment, *but, nevertheless, Appellant's argument persuades us that the Examiner erred.", + "In light of the above disclosure, we construe **aggressive deployment\" to mean operating a circuit with a parameter value outside of a worst-case range that assumes the worst possible operating conditions.", + "We do not import limitations into claim 1, such as requiring either voltage or frequency to operate below or above a worst case design limit, because the Specification provides these operating states as merely exemplary.", + "Whether a voltage or frequency parameter may be set at a certain value does not contribute to a concrete definition of the term **aggressive deployment,' \" and we thus decline to adopt Appellant's s narrower construction.", + "Turning to the Examiner's rejection, we find Papanikolaou does not teach or suggest encoding or decoding video in an \"aggressive deployment, , even given our broad, but reasonable, construction above.", + "Accordingly, we find Papanikolaou teaches improving the yield of certain electronic systems by recognizing that worst-case safety margins can be alleviated for systems that, for example, can dynamically scale the clock frequency depending on the task being performed and the components used for that task.", + "In other words, Papanikolaou discloses designing worst-case safety margins that allow a system to operate faster than a conventional system, but still within its own designed worst-case safety margins.", + "This is different than **aggressive deployment,' as recited in claim 1 and construed above, where a circuit is operated with a parameter value outside of a worst- case range.", + "Thus, although Papanikolaou discloses estimating the yield of systems that run *video and audio decoding applications'' (id. at 31:4-13), the Examiner has not shown that P apanikolaou teaches or suggests encoding or decoding with a parameter value outside of a worst-case range.", + "For these reasons, on the record before us, we are persuaded that the Examiner erred in finding the combined teachings of P Papanikolaou and Eleftheriadis teach or suggest the disputed limitation of claim 1.", + "Accordingly, we reverse the Examiner* s 5 103 rejection of independent claim 1, as well as independent claims 8 and 15, which recite similar limitations, and dependent claims 2, 3, 9, 10, 16, and 17.", + "We also reverse the Examiner's s rejections of dependent claims 4-7, 11-14, and 18- 21, as the Examiner did not rely on Smith, Dare, or Vaidyanathan to teach or suggest the disputed limitation that is missing from P Papanikolaou and Eleftheriadis.", + "Because we find it dispositive that the Examiner has not shown by a preponderance of evidence that the cited prior art teaches or suggests the claimed **aggressive deployment\" limitation, we do not address other issues raised by Appellant's arguments related to these claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2019005524_Mail_Decision.json b/opinion_split/2019005524_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..1225798ab49035f38e8ca4c6f89374628d108ea5 --- /dev/null +++ b/opinion_split/2019005524_Mail_Decision.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "With regard to the Examiner's Rejection I, Appellant separately argues claims 1, 5, and 20. See Appeal Br. 6-24, 43-45.", + "Appellant argues that Brenke provides polyalkylene glycol dialkyl ethers having 3 to 10 units, and for that reason does not teach or suggest adding an ether co-solvent having less than 3 ethylene oxide and/or propylene oxide units as recited in Appellant's claims 5 and 18 to 21. Appeal Br. 8.", + "Appellant acknowledges that Brenke would have provided a reason to use an ether co-solvent within the recited formula (I) with n being at least 3. ld. at 12 (\"Brenke reasonably would have taught one skilled in the art to add 1 to 20 wt% of a dialkyl ether of formula (I) \u00b7 \u00b7 \u00b7 wherein n is at least 3.\").", + "Appellant also argues that \"Brenke does not appear to provide a single example of a basecoat composition comprising 1 to 20 wt.% of a polyalkylene glycol dialkyl ether of formula (I.\" Appeal Br. 9.", + "Appellant contends that experimental data presented in the Specification and in the Steinmetz Declaration shows that including 1.5 parts by weight of VammarD10 10 in a basecoat composition yields unexpected reduction of pinholing, bubbles, swelling, and steam jet deterioration. ld. at 10-13.", + "Here, Appellant relies on Table 2 of the Specification, which reports a decreased formation of pinholes in a single sample containing 1.5 wt% VammarD10 relative to a sample containing no ether component. Appeal Br. 12-13, Spec. 18. See also Reply Br. 8-10.", + "Appellant also points to the Steinmetz Declaration, which compares bubble, swelling, and steam jet assessment properties for three samples having VammarD10 at 0 wt.%, 1.5 wt.% and 6 wt.%, respectively. Appeal Br. 12-13; Decl. 5.", + "To the contrary, Appellant acknowledges that \"Brenke teaches that the addition of 1 to 20 wt.% of a polyalkylene glycol dialkyl ether improves pinholing resistance.\" Appeal Br. 11.", + "Appellant contends that Brenke discloses ether co-solvents corresponding to fomula (I) where n is 3 to 10. Appeal Br. 43 (\"In Brenke's polyalkylene glycol dialkyl ether co-solvents corresponding to formula (I) of claim 1, n is 3 to 10.\"). See also Reply Br. 5-7.", + "With regard to the Examiner's is rejection of claims 18, 20, and 21 over Sapper, Brenke, and VammarD10, Appellant presents the same arguments as are presented in connection with Rejection I. See Appeal Br. 13-14.", + "Appellant argues the Examiner applied impermissible hindsight in picking and choosing these materials from those listed in the prior art. Appeal Br. 42- 43." + ], + "examiner_findings": [ + "I. Claims 1-5, 16, and 20 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Baugh,2 VammarD10,3 Brenke,\" and Hoy.5", + "II. Claims 18, 20, and 21 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Sapper, Brenke, and VammarD10.", + "III. Claim 19 stands rejected under 35 U.S.C. 9 103(a) as unpatentable over Sapper, Brenke, VammarD10, Lamers,7 and Fieberg. 8", + "With regard to claim 1 and relevant to Appellant's arguments on appeal, the Examiner finds Baugh discloses a multicoat paint system having a pigmented basecoat composition that includes an ether co-solvent. Final Act. 2.", + "The Examiner also finds that VammarD10 was known at the time of the invention for use as an ether co-solvent in paint coatings. Id. at 3.", + "The Examiner determines one of ordinary skill in the art would have had a reason to use VammarD10 as a known ether co-solvent in Baugh's basecoat. Id.", + "The Examiner finds Brenke teaches a compositional range of 1-20 wt% for an ether co-solvent in coatings to reduce pinholing. Id.", + "The Examiner finds Appellant's evidence not commensurate in scope with the claims and insufficient to demonstrate that the reported results would have been unexpected. Ans. 5.", + "However, the Examiner relies on VammarD10 as evidence of a known ether co-solvent suitable for use in Baugh. Final Act. 3 (determining \"it would have been obvious for someone of ordinary skill in the art to look at suitable ether co-solvents such as VammarTM D10 and use it in the composition of Baugh because it is known as suitable for paint compositions\").", + "The Examiner finds Lamers teaches that the recited polystyrene polymers \"provide for good physical properties such as adhesion, solvent resistance and appearance.\" Final Act. 7.", + "The Examiner additionally finds Fieberg teaches that the recited polyurethane (meth) acrylate produces coating compositions having long term stability. ld." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We AFFIRM.", + "Claims 2-4 and 16 stand or fall with claim 1.", + "Separately argued claims are separately addressed below.", + "Appellant's argument is not persuasive.", + "Claim 1 does not require use of an ether co-solvent having less than 3 units. See claim 1 (*n is 0 to 5\").", + "However, Appellant does not present persuasive evidence or explanation as to why Brenke's lack of an anticipatory example negates the collective teachings of the prior art relied upon in support of the Examiner's obviousness determination.", + "The burden of establishing that unexpected results support a conclusion of nonobviousness rests with the Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).", + "\"[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.\" \" In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).", + "\"It is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.\" See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (emphasis in original).", + "Additionally, the relied- upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003).", + "**Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for \"it is the view of [the CCPA] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. \". See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).", + "Finally, \"it is well settled that unexpected results must be established by factual evidence. *Mere argument or conclusory statements in the specification does not suffice. .. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (\"Attorney's argument in a brief cannot take the place of evidence. \").", + "Thus, Appellant's evidence concerns three compositional data points with regard to ether concentration, only one of which is within the range recited in claim 1.", + "We agree.", + "Claim 1 encompasses any pigmented curable aqueous basecoat material, any curable clearcoat material, and a range of materials encompassed by formula (I).", + "Appellant's showing presents data concerning only a single composition, at different VammarD10 concentrations.", + "Appellant does not point us to persuasive evidence to show that any results reported in the Specification or the Declaration would reasonably have been expected to be representative of other basecoat materials, clearcoat materials, and ethers within formula (I).", + "Likewise, Appellant does not point us to persuasive evidence to show that a single ether concentration within the claimed range would reasonably have been expected to be representative of the entire range.", + "Nor does Appellant point us to persuasive evidence that any of the reported results purportedly attributable to VammarD10 concentration would have been unexpected.", + "Appellant's reported properties of swelling, bubble formation and steam jet assessment are not discussed in the Specification.", + "Moreover, Appellant's data for these properties appear to show no swelling, no bubbles, and no deterioration under steam jet assessment for sample 11 which included VammarD10 at a concentration within the range recited in claim 1 and sample 11 which did not include VammarD10. See Decl. 5, 6.", + "Having considered the totality of the evidence presented, including Appellant's argument and data relied upon to show unexpected results, we are not persuaded of reversible error in the Examiner's obviousness determination.", + "Rejection I as applied to claim 1 is sustained.", + "Appellant does not dispute that VammarD10 satisfies formula (I) as is recited in either claim 5 or 20.", + "For the foregoing reasons, Rejection I as applied to each of claims 5 and 20 also is sustained.", + "Accordingly, we sustain Rejection II for the reasons given above in connection with Rejection I.", + "Appellant does not challenge these findings.", + "The Examiner's s identification of a reason to provide the selected materials is contrary to Appellant's allegation of impermissible hindsight.", + "Rejection III also is sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2019005853_Mail_Decision.json b/opinion_split/2019005853_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..d9e80eab73a02f17a7ac933cd72b56f8a57bdfd5 --- /dev/null +++ b/opinion_split/2019005853_Mail_Decision.json @@ -0,0 +1,57 @@ +{ + "appellant_arguments": [ + "Appellant argues the Examiner's s rejection is in error, because **neither Fung nor Juneja teaches determining a driver state index that measures the perceived risk of [an] occupant.\" Appeal Br. 9.", + "Appellant explains that, as claimed, \"the perceived risk includes a driver's perception of a hazard in a driving scenario that is perceived by the driver to pose a potential safety threat to a vehicle or the driver\" (Reply Br. 3), whereas Juneja teaches \"measuring the level of alertness or emotional state of a driver\" (Appeal Br. 9).", + "Appellant contends \"the Examiner is assuming that the system of Juneja' will determine cognitive load by measuring the vehicle occupant's perceived risk during driving,\" which *is not supported by Juneja.\" Reply Br. 3.", + "Appellant further argues that, \"even if the references did teach each and every element of claim 1, \" \"the Office has failed to identify an apparent reason to combine the known elements in the fashion claimed and a prima facie case of obviousness has not been established.\" Appeal Br. 13.", + "Particularly, Appellant contends that \"It is unclear what response of Fung would be improved [by Juneja] or how any of the sensors of Juneja would improve such a response.\" Id. at 11.", + "Appellant argues the Examiner's rejection is in error, because *Fung does not teach or suggest controlling the vehicle systems based on the driver state index and the vehicular state, \" as required by claim 11. Final Act. 14.", + "Appellant contends, \"[i]nstead, in Fung, the information about the driver (e.g., the fixation duration) is controlled based on the vehicle information (e.g. indication of a hazard).\" \" Reply Br. 7." + ], + "examiner_findings": [ + "The Examiner relies on the following prior art:", + "Name Reference Date Lisseman et al. (\"Lisseman\") US 2011/0246028 A1 Oct. 6, 2011 Karasawa et al. (\"Karasawa') US 2014/0156107 A1 June 5, 2014 Van Wiemeersch et al. (*Van US 2016/0016473 A1 Jan. 21, 2016 Wiemeersch\") Juneja et al. (\"Juneja\") US 2016/0236690 A1 Aug. 18, 2016 Fung et al. (\"Fung\") US 9,475,389 B1 Oct. 25, 2016", + "Claim 11 is rejected under 35 U.S.C. $ 102(a)(1) as being anticipated by Fung. Final Act. 2.", + "Claims 1, 7, 9, 10, 16, 19, and 20 are rejected under 35 U.S.C. S 103 as being unpatentable over Fung in view of Juneja. Final Act. 3.", + "Claims 2-4 and 17 are rejected under 35 U.S.C. 5 103 as being unpatentable over Fung in view of Juneja, and further in view of Karasawa. Final Act. 6.", + "Claim 13 is rejected under 35 U.S.C. $ 103 as being unpatentable over Fung in view of Karasawa. Final Act. 9.", + "Claims 5, 6, and 18 are rejected under 35 U.S.C. $ 103 as being unpatentable over Fung in Juneja and further in view of Lisseman. Final Act. 9.", + "Claim 14 is rejected under 35 U.S.C. $ 103 as being unpatentable over Fung in view of Lisseman. Final Act. 10.", + "Claim 12 is rejected under 35 U.S.C. $ 103 as being unpatentable over Fung in view of Van Wiemeersch. Final Act. 10.", + "The Examiner finds Fung in view of Juneja teaches or suggests the limitations of claim 1, because Fung discloses determining a vehicle driver \"as attentive or inattentive[, which] is something just about anyone would perceive as a risk,\" and *Juneja measures the stress level of the driver, which certainly has to include their *perceived risk. *** Final Act. 12; Fung 9:15-30; Juneja 11 35, 40.", + "The Examiner finds one of ordinary skill would modify Fung with Juneja's 's additional driver monitoring teachings, in order to *improve the response of the vehicle and especially improve control during a busy driving situation.\" \" Ans. 14; see Final Act. 5." + ], + "ptab_opinion": [ + "The Application is directed to controlling vehicle systems based on the detection of hand contact on a steering wheel. See Spec. I 6-9.", + "Claims 1-7, 9-14, and 16-20 are pending; claims 1, 11, and 16 are independent. Appeal Br. 17-21.", + "Claims 1 and 11 are reproduced below for reference (emphases and some formatting added):", + "1. A computer-implemented method for controlling vehicle systems in a vehicle, comprising: providing a steering wheel having a plurality of sensors configured to sense a vehicle occupant having contact with the steering wheel, the steering wheel having a left zone and a right zone; determining a left contact value based on one or more signals received from at least one of the plurality of sensors, wherein the left contact value indicates the vehicle occupant's contact with the steering wheel within the left zone; determining a right contact value based on the one or more signals received from the at least one of the plurality of sensors, wherein the right contact value indicates the vehicle occupant's contact with the steering wheel within the right zone; determining a driver state index based on the left contact value and the right contact value, wherein the driver state index is a measurement of the vehicle occupant 's perceived risk during driving; and modifying control of the vehicle systems based on the driver state index to manage the perceived risk.", + "11. A system for controlling vehicle systems in a vehicle, comprising: a steering wheel having a plurality of sensors configured to sense contact on the steering wheel, the steering wheel having a left zone and a right zone; and a processor, wherein the processor receives one or more signals from at least one of the plurality of sensors and determines a left contact value based on the one or more signals, the left contact value indicating contact with the steering wheel within the left zone, and the processor determines a right contact value based on the one or more signals, the right contact value indicating contact with the steering wheel within the right zone, wherein the processor determines a driver state index based on the left contact value and the right contact value, determines a vehicular state based on vehicle data from the vehicle systems, and the processor controls the vehicle systems based on the driver state index and the vehicular state.", + "We have reviewed the Examiner's rejections in light of Appellant's arguments.", + "Arguments Appellant could have made but chose not to make are deemed to be waived. See 37 C.F.R. 41 41.37(c)(1)(iv).", + "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 consistent with our analysis below.", + "We add the following primarily for emphasis.", + "We are not persuaded the Examiner's rejection is in error.", + "We agree.", + "First, Appellant has not presented sufficient technical reasoning or evidence to show one of ordinary skill would understand a driver's measured stress, as taught by Juneja, is distinguishable from the claimed perception of risk. See Juneja Fig. 6 (\"Update Models to Reflect Driver is Stressed or Under High Cognitive Load.\").", + "Rather, Appellant's Specification appears to use the terms interchangeably and without indicating any difference in the meanings of the terms. See, e.g., Spec. I 123, 124.", + "Nor does the Specification describe a difference in the driver state index, as claimed, based on stress or based on perceived risk. Spec. I 122 (\"Throughout this specification, stressfulness and/or perceived risk will be used as the example driver state being assessed.\"). \").", + "Accordingly, we are not persuaded the Examiner errs in determining *Juneja measures the stress level of the driver, which certainly has to include their *perceived risk. .. Final Act. 12.", + "Second, and separately, Appellant has not shown the Examiner errs in finding the combination of cited references suggests the disputed limitations.", + "Fung *determines a driver state (e.g., attentive, inattentive) based on the contact data from the steering wheel.' Fung 8:26-27.", + "Juneja **monitor[s]' driver related aspects\" using steering wheel sensors, to determine *when the driver 24 is under stress or to monitor the emotional state and level of alertness of the driver.\" Juneja 11 67, 24.", + "That is, both references teach using steering wheel sensors, such as location or pressure sensors, to measure the driver's state. See Final Act. 5; Ans. 14.", + "Appellant's specification, similarly, explains that the driver's state (measuring the perceived risk) can be determined based on the location of the driver's hands on the steering wheel, or based on the pressure exerted by the driver's hands on the steering wheel. See Spec. I 143 (\"determining a driver state index can include comparing the left contact value to a \u00b7 value that when exceeded indicates the left hand is in an upper half of the steering wheel 200 within the left zone 212\"); I 144 (If the left contact value exceeds the pressure threshold, this can indicate the driver's perceived risk (e.g., driver state) is higher than average. \").", + "We agree with the Examiner that the combination of Fung and Juneja teaches or suggests claim 1*s \"wherein the driver state index is a measurement of the vehicle occupant's perceived risk during driving,\" . consistent with the Specification, at least because the cited references teach the same driver state measurements (location or pressure on a steering wheel) as Appellant.\" See Final Act. 4, 5.", + "We are not persuaded the Examiner's combination reasoning is in error.", + "We agree with the Examiner that \"Juneja has more varied possible sensors [than] Fung but it still includes the same kind as Fung and so its teaching appears directly relevant,\" as both references teach using steering wheel sensors to determine a driver's state. Ans. 14; see Fung 9:25-29; Juneja I 67; Advisory Act. 2.", + "We find the Examiner's rationale to be reasonable; in contrast, Appellant argues the combination is not predictable (see Appeal Br. 9) without providing sufficient evidence or otherwise persuasively showing an ordinarily skilled artisan would be unable \"to fit the teachings \u00b7 \u00b7 \u00b7 together like pieces of a puzzle. ~, KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398, 420 (2007); see also In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (\"Obviousness does not require absolute predictability of success. \u00b7 \u00b7 For obviousness under $ 103, all that is required is a reasonable expectation of success. \").", + "Accordingly, we sustain the Examiner's obviousness rejection of independent claim 1.", + "We are unpersuaded the Examiner's rejection is in error.", + "Fung, as cited by the Examiner, discloses controlling a vehicle display based on driver steering wheel \"contact data, the head vector, and the fixation duration.\" Fung 11:45-50; Ans. 14.", + "Fung discloses the head vector is used to control the vehicle systems when the fixation duration time of the driver's head vector meets a threshold, and this threshold is based on *information from one or more vehicle systems . . indicat[ing] a hazard. ~ Fung 10:63- 64; see also Fung Figs 6A, 6B, 9:15-30.", + "Thus, we agree with the Examiner that Fung's vehicle systems are controlled based on the driver state index (Fung's contact data and head vector) and the vehicular state (Fung's indicated hazards), as claimed. See Final Act. 12.", + "We see nothing on the record to indicate the recited driver state index and the vehicular index must be independent of each other.", + "Accordingly, we sustain the Examiner's anticipation rejection of independent claim 11." + ] +} \ No newline at end of file diff --git a/opinion_split/2019005946_Mail_Decision.json b/opinion_split/2019005946_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..4b032df5aca061e4df9c8202d0e0967c26732511 --- /dev/null +++ b/opinion_split/2019005946_Mail_Decision.json @@ -0,0 +1,79 @@ +{ + "appellant_arguments": [ + "The Appeal Brief does acknowledge the rejection with a section titled \"The Examiner bases the rejection upon the premise that Claims 3-5 are indefinite under 35 U.S.C. 112(b) for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.\" \" Appeal Br. 3.", + "First, Appellant seeks to distinguish Schlueter due to the presence of a center post in its table. Appeal Br. 4.", + "Second, Appellant points out that the table embodiment of Figure 1 of Schlueter includes pairs of crossed \"suspension cables,\" \" not legs. Appeal Br. 4.", + "Appellant argues that Cochrane's table *is a different concept altogether from the subject invention.\" Appeal Br. 5.", + "In particular, Appellant argues that Cochrane's \"legs are in bending, which makes its structural integrity for vertical loads questionable, not to mention the drastically different appearance and difficult constructability.\" ld.", + "Appellant argues against the rejection solely on the basis that the tables of Schlueter and Martin have center posts.", + "Appellant's entire argument with respect to this rejection is the following: \"The purpose Claim 5 is to establish the primary function of the pedestal with crossed legs as a support for tables in different configurations.", + "While pedestals can stand alone, table tops are interchangeable.", + "It is the pedestal that is the real invention here.\" Appeal Br. 7.", + "Appellant argues that Coker is not analogous art, albeit using different words.", + "See Appeal Br. 8 (\"Fig. 2 shows Coker's Display System that was invented to display posters.", + "One would have difficulty to relate it to Lachaume's concept, since its intended use is entirely different. \")." + ], + "examiner_findings": [ + "1. claims 3-5 under 35 U.S.C. S 112(b) as being indefinite (Non- Final Act. 3).", + "2. claims 2 and 4 under 35 U.S.C. $102(a)(1) as anticipated by Schlueter2 (id.); and", + "3. claims 2 and 4 under 35 U.S.C. $102(a)(1) as anticipated by Cochrane- (id. at 4); and", + "4. claim 3 under 35 U.S.C. 5 103 as unpatentable over Schlueter and Martin4 (id.);", + "5. claim 5 under 35 U.S.C. 5 103 as unpatentable over Schlueter (id. at 5);", + "6. claims 2-4 under 35 U.S.C. 5 103 as unpatentable over Lachaume* and Coker* (id.); and", + "7. claims 2 and 4 under 35 U.S.C. a 103 as unpatentable over Bentwood table? and Coker (id. at 6).", + "The Examiner found that Schlueter discloses all of the elements of claims 2 and 4. Non-Final Act. 3-4.", + "However, and as the Examiner points out, claims 3-5 recite the open-ended transitional phrase **comprising\" and, accordingly, they do not preclude the presence of a center post. Ans. 4;", + "The Examiner responds that Schlueter alternatively teaches that rigid components can be used in lieu of cables, and finds that such rigid components constitute legs within the meaning of the claims. Ans. 4 (citing Schlueter ~24).", + "The Examiner found that Cochrane disclose all of the elements of claims 2 and 4. Non-Final Act. 4.", + "As the Examiner responds, however, none of these arguments (even accepting them as true) rebuts the Examiner's finding that Cochrane discloses all the limitations of claims 2 and 4.", + "See Ans. 5 (*Appellant's statements that Cochrane teaches a different concept because of its bending legs, different appearance and difficult constructability (appellant's opinion), does not overcome the fact that all the features claimed are met by this reference. \").", + "As discussed above, the Examiner found that Schlueter teaches the subject matter of, and anticipates, claim 2.", + "As relevant to additional recitation of claim 3, the Examiner found that \"Martin teaches support legs . that are arranged in various configurations to provide maximum load bearing capacity and lateral stability in all directions relative to the amount of material used. Non-Final Act. 4-5 (citing Martin Figs. 5-6).", + "The Examiner concluded: It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the legs of Schlueter being making them and center post (48) adjustable, such as is taught by Martin, to provide the desired/required load support on the pedestal and for aesthetic reasons. Id. at 5.", + "Despite claim 5 being indefinite as written, the Examiner presumed, for purposes of examination, that it was intended to depend from claim 2. Non- Final Act. 5.", + "As relevant to the additional recitation of claim 5, the Examiner found that, although Schlueter fails to teach plural table tops within a single embodiment, Schlueter does disclose alternate table tops. Id. (citing Schlueter Fig. 13). 14).", + "The Examiner concluded: It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly or Schlueter by providing multiple table tops therewith, for aesthetic reasons and to provide different sized table spaces with the assembly. Id. at 5.", + "The Examiner found that Lachaume teaches the subject matter of claims 2-4 except for the \"base plate\" recited in claim 2 and incorporated by reference into claim 4. Non-Final Act. 5-6.", + "The Examiner found that \"Coker teaches a pedestal assembly with a top plate (B1), legs (2a-d) and a base (82).\" Id. at 6.", + "The Examiner concluded: \"It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly of Lachaume by adding a base, such as is taught by Coker, thereon, to provide a more stable assembly.\" \" Id." + ], + "ptab_opinion": [ + "The Specification \"relates to modern lines of furniture made to be easily assembled from interchangeable components in various configurations.\" Spec. 91.", + "\"More particularly, the invention relates to pedestals for displaying artwork or merchandise and supporting tabletops.\" ~, Id.", + "Claims 2-5 are rejected. Non-Final Act. 1.", + "Claim 1 is cancelled.", + "No other claims are pending. ld.", + "The rejected claims are reproduced below.", + "2. A pedestal assembly suitable to display artwork, merchandize or used as a work stand, comprising: A. base plate, B. top plate, C. minimum three pairs of crossed legs, and D. required hardware.", + "3. The pedestal assembly in claim 2 has its support legs arranged in various configurations to provide maximum load bearing capacity and lateral stability in all directions relative to the amount of material used.", + "4. The pedestal assembly in claims 2 is configured to facilitate manufacturing, transportation, assembly by laymen and to be pleasing to the eye.", + "5. With the addition of table tops of different configurations, the assembly becomes a pedestal table. Appeal Br. 13.", + "The following rejections are before us:", + "Appellant does not present any arguments with respect to the Examiner's indefiniteness rejection of claims 3-5.", + "However, the Appeal Brief does not thereafter present any actual arguments regarding the rejection. Id. at 3-4.", + "Because Appellant does not present any arguments against the rejection of claims 3-5 under 35 U.S.C. 5 112(b), we summarily affirm.", + "Appellant presents two arguments against the rejection, neither of which apprises us of Examiner error.", + "see also CIAS, Inc. V. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007 (\"In the patent claim context, the term *comprising* is well understood to mean *including but not limited to' .\"); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (\"Comprising* is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. \").", + "Indeed, Schlueter states: In the embodiment shown, the third member 16 is a flexible cable that can be made from braided steel cable, rope, stretch cord, wire, chain or any similar flexible component.", + "It is further appreciated that the third member 16 can be a generally rigid component that is capable of carrying a tensile load, such as a thin rod, for example. Schlueter 924.", + "Appellant did not file a reply brief.", + "Because Appellant does not apprise us of error in the Examiner's rejection of claims 2 and 4 as anticipated by Schlueter, we affirm.", + "To be clear, the claims do not require non-bending or straight legs.", + "Because Appellant does not apprise us of error in the Examiner's rejection of claims 2 and 4 as anticipated by Cochrane, we affirm.", + "Claim 3 recites: \"The pedestal assembly in claim 2 has its support legs arranged in various configurations to provide maximum load bearing capacity and lateral stability in all directions relative to the amount of material used.' \" Appeal Br. 13.", + "Although that is factually accurate, it does not patentably distinguish claim 3 over the prior art, as claim 3 does not preclude the presence of a center post.", + "rejection of claim 3 as unpatentable over Schlueter and Martin, we affirm.", + "Claim 5 recites: \"With the addition of table tops of different configurations, the assembly becomes a pedestal table.\" Appeal Br. 13.", + "This argument is not responsive to the Examiner's rejection, and therefore does not apprise us of Examiner error.", + "rejection of claim 5 as unpatentable over Schlueter, we affirm.", + "\"Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.\" In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).", + "Coker clearly does not meet the first criterion because it is *concerns a poster support and display system\" (Coker 1:3), whereas Applicant's claimed invention \"relates to modern lines of furniture [and,] *[m]ore particularly, the invention relates to pedestals for displaying artwork or merchandise and supporting tabletops.\" Spec. 91.", + "And the record before us does support that Coker meets the second criterion, as the Examiner has not made a prima facie finding in that regard, even in the Answer.", + "The Examiner acknowledges **appellant's argument that Coker is nonanalogous art\" and the proper standard for determining whether a reference is analogous but does not apply the standard to Coker. Ans. 5-6.", + "Instead, the Examiner merely provides reasons for why a person of ordinary skill in the art would \"add the base of Coker to the crossed legs of Lachaume.\" Id. at 6.", + "However, those reasons presume that Coker is analogous art in the first instance.", + "The Examiner has not explained or supported a finding that Coker is analogous art.", + "Because Appellant apprises us of error in the Examiner's s rejection of claims 2-4 as unpatentable over Lachaume and Coker, we reverse.", + "Because the Examiner has not supported a finding that Coker is analogous art, we reverse this rejection as well." + ] +} \ No newline at end of file diff --git a/opinion_split/2019006236_Mail_Decision.json b/opinion_split/2019006236_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..c18278818da2834df59bb809a4ec91e8229668fe --- /dev/null +++ b/opinion_split/2019006236_Mail_Decision.json @@ -0,0 +1,42 @@ +{ + "appellant_arguments": [ + "**Appellant does not contest the fact that these claim elements are known in the art.\" Appeal Br. 2.", + "6 Appellant contends, however, that *it was not predictable that the hydrophobic urethane thickener would stabilize high concentrations (15 to 50% by mass) of the polymer particles in aqueous media.\" Id. at 3.", + "Appellant argues that \"*[t]he technical literature provided by Centerchem for these powders [i.e., PenstiaTM and AuraSphere*] recommends a concentration of no more than 3% (specification, p. 3 lines 16-21) in aqueous media, and, as noted above, other workers skilled in the art failed to identify this solution to the problem of suspension instability at higher concentrations.\" Id.", + "Appellant concedes that \"[the Centerchem product brochure (of record) discloses that the commercially available AuraSphereTM powders are (adipic acid/neopentyl glycol) crosspolymer powders, of the type recited in Claim 1.\" Appeal Br. 2.", + "Appellant acknowledges that *\"[t]he Adeka product brochure teaches that the specific hydrophobically modified polyurethane PEG-240/ Decyltetradeceth-20/HDI, recited in claim 2, is the effective component of commercial gelling agents marketed as ADEKA NOL GT-700 and GT- 730.\" Appeal Br. 5.", + "Appellant also acknowledges that \"Tominaga teaches the use of the GT-700 product in combination with a crosslinked acrylamide to form a viscous but easily washable skin treatment. \" Id.", + "Appellant argues, however, that **Tominaga provides no teaching, suggestion, or motivation to employ GT-700 as a stabilizer of particle suspensions.", + "One of ordinary skill in the art can learn from Tominaga only that GT-700 (hydrophobically modified urethane) is an aqueous phase thickener suitable for cosmetics.\" Id.", + "Appeal Br. 5 (\"Appellant does not contest the fact that PEG-240/Decyltetradeceth- 20/HDI was known in the art as an aqueous phase thickener. \").", + "Appellant argues that, *assuming, arguendo, that the patentability of claim 2 relies upon an unexpected result, the Examiner has failed to explain how claim 2, which is limited to the precise thickener for which effectiveness was demonstrated, is not commensurate in scope with the experimental evidence.\" Appeal Br. 5.", + "Appellant argues that \"among all of the aqueous phase thickeners tested for use in combination with the suspension of polymer particles (specification, Table 1, see comparative Examples 1-4), satisfactory results could be obtained only with the claimed hydrophobically modified polyurethane.", + "Nothing in the prior art teaches or suggests that this particular class of thickener would have this particular property.\" Appeal Br. 3." + ], + "examiner_findings": [ + "The claims stand rejected as follows: Claims 1 and 3-7 under 35 U.S.C. $ 103 as obvious in view of Yoshida2 and AuraSphere? (Ans. 3) and Claim 2 under 35 U.S.C. 5 103 as obvious in view of Yoshida, AuraSphere, Adeka,\" and Tominagas (Ans. 5).", + "The Examiner finds that \"Y oshida teaches cosmetic compositions [comprising] an associative thickener comprising hydrophobically modified polyurethane, (B polymer of claim 1)\" but *fails to specifically teach adipic acid/neopentyl glycol crosspolymer (A polymer of claim 1).\" Ans. 3-4.", + "The Examiner finds, however, that **AuraSphere teaches adipic acid/neopentyl glycol crosspolymer particles, commercially available under tradenames Penstia Powder, AuraSphere N, s or A. \" ld. at 4.", + "The Examiner concludes that it would have been obvious \"to modify the teachings of Yoshida [by] add[ing] the adipic acid/neopentyl glycol crosspolymer powders as motivated by AuraSphere\" because \"AuraSphere teaches of desirable and predictable cosmetic benefits including (e.g., visual, tactile properties) and manufacturing advantages (e.g., ease of formulation, etc.).\" ld.", + "The Examiner finds that **Tominaga teaches an external preparation comprising an associative polyurethane thickener. Examples contain 0.5-2 wt% PEG- 240/decyltetradeceth-20/HD1 copolymer\" and \"Adeka teaches that PEG- 240/decyltetradeceth-20/HD1 copolymer was available before the time of the filing of the present invention and well known as a cosmetic \u00b7 \u00b7 \u00b7 gelling agent.\" Ans. 5.", + "The Examiner concludes that it would have been obvious \"to modify the teachings of Yoshida and substitute the associative thickener with PEG- 240/decyltetradeceth-20/HD1 copolymer as motivated by Adeka\" because *the latter teaches that the copolymer is used to make a high-elastic/ sparingly water gel that is sprayable and stable in salt.' \" Id. at 6." + ], + "ptab_opinion": [ + "We agree with the Examiner that the product of claim 1 would have been obvious based on the cited references.", + "Thus, as the Examiner found, Yoshida discloses a cosmetic product comprising component (B) of claim 1, in amounts that encompass the recited range.", + "Based on these teachings, it would have been obvious to include AuraSphere* N, an aqueous polymer, in Yoshida's cosmetic composition because Yoshida suggests that problems with its thickener can be resolved by using water-soluble polymers and AuraSphere teaches that its AuraSphere@ N composition minimizes the appearance of lines and wrinkles, and provides a soft, comfortable film.", + "This argument is not persuasive because, as the Examiner found (Ans. 4, 6-7; Final Act. 3), AuraSphere discloses an example ofa a \"Veiling cream\" formulation that includes 20% of AuraSphere* N. See AuraSphere, fifth page.", + "Thus, Appellant in its Appeal Brief does not contest the Examiner's finding that AuraSphere discloses a composition that appears to include an amount of adipic acid/neopentyl glycol crosspolymer powder within the claimed range, and does not disclose any problem of instability.", + "Claim 1 is not limited to aqueous suspensions, and does not require any specific amount of water.", + "Therefore, claim 1 encompasses the composition made obvious by the cited references.", + "We agree with the Examiner's findings and conclusion.", + "We are not persuaded by this argument.", + "Adeka discloses the same copolymer as is recited in claim 2, which Appellant acknowledges.", + "Thus, it would have been obvious to use the specific PEG-240/Decyltetradeceth-20/201 taught by Adeka as the hydrophobic denatured polyurethane taught by Yoshida because Adeka teaches that its polymer forms a springy water gel with good spray discharge and good water solubility.", + "We do not agree that Appellant has provided evidence of unexpected results sufficient to outweigh the evidence cited by the Examiner.", + "The Specification's Comparative Examples 3 and 4, however, show that compositions comprising \"(Acrylates/C10-30 alkyl acrylate) crosspolymer\" were equally effective in stabilizing a suspension of 25% or 35% (adipic acid/neopentyl glycol) crosspolymer powder as the PEG- 240/Decyltetradeceth-20/HD1 copolymers shown in the Specification`s Examples 1-4.", + "Compare Spec. 15 (Table 1) with id. at 16 (Table 2).", + "The only difference between the results is that the examples with PEG- 240/Decyltetradeceth-20/HD1 copolymers had better stability over time, but Tominaga teaches that its *preparation for skin \u00b7 a \u00b7 is excellent in usability and stability.\" \" Tominaga 1:6-7 (emphasis added).", + "Appellant has not shown that the results in the Specification were unexpected." + ] +} \ No newline at end of file diff --git a/opinion_split/2019006544_Mail_Decision.json b/opinion_split/2019006544_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..aca596c42e24602f6ab46baeeb8e937b9ceb9eae --- /dev/null +++ b/opinion_split/2019006544_Mail_Decision.json @@ -0,0 +1,64 @@ +{ + "appellant_arguments": [ + "Appellant seeks reversal on several bases. Appeal Br. 12-18.", + "First, Appellant argues that Yambe does not teach an assembly *wherein the at least one shape-changing actuator automatically adapts to changing environmental conditions by having a first actuator shape at a first ambient temperature and a second actuator shape at a second ambient temperature that differs from the first ambient temperature, wherein the at least one shape-changing actuator changes shape in response to changes between the first ambient temperature and the second ambient temperature\" as required by claim 1. ld. at 13-15.", + "Appellant argues that the foregoing provision requires that the actuator have a first shape at a first ambient temperature, and a second shape', wherein the at least one shape-changing actuator changes shape in response to the second ambient temperature rather than being connected to a source of electrical power that is used to change the shape. Id. at 13.", + "Appellant argues that Yambe does not teach such feature because, in Yambe, the alloy **changes shape in response to being electrically conducted and heated.\" \" Id. at 14.", + "Appellant further argues that the Examiner did not adequately address the subject limitation in the Final Office Action. Id. at 15.", + "In its Reply Brief, Appellant argues that the Examiner has not accorded all words of the limitation patentable weight. Reply Brief dated Sept. 3, 2019 (\"Reply Br. \").", + "Appellant argues that \"the Office Action acknowledges that these limitations were 'not evaluated.'\" Reply Br. 2.", + "Second, Appellant argues that Yambe fails to teach an assembly *wherein the at least one shape-changing actuator is formed of a single piece', of wire having a plurality of windings that wrap around or within the at least one aspect-controlling portion.\" Appeal Br. 15-16.", + "Appellant argues that Yambe's disclosure of a *plurality of two-way shape memory alloys\" teaches a device with multiple alloys rather than \"a single piece of wire\" as claimed. Id. at 16.", + "Third, Appellant argues that the Examiner has adopted certain inconsistent positions during the course of prosecution. Appeal Br. 16-18.", + "Appellant argues that \"the evolving positions within the Office Actions cast doubt on the sufficiency of support for the current positions and arguments within the Office Action.\" \" Id. at 18.", + "Appellant further argues that inconsistency \"seemingly impeach[es] any deference that the Board may deem it owes to the Examiner.\" Id.", + "In support of its appeal of these claims, Appellant relies on the arguments described above. Appeal Br. 19-22." + ], + "examiner_findings": [ + "The Examiner relies upon the following prior art: Name Reference Date", + "The Examiner maintains the following rejections:", + "1. Claims 1, 7, 8, and 10 are rejected under 35 U.S.C. $ 102(a)(1) as anticipated by Yambe. Final Action dated March 21, 2019 (\"Final Act.\") 2-4.", + "2. Claims 3, 5, 6, and 12 are rejected under 35 U.S.C. 5 103 as being unpatentable over Yambe in view of Lewis and as evidenced by Ashby. Id. at 4-5.", + "3. Claims 4 and 9 are rejected under 35 U.S.C. S 103 as being unpatentable over Yambe in view of Lewis and Kim as evidenced by Tortora and Ashby. Id. at 5-8.", + "4. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Y Yambe in view of Jacobs. Id. at 8-9.", + "5. Claims 13 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yambe in view of Lewis as evidenced by Ashby. Id. at 9-11.", + "6. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yambe in view of Lewis as evidenced by Ashby and further in view of Barton. Id. at 12.", + "7. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Yambe in view of Lewis and Kim as evidenced by Tortora and Ashby. Id. at 12-13.", + "The Examiner rejects claims 1, 7, 8, and 10 as anticipated by Yambe. Id. at 2-4.", + "In support of the rejection, the Examiner finds that Yambe teaches a two-way shape memory alloy arranged in a helical or ring form on the surface or inside of a transport tube. Final Act. 3.", + "The Examiner finds that transport tube 1 satisfies the **aspect- controlling portion\" limitation and that memory alloys 2 satisfy the \"shape- changing actuator\" limitation. Final Act. 3.", + "In the Answer, the Examiner determines that \"Yambe teaches a shape memory alloy that responds to a change in temperature from an external heat source, therefore it is inherent to the material that in response to a change in temperature a change in shape will occur, regardless of how the change in temperature is applied.\" Answer 17 (emphasis added).", + "The Examiner makes a specific finding that \"it is inherent to the material [of Yambe] that in response to a change in temperature a change in shape will occur, regardless of how the change in temperature is applied.\" Ans. 17.", + "That is, the Examiner finds that Yambe teaches structure capable of changing shape in response to a change in ambient temperature.", + "In the Answer, the Examiner interprets the limitation \"as the environmental aspect control assembly comprising at least one shape- changing actuator (i.e. either a single actuator or a plurality of actuators), wherein each individual actuator is formed of a single wire with a plurality of windings.\" Ans. 18.", + "The Examiner further construes the claim to *limit(] each individual shape-changing actuator to being formed of a single piece of wire.\" ld.", + "The Examiner maintains the findings that these limitations are satisfied by Yambe's two-way shape memory alloys wound around a transport tube. Id. at 19.", + "The Examiner rejects claims 3-6, 9, 11-15, and 18- 20 as obvious over Yambe and various additional references. Final Act. 4- 13." + ], + "ptab_opinion": [ + "The portion of the Final Office Action quoted by Appellant is not, however, reflective of the Examiner's s determination.", + "The full sentence provides that \"[t]his is a functional limitation, and therefore was not evaluated on its own, but in conjunction with the remainder of claim 1.\" Final Act. 3.", + "In any case, we consider the scope of the limitation at issue as follows.", + "Thus, the claims are apparatus claims.3 See 35 U.S.C. $ 101.", + "It has long been held that **apparatus claims cover what a device is, not what a device does.\" Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).", + "Here, the Applicant uses functional language (\"adapts,\" \" \"changes shape\") to define the claim.", + "In order to be accorded patentable weight, functional language in an apparatus claim must limit the claim in terms of structure rather than function. In re Schreiber, 128 F.3d at 1477-78; MPEP $ 2114.", + "Thus, the limitation at issue is construed to require that the assembly or system of the claims \"possess[es] the recited structure [which is] capable of performing the recited functions.\" See MasterMine Software v Microsoft Corp., 874 F.3d 1307, 1315-16 (Fed. Cir. 2017).", + "As persons of scientific competence in the fields in which they work, examiners are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art.", + "Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003).", + "The Examiner's finding that Yambe's memory alloy is capable of changing shape in response to a change in ambient temperature is not specifically rebutted and is sufficient to support a prima facie case of obviousness.", + "Accordingly, Appellant has not shown error in this regard.", + "We find the Examiner's determinations to be supported by the record.", + "The claim's *at least one shape-changing actuator\" language explicitly permits multiple actuators.", + "Further, the Examiner' s finding that the memory alloy may be a wire arranged in a helical or ring form (id. at 19) is supported.", + "See Yambe ' 14 (\"The two-way shape memory alloy may be of a fine wire shape or a coil form. \"); see also Yambe Fig. 2A.", + "Thus, we adopt the Examiner's finding that \"Y ambe discloses at least one two-way shape memory alloy (shape changing actuator) which individually comprise a single wire and a plurality of windings.\" Ans. 20.", + "This is not persuasive of error.", + "The Board has a statutory duty to \"review adverse decisions of examiners upon applications for patents.\" 35 U.S.C. 6(b)(1).", + "Prior actions by the Examiner are not *adverse decisions\" presently under review and are outside the scope of the present appeal.", + "Further, the Federal Circuit has held that prior decisions during prosecution are not binding on the Examiner.", + "See BlackLight Power V. Rogan, 295 F.3d 1269, 1273-1274 (Fed. Cir. 2002) (quoting In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc) (\"the Commissioner has an obligation to refuse to grant a patent ifhe believes that doing so would be contrary to law. \"); see also id. at 1273 (\"The complexity of the examination process, and the potential for error in any human activity, weigh on the side of according the PTO latitude. \").", + "Accordingly, Appellant has failed to show error in the rejection on this basis.", + "As we have not found such arguments to be persuasive, we find that Appellant has not shown error with respect to the rejection of claims 3-6, 9, 11-15, and 18-20." + ] +} \ No newline at end of file diff --git a/opinion_split/2019006698_Mail_Decision.json b/opinion_split/2019006698_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..34274a5af3f3d9cbf57de414f87840d2a6178acc --- /dev/null +++ b/opinion_split/2019006698_Mail_Decision.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [ + "Appellant argues this finding is in error because \"Paragraph [0015] of Wen merely discloses whether to download a resource.", + "\u00b7 \u25a0 \u00b7 Determining whether to download a resource is different from the presently recited determining a loading method." + ], + "examiner_findings": [ + "REJECTION\" Claims 1-18, 21, and 22 stand rejected under 35 U.S.C. S 103(a)4 as obvious over the combination of Wen, D' Angelo, and Riviello.", + "The Examiner finds Wen teaches or suggests the *determine a loading method\" limitation by disclosing whether to download a network resource, wherein \"the network resource is downloaded only when the content-length of the network resource is smaller than the threshold [using the content- length threshold as a factor to determine whether or not to automatically download or not]. ~", + "The Examiner responds by stating that the rejection relies on both paragraphs 15 and 16 of Wen.", + "The Examiner finds paragraph 15 of Wen teaches a network resource is not downloaded until the system has enough memory, whereas paragraph 16 then teaches the alternate case, where the network resource management loading module 12 will first select a network server 13 having a relatively high number of network resources to be downloaded, and further first selects a network resource having a relatively fast decoding speed for transferring network resource, and the network resource having relatively small content-length is downloaded first.", + "The Examiner then states that, together, paragraphs 15 and 16 of Wen show *determine a loading method\" by \"either choosing to have a user decide if he or she wants to download the network resource if the content- length of the required resource is not recognized, or by automatically using the network resource management loading module 12 download the network resource having relatively small content-length first.\"", + "In other words, the Examiner finds Wen discloses alternate cases for downloading a network resource, and it is on that basis the Examiner finds Wen teaches \"determine a loading method.\"", + "See id." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 9 6(b).", + "We reverse.", + "OPINION We have reviewed the Examiner's rejection in light of Appellant's arguments the Examiner has erred.", + "See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "We concur with Appellant's contention the Examiner erred in finding Wen teaches or suggests the step, determine a loading method for each component based at least in part on one or more loading factors associated with the corresponding component, wherein the loading method may be either in-line loading or adaptive loading, wherein the one or more loading factors comprises a current load of a server associated with the webpage[,] as recited in independent claim 1 and commensurately recited in independent claim 11.5", + "The Examiner's s finding that Wen discloses \"alternate\" cases for determining a loading method is not supported by the record.", + "In paragraph 15, Wen discloses determining whether to download a network resource at all, the determination based on whether the user's system has enough memory or whether the download time is under a predetermined threshold.", + "Wen further discloses that, if the download condition is not satisfied, the resource will not be downloaded; instead, \"a small icon is displayed on a position of the browser screen,' and the user can then decide whether to download the resource.", + "Thus, the determination disclosed in Wen is whether to automatically download or stop trying.", + "This is also illustrated in the flow chart of Wen's Figure 2, block S205, which asks \"whether to download[] the network resource.\"", + "If the decision is *no, \" then the next step is *cutting off from the network server\"; if the decision is \"yes,\" \" then the system *'request[s] . \u00b7 \u00b7 transmission of the network resource\" in block S206.", + "Paragraph 16 of Wen then discloses the manner of downloading the resource that occurs in block S206 of Figure 2 once the system has decided that downloading will occur.", + "In particular, Wen discloses the network management loading module selects a network server \"having a relatively high number of network resources to be downloaded,\" and also selects \"a network resource having a relatively fast decoding speed for transferring network resource[s].\"", + "In short, because the Examiner's findings regarding the *determine a download method\" limitation are premised on a reading of the cited art (Wen) that is not supported by the record, we do not sustain the Examiner's finding that the prior art of record teaches or suggests determine a loading method for each component based at least in part on one or more loading factors associated with the corresponding component, wherein the loading method may be either in-line loading or adaptive loading, wherein the one or more loading factors comprises a current load of a server associated with the webpage[,] as recited in independent claim 1 and commensurately recited in independent claim 11.", + "Accordingly, on this record, we do not sustain the Examiner's 35 U.S.C. 9 103(a) rejection of claims 1 and 11 or of their respective dependent claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2019006899_Mail_Decision.json b/opinion_split/2019006899_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..b71e99d82f2c38449b054e6282e8050b0b026b87 --- /dev/null +++ b/opinion_split/2019006899_Mail_Decision.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "In both the Appeal Brief and Reply Brief, Appellant identifies various paragraphs from the Specification alleging they provide the necessary written description support for the disputed limitations. See Appeal Br. 12- 14 (citing Spec. 6:6-11, 22:25-26:8, 29:13-20); Reply Br. 7-8 (citing Spec. 6:20-21, 16:22-17:8, 25:7-19, 29:13-20, 34:8-21).", + "More particularly, Appellant characterizes the disputed limitations as describing **features [that] generally relate to how the claimed invention handles transmission failures.\" Appeal Br. 14; see also Reply Br. 9 (arguing the Specification explicitly discloses a \"fail-over\" feature in which a message is transmitted on another channel if the intended channel is deactivated on the recipient device).", + "Appellant argues that one skilled in the art would recognize that *transmission failure may occur when a transmission channel is deactivated.\" Appeal Br. 15.", + "As such, Appellant asserts it need not be explicitly disclosed. Appeal Br. 15.", + "Further, Appellant argues *any time messages cannot be transmitted, the corresponding channel may be deactivated.\" Reply Br. 9.", + "Additionally, Appellant notes that because a portable device may be either a transmission device or a reception device, the disclosures in the Specification related to the portable device operating as a transmission device \"may apply with equal force\" when the device is operating as a reception device. Appeal Br. 15." + ], + "examiner_findings": [ + "Claims 1-27 stand rejected under pre-AIA 35 U.S.C. 5 112, first paragraph for failing to comply with the written description requirement. Final Act. 4-6.", + "With respect to the claim limitations of transmitting the message via a first channel (i) \"when the messaging service associated with the second channel is deactivated on the recipient device,\" and (ii) \"regardless of whether the messaging service associated with the second channel is activated on the recipient device,\" \" the Examiner finds the Specification fails to provide the requisite written description support. Final Act. 4-6.", + "In particular, the Examiner explains the Specification fails to support that transmission of a message on a first channel is based on the state of a second channel (i.e., activated or deactivated) of a recipient device. Final Act. 6." + ], + "ptab_opinion": [ + "Appellant's arguments do not persuade us of Examiner error.", + "Contrary to Appellant's arguments, the Specification does not describe using the channel status of a recipient device to determine a channel for transmitting a message.", + "Rather, the cited portions of the Specification describe, inter alia, the presentation of available channels and selection thereof by the user of the transmitting device. See, e.g., Spec. 25:7-19, 34:8-21, Fig. 3[a].", + "The other portions of the Specification cited by Appellant also fail to provide the requisite written description support for using the channel status of a recipient device to determine a channel for transmitting a message from the transmission device.", + "We also disagree with Appellant's argument that the Specification provides a fail-over feature that accounts for when a channel of a recipient device is deactivated and, therefore, transmits on a different (i.e., first) channel.", + "Although the Specification does mention a scenario of using another channel (i.e., a first channel) if transmission of the message on the selected channel (i.e., second channel) fails (see, e.g., Spec. 6:6-11, 29:13- 20), the recited features of claim 1 do not recite a transmission failure, are narrower than the general discussion of a failure being generated, and are not set forth in the Specification.", + "Moreover, based on our review of the Specification, there is no disclosure of considering the channel activation status of a recipient device when the transmission device is transmitting a message.", + "For the reasons discussed supra, we sustain the Examiner's rejection of claim 1 for failing to comply with the written description requirement of pre-AIA 35 U.S.C. 112, first paragraph.", + "For similar reasons, we also sustain the Examiner's rejection of independent claims 10 and 19, which recite similar limitations and were not argued separately. See Appeal Br. 16; see also 37 C.F.R. $ 41.37(c)(1)().", + "In addition, we sustain the Examiner's rejection of claims 2-9, 11-18, and 20-27, which depend directly or indirectly from the independent claims and were not argued separately. See Appeal Br. 16; see also 37 C.F.R. 5 41.37(c)(1)(iv)." + ] +} \ No newline at end of file diff --git a/opinion_split/2020000276_Mail_rehearing_decision.json b/opinion_split/2020000276_Mail_rehearing_decision.json new file mode 100644 index 0000000000000000000000000000000000000000..bd1c3d794d5632a4baa23663c2ed080b6fc2fba7 --- /dev/null +++ b/opinion_split/2020000276_Mail_rehearing_decision.json @@ -0,0 +1,98 @@ +{ + "appellant_arguments": [ + "In the Request, Appellant remarks that the \"USPTO had already downgraded the rejection of most of the claims to objection but without any information of the objection.\" Req. Reh'g 17.", + "Appellant presents arguments directed to a purported rejection of claim 5. Req. Reh'g 42-45.2", + "Throughout the Request, Appellant repeats a sentence quoted from MPEP $ 2173.05(e) (citing In re Hammack, 427 F.2d 1384, 1388 n.5 (CCPA 1970)) to the effect that indefiniteness in claim language of semantic origin *is not rendered unobjectionable simply because it could have been corrected.\" See, e.g., Req. Reh'g 17, 19.", + "Appellant appears to propose amendments to the claims in the Request. See, e.g., Req. Reh'g 52, 54-56.", + "Pages 59-106 of the Request present arguments contesting the Examiner's findings and reasoning in rejecting claims 1-4 and 6-9 under 35 U.S.C. 9 103.", + "The Request characterizes the Examiner's determination that it is unclear to which nozzles (the intake nozzles, the exhaust nozzles, or both) \"the nozzles\" in claim 2 refer, as well as any attempt to amend claim 2 to correct this ambiguity, as \"ridiculous\" and \"frivolous and not suitable for a person of ordinary skill.' \" Req. Reh'g 21.", + "Appellant argues that the use of \"the said\" does not render the scope of the claims indefinite. Req. Reh'g 41.", + "On page 46 of the Request, Appellant addresses two additional issues with claim 6.", + "The first is directed to the use of \"the said\" in claim 6. Req. Reh'g 46.", + "Appellant further expresses a desire not to amend claim 7 to positively recite the transmissions because, according to Appellant, this *will reduce the protection accorded to the invention.\" Req. Reh'g 47; see also Appeal Br. 38 (expressing the same desire).", + "Appellant characterizes the Board's statement that it was not apprised of error in the Examiner's determination *that claim 8 is indefinite for the additional reason that it is not clear to which of the previously recited plurality of *drive shafts, *differential gears,' and 'wheels' the language *said drive shaft. \u00b7 \u00b7 \u00b7 differential gear . \u00b7 \u00b7 and wheel' in claim 8 refers\" (Dec. 11) as \"without any reason whatsoever, just a personal judgment.' \" Req. Reh'g 23.", + "Appellant argues that there is no ambiguity in the term **full frontal surface\" for a person having ordinary skill in the art because one \"cannot just take any plane to measure the area\"; rather, \"It should be in the direction of travel, deemed as the front.\" \" Req. Reh'g 20.", + "Appellant also contends there is no ambiguity as to which nozzles are recited in claim 9 as being *of such sizes that they are large enough to cover the full frontal surface area\" because *front refers to the intake nozzles only.\" Req. Reh'g 20.", + "Appellant submits that `[cllaim 9 is a method claim and the method applies to different embodiments of the inventions\" and contends that there is no need to put these different methods in separate claims. Req. Reh'g 25.", + "According to Appellant, \"It is a single method in designing all the embodiments of the invention.\" \" Id." + ], + "examiner_findings": [ + "Further, the Examiner's Answer states that \"[e]very ground of rejection set forth in the Office action dated 17 July 2018 \u00b7 \u00b7 \u00b7 is being maintained by the [E]xaminer except for the grounds of rejection (if any) listed under the subheading *WITHDRA WN REJECTIONS. \". Ans. 3 (emphasis added).", + "The only ground of rejection listed under the subheading *WITHDRA WN REJECTIONS\" was the rejection of claim 6 under 35 U.S.C. 9 112(b) with respect to *said vehicles** (language that was amended to \"said vehicle* to overcome the rejection). Id.", + "Rather, as explained in the Decision, \"\"[The Examiner objects to claim 5 as being in improper multiple dependent form pursuant to 37 C.F.R. 9 1.75(c) and MPEP $ 608.01(n) and does not treat claim 5 further on the merits. Final Act. 3; id. at 2 (stating that *[c]laim 5 is withdrawn from consideration*). ~, Dec. 1 n.2.", + "As the Decision explains, The basis of the Examiner's indefiniteness rejection is not that one of ordinary skill in the art would not understand how Appellant's disclosed invention works.", + "As the Decision explains, the basis of the Examiner's rejection was not that a person having ordinary skill in the art would be unfamiliar with transmissions. Dec. 10-11.", + "Rather, the problem identified by the Examiner is that claim 7 \"does not positively recite transmissions as an element of the claimed vehicle,\" and, thus, the reference \"to electric motor/generators being able to turn a plurality of turbines *via a plurality of shafts to the transmissions? does not make sense within the context of claim 7.\" Id. at 11.", + "The Examiner's position is that it is unclear whether the limitations following *such as\" in claim 8 are part of the claimed invention (i.e., whether claim 8 is limited to underwater vehicles). Final Act. 6 (referencing the discussion of similar language in claim 2 at Final Act. 5)." + ], + "ptab_opinion": [ + "This remark appears to be directed to the listing of claims 1-4 and 6-9 on the line for \"Claim(s) objected to:\" on the Notice of Panel Decision from Pre-Appeal Brief Review issued March 12, 2019 (hereinafter \"Notice\").", + "The box for \"Proceed to Board of Patent Appeals and Interferences\" was also checked on the Notice, which would only make sense if there were pending rejections for the Board to review.", + "Thus, it is clear that, with the exception of the particular rejection of claim 6 expressly withdrawn by the Examiner on page 3 of the Answer, all rejections of claims 1-4 and 6-9 set forth in the Final Action (dated July 17, 2018) were pending and before the Board for review.", + "However, claim 5 is not rejected.", + "Having withdrawn claim 5 from consideration, thus not treating it further on its merits, it is clear that the Examiner's inclusion of claim 5 in the indefiniteness rejection on page 3 of the Final Action was an inadvertent error. See id. at 3 n.3.", + "Thus, the Decision treats only claims 1-4 and 6-9, and not claim 5, as being rejected and involved in this appeal. See id. at 1, 3, 20.", + "The Examiner's objection to and withdrawal of claim 5 is a matter that is reviewable by a petition under 37 C.F.R. $ 1.81, and not by appeal to the Board. See MPEP 55 1002, 1201 (9th ed. Rev. 10.2019, rev. June 2020). (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)).", + "Thus, we do not address Appellant's additional arguments contesting the objection to claim 5 on page 26 of the Request.", + "Objections to drawings are also a matter that is reviewable by petition under 37 C.F.R. $ 1.181, and not by appeal to the Board. See MPEP 56 1002, 1201; In re Berger, 279 F.3d at 984.", + "Accordingly, the objections to the drawings were not addressed in the Decision and are not addressed herein.", + "The quoted sentence merely points out that an indefinite claim is still indefinite, even if the indefiniteness is of semantic origin that could be corrected because the intended meaning is readily apparent, unless such correction is made. See Hammock, 427 F.2d at 1388 n.5.", + "This statement in no way supports Appellant's position that any of the indefiniteness rejections, or the Board's affirmance thereof, was improper, nor does it state a point that was misapprehended or overlooked by the Board.", + "Amendments are not permitted in a Request for Rehearing.", + "Accordingly, we do not address these proposals further herein.", + "The Decision reversed the obviousness rejections under 35 U.S.C. a 103 because, due to the indefiniteness of the claims, sustaining the rejections \"would require speculation as to the scope of the claims.\" Dec. 19 (citing In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)).", + "As the Decision explains, our decision not to sustain the obviousness rejections *is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections.\" ~ Id. at 20.", + "Accordingly, Appellant's arguments on pages 59-106 are not directed to any aspect of the Decision and, thus, fail to state a point that was misapprehended or overlooked by the Board.", + "We do not address these arguments against the Examiner's obviousness rejections further herein.", + "This comment does not state a point that was misapprehended or overlooked by the Board.", + "Further, the fact that one might look to the drawings and Specification (see id.) to understand what Appellant has disclosed as the invention does not discharge Appellant's burden to clearly define the invention in the claims, which set forth the metes and bounds of the patent rights sought by Appellant.", + "The arguments on page 22 of the Request regarding claim 3 essentially rehash the arguments on page 30 of the Appeal Brief, and still miss the mark.", + "The definiteness requirement is directed to whether the metes and bounds of the claims are clear.", + "Claim 3 recites a \"vehicle\" having the elements positively recited in claims 1 and 2, but does not positively recite that the vehicle comprises a turbo jet or a turbo fan engine.", + "Thus, in reciting that the air compressor and turbo charger use turbines and hot exhaust gases to provide additional propulsion of turbo jet and turbo fan engines, it is not clear whether claim 3 intends to claim that the air compressor and turbo charger are part of a turbo jet or fan engine or that the air compressor and turbo charger can be used with a vehicle having a turbo jet and turbo jet engine.", + "As such, the metes and bounds of claim 3 are not clear. Dec. 8-9.", + "This argument does not state a point that was misapprehended or overlooked by the Board.", + "Indeed, the Board agrees with Appellant on this point, as explained in the Decision. Dec. 6 n.4.", + "Thus, the Decision did not sustain the rejection of claim 1, 3, 4, or 6 (or any other claim) on this particular basis.", + "Appellant's arguments on page 22 of the Request regarding claim 6 do not address the basis of the Board's decision to sustain this rejection, and thus do not state a point that was overlooked or misapprehended by the Board. See Dec. 9 (explaining the ambiguity in \"a plurality of said air intake nozzles\" in claim 6).", + "Appellant's inference on page 22 of the Request that the basis of the rejection, or of the Board's affirmance of this rejection, was that it is unclear what is meant by \"do not cover\" is incorrect.", + "Further, neither the Examiner nor the Board construed claim 1 as requiring that the intake nozzles cover the whole frontal surface area, as Appellant's arguments imply. See Req. Reh'g 22.", + "As already discussed above, the Board agrees with Appellant on this point, and the Decision did not sustain the rejection of claim 6 (or any other claim) on this particular basis. Dec. 6 n.4.", + "The second, directed to the use of \"vehicles\" in claim 6, addresses a rejection that was expressly withdrawn by the Examiner on page 3 of the Answer and, thus, rendered moot.", + "Appellant's arguments on page 23 of the Request regarding the term \"transmissions\" evince Appellant's misunderstanding of the basis of the rejection.", + "As the Decision explains, \"[a] claim that refers back to an element must first clearly and positively recite that element before referring back to it.\" Id.", + "This suggests that Appellant appreciates that claim 7 does not positively recite the transmissions, thereby supporting the Board's position that reference to \"the transmissions\" in claim 7 causes confusion. See Dec. 11 (stating that \"It is not clear how a motor/generator can turn a plurality of turbines via a plurality of shafts to transmissions that are not present in the vehicle of claim 7\").", + "This remark fails to state a point overlooked or misapprehended by the Board.", + "Appellant's inaccurate and misleading statement that \"[the [C]onstitution clearly states that a person skilled in the art know how to choose which apparatus or quantity for or a particular problem to be solved\" (Req. Reh'g 23) is similarly unavailing.", + "Appellant's observation that the term *such as\" does not necessarily render a claim indefinite (Req. Reh'g 24) essentially rehashes arguments set forth on page 28 of the Appeal Brief.", + "Notably, Appellant does not expressly state whether claim 8 is or is not limited to underwater vehicles so as to refute the Examiner's reasoning in this regard.", + "This explanation does not address the rationale for the rejection articulated by the Examiner on page 15 of the Answer. See Dec. 14-15.", + "As explained in the Decision, the Board \"agree[s] with Appellant that a person having ordinary skill in the art would understand *full frontal surface' to be the full front surface or part of the vehicle when viewed directly from the front of the vehicle.\" ld. at 15.", + "However, as the Decision goes on to explain: Figures 1A and 1B appear to show the upper and lower air intake nozzles (which appear, in fact, to be upper and lower portions of a single intake nozzle, rather than distinct upper and lower nozzles) extending to the upper, lower, and side peripheral edges of the front of the vehicle.", + "However, whether they encompass the **full frontal surface\" depends on how **full frontal surface\" is interpreted.", + "In other words, if the *full frontal surface\" is interpreted as a surface in a vertical plane taken along the front-most section of the vehicle, the upper and lower air intake nozzles do not appear to encompass such **full frontal surface.'", + "Rather, because they are inclined away from the front of the vehicle, only their upper, lower, and side edges intersect with this surface.", + "For this reason, and because of the ambiguity as to what actually constitutes an air intake nozzle (i.e., whether the upper and lower structures (2, 3) shown) in fact constitute a single nozzle with upper and lower portions or two distinct nozzles, there is merit to the Examiner's position that it is unclear what constitutes the **full frontal surface area of the vehicle\" in claim 9. Id. at 15-16.", + "This contention does not address the ambiguity discussed on pages 13-14 of the Decision.", + "The problem is not that it is not clear whether it is the intake nozzles or the exhaust nozzles that are large enough to cover the full frontal surface area.", + "Rather, as the Decision explains, the limitations in claim 9 directed to providing a plurality of intake nozzles \"of such sizes that they are large enough to cover the full frontal surface area of the vehicle* and providing a plurality of exhaust nozzles *of such sizes that they are large enough to cover the full frontal surface area of the vehicle* raise an ambiguity as to whether each of the plurality of intake nozzles and each of the exhaust nozzles is sized to cover the full frontal surface of the vehicle, or all of the plurality of intake nozzles in the aggregate (and all of the plurality of exhaust nozzles in the aggregate) have a combined size large enough to cover the full frontal surface area of the vehicle. Dec. 13-14.", + "Appellant's comments do not state a point that the Board has overlooked or misapprehended.", + "Indeed, the Board found persuasive Appellant's argument on page 24 of the Reply Brief that one having ordinary skill in the art would understand what is meant by *good visibility\" and did not sustain the rejection of claim 9 on this particular basis. Dec. 17-18.", + "As the Decision explains, \"[a] person having ordinary skill in the art would understand from the discussion in Appellant's Specification that `good visibility' means that movement of the upper intake nozzle does not affect visibility to a degree that would prevent proper operation of the vehicle.\" Id.", + "Appellant's arguments do not state a point that the Board misapprehended or overlooked.", + "The Board, and the Examiner, understood full well that the last four \"providing\" steps recited in claim 9 recite different embodiments of the invention. Dec. 18 (citing Final Act. 7).", + "As the Decision explains, the problem with these limitations is that they recite *four mutually exclusive embodiments of the invention in combination\" in a single method of designing a vehicle. Id. at 18-19.", + "Although one could design a first vehicle according to one of these embodiments, a second vehicle according to a second of these embodiments, a third vehicle according to a third of these embodiments, and a fourth vehicle according to a fourth of these embodiments, this is not what claim 9 recites.", + "Claim 9 recites a single method of designing a vehicle.", + "As the Decision explains: [C]laim 9 recites providing a plurality of intake nozzles and a plurality of exhaust nozzles (Appeal Br. 92 (Claims App.)), and then recites providing a direct path from the air intake to the exhaust outlet without any thermal engine and providing a path from the air intake to the exhaust outlet through a turbo charger (id. at 93).", + "These are two mutually exclusive alternatives.", + "Either there is a thermal engine (e.g., turbo charger) between the intake and exhaust nozzles or there is no thermal engine between the intake and exhaust nozzles; both are not possible together.", + "Further, after reciting providing a plurality of intake nozzles and a plurality of exhaust nozzles, claim 9 goes on to recite providing a plurality of air collectors instead of air intake nozzles with high dynamic pressure and providing a plurality of exhaust diffusers instead of exhaust nozzles with low dynamic pressure.", + "The claimed invention either includes intake nozzles or it includes air collectors instead of air intake nozzles; it cannot both include intake nozzles and include air collectors instead of air intake nozzles.", + "Likewise, the claimed invention either includes exhaust nozzles or it includes exhaust diffusers instead of exhaust nozzles; it cannot both include exhaust nozzles and include exhaust diffusers instead of exhaust nozzles. Dec. 18-19.", + "Appellant's position, expressed on page 24 of the Request, that the statement on pages 12-13 of the Decision that \"[a]side from the nozzles,\" however, the method steps of claim 9 do not mention the elements of the vehicle recited in claim 1\" is inaccurate is well taken, and we hereby withdraw the statement.", + "More specifically, we modify the paragraph bridging pages 12-13 of the Decision by deleting \"The preamble of claim 9 recites *[a] method of designing vehicles as in claim 1* and, thus, appears to incorporate the elements of the vehicle recited in claim 1. Aside from the nozzles, however, the method steps of claim 9 do not mention the elements of the vehicle recited in claim 1.\"", + "Otherwise, the paragraph bridging pages 12-13 of the Decision remains unchanged.", + "Our modification of this paragraph of the Decision does not affect our agreement with the Examiner's determination that claim 9 does not recite sufficient relationships between the list of items provided to make clear how the method steps of claim 9 comprise a method of designing a vehicle, much less the vehicle of claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2020000564_Mail_Decision.json b/opinion_split/2020000564_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..a0c83e6b51c5426134a373dff487a00228ef21e4 --- /dev/null +++ b/opinion_split/2020000564_Mail_Decision.json @@ -0,0 +1,22 @@ +{ + "appellant_arguments": [ + "Appellant argues that *nearly all of the limitations of the independent claims cannot be practically performed in the human mind or are based on such limitations.\" \" Appeal Br. 9; see Reply Br. 3-4." + ], + "examiner_findings": [ + "Claims 9, 10, and 21-33 stand rejected under 35 U.S.C. S 101 as directed to patent-ineligible subject matter. Final Act. 2.", + "Claims 9, 10, 21-23, 25-29, and 31-33 stand rejected under 35 U.S.C. $ 103 as unpatentable over Langheier, Jenkins, and Albert. Final Act. 5.", + "Claims 30 and 24 stand rejected under 35 U.S.C. 9 103 as unpatentable over Langheier, Jenkins, Albert, and Philbin. Final Act. 9.", + "USPTO Step 2A, Prong 1 The Examiner determines that the claims can be performed *in the mind but for the recitation of generic computer components,\" and are directed to mental processes. Final Act. 3.", + "Specifically, the Examiner finds that the claim \"*[b]roadly recite[s] steps such as 'receiving,\" *applying,* 'classifying,' 'decomposing,' *supplementing, 'determining, and `providing treatment information* [that] can be performed in the mind.\" Ans. 4." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejection in light of Appellant's arguments that the Examiner erred.", + "In reaching this decision, we consider all evidence presented and all arguments made by Appellant.", + "In determining whether a claim falls within an excluded category, we are guided by the Court's two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).", + "In accordance with that framework, we first determine what concept the claim is \"directed to.\"", + "If the claim is *directed to\" an abstract idea, we turn to the second step of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an *inventive concept' sufficient to *transform* the claimed abstract idea into a patent- eligible application.\" \" Alice, 573 U.S. at 221 (quotation marks omitted).", + "Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (\"Step 2A, Prong One\"); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP 5 2106.05(a)-(c), (e)-(h) (9th ed. rev. 08.2017 Jan. 2018)) (\"Step 2A, Prong Two\").", + "Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional\" in the field (see MPEP $ 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 52-56.", + "We are not persuaded by Appellant': arguments that the Examiner erred." + ] +} \ No newline at end of file diff --git a/opinion_split/2020001028_Mail_Decision.json b/opinion_split/2020001028_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..9539396a5609e7c156a97cfe53f374791042c455 --- /dev/null +++ b/opinion_split/2020001028_Mail_Decision.json @@ -0,0 +1,72 @@ +{ + "appellant_arguments": [ + "Appellant presents four arguments as to why the Examiner erred in rejecting independent claims 5, 17, and 25 over the combination of Kelly, Clar, and Balabhadrapatruni: (1) Kelly does not teach or suggest \"autonomously transforming\"; (2) Kelly teaches away from *autonomously transforming\"; (3) modifying Kelly to provide *autonomously transforming\" changes the principle of operation of Kelly; and (4) Clar does not teach or suggest *autonomously transforming.", + "\" See generally Appeal Br.; .; Reply Br.", + "Appellant argues that Kelly teaches away from the claimed invention because the Kelly workflow *occurs with reliance upon customer or technician intervention. \" Appeal Br. 16; see also Appeal Br. 19 (arguing Kelly teaches away because \"Kelly specifically requires human intervention\") (emphasis omitted); Reply Br. 5 (*by definition Kelly must teach away from the disclosed invention, since, it is inarguable that Kelly specifically requires human intervention*).", + "Appellant further argues that one of ordinary skill in the art would not modify Kelly \"to provide *autonomously' or *autonomously transforming' as claimed, since doing so would change the principle of operation of Kelly (which requires reliance upon customer or technician intervention), thereby rendering Kelly unsatisfactory for its intended purpose.\" Appeal Br. 16; see also Reply Br. 8-9.", + "Appellant further contends that Clar does not disclose \"autonomously\" or *autonomously transforming, \" because Clar discloses user intervention by allowing a user of the system \"to adjust the mapping sensitivity of the system and/or allowing the threshold a to be fixed and/or configurable by a user. *, Appeal Br. 20-21 (citing Clar \" 58, 66); see also Reply Br. 5-8.", + "Appellant contends that the configuration of Clar's threshold (2) requires human intervention, and therefore, is not \"autonomous.\" Appeal Br. 21; Reply Br. 6-8.", + "Appellant argues that *[w]ithout human, the system of Clar would have a fixed threshold, i.e., not transformed.", + "Such user intervention is in the only means to transform and is in direct contrast to operating *autonomously' or in a manner of *autonomously transforming,' as claimed. \" Reply Br. 8." + ], + "examiner_findings": [ + "Claims 2, 4-11, 14, 16-23, and 25-28 stand rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over the combination of Kelly et al. (US 2005/0278386 A1, published Dec. 15, 2005 (hereinafter \"Kelly\")), Clar et al. (US 2009/0202109 A1, published Aug. 13, 2009 (hereinafter \"Clar\"), and Balabhadrapatruni et al. (US 2002/0178252 A1, published Nov. 28, 2002 (hereinafter \"Balabhadrapatruni\"). Final Act. 8-19.", + "Claims 3, 12, 15, and 24 are rejected under pre-AIA 35 U.S.C. 8 103(a) as unpatentable over the combination of Kelly, Clar, Balabhadrapatruni, and Admitted Prior Art. Final Act. 19-21.", + "The Examiner relies on Clar to teach or suggest \"autonomously transforming, \" and provides rationale to modify Kelly with the teachings of Clar. See Final Act. 4, 6, 10- 12.", + "The Examiner responds that \"[the intended purpose of Kelly is to provide a system that *facilitates updating of geospatial information' and *allows updates to be effectuated in an efficient manner. \". Ans. 7." + ], + "ptab_opinion": [ + "This is the second appeal that the Board has considered regarding this patent application.", + "In Appeal No. 2016-008118 (PTAB Nov. 2, 2017), the Board affirmed the Examiner's rejections based on 35 U.S.C. S 101 and 35 U.S.C. 9 103(a) over the same references as in the current appeal.", + "We note that the claims were amended subsequent to the Decision in the first appeal.", + "Appellant's invention generally relates to *[a]n enterprise geospatial intelligence service oriented architecture (EGI-SOA) [that] provides a consumer with one or more tailored products in response to either a dynamic request or a standing request by the consumer. *, Spec., Abstract.", + "Claims 5, 17, and 25 are independent.", + "Claim 5, reproduced below, is illustrative of the claimed subject matter: 5. A method comprising the following steps: (a) one or more computers autonomously determining if one or more tailored geospatial intelligence products are requested tailored geospatial intelligence products that meet criteria of a standing request by a consumer; and (b) one or more computers autonomously pushing to the consumer the one or more requested tailored geospatial intelligence products, autonomously transforming each of the one or more tailored geospatial intelligence products by the one or more computers based on contexts for each respective tailored geospatial intelligence product by an autonomous transforming process comprising the following steps: (c) the one or more computers filtering an event cloud to match one or more events in the event cloud to an event pattern; (d) the one or more computers extracting contexts for each event matched in step (c); (e) the one or more computers translating a workflow with the contexts into an executable process; (f) the one or more computers generating a first descriptive intermediate file based on a workflow to be used in forming the one or more tailored geospatial intelligence products; (g) the one or more computers generating a second descriptive intermediate file based on the services associated with the workflow that will be used to form one or more tailored geospatial intelligence products; (h) the one or more computers generating a third descriptive intermediate file based on how the services interact with each other; and (i) the one or more computers generating a fourth descriptive intermediate file based on the support data for the workflow.", + "We do not find Appellant's arguments persuasive.", + "There is no dispute that \"autonomously transforming\" should be interpreted to mean *without any direct human intervention.' \" Spec. I 47; Ans. 6; Appeal Br. 12-13.", + "There is also no dispute that Kelly does not explicitly teach *autonomously transforming. \" See Ans. 6 (\"Kelly does not explicitly teach autonomously transforming comprising autonomously filtering, autonomously extracting, and autonomously translating\"); Final Act. 4, 10 (same); Appeal Br. 16 (\"Kelly discloses a scheme whereby the user is directly involved and, therefore, does not disclose or fairly teach *autonomously transforming,' as claimed\") (emphasis omitted); Reply Br. 4-5 (same).", + "Appellant has not explicitly addressed or rebutted the Examiner's rationale for modifying Kelly with the teachings of Clar, other than as described below. See generally Appeal Br., Reply Br.", + "We are not persuaded by this argument.", + "\"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.' \" In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).", + "\"A reference does not teach away, . . . if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.\" Galderma Labs., L.P. V. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "We agree with the Examiner that Appellant has not persuasively argued that Kelly teaches away from the claimed invention. See Ans. 7-9.", + "Appellant merely argues that Kelly provides an alternative solution - that allows for human intervention - without providing persuasive evidence or reasoning that Kelly criticizes, discredits, discourages, or would lead away from performing the relevant actions without human intervention.", + "In effect, Appellant is arguing that Kelly does not teach the limitation, which is not sufficient to show that Kelly teaches away from the disputed limitation.", + "Appellant has not rebutted the Examiner's statement of Kelly's intended purpose, nor has Appellant provided more than conclusory statements in support of its arguments that the proposed modification changes Kelly's principle of operation. See Appeal Br. 16; Reply Br. 8-9.", + "Nor has Appellant stated what it believes to be Kelly's intended purpose.", + "Kelly is generally directed to *updating geospatial information such as those used in generation of maps, online maps, and navigational systems. \" Kelly ' 2.", + "Kelly describes several advantages to its system, including \"providing a geospatial information system and method that facilitates updating of geospatial information\" and \"providing a geospatial information system and method that allows updates to be effectuated in an efficient manner. \" Kelly 11 19-20.", + "Based on Kelly's disclosure, we agree with the Examiner's description of Kelly's intended purpose and are not persuaded that Kelly's intended purpose is reliant upon customer or technician intervention.", + "We, therefore, are not persuaded that the Examiner's proposed modifications would render Kelly unsatisfactory for its intended purpose.", + "Appellant's arguments are not persuasive.", + "Paragraph 58 of Clar states: Controller 34 may compare the newly-gathered points stored in temporary map 46 to correspondingpreviously- gathered points contained in terrain map 32 (i.e., the previously-mapped surface).", + "Controller 34 may determine whether an update to terrain map 32 is warranted based on the comparison.", + "In particular, controller 34 may compare the heights of points stored in temporary map 46 to the heights of corresponding points stored in terrain map 32.", + "FIG. 7 shows a graphical illustration of the height differences a between terrain map 3 2 and temporary map 46 at each xo -yo coordinate pair.", + "Each height difference A may or may not warrant an update to terrain map 32.", + "It is to be appreciated that height differences a (positive or negative) below a certain height magnitude threshold a may not warrant an update to terrain map 32.", + "For example, if a small amount of material is removed from or added to a location on the surface 14 of worksite 10 that causes a change in height A of only a few centimeters, an update to terrain map 32 is probably not warranted.", + "Updating terrain map 32 in such instances may, for example, impose an undue processing burden on system 22.", + "Conversely, changes of height a greater than a few centimeters, or another magnitude 2 indicative of a significant change to the worksite terrain 16, may warrant an update to terrain map 32.", + "As such, controller 34 may have a stored valuefor magnitude threshold). 2.", + "The value may be preset based on the particular application or configurable to allow a user of system 22 to adjust the mapping sensitivity of system 22. Clar I 58 (emphasis added).", + "P Paragraph 66 of Clar states: Controller 34 may then determine if a change to terrain map 32 is warranted based on the comparison in step 72 (step 74).", + "Specifically, controller 34 determine if height differences between terrain map 3 2 and temporary map 46 at x. -yo coordinate pairs are greater in magnitude than a height magnitude threshold 2.", + "As mentioned above, the threshold). 1 may be fixed and/ or configurable by a user of system 22 allow changes in mapping sensitivityofsystem 22. Clar I 66 (emphasis added).", + "Clar generally describes performing a comparison of heights of points to determine if changes to a terrain map should be made. Clar \" 58, 66.", + "If a height difference is below a certain threshold (2), changes may not be warranted. Id.", + "We disagree.", + "As emphasized above, Clar explicitly discloses that threshold a may be preset at a fixed value. Clar \" 58, 61.", + "Alternatively, Clar discloses that threshold 2 may be configurable by the user, in order to adjust the system sensitivity. Id.", + "Appellant's arguments solely focus on the latter disclosure and ignore Clar's disclosure of a preset threshold 2.", + "Appellant does not persuasively address why a preset threshold 2. requires human intervention.", + "We agree with the Examiner that Clar's disclosure of a preset threshold a suggests that no human intervention is involved. See Ans. 9.", + "Moreover, although, Appellant argues that a \"fixed threshold\" is not *transformed, \" \"(Reply Br. 8), Appellant does not sufficiently explain this argument in the context of the claims.", + "Rather, we agree with the Examiner that even in an embodiment where the user configures the threshold parameter, this step is outside the scope of the claim limitations, and would not preclude the system from performing the recited actions autonomously (e.g, comparing values to the threshold without human intervention). See Ans. 9.", + "Accordingly, we are not persuaded the Examiner erred in rejecting claims 5, 17, and 25 under 35 U.S.C. 9 103.", + "Appellant does not separately or substantively argue dependent claims 2-4, 6-12, 14-16, 18-24, and 26- 28; rather, Appellant repeats the argument that the combination of references does not teach or suggest \"autonomously\" or \"autonomously transforming, \" argues that the additional references fail to cure the deficiencies, then conclusorily states that Kelly, Clar, Balabhadrapatruni, or Official Notice **fail to disclose or fairly suggest the additional elements [of the dependent claim], \" and repeats the claim language without further argument. See Appeal Br. 26-34; Reply Br. 9-12.4", + "Such arguments are not substantive arguments for patentability and are insufficient to establish error in the rejection.", + "See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 201 1) (\"[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. \"); ef In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (\"It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for non-obvious distinctions over the prior art. \").", + "Accordingly, for the reasons set forth above, we sustain the Examiner's 35 U.S.C. 103(a) rejection of claims 2-12 and 14-28." + ] +} \ No newline at end of file diff --git a/opinion_split/2020001122_Mail_Decision.json b/opinion_split/2020001122_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..336c41ef85d036097ae7eb5aa28406d8cc1fd04b --- /dev/null +++ b/opinion_split/2020001122_Mail_Decision.json @@ -0,0 +1,56 @@ +{ + "appellant_arguments": [ + "Claim 1 is illustrative and reads as follows: 1. A method comprising: a) providing an array of expression cassettes; b) providing a planar absorbent support comprising an in vitro transcription and translation (NTT) mix impregnated therein; c) placing the planar absorbent support in contact with the array of expression cassettes; and d) incubating the planar absorbent support and array under conditions by which the expressed cassettes are transcribed and translated by the impregnated NTT components, thereby producing an array of protein in, within or at the surface of the planar absorbent support. (Appeal Br. 15.)", + "Appellant argues that the claims on appeal require *protein capture by the IVTT impregnated planar absorbent support by virtue of protein production in, within or at the surface of the support\" and the rejection is in error because T Taussig *does not describe protein capture or production within or at the surface of an IVTT impregnated planar absorbent support. \" (Appeal Br. 6; Reply Br. 5.)", + "According to Appellant, the three layer sandwich assay described in Taussig \"does not disclose or suggest production of a protein array in, within or at the surface of an IVTT impregnated planar absorbent support\" and because the protein capture surface is separated from the DNA array surface by a membrane, it does not \"disclose placing the planar absorbent support in contact with the array of expression cassettes. *, (Appeal Br. 6; Reply Br. 5.)", + "Appellant's arguments as to why He does not anticipate claim 1 are the same as those it made with respect to Taussig. (Appeal Br. 8-9; Reply Br. 7-8.)" + ], + "examiner_findings": [ + "The prior art relied upon by the Examiner is: Name Reference Date Taussig et al. US 2008/0293591 A1 Nov. 27, 2008 Jacobson et al. US 2012/0220497 A1 Aug. 30, 2012 Bertozzi et al. US 2012/0244601 A1 Sept. 27, 2012 Hudson et al. US 2013/0252849 A1 Sept. 26, 2013 M. He et al, Printingprotein arraysfrom DNA arrays, 5(2) Nature 175- 177 (2008)", + "The following grounds of rejection by the Examiner are before us on review:", + "Claims 1, 7, 8, and 12 under 35 U.S.C. 5 102 (a)(1) and (a)(2) as anticipated by Taussig.", + "Claims 1, 7, 10, and 12 under 35 U.S.C. S 102 (a)(1) and (a)(2) as anticipated by He.", + "Claims 2-5 and 18-20 under 35 U.S.C. S 103 as unpatentable over Taussig and Hudson.", + "Claim 6 under 35 U.S.C. 8 103 as unpatentable over Taussig, Hudson, and Bertozzi.", + "Claims 9, 11, and 13-17 under 35 U.S.C. 103 as unpatentable over Taussig and Jacobson.", + "The Examiner finds that T aussig teaches a protein expression system, including a sandwich embodiment that meets the claimed limitations. (Final Action 2.)", + "In particular, the Examiner states that in the sandwich embodiment that Taussig teaches, the DNA molecule templates are immobilized in an array to a first surface, a membrane filter that is presoaked with a cell-free expression system extract (referred to as an IVTT) is placed on top of the immobilized DNA array, and a second surface comprising protein capture reagents is placed on top of the filter. (Id. at 2-3 (citing Taussig 1963, 69, and Example 1).)", + "The Examiner explains that the pre-soaked membrane filter includes \"transcriptional promoters, transcriptional regulatory sequences, untranslated leader sequences, sequences encoding cleavage sites, recombination sites, transcriptional terminators or ribosome entry sites, cistrons, and open reading frames (e.g, para 0023-0024, pg. 2). \" (Id. at 3.)" + ], + "ptab_opinion": [ + "Claims 1-20 are on appeal.", + "Appellant focuses only on the limitations of claim 1.", + "Claims 7, 8, and 12 have not been argued separately and therefore fall with claim 1. 37 C.F.R. $41.37(c)(1)().", + "We disagree.", + "Appellant's claim 1 requires that after \"an array of expression cassettes\" is incubated with \"a planar absorbent support\" that has an in vitro transcription and translation mix impregnated therein, *an array of protein\" is produced *in, within or at the surface of the planar absorbent support. *,", + "Thus, the claim 1 does not literally recite \"protein capture. \"", + "Instead it simply recites producing an array of protein *in, within or at the surface of' the planar absorbent support that has an IVTT mix impregnated therein.", + "The term **array** is defined in Appellant's Specification, in terms of a two-dimensional arrangement but not in terms of protein capture. (Spec. 4 (\"The term *array' is intended to describe a two-dimensional arrangement of addressable regions bearing oligonucleotides associated with that region. \").)", + "Thus an *array of expression cassettes\" as required in claim 1, step a) is simply a two dimensional arrangement of addressable regions bearing expression cassettes.", + "And *an array of 'protein' required in claim 1, step d) is simply a two dimensional arrangement of addressable regions bearing proteins.", + "Taussig teaches a planar absorbent support that includes an IVTT matrix impregnated therein.", + "In particular, Taussig states that \"cell-free protein synthesis \u00b7 \u00b7 . occurs within a protein permeable material (e.g, membrane filter)\" where that filter is \"pre-soaked with a coupled cell-free lysate for protein synthesis. \" (Taussig* 63 (emphasis added).)", + "We find further that T aussig teaches production of protein *in, within or at the surface\" of that planar absorbent support.", + "Taussig describes the \"cell-free\" system that is impregnated in the protein permeable material is **capable of performing protein synthesis by transcription and translation. \" (Id. I 28.)", + "T Taussig further explains that the cell-free system *provide[s] an environment in which the conditions of protein synthesis can be adjusted and controlled through addition of exogenous biomolecules or molecules\" (id. I 30) and can include agents that *interact with the arrayed proteins [that are present on a first support surface] or encode said interacting additional agents (e.g, nucleic acids capable of being transcribed and/or translated into protein by the cell-free system)\" (id. $32).", + "Taussig further teaches that the protein produced within the permeable membrane ends up at the surface of the membrane through diffusion.", + "Taussig states: *The individual DNA molecules direct the synthesis of proteins 4, which subsequently diffuse through the filter to the second support surface 3 where they are immobilized in situ. \" (Id. I 63 (emphasis added).)", + "It is true that T 'aussig teaches that the protein produced through transcription and translation by the impregnated IVTT components of the protein permeable material is \"captured\" on a protein capturing surface by *interaction with the capture reagent. \" (Id. see also id. $28.)", + "Nevertheless, the protein is produced \"within [the] protein permeable material\" and diffuses to the surface ofthat membrane prior to being captured on another support surface. (Id. I 163.)", + "We note further that T Taussig teaches the capture of the protein so diffused is in an array *that is complementary to\" the DNA array on the first support surface because *protein diffusion within the plane of the membrane is limited. \" (Id.)", + "Given that protein capture is in a complementary array, we find that the protein produced that diffuses to the surface ofthe membrane must be in a similar complementary array.", + "Thus, contrary to Appellant's argument, we find T Taussig describes production of a protein array as claimed.", + "That this array of protein at the surface of the protein permeable support is not captured with a capturing reagent does not preclude finding the claimed limitations, which do not require capture, are met.", + "Furthermore, contrary to Appellant's argument, we find T Taussig describes placing the planar absorbent support as claimed in contact with the array of expression cassettes.", + "In particular, Taussig describes that the membrane filter that is first soaked with cell-free lysate is *placed between the DNA array slide and the protein capturing slide *and a tight contact between the surfaces was made. \" (T aussig I 69.)", + "In light of the foregoing, we agree with the Examiner that Taussig anticipates the method as recited in claim 1.", + "Like Taussig, He teaches a sandwich assay in which a planar absorbent support, i.e., a permeable membrane, carries a cell-free lysate, capable of performing coupled transcription and translation, that is positioned between a DNA array and a capture slide. (He 175.)", + "As with T Taussig, the protein that is synthesized during the incubation, diffuses through the membrane to its surface and then is immobilized on the capture slide surface. (Id.)", + "Here, again, Appellant focuses its arguments only on the limitations of claims 1.", + "Claims 7, 10, and 12 have not been argued separately and therefore fall with claim 1. 37 C.F.R. $41.37(c)(1)(iv).", + "We do not find Appellant's arguments persuasive for the same reasons discussed above with respect to Taussig.", + "Obviousness Appellant's arguments against the Examiner's obviousness rejections stem from its contention that T Taussig does not anticipate the method of producing the protein array recited in claim 1. (See Appeal Br. 10-11.)", + "However, for the reasons discussed above, we disagree with Appellant's proposition.", + "Consequently, we affirm the Examiner's rejections of a) claims 2-5 and 18-20 under 35 U.S.C. S 103 as unpatentable over Taussig and Hudson; b) claim 6 under 35 U.S.C. 8 103 as unpatentable over T Taussig, Hudson, and Bertozzi; and c) claims 9, 11, and 13-17 under 35 U.S.C. 9 103 as unpatentable over Taussig and Jacobson." + ] +} \ No newline at end of file diff --git a/opinion_split/2020001193_Mail_Decision.json b/opinion_split/2020001193_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..bd778d5cac4bfa66dd650792611408abdf672365 --- /dev/null +++ b/opinion_split/2020001193_Mail_Decision.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "According to Appellant: the claimed embodiments are directed to a system in which a video transmission system 10 (which may be a client device) may transmit a steaming video (e.g, a gameplay video) to one or more viewing user terminals 14 (which may also be another client device) via a video delivery system 12 (e.g., one or more servers).", + "In such systems, it is desirable to transmit information on the video (e.g., comments, etc. from the one or more viewing user terminals 14) to at least the video transmission system 10 and display same for the user of same.", + "Thus, for example, when the user/player ofthe video transmission system 10 is engaged in gameplay, and such gameplay is streamed to the one or more viewing user terminals 14, the viewers ofthe stream may provide comments back to the user/player, preferably in real time Appeal Br. 8.", + "Appellant contends the Examiner errs in rejecting the claims as obvious over the combined teachings of Tremblay, Zaccone, and P erlman because (1) Tremblay teaches away from using a second display, (2) modifying Tremblay to include a second display would render Tremblay unsatisfactory for its intended purpose, and (3) \"[the Examiner's s assertion that a skilled artisan would modify the system of Tremblay [] to employ an alleged gameplay system of P erlman [] in order to provide some improvement that the Examiner conjures up is not sufficient to maintain an obviousness rejection under the rules and authority. \" Appeal Br. 9-13.", + "Appellant contends, \"a skilled artisan is clearly presented with a criticism ofnot displaying both video content and other content.", + "The skilled artisan is left with implication that the intended purpose of the disclosed embodiments ofT remblay (U.S. 201 2015/0245079) are to provide a single screen for displaying both video content and other content. \" Appeal Br. 10-11 (underlining added, quoting T Tremblay 93 (\"m ost existing systems for broadcasting live content have static interfaces that cannot be reconfigured dynamically.", + "In addition, video content is usually provided separately from any other type of content using a differentplatform and m ust therefore be m managed separately.", + "This also presents challenges with regards to synchronizing the live broadcast content with the other types of content. \" (underlining added)))." + ], + "examiner_findings": [ + "The Examiner finds that combining the teachings of P erlman with those of Zaccone *will provide an unobstructed image for the benefit of helping the viewing impaired.\"", + "Final Act. 2-3, 5; Ans. 4; see Zaccone 11 16, 22, 25, 36, 39, Fig. 1; of Spec. 14 (describing benefits of showing video over the entire screen)." + ], + "ptab_opinion": [ + "We review the appealed rejection for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon.", + "We agree with and adopt as our own the Examiner' s findings as set forth in the Answer and in the Final Action from which this appeal was taken, and we concur with the Examiner's conclusions.", + "We have considered Appellant's arguments, but we do not find them persuasive of error.", + "We provide the following explanation for emphasis.", + "Regarding Appellant's \"teaching away\" and *unsatisfactory for its intended purpose\" arguments, we are unpersuaded of error because a teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution.", + "Moreover, here, Appellant's s argument that the proposed combination of the references' teachings would render one of the references unsuitable for its intended purpose or would change its principle of operation isa a teaching away argument.", + "Thus, Tremblay discloses alternative, even preferable, embodiments are possible, but does not clearly teach away from its combination with teachings of Zaccone and P erlman to achieve the devices recited in claim 1.", + "We do not find a teaching away here.", + "As to Appellant's contention that \"[the Examiner'. s assertion that a skilled artisan would modify the system of Tremblay 0 to employ an alleged gameplay system of P erlman [] in order to provide some improvement that the Examiner conjures up is not sufficient to maintain an obviousness rejection under the rules and authority, \" we disagree.", + "Appellant does not point to any evidence of record that the combinations would be *uniquely challenging or difficult for one of ordinary skill in the art\" or *represented an unobvious step over the prior art. \"", + "The Examiner's findings are reasonable because the skilled artisan would \"be able to fit the teachings of multiple patents together like pieces of a puzzle\" because the skilled artisan is \"a person of ordinary creativity, not an automaton. \"", + "We are persuaded the claimed subject matter exemplifies the principle that \"[the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.' \" KSR, 550 U.S. at 416.", + "Thus, Appellant does not persuade us that the Examiner errs in rejecting of claims 1-10 and 12 over the combined teachings of Tremblay, Zaccone, and P Perlman." + ] +} \ No newline at end of file diff --git a/opinion_split/2020001198_Mail_Decision.json b/opinion_split/2020001198_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..6d72aa37653c700aa0a2974255516eccd27c368e --- /dev/null +++ b/opinion_split/2020001198_Mail_Decision.json @@ -0,0 +1,31 @@ +{ + "appellant_arguments": [ + "In the earlier proceeding, Appellant argued, as it does now, that Stellenberg cannot be relied on as a reference under 35 U.S.C. 9 102(e) because the inventor is entitled to an invention date at least before July 13, 2012, which the parties agree is the earlier filing date to which Stellenberg is entitled.", + "Mr. Pines states, in that declaration, that he conceived the claimed invention before July 13, 2012, and that he worked diligently, from before July 13, 2012 until March 12, 2013, to reduce the invention to practice and finalize the application for patent.", + "Following the Board's January 2018 decision, in subsequent prosecution, Appellant submitted a further Rule 131 Declaration dated March 30, 2018 (the \"Pines Decl. \"), which Appellant maintains satisfies all the requirements of Rule 131, and is sufficient to overcome the Stellenberg reference (Appeal Br. 3-18).", + "In this 2018 declaration, Mr. Pines states that he invented the claimed subject matter before July 13, 2012, as evidenced by an email, attached in an accompanying Appendix A (Pines Decl. I 9).", + "And he declares that he worked diligently, from before July 13, 2012 until March 12, 2013, to reduce the invention to practice and finalize the application for patent, as evidenced by accompanying Attachments B through F (Pines Decl. 11 10-20).", + "Appellant variously argues that the Pines email is sufficient for one of ordinary skill in the art to understand that the inventor had possession of the claimed invention (i.e., that the email \"provides evidence of using an accelerometer positioned within a game cabinet to sense an inclination of the game cabinet as presently recited\" (Appeal Br. 7); that \"there is ample evidence that the noted *coin door board' is part of an amusement game cabinet, and more specifically is part of a pinball machine as claimed\" (id.); that \"there is ample evidence that the email is directed specifically towards a pinball machine as claimed\" (id. at 15); and that *because the functionality of a plumb tilt mechanism was known to one of ordinary skill in the art, . \u00b7 there is sufficient evidence in the email to indicate that the inventor possessed the requisite functionality of the accelerometer'' and \"sufficient evidence to demonstrate that the invention was to be used on a pinball machine\" (id. at 16).", + "Mr. Pines alleges that he conceived the claimed invention prior to July 13, 2012 and that he worked diligently, from before that date until March 12, 2013, to reduce the invention to practice and finalize the application for patent.", + "Appellant argues that it has provided sufficient evidence to demonstrate that Mr. Pines diligently worked, from \"prior to July 13, 2012, until the receipt of a fully functional test PCB, . \u00b7 . to reduce the invention to practice,\" and asserts that there is \"no evidence that a design and construction of a single chip PCB accelerometer would take any less time than the engineer on this project took\" (Reply Br. 4).", + "Appellant additionally argues that Stellenberg cannot be relied on as a reference because Stellenberg is not entitled to a filing date earlier than July 2, 2013, which is after the March 12, 2013 filing date of the present application (Appeal Br. 19-22).", + "Citing the Federal Circuit's holding in Dynamic Drinkware, LLC V. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), Appellant, thus, maintains that the Examiner erred in affording Stellenberg the benefit of the July 13, 2012 filing date of U.S. Provisional Patent Application No. 61/741,126 because \"the written description of [the provisional application] does not support at least one claim[ ] of [the Stellenberg publication]\" (id. at 20)." + ], + "examiner_findings": [ + "Claims 1, 2, and 9-11 are rejected under 35 U.S.C. $ 102(e) as anticipated by Stellenberg (US 2013/0300058 A1, published Nov. 14, 2013).", + "The Examiner takes the position, as set forth in the Final Office Action, that Appellant's submitted evidence, i.e., the email attached as Appendix A of the Pines Declaration, is *insufficient to establish a conception of the invention prior to the effective date of the Stellenberg reference\" (Final Act. 5-6).", + "The Examiner, thus, maintains that the claims are properly rejected as anticipated by Stellenberg (id. at 2-5)." + ], + "ptab_opinion": [ + "But, Appellant presented no evidence, e.g., original exhibits of drawings or records, or photocopies thereof, to support Mr. Pines's averments.", + "Accordingly, the Examiner determined, and the Board agreed, that Appellant failed to allege facts and present evidence sufficient to satisfy the requirements of Rule 131;2 as such, the 2016 Rule 131 Declaration was ineffective to remove Stellenberg as a reference (Decision 4-7).", + "Here, assuming, without deciding, that the Pines email is sufficient to establish conception, we are not persuaded that the evidence and arguments before us are sufficient to establish diligence from just prior to July 13, 2012 to Appellant's constructive reduction to practice, i.e., the filing of the present application on March 12, 2013.", + "But, the earliest date after July 13, 2012, for which Appellant provides any evidence, is February 25, 2013 (see Pines Decl. I 11 (referring to a copy of a final printed circuit board design document (Attachment B) dated February 25, 2013) - i.e., a period of over seven (7) months, for which Appellant provides no corroborating evidence of diligent reduction to practice.", + "Here, the only evidence directly related to actions that may have taken place during the period from July 13, 2012 to February 25, 2013 is Mr. Pines's statement in the Declaration that *[f]rom the date I conceived of the idea of using an accelerometer in a cabinet of a pinball machine \u00b7 \u00b7 -, I worked diligently to research and design a Printed Circuit Board (\"PCB\") to embody my invention.\" Pines Decl. I 10.", + "But, that statement in the absence of underlying evidence, amounts to a mere pleading and is insufficient to establish diligence.", + "Yet, although we might surmise that Mr. Pines probably was diligent, mere surmise cannot take the place of proof.", + "On this record, even assuming the evidence before us is sufficient to show conception before July 13, 2012, we are not persuaded that Appellant has provided sufficient evidence to establish the reasonable diligence for the duration of the critical period (i.e., from prior to July 13, 2012 to March 12, 2013) necessary to antedate the Stellenberg reference.", + "However, even assuming, without deciding, that Dynamic Drinkware applies to published patent applications, we agree with the Examiner that the provisional application provides written description support for at least claim 17 of the Stellenberg reference (see Ans. 7).4", + "For the reasons set forth above, we are not persuaded that the Examiner erred in determining that Appellant's Rule 131 Declaration is insufficient to remove Stellenberg as available 8 102(e) prior art." + ] +} \ No newline at end of file diff --git a/opinion_split/2020001394_Mail_Decision.json b/opinion_split/2020001394_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..5f2a4abcc6db325ab6dc2a6dc9bce1ae171f12af --- /dev/null +++ b/opinion_split/2020001394_Mail_Decision.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "STATEMENT OF THE CASE Pursuant to 35 U.S.C. 5 134(a), the Appellant' appeals from the Examiner's decision to reject claims 6-14 and 18-24.2", + "CLAIMED SUBJECT MATTER The claims are directed to a method of clamping a strut channel.", + "Claim 22, reproduced below, is illustrative of the claimed subject matter:", + "22. A method of clamping a strut channel to an element with a clamp, where the element is a rigid element having a first element side and a second element side parallel to the first element side, where the clamp includes a clamp bottom having a threaded aperture, a pair of clamp sides that are parallel and extend from the clamp bottom, and a threaded element having a distal end, where the threaded element passes through the threaded aperture with the distal end between the pair of clamp sides, where each of the pair of clamp sides has a notch defining one of a pair of clamp surfaces, where the pair of clamp surfaces are coplanar, and where the strut channel has a rectangular cross section defined by a strut back, a strut front opposite the strut back, and a pair of strut sides extending from the strut back to the strut front, and where the strut front includes an aperture forming a strut opening, such that an inner surface of the strut back faces the strut opening, said method comprising: placing the clamp and the strut channel on the element, where the pair of clamp surfaces is adjacent to the first element side, where the distal end of the threaded element fits through the strut opening and extends towards the inner surface of the strut back, and where the strut back contacts the second element side, and where the strut opening is adjacent to the clamp bottom; and tightening the threaded element against the strut channel, and where tightening the threaded element advances the distal end of the threaded element against the inner surface of the strut back, such that the clamp forces the strut back against the second element side. Appeal Br. 25-26, Claims App., emphasis added.", + "The Appellant argues that the Examiner's reliance on Pflieger as teaching that it is known in the art to have a threaded element advance to the inner surface of a strut back is in error. Appeal Br. 16.", + "In that regard, the Appellant argues that Pflieger attains its clamping \"by the force of the jaw' members against the strut side, and not by advancing a threaded member to the inner surface of the strut back.\" Appeal Br. 16.", + "Specifically, the Appellant argues that in Pflieger, \"a connecting threaded member 33 0 is tightened to force jaw members 31, 32 towards one another and clamp to the strut side.\" Appeal Br. 17.", + "Accordingly, the Appellant contends that because \"`[t]here is no teaching or suggestion [in] Pflieger for *advancing a threaded element to the inner surface of the strut back, \". and no other reference teaches or suggests such a feature, the rejection should be reversed. Appeal Br. 17.", + "The Appellant also argues that there is no motivation to combine the references to attain the claimed threaded element being tightened against the inner surface of the strut back because the configurations of Stamper and Pflieger are different, where Pflieger's is **threaded element does not and cannot contact the strut.\" Appeal Br. 18-19.", + "The Appellant does not submit any arguments directed to dependent claims 6-14, 18-21, 23, and 24, but relies on their ultimate dependency on claim 22 for patentability. Appeal Br. 19." + ], + "examiner_findings": [ + "REFERENCES The prior art relied upon by the Examiner is:", + "Name Reference Date Stamper US 3,126,182 Mar. 24, 1964 Pflieger US 4,717,102 Jan. 5, 1988 Myers US 8,480,041 B2 July 9, 2013", + "OPINION The Examiner rejects claims 6-14 and 18-24 under 35 U.S.C. S 103 as unpatentable over Stamper in view of Myers and Pflieger. Final Act. 2.", + "As to independent claim 22, the Examiner finds that Stamper discloses the method substantially as claimed, but \"discloses a pipe rather than a strut channel. ~ Final Act. 3-4.", + "The Examiner finds that \"Myers discloses a method of clamping wherein the element being clamped can be either a pipe (Fig. 4) or a strut channel having a square cross section (Fig. 3).\" Final Act. 3.", + "The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to have *substitute[d] the pipe of Stamper with a strut channel as suggested by Myers,\" and that such substitution of known conduit types yields no extraordinary or unexpected results. Final Act. 3.", + "The Examiner further concludes that it would have been obvious to one of ordinary skill to extend the threaded element of Stamper to *accommodate a strut channel as supported by Pflieger.\" \" Final Act. 4." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We agree with the Examiner's findings and conclusions, and address the Appellant's 's arguments infra.", + "The Appellant's arguments are unpersuasive.", + "In Pflieger, the head portion 33, the stem portion 32, and the lower arm portion 32, do not move relative to one another, but instead, are integral parts of the clamp 30. Pflieger, col. 3, 11. 20-20-23; Figs. 2, 3.", + "In addition, contrary to the Appellant's assertions, tightening the screw 36 (i.e., threaded member) of Pflieger causes the threaded member to contact the wall of the channel rail 13 to thereby cause the clamp to pivot and raise the cabinet structure 14 in contact position with the supporting rail assembly 11. Pflieger, col. 4, 11. 1- 6; Figs. 3, 4.", + "It is apparent from careful review of the Appellant's arguments and the annotated figure in its Appeal Brief, that the Appellant's arguments are directed to U.S. Patent No. 4,846,431 to Pflieger (issued July 11, 1989) also of record, instead of U.S. Patent No. 4,717,102 to Pflieger (issued January 5, 1988), which was cited and relied upon by the Examiner in rejecting the claims. Compare Pflieger (102), Fig. 3, with Appeal Br. 15 and Pflieger ('431), Fig. 3.", + "As discussed above, Pflieger relied upon in the rejection discloses that it is known in the art to have a threaded element advance to the inner surface of a strut as explained by the Examiner, and we agree with the Examiner that it would have been obvious to one of ordinary skill to extend the threaded element of Stamper to *accommodate a strut channel as supported by Pflieger.\" Final Act. 4.", + "In addition, to any extent that there may be some differences between the Appellant's clamping and that disclosed in Pflieger, we agree with the Examiner that such differences are not **germane to the outstanding rejection in the instant case\" because the rejection relies on Pflieger to establish that it would have been obvious to extend the threaded element of Stamper \"to accommodate a strut channel.\" ~ Ans. 8; Final Act. 4.", + "Therefore, in view of the above, we affirm the Examiner's rejection of independent claim 22.", + "Accordingly, these claims fall with claim 22." + ] +} \ No newline at end of file diff --git a/opinion_split/2020001705_Mail_Decision.json b/opinion_split/2020001705_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..81bbf5386b6d52c581166332267d8ecac399d6ef --- /dev/null +++ b/opinion_split/2020001705_Mail_Decision.json @@ -0,0 +1,64 @@ +{ + "appellant_arguments": [ + "According to Appellant: The image is first sub-divided into a plurality of rectangular areas.", + "a display list memory is loaded with object data for each rectangular area.", + "The image and shading data for each picture element of each rectangular area are derived from the object data in the image synthesis processor and a texturizing and shading processor.", + "A depth range generator derives a depth range for each rectangular area from the object data as the imaging and shading data is derived.", + "This is compared with the depth of each new object to be provided to the image synthesis processor and the object may be prevented from being provided to the image synthesis processor (i.e., culling)] independence on the result of the comparison. Spec. Abstr.", + "Appellant argues that the \"issue is whether a tile accelerator must be recited in the claims\" and that the Examiner incorrectly finds that \"the present disclosure explicitly states that a tile accelerator is required in order for the claimed fetch unit to read parameter data only for objects that pass a depth range test.\" Appeal Br. 4.", + "According to Appellant, two stages of culling are described in the Specification.", + "The first stage of culling, disclosed in Figure 1, requires a tile accelerator; but the second stage of culling, disclosed in Figure 4, *occurs in the parameter fetch stage of the ISP\" and does not require a tile accelerator. Id. (emphasis omitted).", + "In arguing that the claim need not recite a tile accelerator, Appellant explains that the Specification discloses two culling operations.", + "The first stage of culling uses a tile accelerator to calculate object depth values. Appeal Br. 4.", + "But Appellant argues that a second stage of culling is recited in claim 1, and unlike the first stage, the \"second stage of culling occurs in the parameter fetch stage of the ISP [(Image Synthesis Processor)]** and this stage \"is performed by storing additional information in the object pointer and testing it against depth range information maintained in the ISP. \" Id. at 4.", + "According to Appellant, *[nJowhere does the specification state that *the Z range of the object itself computed in the tile accelerator is sent to the ISP Parameter Fetch Unit 8 for the second type of culling\" (Reply Br. 2) and *the examiner has misapprehended the disclosure at paragraphs [0075] [0077] of the Specification as describing that the tile accelerator performs the depth test culling of the second stage type culling; by contrast it does not.\" (Appeal Br. 4).", + "Appellant argues that \"the pending claims on appeal focus on the second type of culling, which does not require a tile accelerator\" and \"the functionality of the essential features of the inventive subject matter are included in the claims, such that the claims define a complete operational apparatus and method for rendering a scene.\" Reply Br. 1." + ], + "examiner_findings": [ + "The Examiner rejects claims 1-4, 6-14, and 16-20 under 35 U.S.C. $ 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2-6.", + "The Examiner rejects claim 1 under 35 U.S.C. 5 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2- 6.", + "According to the Examiner, claim 1: is silent with regards to requiring a \"tile accelerator\" component to be present that calculates the object Z range information in the object pointer using its culling hardware.", + "Since, this tile accelerator is not recited in claim 1, claim 1 has a claim scope that performs \"a fetch unit configured to \u00b7 . read, from memory, parameter data only for objects that pass the depth range test\" without requiring any tile accelerator to be present to calculate the object Z range information in the object pointer.", + "This claim scope [is] not commensurate with the written description support provided by Applicant's disclosure. Final Act. 4 (emphasis omitted).", + "As the Examiner notes, \"[a] claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement.\" Final Act. 5 (citing MPEP S 2163.05 (emphasis omitted)).", + "Moreover, as the Examiner notes, the \" **depth range of the object itself\" is required by the ISP fetch unit to perform the second stage culling\" because **[w]ithout knowledge of the *depth range of the object itself, the ISP fetch unit would have no way of knowing whether a newly arrived object lies closer to objects that have been already rendered by the ISP for that tile.\" Ans. 9 (citing Spec. 11 14, 74)." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Appellant' appeals under 35 U.S.C. 5 134(a) from the Examiner's rejection of claims 1-4, 6-14, and 16-20.2", + "We have jurisdiction under 35 U.S.C. 9 6(b).", + "CLAIMED SUBJECT MATTER Summary Appellant's claimed subject matter relates to generating three- dimensional computer graphic images. Spec. I 2.3", + "Exemplary Claim Claims 1 and 11 are independent.", + "Claim 1, reproduced below, exemplifies the claimed subject matter:", + "1. A graphics renderer for rendering a scene having an image plane divided into a set of one or more tiles each having an associated list stored in memory that contains object pointers for objects overlapping that tile, each object pointer containing information on a depth range of the object, the renderer comprising: a fetch unit configured to read the object pointers for objects identified in the tile list for a tile being rendered, perform a depth range test for each object identified for the tile being rendered to compare the depth range of the object with a received depth range for the tile, and read, from memory, parameter data only for objects that pass the depth range test; and a rendering processor configured to render each tile of the set of one or more tiles using the object pointers and parameter data fetched by the fetch unit; wherein the fetch unit is further configured to receive an updated depth range for the tile being rendered as objects in the tile list for that tile are processed by the rendering processor. Appeal Br. 10 (Claims App.).", + "OPINION We review the appealed rejection for error based upon the issues identified by Appellant and in light of Appellant's arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "Arguments not made are waived. See 37 C.F.R. S 41.37(c)(1)(iv) (2019).", + "We disagree with Appellant that the Examiner errs and we adopt as our own the findings and reasons set forth by the Examiner for these claims to the extent consistent with our analysis herein. Final Act. 2-6; Ans. 3-25.", + "Appellant's arguments are unpersuasive.", + "We determine whether an applicant has satisfied the written description requirement by determining whether the patent specification describes the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Carnegie Mellon Univ. V. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008).", + "We agree with the Examiner's finding that the Specification does not disclose a structure or method for determining a depth range of an object, other than that performed by a tile accelerator.", + "That is, we agree that the Specification only discloses using the tile accelerator to compute the depth range or Z range of objects stored in the object pointers.", + "Therefore, a tile accelerator must be present in the claim for the invention to determine a depth range of an object, thereby permitting the fetch unit to perform a depth range test for each object.", + "We agree that the disclosure of the Specification does not demonstrate possession of the subject matter of claim 1, which inferentially claims a determined depth range of an object in the preamble without reciting the necessary structure for doing so, i.e., the tile accelerator. See, e.g., Gentry Gallery, Inc. V. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998).", + "Appellant relies on Figures 1, 4, and 10 and paragraphs 4, 5, and 13- 15 to provide written description support for the claim. Appeal Br. 2.", + "This argument is unpersuasive.", + "Claim 1 recites \"each object pointer containing information on a depth range of the object.\" Appeal Br. 10.", + "Claim 1 further recites \"perform a depth range test for each object identified for the tile being rendered to compare the depth range of the object with a received depth range for the tile.\" Id. (emphasis added).", + "The Specification, in discussing the second culling stage, discloses that \"[t]o store Z range information [of the object] in the object pointer the range must be computed in the tile accelerator.\" Spec. 11 76-77.", + "Accordingly, we agree with the Examiner that \"[these passages state the second type of culling (a depth range test in the fetch unit) which is used in claim 1 in the present invention can only practically get the necessary Z range of the object itself into the object pointer by computing this in the tile accelerator.\" Ans. 6 (citing Spec. I 76).", + "The second culling stage recited in claim 1, therefore, uses the fetch unit to perform depth range testing using object depth range information that is calculated in the tile accelerator, not in the fetch unit.", + "This is further demonstrated by dependent claim 5, indicated as allowable by the Examiner, which, unlike claim 1, affirmatively recites that a tiling unit, i.e., the tile accelerator disclosed in the Specification, \"derive[s] a depth range for each object.\"", + "Appellant attempts to broaden claim 1 beyond what is disclosed in the Specification by inferentially claiming functions performed by the tile accelerator in claim 1, without affirmatively reciting that the tiling unit/accelerator recited in dependent claim 5 performs these functions.", + "We find this argument unpersuasive because we agree with the Examiner's finding that the tile accelerator is the structure disclosed in the Specification as calculating the Z (depth) range of the object itself and claim 1 specifically recites *compar[ing] the depth range of the object\" to perform a depth range test.", + "We further note that Appellant relies on portions of the Specification that include a tile accelerator to provide written disclosure support for claim 1. Appeal Br. 2.", + "Claim 1 is directed to a graphics renderer.", + "In particular, claim 1 recites the **graphics renderer [is] for rendering a scene having an image plane divided into a set of one or more tiles each having an associated list stored in memory that contains object pointers for objects overlapping that tile, each object pointer containing information on a depth range of the object.\" Appeal Br. 10 (emphasis added).", + "Appellant cites exclusively to paragraph four of the Specification to provide support for the graphics renderer of claim 1.", + "Although paragraph four does not directly mention a **graphics renderer, \" it discloses a system, and further discloses that the structure of the system includes tile accelerator 2, which \"is the part of the system that processes the input data, performs the tiling calculations, and writes object parameter and pointer data to the display list memory 4.\"", + "Paragraph four further describes the first culling stage, which discloses using the tile accelerator 4, rather than the ISP Parameter Fetch 8, to compute and store object depth information in the object pointer.", + "Appellant fails to specifically explain why this paragraph disclosing the tile accelerator is relied upon for written description support, in spite of Appellant's arguments that no tile accelerator is needed for the second stage culling.", + "Without such explanation, we find Appellant's reliance on paragraph four corroborates the Examiner's finding that \"the *depth range of the object itself is required by the ISP fetch unit to perform the second stage culling\" and \"the only technical solution to making this work practically is to use Z range information that was previously computed in the tile accelerator.\" Ans. 9, 16.", + "We sustain the 35 U.S.C. 9 112, first paragraph, rejection of independent claim 1.", + "Independent claim 11 has equivalent scope and is not argued separately so we sustain that rejection for similar reasons.", + "We also sustain the rejection of claims 2-4, 6-10, 12-14, and 16-20, which depend from independent claims 1 and 11." + ] +} \ No newline at end of file diff --git a/opinion_split/2020002187_Mail_Decision.json b/opinion_split/2020002187_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..d1622f2f8418b79e6a0833331da57f98c2cc6c8a --- /dev/null +++ b/opinion_split/2020002187_Mail_Decision.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "Appellant primarily argues Rees' anionic monomer is not the same as the monomer recited in claim 1 (Appeal Br. 5).", + "Appellant argues that the monomer formula in claim 1 requires that X, can be N but X4 cannot be only N (Appeal. Br. 5, 8).", + "Appellant contends that claim 1 recites that X4 can be NH but not solely N (Appeal Br. 5).", + "Appellant argues that Rees' anionic monomer has N in the X, and X4 positions of the monomer and thus is a different monomer than required by claim 1 (Appeal Br. 5).", + "Appellant contends that the claimed monomer is neutral, whereas Rees' monomer is charged as an anion (Appeal Br. 5).", + "Appellant argues that the Examiner's claim interpretation of *derived from\" as including the anionic form of the monomer does not take into account the disclosure in the Specification where only neutral forms are disclosed (Reply Br. 2)." + ], + "examiner_findings": [ + "Appellant appeals the following rejections: Claims 1-5 are rejected under 35 U.S.C. 46 102(a)(1) and 102(a)(2) as unpatentable over Rees (US 2012/0095165 A1; published April 19, 2012) as evidenced by Taden (Andreas Taden et al., Synthesis and Polymerization of S-(Methacrylamido)tetrazole, a Water-Soluble Acidic Monomer, 40 J. of Polymer Sci. 4333-43 (2002)).", + "The Examiner finds that Rees, as evidenced by Taden, discloses an anionic monomer in claim 9, which is a methacrylate polymer having a constituent unit of a corresponding salt (Non-Final Act. 3).", + "The Examiner finds that claim 1 requires *the ligand is a (meth)acrylic polymer having a constituent unit derived from. . which means that that polymer can comprise a monomer unit of the anionic monomer in Rees, which is a derivative of the salt as evidenced by Taden (Ans. 3)." + ], + "ptab_opinion": [ + "The preponderance of the evidence favors Appellant's arguments of novelty.", + "We understand the claim to recite that the (meth)acrylic polymer has a constituent unit derived from the monomer formula recited in the claim.", + "In other words, the monomer is limited to those monomers falling within the formula.", + "This interpretation is supported by the Specification where examples of monomers listed for use in the invention are in Table 3, none of which is in anionic form (Spec. I 52).", + "Moreover, the Specification shows a reaction mechanism where a neutral monomer polymerizes to 3- Methacrylamidoprapyltriciethoxysilane (MAS) bonded to silica (Spec. I 41).", + "We also agree with Appellant that the Formula I requires that X, and X4 positions cannot each be nitrogen alone.", + "The Examiner does not respond to this argument by Appellant (Ans. generally).", + "Nevertheless, the anionic monomer in Rees has N in the X, and X4 positions.", + "We find that the Examiner has not established identity in the monomer required by claim 1 and the monomer disclosed by Rees.", + "We reverse the Examiner's 102(a)(1) and 102(a)(2) rejections over Rees as evidenced by Taden." + ] +} \ No newline at end of file diff --git a/opinion_split/2020002521_Mail_Decision.json b/opinion_split/2020002521_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..d9ef8b68c1e41200e604a8f04f1daede685d8b67 --- /dev/null +++ b/opinion_split/2020002521_Mail_Decision.json @@ -0,0 +1,58 @@ +{ + "appellant_arguments": [ + "As Appellant contends, Atta does not expressly disclose that the myrrh extract used to prepare its nanoparticles came from the Commiphora molmol plant.", + "Appellant argues that \"Atta does not disclose silver nanoparticles as claimed but, rather, discloses glucose and PVP-coated silver nanoparticles (see page 8228, Section 2.2.1 Preparation of Ag/PVP NPs).\" Appeal Br. 10.", + "Appellant argues that the \"claimed method uses Myrrh extract as the reducing agent without more chemicals.\" Appeal Br. 10.", + "Appellant argues that Lamb, El-Sherbiny, Allahverdiyev, European Medicines, and Roy fail to remedy the deficiencies of Atta asserted by Appellant in relation to Appellant's claim 1.", + "Appellant relies on the AlOlayan Declarations as evidence that the nanoparticles produced by claim 1's process have worked unexpectedly well" + ], + "examiner_findings": [ + "The sole rejection before us for review is the Examiner's rejection of claims 1, 2, 5-8, 10, and 11 under 35 U.S.C. 5 103 as being unpatentable over Atta,2 Lamb,3 El-Sherbiny,* Allahverdiyev,\" European Medicines,* and Roy.7 Final Act. 2-5 (entered March 7, 2019).", + "The Examiner cited Atta as disclosing a process of preparing silver nanoparticles by \"preparing aqueous solution of silver nitrate and mixing with myrrh extract at 90 degrees Celsius for an hour resulting in sphere shaped nanoparticles with particles sizes ranging from 9.3 to 12.5 nm.\" Final Act. 3.", + "The Examiner found that Atta's process differs from the processes recited in Appellant's independent claims 1 and 6 in that Atta *does not expressly disclose treatment of epidermal lesions caused by leishmaniasis, including Leishmania major infection and subcutaneous lesions . \u00b7 ~ Final Act. 4.", + "The Examiner found that the combined teachings of Lamb, E1- Sherbiny, Allahverdiyev, European Medicines, and Roy would have suggested topically applying Atta's myrrh/silver nanoparticle composition to a patient to treat an epidermal lesion caused by Leishmaniasis. Final Act. 4- 5.", + "The Examiner reasoned in particular that, based on the teachings of the cited references, Leishmaniasis lesions \"are cutaneous and subcutaneous,\" which are **open wounds or ulcer in the skin, and, in view of the effectiveness of the silver nanoparticles against Leishmania one ordinary skill in the art would expect that silver nanoparticles would be effective when topically applied and that the myrrh would contribute to the healing of the lesion.\" \" Final Act. 5.", + "Therefore, the Examiner concluded, \"the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because every element of the invention has been collectively taught by the combined teachings of the references.' ~, Final Act. 5.", + "As the Examiner found, however, the European Medicines article discloses that the Commiphora molmol plant was a known source of myrrh." + ], + "ptab_opinion": [ + "Appellant's claims 1 and 6 are the independent claims on appeal, and read as follows:", + "1. A method of preparing silver nanoparticles from the gum extract of the Commiphora molmol plant (myrrh) for treating epidermal lesions caused by Leishmania major, consisting of: preparing an extract of myrrh gum extract of the Commiphora molmol plant; providing an aqueous solution including a metal salt, wherein the metal salt is silver nitrate (AgNO3); and stirring the myrrh gum extract with the aqueous solution of the metal salt solution for about 15 to 20 minutes at a temperature of about 50 C to about 100 \uc774C to produce the silver nanoparticles, wherein the silver nanoparticles have a mean diameter in the range of from about 5 nm to about 50 nm.", + "6. A method of treating epidermal lesions caused by Leishmaniasis, the method consisting of the mixing an extract of myrrh with an aqueous solution of silver nitrate (AgNO3) for about 15 to 20 minutes at a temperature of about 50 \u00b7C to about 100 \uc774C to form silver nanoparticles in aqueous myrrh suspension, the silver nanoparticles having a mean size of about 5 nm to about 50 nm; and topically applying an effective amount of the silver nanoparticles in aqueous myrrh suspension to a patient in need thereof.", + "Appeal Br. 15-16.", + "[T]he examiner bears the initial burden I \u00b7 \u00b7 of presenting a prima facie case of unpatentability. \u00b7 \u00b7 \u00b7 After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (holding that requiring an applicant to identify *reversible error\" in an examiner's rejection is consistent with long standing Board practice).", + "In the present case, we are not persuaded that Appellant has shown reversible error in the Examiner's prima facie case of obviousness, nor does Appellant persuade us that the preponderance of the evidence fails to support the Examiner's ultimate conclusion of obviousness.", + "As required by Appellant's claim 1, Atta discloses a method of preparing silver nanoparticles by combining a myrrh extract with an aqueous silver nitrate solution: Myrrh coated silver nanoparticles were synthesized as the same reported procedure used for preparation of Ag/PVP NPs [silver/polyvinylpyrrolidone nanoparticles] but Myrrh 2 g was [sic] replaced both PVP and glucose and 50 ml of ammonia solution (25 Wt %) was added to the reaction mixture.", + "The reaction temperature was kept until the color changed from yellow to brown.", + "Atta 8228; see also id. (describing preparation of Ag/PVP NPs by a procedure in which \"2 g of glucose and 1 g of PVP were dissolved in 40 g of water and heated to 90 \"C\" after which \"0.5 g of AgNOs dissolved in 1 mL of water was quickly added\" and then \"\"[t]he dispersion was kept at 90 'C for 1 h until the color changed to be brown and then cooled to room temperature\"); id. at 8231-32 (\"[T]he average size of all prepared Ag-NPs \u00b7 \u00b7 \u00b7 ranged from 9 to 12 nm. \").", + "See Atta 8227 (\"Myrrh gum produced from a spiny deciduous thorny tree or shrub which grows as thickets to the height of 15 feet in Saudi Arabia desert regions. The soluble fraction of Myrrh was extracted from ethanol/water (1:1 volume %) and used as capping agent after recovery using a vacuum evaporator. \").", + "See European Medicines 3.", + "Because the Commiphora molmol plant was a known source of myrrh, we agree with the Examiner that a skilled artisan, seeking to prepare Atta's myrrh/silver nanoparticles, had good reason for, and a reasonable expectation of success in, using the Commiphora molmol plant to prepare the myrrh extract employed in Atta's myrrh/silver nanoparticles.", + "Appellant does not persuade us, therefore, that the Examiner erred reversibly in concluding that it would have been obvious to use the Commiphora molmol plant to prepare the myrrh extract employed in Atta's myrrh/silver nanoparticles, as recited in Appellant's claim 1.", + "We acknowledge, as Appellant argues (see Appeal Br. 10, 12; Reply Br. 6), that Atta does not disclose that its myrrh/silver nanoparticle composition is useful for treating epidermal lesions caused by Leishmania major, but instead discloses using the nanoparticles to inhibit steel corrosion.", + "See Atta 8236 (\"The electrochemical measurements indicated that stabilized monodisperse silver Nanoparticles can be used as corrosion inhibitor for steel in 1 M HCL\").", + "As our reviewing court has explained, however, \"where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.* \" Rowe V. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); see also Bristol-Myers Squibb Co. V. Ben Venue Labs., Inc., 246 F.3d 1368, 1375-76 (Fed. Cir. 2001) (holding that, as to process claims, a preamble recitation that merely expresses the purpose of performing the claimed steps is not a limitation on the process where the body of the claim fully sets forth the steps required to practice the claimed process, and where the preamble recitation does not affect how the claimed steps are to be performed).", + "In the present case, Appellant's claim 1 recites \"[a] method of preparing silver nanoparticles . . consisting of' a sequence of steps recited in the body of the claim that yields the nanoparticles.", + "Appeal Br. 15.", + "The preamble recitation that the nanoparticles are \"for treating epidermal lesions caused by Leishmania major\" (id.) is therefore merely an intended use of the product that results from the claimed process, and thus is not a limitation of claim I's process.", + "Accordingly, the fact that Atta uses the nanoparticles prepared by its process to inhibit steel corrosion does not persuade us that Atta, when combined with the European Medicines article, fails to suggest performing claim 1*s process.", + "We are not persuaded.", + "As noted above, while Atta discloses preparing PVP-coated silver nanoparticles or \"Ag/PVVP NPs,\" Atta also discloses that \"Myrrh coated silver nanoparticles were synthesized [by] the same reported procedure used for preparation of Ag/PVP NPs but Myrrh 2 g was [sic] replaced both PVP and glucose.\" ~ Atta 8228 (emphasis added).", + "As seen above, however, Atta's myrrh/silver nanoparticles do not contain PVP or glucose.", + "Other than PVP and glucose, Appellant does not explain specifically which chemicals used in Atta are excluded from claim 1's process, nor does Appellant identify the specific claim language that might exclude chemicals other than those recited in claim 1.", + "We note, although not argued specifically by Appellant, that the preamble of claim 1 uses \"consisting of' as the transitional phrase in relation to the claimed method.", + "We also note, although again not argued specifically by Appellant, that Atta's aqueous silver nitrate solution contains ammonia.", + "See Atta 8228.", + "Claim 1, however, uses the open term *including\" in relation to the aqueous silver nitrate solution.", + "The term \"including\" does not exclude additional ingredients from the claimed aqueous solution.", + "See SanDisk Corp. V. Memorex Products, Inc., 415 F.3d 1278, 1284 (Fed. Cir. 2005) (\"As a patent law term of art, 'includes' means *comprising.\" use Neither includes, nor comprising, forecloses additional elements that need not satisfy the stated claim limitations.\") \") (Citations omitted).", + "Appellant does not persuade us, therefore, that the \"claimed method uses Myrrh extract as the reducing agent without more chemicals.\" \" Appeal Br. 10.", + "We are not persuaded.", + "In relation to the process of Appellant's claim 1, the European Medicines article merely provides evidence that the Commiphora molmol plant was a known source of myrrh, and that it therefore would have been obvious to use the Commiphora molmol plant to prepare the myrrh extract employed in Atta's myrrh/silver nanoparticles, as recited in Appellant's claim 1.", + "For the reasons discussed below as to claim 6, Appellant does not persuade us that the Examiner erred reversibly in finding that Lamb, El- Sherbiny, Allahverdiyev, European Medicines, and Roy would have suggested applying Atta's myrrh/silver nanoparticles to epidermal lesions caused by Leishmaniasis.", + "As discussed above, however, the recitation in claim I's preamble, that the nanoparticles are for treating epidermal lesions caused by Leishmania major, is merely an intended use of the product that results from the claimed process, and thus is not a limitation of claim 1's process.", + "Accordingly, even if it were true (which it is not) that Lamb, El- Sherbiny, Allahverdiyev, European Medicines, and Roy would not have suggested applying Atta's myrrh/silver nanoparticles to epidermal lesions caused by Leishmaniasis, that would not demonstrate the nonobviousness of claim I's process.", + "In sum, for the reasons discussed above, Appellant does not persuade us that the Examiner erred reversibly in determining that the process recited in Appellant's claim 1 would have been prima facie obvious.", + "For the reasons discussed below, Appellant also does not persuade us that the Examiner erred in determining that the evidence of unexpected results advanced by Appellant is insufficient to outweigh the prior art evidence of prima facie obviousness." + ] +} \ No newline at end of file diff --git a/opinion_split/2020003743_Mail_Decision.json b/opinion_split/2020003743_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..f43d1878d87e5eb10b37daacf88307d0824d82f3 --- /dev/null +++ b/opinion_split/2020003743_Mail_Decision.json @@ -0,0 +1,120 @@ +{ + "appellant_arguments": [ + "Appellant specifically identified disclosure in the Specification that they assert provide improvements to conventional payment processing. Appeal Br. 17.", + "As explained above, we understand Appellant's argument to be that the claim as a whole is not directed to an abstract idea because the T-ID information and UDP communication are additional elements which integrate the judicial exception into a practical application.", + "During the prosecution of the application, Appellant distinguished the claims from the cited prior art in the 9 103 rejection on the basis of the T-ID information and UDP communications. Applicant Remarks (Jun. 24, 2019) 7-11." + ], + "examiner_findings": [ + "Claims 1-21 stand rejected by the Examiner in the Final Rejection under 35 U.S.C. $ 101 because the claimed invention is directed to an abstract idea and judicial exception without significantly more. Final Act. 2.", + "The Examiner found that the claims \"cover[ ] performance of the limitations via human commercial or business or transactional activities/interactions\" which are methods of organizing human activity, one of the categories of abstract ideas listed in the Eligibility Guidance as an abstract idea. Final Act. 4.", + "The Examiner responds that a \"generic recitation of a computer processor performing its generic computer functions does not make the claims less abstract. \"", + "The Examiner states that the *claims provide a generically computer-implemented solution to a business-related or economic problem (i.e. processing a payment)\" and that the \"focus of the claimed invention in the present is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.\" Ans. 5.", + "The Examiner also states that the claims \"are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.\" \" Id.", + "The Examiner also responds that **Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and database technology\" which is not inventive. ld. at 6.", + "Yet, the Examiner also acknowledged that he \"did not indicate that the claims describe well- understood, routine and conventional activities in the 101 rejection in this particular case.\" ld.", + "In response, the Examiner withdrew the rejection. Advisory Action (Sept. 16, 2019)." + ], + "ptab_opinion": [ + "Claims 1 and 16 are representative and reproduced below (annotated with bracketed numbers for reference to the limitations):2 1. An affiliated store terminal, comprising: at least one microprocessor comprising: [1] a transaction identification information generation unit configured to generate transaction identification (T-ID) information based on payment-related information; [2] a transaction identification information provision unit configured to provide the T-ID information to a mobile terminal; [3] a payment request transmission unit configured to [3a] transmit a payment request signal including the payment- related information and the T-ID information to [4] a payment processing server at a same time when the transaction identification information provision unit transmits the T-ID information to the mobile terminal, without waiting for a payment request response signal being received from the payment processing server, and [3b] receive the payment request response signal including the T-ID information from the payment processing server in response to the payment request signal being transmitted to the payment processing server; [5] a payment approval confirmation request unit configured to [5a] transmit a first user datagram protocol (UDP) packet including the T-ID information to [6] a payment processing result notification server when receiving the payment request response signal, and [5b] receive a first response signal from the payment processing result notification server in response to the UDP packet being transmitted to the payment processing result notification server; and [7] a payment approval confirmation unit configured to [7a] receive a second UDP packet for a payment processing result notification including the T-ID information from [6] the payment processing result notification server via UDP connection, without confirming that the mobile terminal has approved a transaction corresponding to the payment request signal, and when receiving the second UDP packet for the payment processing result notification, [7b] transmit a second response signal to the payment processing result notification server, and [7c] transmit a transaction state inquiry signal to [4] the payment processing server, wherein, when transmitting the payment-related information to the payment processing server, the payment request transmission unit receives the payment request response signal including the T-ID information based on the payment- related information from the payment processing server.", + "16. A mobile payment processing method performed in an affiliated store terminal, the mobile payment processing method comprising: [1] generating transaction identification (T-ID) information based on payment-related information; [2] transmitting a payment request signal including the T- ID information to a payment processing server; [3] providing the T-ID information to a mobile terminal; [4] receiving a payment request response signal from the payment processing server receiving a payment approval request signal transmitted by the mobile terminal obtaining the T-ID information; [5] transmitting a user datagram protocol (UDP) packet including the T-ID information to a payment processing result notification server when receiving the payment request response signal; [6] receiving a UDP packet for a payment processing result notification including the T-ID information from the payment processing result notification server via UDP connection, without confirming that the mobile terminal has approved a transaction corresponding to the payment request signal, when the payment processing result notification server receives payment processing result information from the payment processing server, and [7] inquiring a transaction state by connecting to the payment processing server when receiving the UDP packet for the payment processing result notification, wherein the transmitting the payment request signal comprises transmitting the T-ID information to the payment processing server and the mobile terminal at a same time, without waiting for the payment request response signal being received from the payment processing server.", + "Under 35 U.S.C. 5 101, an invention is patent-eligible ifit claims a *new and useful process, machine, manufacture, or composition of matter.", + "~ However, not every discovery is eligible for patent protection. Diamond V. Diehr, 450 U.S. 175, 185 (1981).", + "\"Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.\" Id.", + "The Supreme Court articulated a two-step analysis to determine whether a claim falls within an excluded category of invention. Alice Corp. V. CLS Bank Int 'I, 573 U.S. 208 (2014); Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012).", + "In the first step, it is determined *whether the claims at issue are directed to one of those patent-ineligible concepts.\" Alice, 573 U.S. at 217.", + "If it is determined that the claims are directed to an ineligible concept, then the second step of the two-part analysis is applied in which it is asked \"*[w]hat else is there in the claims before us?\" Id. (alteration in original).", + "The Court explained that this step involves a search for an \"finventive concept*--i.e., an element or combination of elements that is \"sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.\" Alice, 573 U.S. at 217-18 (alteration in original) (citing from Mayo, 566 U.S. at 75-77).", + "Alice, relying on the analysis in Mayo of a claim directed to a law of nature, stated that in the second part of the analysis, *the elements of each claim both individually and *as an ordered combination\" must be considered \"to determine whether the additional elements *transform the nature of the claim2 into a patent-eligible application.\" Alice, 573 U.S. at 217.", + "The PTO published revised guidance on the application of 35 U.S.C. $ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject: Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (\"Eligibility Guidance\").", + "This guidance provides additional direction on how to implement the two-part analysis of Mayo and Alice.", + "Step 2A, Prong One, of the Eligibility Guidance, looks at the specific limitations in the claim to determine whether the claim recites a judicial exception to patent eligibility.", + "In Step 2A, Prong Two, the claims are examined to identify whether there are additional elements in the claims that integrate the exception in a practical application, namely, is there a \"meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\" 84 Fed. Reg. 54 (Prong Two).", + "If the claim recites a judicial exception that is not integrated into a practical application, then as in the Mayo/Alice framework, Step 2B of the Eligibility Guidance instructs us to determine whether there is a claimed *inventive concept\" to ensure that the claims define an invention that is significantly more than the ineligible concept itself. 84 Fed. Reg. 56.", + "With these guiding principles in mind, we proceed to determine whether the claimed subject matter in this appeal is eligible for patent protection under 35 U.S.C. 5 101.", + "The claims in this appeal are directed to a mobile payment processing method performed in an affiliated store terminal.", + "There are five independent claims on appeal, claims 1, 9, 12, 16, and 17.", + "Appellant grouped all the claims together, although the scope of each claim is different.", + "All the claims relate to payments transactions between a mobile terminal of a customer, such as the customer's smart phone, and a store terminal, where a customer makes a purchase from a store. Spec. I 2.", + "We have focused on claims 1 and 16.", + "Claim 1 is directed to an **affiliated store terminal\" with a microprocessor that comprises several specific units with the function to carry out a mobile payment transaction.", + "A store terminal is a \"manufacture,\" one of the statutory categories of patent-eligible subject matter under 35 U.S.C. 5 101.", + "Claim 16 is directed to a *mobile payment processing method performed in an affiliated store terminal. \"", + "A method is also a \"process,\" which is a statutory category of patent-eligible subject matter listed in 35 U.S.C. 5 101.", + "Because the claims fall into statutory categories of patent-eligible subject matter, following the first step of the Mayo/Alice analysis, we proceed to Step 2A, Prong One, of the Eligibility Guidance.", + "In Step 2A, Prong One, of the Eligibility Guidance, the specific limitations in the claim are examined to determine whether the claim recites a judicial exception to patent eligibility, namely whether the claim recites an abstract idea, law of nature, or natural phenomenon.", + "See 84 Fed. Reg. 52 (\"fundamental economic principles or practices (including \u00b7 \u25a0 \u25a0 sales activities\")", + "As explained below, we agree with the Examiner that the claims recite methods of organizing human activity because the claims recite steps in which payment processing of a sale is accomplished.", + "Step [2] of claim 16, in which a payment request is sent to the payment processing server is a basic requirement of sales activity because the request for payment must be made before the merchant can be paid for the sale to the customer.", + "Step [4] of the claim where the response to this request for payment is received by the merchant upon approval of the request by the customer is also a necessary step of this process because it lets the merchant know the payment has been approved and therefore the transaction can be completed.", + "The remaining steps recited in claim 16, while part of the payment processing method, are not part of the fundamental process in which a payment is requested and notification received that the payment is processed.", + "Accordingly, we conclude that Examiner properly found that claim 16 recites a method of organizing human activity.", + "Claim 1 comprises a microprocessor that further comprises specific units configured to perform steps which a payment is processed.", + "Specifically, as in claim 16, step [3] of claim 1 recites a unit configured to make a payment request on behalf of a merchant and receive a response to the payment request.", + "Payment approval is carried out by the units recited in steps [5] and [6] of claim 1.", + "Therefore, we agree with the Examiner that the claims recite an abstract idea and proceed to Step 2A, Prong Two, of the Eligibility Guidance.", + "Prong Two of Step 2A under the 2019 Eligibility Guidance asks whether there are additional elements that integrate the exception into a practical application.", + "As in the Mayo/Alice framework, we must look at the claim elements individually and \"as an ordered combination\" to determine whether the additional elements integrate the recited abstract idea into a practical application.", + "Integration into a practical application is evaluated by identifying whether there are additional elements individually, and in combination, which go beyond the judicial exception. Eligibility Guidance, 84 Fed. Reg. 54-55.", + "The October 2019 Update to Subject Matter Eligibility further explains that \"the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.'", + "We therefore review these disclosures below in the context of what is recited in the claims.", + "In claim 1, a transaction identification information unit generates transaction identification information (T-ID) ([1D (the annotated figure in the Appendix to this decision illustrates the process).", + "The T-ID is provided to a mobile terminal by a transaction identification information provision unit ([2D.", + "The T-ID is comprises the payment-related information related to the transaction, such as *an affiliated store code, a branch store code, a terminal code, a transaction serial number, and purchase information. \" Spec. I 16.", + "The transaction identification information unit and transaction identification information provision unit are at the store terminal.", + "The Specification states that in the \"conventional art, \" the T-ID information is provided to the store terminal by the payment processing server, which in turn, provides it to the mobile device. Spec. I 65.", + "However, the Specification explains that in the present invention, the store terminal generates the T-ID information, itself, and sends it directly to the mobile terminal. Spec. I 66; claim 1, step [1], step [2].", + "Following the steps of claim 1, the store [3a] also sends the T-ID information to [4] the payment processing server as a payment request and [3b] receives the T-ID information back from [4] the payment processing server as part of the response to the request.", + "(The response is sent to the store upon approval from the customer's mobile terminal.)", + "Because the store sends the T-ID information to the mobile terminal (a customer's cellphone) and [4] the payment processing server at same time [3] \"transmit \u00b7 \u00b7 \u00b7 \"at a same time when the transaction identification information provision unit transmits the T-ID information to the mobile terminal, without waiting for a payment request response signal being received from the payment processing server\"), the Specification explains that \"the mobile payment can be rapidly processed without waiting until the payment processing server 230 receives the payment request response signal\" from the [4] the payment processing server. Spec. I 66.", + "Thus, in the conventional art system, the store terminal would have to wait to receive the T-ID information from the processing server until providing it to the mobile terminal, but in the claim, the store provides it to the payment processing terminal and mobile terminal, making the processing more rapid because once the customer at the mobile terminal approves the transaction, the payment processing server can match the transactions and notify the store that the payment request has been received.", + "This improvement also appears in steps [1]-[4] of claim 16 as indicated in the annotated Figure 1.", + "Claim 16 makes it explicit in step [4] that the T-ID information provided to the store from [4] the payment processing server ([3b] of claim 1) is the T-ID from the mobile terminal that the mobile terminal received from the store (\"receiving a payment request response signal from the payment processing server receiving a payment approval request signal transmitted by the mobile terminal obtaining the T- ID information.\" \" This improvement also appears in independent claims 12 and 17.", + "The claims also use a *user datagram protocol\" or \"UDP\" packet to communicate information.", + "In claim 1, [5] the payment approval confirmation request unit \"transmits\" information, including the T-ID information, as a first UDP packet to [6] a payment processing result notification server.", + "The payment processing result notification server sends a second UDP packet ([7a] of claim 1) back to [7] the payment approval confirmation unit at the store terminal.", + "The [7] the payment approval confirmation unit is then able to confirm that a payment has been approved by [7c] transmitting a transaction state inquiry signal to [4] the payment processing server. Spec. I 47.", + "The Specification explains that, in the conventional system, the store terminal may not maintain the connection with [4] the payment processing server while the process between the mobile terminal and the payment processing server is performed. Spec. ' 71.", + "As a consequence, the Specification states that \"there may be a problem in which [4] the payment processing server \u00b7 \u00b7 \u00b7 cannot transmit a transaction approval result\" to the store terminal *even when it is determined whether the transaction approval is processed since the [4] payment processing server \u00b7 \u00b7 \u00b7 cannot confirm an address\" of the store terminal. Id.", + "The Specification states that this problem is addressed by providing [6] a \"payment processing result notification server\" that *inform[s] the \u00b7 \u00b7 \u00b7 store terminal whether the transaction approval is processed by performing the communication using the UDP packet\" with the store terminal.\" Spec. 72.", + "Steps [5] and [7] of claim 1 reflect this improvement.", + "It is further explained in the Specification that, when the process between the mobile terminal and [4] the payment processing server is completed, [4] the payment processing server may \"transmit a response signal including the T-ID information to [6] the payment processing result notification server\" which finds the UDP address of the store. Spec. I 74.", + "The [6] payment processing result notification server then will \"transmit the UDP packet including the T-ID information and information regarding whether the transaction approval is processed to the affiliated store terminal so that the user of the affiliated store terminal . \u00b7 inquires the transaction state by connecting to the payment processing server without confirming whether the transaction approval is completed from the user of the mobile terminal. \" Id.", + "This latter step is described by the Specification as reducing \"a system load of the payment processing server.\" Spec. I 75.", + "Claim 1 recites this improvement in [5a] where there is first UDP packet sent to the payment processing result notification server, and then receipt of a second UDP packet from the payment processing result notification server as in limitation [7] of the claim, where the second UDP packet is *including the T-ID information from the payment processing result notification server via UDP connection, without confirming that the mobile terminal has approved a transaction corresponding to the payment request signal, \" the same feature described in the Specification as the improvement over conventional systems.", + "Claim 16 also recites this feature in limitations [5] and [6], of sending and receiving the UDP packets, where the exchange is accomplish between the recited store terminal and payment processing result notification server.", + "We also find that independent claims 9 and 12 apply this UDP communication strategy in a similar manner to claims 1 and 16.", + "See Eligibility Guidance, 84 Fed. Reg. 55 (*An additional element reflects . \u00b7 \u00b7 an improvement to other technology or technical field. \").", + "We are not persuaded by the Examiner's analysis that the claims are not patent-eligible.", + "The Examiner appears to require the invention of a new technology to confer patent-eligibility on the claim.", + "However, this is not an accurate characterization of how claims are analyzed for patent-eligibility under the Mayo/Alice framework.", + "When a claim recites an abstract idea, patent-eligibility can be established when the \"particular arrangement of elements is a technical improvement over [the] prior art.\" BASCOM Glob. Internet Servs. V. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).", + "The court in Bascom found the claimed subject matter patent-eligible under 35 U.S.C. $ 101 because the claims \"carve[d] out a specific location for the filtering system (a remote ISP server) and require[d] the filtering system to give users the ability to customize filtering for their individual network accounts.\" Bascom, 827 F.3d at 1351.", + "While filtering content was **already a known concept,\" the court explained that the claims *recite a specific, discrete implementation of the abstract idea of filtering content.\" ld. at 1350.", + "Here, as discussed above, the Specification identifies improvements to the way T-ID information is communicated during a payment processing transaction.", + "The Specification also describes an improvement in the notification process when a transaction has been approved using UDP communication.", + "Therefore, we must examine the claim to determine whether these are additional elements in the claim which integrate the abstract idea into a practical application or otherwise impose a meaningful limit on the judicial exception.", + "With respect to the improvement in the generation and provision of the T-ID information, claim 1 has specific computer elements which perform the T-ID functions, namely, the [1] transaction identification information generation unit and [2] the transaction identification information unit.", + "The Specification describes these functions as an improvement to conventional systems. Spec. 11 65, 66.", + "In claim 16, the claim preamble requires that these operations are performed on the store terminal.", + "We consider these to be additional elements that do not perform operations that would ordinarily take place in payment processing. See 2010-000064 (PTAB Informative Dec. Mar. 19, 2019) 7.", + "Claims 12 and 17 also comprise a store terminal which performs the T-ID function.", + "The recited T-ID units and store terminal therefore impose \"a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\" ~ Eligibility Guidance, 84 Fed. Reg. 54 (\"Prong Two\" discussion).", + "The UDP communication is accomplished in claim 1 with a [5] a payment approval confirmation request unit, and a [6] payment processing result notification server.", + "As explained above, the Specification discloses [6] the payment processing result notification server is an improvement to existing system.", + "We therefore consider [6] the payment processing result notification server to be an additional element that does not recite operations that would ordinarily take place in payment processing.", + "Claims 16 and 17 also recite a payment processing result notification server to perform the UDP function and therefore comprise an additional element that does not perform operations that would ordinarily take place in payment processing.", + "Claims 9 and 12 also recite additional elements that perform the UDP functions.", + "Accordingly, we find that specific manner in which T-ID and UDP is implemented in the payment processing method recited in the claims *imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\" ~ Eligibility Guidance, 84 Fed. Reg. 54 (\"Prong Two\" discussion).", + "While it is unnecessary to proceed to Step 2B because a technological improvement that integrated the abstract idea into a practical application has been identified, for completeness of the record, we shall proceed to Step 2B.", + "In making the Step 2B determination, we must consider whether there are specific limitations or elements recited in the claim \"that are not well- understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present\" or whether the claim \"simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, indicative that an inventive concept may not be present. \" Eligibility Guidance, 84 Fed. Reg. 56 (footnote omitted).", + "We must also consider whether the combination of steps perform *in an unconventional way and therefore include an *inventive step,' rendering the claim eligible at Step 2B.\" Id.", + "As explained in detail above, the arrangement of these specifically claimed elements and steps that perform the T-ID and UDP functions are described in the Specification as an improvement to conventional payment processing.", + "The combination of the T-ID and UDP functions therefore provide an *inventive concept\" to the claimed payment processing method.", + "The Examiner did not consider the arrangement of these features recited in the claims, but rather dismissed them as **ofthe-shelf, conventional computer, network, and database technology.\" Ans. 6.", + "The prosecution history is consistent with the conclusion that the steps as an ordered combination provide an inventive concept.", + "The claims in this appeal are distinguishable from Inventor Holdings, LLC 17. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) where the court held: The idea that a customer may pay for items ordered from a remote seller at a third-party's local establishment is the type of fundamental business practice that, when implemented using generic computer technology, is not patent-eligible under Alice, 134 S.Ct. at 2355.", + "The rejected claims in this appeal provide an improvement to the conventional way in which payments are processed.", + "The improvement is implemented with specific computer elements that route payment information in an unconventional manner.", + "Accordingly, the rejection of all claims under 35 U.S.C. S 101 is reversed." + ] +} \ No newline at end of file diff --git a/opinion_split/2020004206_Mail_Decision.json b/opinion_split/2020004206_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..8ce003aaa9f5c06f6d7b67cb2666ee43c47ffd27 --- /dev/null +++ b/opinion_split/2020004206_Mail_Decision.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "Appellant argues that Uchigaki's front surface 10c and rounded portion 10g, which connect to upper surface 10a, do not form a straight line from bottom surface 10b and upper surface 10a, and are not oriented at an acute angle relative to a reference axis perpendicular to the bottom surface 10b, as shown in Uchigaki's Figure 4 reproduced below. Appeal Br. 7.", + "Appellant also argues that changing the shape of Uchigaki's *sidewall* would not have been an obvious matter of design choice. Id. at 8." + ], + "examiner_findings": [ + "The Examiner maintains the following rejections on appeal (Ans. 3; Final Act. 3-6):", + "Rejection 1: Claims 1-4, 6-8, and 102 are rejected under 35 U.S.C. 8 102(b) as anticipated by or, in the alternative, under 35 U.S.C. S 103(a) as obvious over Uchigaki;'", + "Rejection 2: Claim 5 is rejected under 35 U.S.C. 8 103(a) as obvious over Uchigaki;", + "Rejection 3: Claim 9 is rejected under 35 U.S.C. 8 103(a) as obvious over Uchigaki and Kheiri;4", + "Rejection 4: Claims 11-15 are rejected under 35 U.S.C. 8 103(a) as obvious over Uchigaki and Brickwood. 5", + "The Examiner finds that Uchigaki, as shown in Figure 1 reproduced below, teaches claim 1's test sensor container including, among other things, cartridge 1 with base 10b and top portion 10a, two opposite sidewalls 10c and 10d extending from base 10b to top portion 10a, and a plurality of compartments arranged linearly along a longitudinal axis (11). Final Act. 3.", + "The Examiner finds that the term *linear** means \"made of or using lines. *, Final Act. 3.", + "Because Uchigaki's sidewall 10c is made of lines, the Examiner finds sidewall 10c to be linear and oriented at an acute angle relative to a reference axis perpendicular to the base. Id." + ], + "ptab_opinion": [ + "We confine our discussion to claim 1, which is sufficient for disposition of this rejection.", + "Appellant's arguments identify reversible error in the Examiner's rejections.", + "We agree with Appellant that the Examiner's s interpretation of the term *linear** is unreasonably broad. Appeal Br. 7.", + "Contrary to the Examiner's s interpretation, claim 1 requires at least one of the two opposite sidewalls is **entirely linear forming a straight line from the base to the top portion\" (emphasis added).", + "As shown in Uchigaki's Figure 4 above, Uchigaki's sidewall, which includes front surface 10c and rounded portion 10g, is not entirely linear, does not form a straight line from bottom surface 10b to upper surface 10a, and is not oriented at an acute angle relative to a reference axis perpendicular to the bottom surface 10b.", + "Thus, we do not sustain the 6 102 rejection of claims 1-4, 6-8, and 10 based on Uchigaki.", + "Additionally, the Examiner has not provided an adequate reason supported by sufficient evidence to explain why a person of ordinary skill in the art would have been led to modify Uchigaki's rounded sidewall (10c, 10g) to form a straight line from bottom surface 10b to upper surface 10a as a matter of design choice. Final Act. 4; Cutsforth, Inc. 12. MotivePower, Inc., 636 Fed. Appx. 575, 578 (Fed. Cir. 2016) (explaining that there must be \"a reason for why a person of ordinary skill in the art would have made the specific design choice. \").", + "Uchigaki teaches that because the upper surface 10a and the front surface 10c of the cartridge body 10 are connected to each other via the rounded portion 10g of the cartridge body, all the sensor retaining grooves 11 can be sealed by a single sheet of sealing member 12 in a single, relatively easy process step, which enhances manufacturing efficiency. Uchigaki I 55.", + "This teaching that the shape ofUchigaki's \"sidewall\" (10c, 10g) has a particular purpose and advantage cuts against the Examiner's s position that changing the shape of Uchigaki's \"sidewall\" would have been an obvious matter of design choice.", + "Thus, we do not sustain the 8 103 rejection of claims 1-4, 6-8, and 10 over Uchigaki.", + "Because the reversible errors identified by Appellant apply to each of the Examiner's rejections, we reverse the rejections of claims 1-15." + ] +} \ No newline at end of file diff --git a/opinion_split/2020004224_Mail_Decision.json b/opinion_split/2020004224_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..ea98fa8058467d7fe457afcf3e0fb9c435d1ccb7 --- /dev/null +++ b/opinion_split/2020004224_Mail_Decision.json @@ -0,0 +1,72 @@ +{ + "appellant_arguments": [ + "Appellant separately argues the prior-art rejections of each of the independent claims before us, claims 1, 26 and 28, and the indefiniteness rejection of claim 29, which depends from claim 1.", + "Arguments pertaining to the remaining claims are premised solely on dependency. Appeal Br. 14.", + "In the Appeal Brief, Appellant quotes a portion of paragraph 142 of the Specification and argues that the proper standard is: \"the ability to prevent a user from erroneously pressing both buttons when intending to press only one of the two buttons.\" Appeal Br. 9.", + "However, Appellant does not address this reasoning other than to say there is no evidence the proposed modification would provide the stated benefit of encouraging continuous contact throughout actuation.", + "Appellant argues that the cited portion of Zarek attributes improved ergonomics to elongation, curvature, and orientation and the ergonomic benefit would not necessarily be predictably achieved incorporating only Igarashi's elongation. Appeal Br. 11-12.", + "[the Examiner's position] is erroneous because it is evident from Fig. 5 of Igarashi (annotated below with arrows) that the edges indicated in the rejection are not at an oblique angle.", + "Instead, the edges are perpendicular.", + "In other words, the edges indicated are perpendicular to the Z1/Z2 axis of Igarashi, whereas claim 28 recites an oblique angle. Appeal Br. 13.", + "For the first time in the reply brief, Appellant provides an annotation of Figure 28 of Igarashi alleging that the surface extending in the X1/X2- Y1/Y2 plane is \"what Appellant considers to be the edge portion\" according to claim 28. Reply Br. 8 (reproducing Figure 28 with axes labels partially cropped out)." + ], + "examiner_findings": [ + "Claim 29 is rejected under 35 U.S.C. $ 112(b) as being indefinite. Non-Final Act. 2.", + "Claims 1, 8, 15, 17-18, 20-22, and 29 are rejected under 35 U.S.C. S 103 as being unpatentable over Numata, Antonio, and, White Knockoff Gamecube Controller Controller Review and Goto. Non-Final Act. 4.", + "Claims 2-6 are rejected under 35 U.S.C. 5 103 as being unpatentable over Numata, Antonio, White Knockoff Gamecube Controller Review, Ironmonger, and Goto. Non-Final Act. 16.", + "Claim 7 is rejected under 35 U.S.C. $ 103 as being unpatentable over Numata, Antonio, White Knockoff Gamecube Controller Review, Morris, and Goto. Non-Final Act. 23.", + "Claims 9-11 are rejected under 35 U.S.C. 5 103 as being unpatentable over Numata, Antonio, White Knockoff Gamecube Controller Review, Naghi, and Goto. Non-Final Act. 25.", + "Claim 16 is rejected under 35 U.S.C. $ 103 as being unpatentable over Numata, Antonio, White Knockoff Gamecube Controller Review, Inoue, and Goto. Non-Final Act. 28.", + "Claims 19 and 25 are rejected under 35 U.S.C. 5 103 as being unpatentable over Numata, Antonio, White Knockoff Gamecube Controller Review, Burgess, and Goto. Non-Final Act. 29.", + "Claim 23 is rejected under 35 U.S.C. $ 103 as being unpatentable over Numata, Antonio, White Knockoff Gamecube Controller Review, Sato, and Goto. Non-Final Act. 31.", + "Claim 24 is rejected under 35 U.S.C. 9 103 as being unpatentable over Numata, Antonio, White Knockoff Gamecube Controller Review, Wii U Pro Controller Xbox 360 Stick Mod, How to take apart your Wii U Pro Controller, and Goto. Non-Final Act. 32.", + "Claim 26 is rejected under 35 U.S.C. 9 103 as being unpatentable over Numata, Urhman, Igarashi, Wii U Pro Controller Xbox 360 Stick Mod, How to take apart your Wii Pro U Controller, Goto, and Zarek. Non-Final Act. 36.", + "Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Numata, Urhman, Igarashi, Wii U Pro Controller Xbox 360 Stick Mod, How to take apart your Wii U Pro Controller, Koshima, Goto, Zarek, and Neiser. Non-Final Act. 45.", + "Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Numata, Urhman, Ironmonger, and, lgarashi. Non-Final Act. 46.", + "The Examiner articulates the proper standards for ascertaining whether a claim using a term of degree, such as **substantially,* complies with the definiteness requirement of 9 112(b), which is that the Specification or the art in general must provide some standard for ascertaining the requisite degree required to fall within the scope of the claim. Final Act. 2-3; see MPEP $ 2173.05(b) (discussing Seattle Box Co., Inc. V. Industrial Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984) and its progeny).", + "The Examiner alleges the absence of any such known standards based on the Specification or the art in general for purposes of evaluating **substantially the same\" with regard to the recited heights of claim 29. Final Act. 2-3.", + "Although additional references were cited by the Examiner for specific features of the recited stationary surface according to the last limitation of claim 1, the Examiner found Numata to already disclose a stationary surface between the buttons. Final Act. 5 (reproducing Numata Fig. 3).", + "In any case, more relevant here is the Examiner's articulated reasoning for modifying Numata's buttons so as to remain above the stationary surface when depressed: to encourage \"continuously maintain[ing] surface constant with the second button throughout the actuation process.\" Non-Final Act. 10.", + "The Examiner reproduces two frames of the White Knockoff Gamecube Controller video and the sequence depicted in Figures 11A and 11B of Antonio to demonstrate such an arrangement was known in the art.", + "In a similar fashion to the rejection of claim 1 discussed above, the Examiner relies on Zarek for an explanation of why someone skilled in the art would incorporate a button having an elongated shape (Non-Final Act. 42 (citing Zarek Abst.; col. 2, II. 3-5; col. 5, 1. 66-col. 6, 1. 9)) like that of Igarashi (Final Act. 41 (reproducing Igarashi Fig. 5), without relying on the specific structure of Zarek.", + "This is apparently how the Examiner understood Appellant's argument as well, because the Examiner reproduces and reiterates in the Answer (Ans. 79-81) the Examiner's annotated version of Figure 26 of Igarashi along with the position taken by the Examiner in the Final Action (Final Act. 54-57)." + ], + "ptab_opinion": [ + "We AFFIRM.", + "Appellant's argument, consisting essentially of the aforementioned statement without more, does not rebut the Examiner's position and does not sufficiently apprise us of a standard for evaluating the claim's use of \"substantially.\"", + "If anything, height similarities, like other tactile similarities in buttons that are intended to be actuated without visual observation, would seem to encourage a user to, rather than, as argued by Appellant, discourage a user from, erroneously pressing the wrong button.", + "Appellant's argument in the Brief does little, if anything, to rebut the Examiner's position.", + "Appellant presented an entirely different position in the Reply Brief (Reply Br. 1-3), but Appellant's new argument is not responsive to the Examiner's s Answer and we are not apprised as to any good cause for not presenting such arguments earlier.", + "Thus, the arguments set forth for the first time in the Reply Brief, which were never presented for the Examiner's consideration are untimely under 37 C.F.R. $ 41.41(b)(2) for purposes of the present appeal.", + "Accordingly, on the record before us, we sustain the Examiner's indefiniteness rejection of claim 29.", + "The Examiner correctly found Numata to disclose the basic controller of claim 1. Final act. 4-6.", + "Thus it is not entirely clear why, among the reasons for the Examiner's proposed modification to the stationary surface, the Examiner includes a reason for providing the stationary surface itself--to separate the buttons and discourage interference when attempting to actuate only one of the buttons. Final Act. 6.", + "In any case, there is nothing wrong with the Examiner indicating the purpose of the stationary surface itself (in addition to explaining the reasons for modifying it), and we agree with the Examiner's reasoning that the stationary surface providing spacing between buttons 1 and 2 in Numata serves to discourage interference when a user wants to actuate only one of the buttons.", + "We do not agree with Appellant that in order to prove this \"the rejection would require evidence that there is interference when the space between the shoulder buttons is absent. \" Appeal Br. 10.", + "A skilled artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir.1985).", + "Many patent references do not illustrate actions with the degree of specificity necessary to ascertain whether conditions like those recited in the last limitation of claim 1 are met.", + "Even though Antonio is not relied upon for the features of Antonio's is button itself, we are unware of any reasons why it would be improper for the Examiner to rely on Antonio as evidence to demonstrate how a button might operate and/or why.", + "Further, a motivation to make a proposed combination, if present, is among the core factual findings associated with an obviousness inquiry.", + "We are also unware of any restrictions on citing a reference mainly or entirely as evidence of the existence of such a motivation.", + "Again, a skilled artisan must be presumed to know something about the art apart from what the references expressly disclose.", + "It seems self-evident that if a button were actuated to a level where its contact surface was at or below an adjacent stationary surface it would be much easier for the user's finger to migrate off the button onto the stationary surface and lose contact with the button.", + "This is clearly well-suited to the Examiner* s stated motivation of maintaining contact with the button as opposed to the adjacent stationary surfaces or other buttons throughout the button's actuation.", + "That Antonio does not illustrate the precise button arrangement recited in claim 1 (Reply Br. 4-6) is inapposite, as Antonio was never cited by the Examiner for this purpose, as explained above.", + "\"It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.\" In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).", + "For the foregoing reasons we sustain the Examiner's obviousness rejection of claim 1.", + "At issue here is the level of evidence necessary to support the Examiner's assertion that conforming a button to the natural shape of a human index or middle finger would improve ergonomics. Appeal Br. 11- 12; Reply Br. 6.", + "First, although the Examiner mentions elongation specifically and reproduces only Figure 5 of Igarashi to illustrate it (final Act. 41), as that is the only aspect of Igarashi's buttons required to meet this particular aspect of claim 26, Igarashi clearly depicts buttons that also have a curvature and are in the proper orientation to receive a human index or middle finger. See Igarashi Figs. 2 and 3.", + "Although claim 26 only requires elongation to satisfy this aspect of the recited first and second buttons, claim 26 is open ended and does not preclude the presence of the orientation and curvature as well as taught by Igarashi and Zarek.", + "Second, although the benefits might not be as great, we are not apprised of any technical reasoning to believe some degree of elongation in the same direction as that of a human's 's index and middle fingers, even if it were without curvature, would not improve a user's 's ability to comfortably actuate the buttons because there would be additional contact surface possibilities and more force distribution.", + "Appellant's argument with regard to orientation is not clear.", + "Igarashi's buttons 15, 16, appear to be in an orientation similar to Numata's buttons 1, 2.", + "Thus, the orientation aspect of the ergonomic benefit, matching the flexure of a human index or middle finger, would already seem to be present in Numata.", + "For the foregoing reasons we sustain the Examiner's obviousness rejection of claim 26.", + "Based on the argument, and the chosen figure of Igarashi to annotate and reproduce, it appears to us that Appellant was attempting to argue that the edges referenced are perpendicular to the Z1/Z2 axis (undisputedly **parallel with a direction of pressing. . .\") because they extend in a direction parallel to the X1/X2 axis depicted in Figure 5.", + "The Examiner reasonably responds to the argument in the Appeal brief by explaining that while the edges pointed to in Appellant's annotation extend parallel to the X1/X2 axis in Figure 5, those edges are actually oblique to a line parallel to the Z1/Z2 axis as can be seen from the viewpoints depicted in Figures 26 and 28 of Igarashi.", + "Of course, a surface residing in the X1/X2-Y1/Y2 plane would typically be orthogonal to the Z1/Z2 axis.", + "However, although Appellant identifies the edge Appellant considers to be the edge portion, Appellant never addresses the edge the Examiner considers as the edge portion for purposes of claim 28.", + "To the extent there is some implicit argument within Appellant's Reply Brief that it was not reasonable to consider the edge cited by the Examiner as the edge portion for purposes of claim 28, this argument should have been presented earlier and, to the extent it is even presented in the Reply Brief, it is untimely for purposes of the present appeal under 37 C.F.R. 5 41.41(b)(2).", + "Accordingly, we regard the Examiner's position with regard to the oblique edge portions of claim 28, as clearly stated on pages 54-57 of the Final Action, to stand essentially uncontroverted for purposes of the present appeal." + ] +} \ No newline at end of file diff --git a/opinion_split/2020004281_Mail_Decision.json b/opinion_split/2020004281_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..23ee29e222ffbb3a5f3ee6e5973f7668af1f8c85 --- /dev/null +++ b/opinion_split/2020004281_Mail_Decision.json @@ -0,0 +1,27 @@ +{ + "appellant_arguments": [ + "The Appellant argues that the Examiner's s proffered combination of teachings from Hwang and Gibson does not result in an *inner housing extending within the outer housing, \" as recited in claims 1, 18, and 20. See Appeal Br. 4-5; Reply Br. 2-3.", + "The Appellant also argues that **those skilled in the art could not simply take the sealed upper and lower housings of Hwang and install the annular magnets of Gibson, as the housings would require complete redesign in order to make them concentric. \" Appeal Br. 4." + ], + "examiner_findings": [ + "Claims 1, 3, 4, 6-9, 18, and 20 are rejected under 35 U.S.C. 8 103(a) as unpatentable over Hwang, Gibson, and Giannini.", + "Claims 14-16 are rejected under 35 U.S.C. 5 103(a) as unpatentable over Hwang, Gibson, Giannini, and Denning.", + "The Examiner finds that Hwang teaches a valve assembly including an outer housing (i.e., \"the housing part that surrounds the rotating part 1\") and a single piece inner housing (i.e., element number 5). Final Act. 5-6; Hwang, Fig. 1.", + "The Examiner finds that Hwang fails to teach an inner housing extending within the outer housing. Final Act. 7.", + "The Examiner turns to Gibson's teachings to help remedy deficiency of Hwang's teachings. Id.", + "The Examiner finds: the Gibson reference teaches wherein a permanent-magnetic coupling in the form ofa pair of concentric, annular magnets, one inside (68) and one outside (69) an inverted cup-shaped sealing partition (40) wherein the outside magnets (69), which can be considered a solid rotor, are connected to a rotating shaft (82, 83) in order to eliminate magnetic axial forces (col. 1, lines 15[-]19). Id. see Gibson, Figs. 1, 4.", + "The Examiner determines: The substitution of one known element (the magnetic coupling in the form ofa a pair of concentric, annular magnets, one inside and one outside an inverted cup-shaped sealing partition (such that an inner housing extends between the pair of concentric annular magnets) as shown in the Gibson reference) for another (the magnetic coupling in the form of a face-to-face coupling as shown in the Hwang [] reference) would have been obvious to one of ordinary skill in the art at the time the invention was made since the substitution of the magnetic coupling in the form of a pair of concentric, annular magnets, one inside and one outside an inverted cup-shaped sealing partition shown in the Gibson reference would have yielded predictable results, namely, a permanent-magnetic coupling in the Hwang [] reference that eliminates magnetic axial forces.", + "It is considered that the inverted cup-shaped sealing partition located between the pair of concentric, annular magnets provides the inner housing extending within the outer housing. Final Act. 7 (emphasis added)." + ], + "ptab_opinion": [ + "Notably, the Examiner' s rejection substitutes Gibson's teaching of a magnetic coupling for Hwang's magnetic coupling. See id.", + "While the substitution affects the inner housing by apparently replacing or modifying Hwang's inner housing (see id.), the Examiner's rejection does not mention a modification of Hwang's outer housing.", + "Accordingly, it appears that the Examiner continues to rely on Hwang's housing part that surrounds rotating part 1 as corresponding with the claimed outer housing.", + "The Appellant's arguments are persuasive.", + "Although the Examiner determines that the simple substitution of Gibson's 's teaching of a magnetic coupling for Hwang's magnetic coupling results in \"the inner housing extending within the outer housing\" (supra), the Examiner fails to adequately establish on the record why this is so.", + "In this regard, we note that the Examiner does not identify an outer housing in Gibson's 's valve and fails to adequately explain on the record how the proposed simple substitution affects the positional relationship between Hwang's outer housing and inner housing as modified.", + "Rather, the Examiner concludes, without explanation, that \"the inner housing extend[s] within the outer housing. \"", + "Further, the Examiner fails to rely on Giannini and/or Denning in any manner that would remedy the deficiency in the Examiner's rejection as discussed above.", + "2 Thus, we do not sustain the Examiner's is rejections of independent claims 1, 18, and 20, and their dependent claims, as unpatentable over Hwang, Gibson, and Giannini, and dependent claims 14- 16 as unpatentable over Hwang, Gibson, Giannini, and Denning." + ] +} \ No newline at end of file diff --git a/opinion_split/2020004474_Mail_Decision.json b/opinion_split/2020004474_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..4407e158d2e69a13da2fb126e6fe0aba67bdafc6 --- /dev/null +++ b/opinion_split/2020004474_Mail_Decision.json @@ -0,0 +1,37 @@ +{ + "appellant_arguments": [ + "Appellant's primary argument is that Appellant's screening element can attract a magnetizable coating material when the screening element is made magnetic and repel the coating material when the screening element is demagnetized (Appeal Br. 8-9; Reply Br. 3).", + "Appellant contends that Bohnheio does not teach a magnetizable coating material (Appeal Br. 8; Reply Br. 2).", + "Appellant further submits that they have provided examples of magnetizable coatings, and no comparable coatings appear to be described in the prior art (Appeal Br. 9).", + "Appellant states that their screening element \"is not removable from a workpiece upon being demagnetized\" (Appeal Br. 12).", + "Appellant attempts to clarify that this is the Examiner'. s interpretation of the claims, and deems it incorrect (Reply Br. 2)." + ], + "examiner_findings": [ + "The Examiner relies upon Bohnheio to teach a method of coating a part of a surface of a workpiece (Non-Final Act. 3).", + "As set forth by the Examiner, Bohnheio teaches that the screening element can be magnetic (Non-Final Act. 4).", + "Both Yoo and Masami teach removing magnetic screening elements by demagnetizing (Non-Final Act. 3, 4).", + "Therefore, where claim 15 recites a step of *demagnetizing the screening element . \u00b7 . this limitation is considered to encompass the teachings of the applied prior art (Ans. 3)." + ], + "ptab_opinion": [ + "After considering the evidence presented in this appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error.", + "We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon.", + "We sustain the Examiner's rejections for the reasons expressed in the Non-Final Office Action and the Answer.", + "Appellant presents essentially the same argument for all 4 independent claims 15, 30, 32, and 34.", + "Consistent with the provisions of 37 C.F.R. $41.37(c)(1)(), the remaining claims on appeal will stand or fall with the independent claim from which they depend.", + "For the purposes of this appeal, we select claims 15 and 34 as representative, and decide the propriety ofthe rejection of claims 15, 17, 19-21, 24, 25, 30, 32, 34, and 35 based on claims 152 and 34.", + "It is well established that \"the PTO must give claims their broadest reasonable construction consistent with the specification. \u00b7 \u00b7 Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.", + "The Examiner reasonably interprets the coatings of Bohnheio to be iron based and, therefore, magnetizable. Id; see Bohnheio I 8.", + "Therefore, since the applied prior art refers to metal coatings, we consider such coatings to be **magnetizable'' and encompassed by the claim language.", + "Appellant's s assertion that the prior art does not teach the magnetizable coating being removed from the screen element by demagnetization is also not persuasive of reversible error (Appeal Br. 9).", + "Even if the claims explicitly required removal of the magnetizable coating, this removal would have naturally occurred upon demagnetizing the screening element of Bohnheio when using, for example, iron based magnetizable coatings which are admittedly known (Spec. 3:12-15 (discussing ferromagnetic powder coating described in EP 1,174,524 A2).", + "Here, the Examiner's determination that the demagnetization ofthe screening element would \"allow\" the coating to be released appears to provide a method that is the same or substantially similar to the claimed method.", + "Notably, Appellant's s independent claims do not positively recite that the magnetizable coating is removed.", + "Rather, the screening element is demagnetized \"to allow\" such removal.", + "The Examiner has not reversibly erred by pointing to teachings in the applied prior art of the screening element being attached to the work surface by being magnetized (Non-Final Act. 3, 4).", + "Rather, these teachings support the Examiner's determination that the screening element of the prior art is demagnetized after applying the coating material to meet acknowledged are taught by the prior art.", + "these limitations in the claims.", + "Whether the demagnetization is reported to allow the removal of the screening element from the workpiece surface, or the removal of the coating material from the screening element, the demagnetization step is the same.", + "Thus, Appellant's arguments are not persuasive of reversible error in the Examiner'. s rejection.", + "Accordingly, we sustain the Examiner's s rejection of independent claims 15, 30, 32, and 34, as well as all claims dependent thereon." + ] +} \ No newline at end of file diff --git a/opinion_split/2020004691_Mail_Decision.json b/opinion_split/2020004691_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..1eb8b18bdecef0159cf3ce74985ef1425bf03d7a --- /dev/null +++ b/opinion_split/2020004691_Mail_Decision.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellant maintains that triggering a notification (based on location) to complete a task does not correspond to the claim 1 limitation requiring \"a prompt to check-in the registered game participants to a game-point location . \u00b7 \u00b7 to initiate a quest of the geo-location quest game. Reply Br. 4.", + "Appellant points out that the Examiner identifies an exemplary task in Frederick as \"a prompt to go to the nearest grocery shop, and asserts that such a task is not a prompt to check in registered game participants. Id." + ], + "examiner_findings": [ + "REJECTIONS The Examiner rejects: (i) claims 1-4, 9-14, 19-24, and 29-32 under 35 U.S.C. S 103 as being unpatentable over Ackley (US 2008/0039203 A1, published Feb. 14, 2008)) in view of Frederick (US 2013/0262203 A1, published Oct. 3, 2013) and Thomas (US 2015/0141149 A1, published May 21, 2015); (ii) claims 5, 7, 15, 17, 25, and 27 under 35 U.S.C. 8 103 as being unpatentable over Ackley in view ofFrederick, Thomas, and Wrappe (US 2008/0280624 A1, published Nov. 13, 2008); (iii) claims 6, 16, and 26 under 35 U.S.C. 8 103 as being unpatentable over Ackley in view of Frederick, Thomas, Wrappe, and Peck (US 2014/0155156 A1, published June 5, 2014); (iv) claims 8, 18, and 28 under 35 U.S.C. 103 as being unpatentable over Ackley in view of Frederick, Thomas, and \"Coolest Free Scavenger Hunt Ideas for Adults and Teens, appearing at http://www .coolest- partes.con/Ike-scavenger-hant-ideashond (retrieved using Wayback Machine, retrieval date undetermined) (hereafter \"Scavenger Hunt\"); and (v) claim 33 under 35 U.S.C. 8 103 as being unpatentable over Ackley in view of Frederick, Thomas, and Bleecher Snyder (US 201 2015/0094080 A1, published Apr. 2, 2015).", + "The Examiner relies on Ackley as teaching several of the steps recited in claim 1, but that Ackley does not disclose presenting \"a prompt to check- in the registered game participants to a game-point location associated with at least one of the plurality of beacon devices to initiate a quest of the geo- location quest game, \" and then responsive to a response to the prompt, receiving instructions that initiate the quest by allowing user devices of game participants to receive quest tasks. Final Act. 2-3.", + "The Examiner relies on Frederick as teaching these features, as will be discussed infra, and concludes that it would have been obvious to modify Ackley in view of Frederick in order to make the quest game more challenging and intriguing. Id. at 3-4.", + "The Examiner finds that the combination of Ackley and Frederick does not specifically disclose tracking progress of registered game participants toward completing a first task of a plurality of different tasks, and relies on Thomas to provide this teaching. Id. at 4-5.", + "The Examiner concludes that it would have been obvious to modify the Ackley/Frederick method to include progress tracking in order to apprise users of their progress and to aid in organizing the game. Id. at 5.", + "The Examiner's findings as to the Frederick disclosure identify Figure 4D, its elements 438, 440, 441, and 442, and paragraphs [0041]-[0043] and [0063]-[0066], as evidencing the presenting of a prompt to check in to a game-point location to initiate a quest of a geo-location game. Final Act. 3.", + "As further explained by the Examiner, paragraph [0063], in particular, discloses a routine in which a user may receive a dynamic notification that may be based on the user's location, and that the notification may advise the user to complete a task, with examples of a task being to check in at a particular location, or to play a game, as described in Figure 4D. Ans. 16.", + "According to the Examiner, it would be understood from Frederick that a location-based notification may be sent, and \"the notification may include checking-in to a particular location.", + "Thus, Frederick discloses a prompt to check-in the registered game participants. Id. at 16-17." + ], + "ptab_opinion": [ + "Appellant's arguments fail to acknowledge that another exemplary task disclosed in Frederick, and mentioned by the Examiner, is to \"check-in at a particular location. \" See Ans. 16.", + "Nonetheless, even with the disclosure that the task prompted in Frederick may be to check in at a location, the Examiner has not established how that check-in, which appears to complete and end the task, has the effect of initiating a quest of a geo-location quest game, as claimed, nor the ensuing receiving of quest tasks by registered game participants who have checked-in, as also required.", + "Frederick mentions that an exemplary task may be the playing of a game, but that appears to be an alternative separate and apart from any check-in task. Frederick I 63.", + "The Examiner does not adequately explain how Frederick might be interpreted as disclosing a prompt to check in that results in an initiation of a geo-location quest game, or provide a claim construction analysis better evidencing that Frederick meets the claim limitations.", + "We note briefly that, although Appellant presents arguments as to Thomas not disclosing the tracking of progress of game participants toward completing a first of a plurality of tasks (see App. Br. 10-16; Reply Br. 5- 8), the general teaching of Thomas to track progress toward completion of a quest is seen as buttressing and augmenting the teaching of tracking of progress of plural tasks (stages) already disclosed in Ackley. See, e.g., Ackley I 25.", + "For the reasons discussed above, we do not sustain the rejection of claim 1 as being unpatentable over Ackley, Frederick, and Thomas.", + "Accordingly, the rejection is not sustained for those claims as well.", + "Claims 2-4, 9, 10, 12-14, 19, 20, 22-24, and 29-32 each depend from one of claims 1, 11, and 21, and the rejection is also not sustained as to these claims.", + "The Examiner does not rely on Wrappe in any manner that remedies the deficiency of the combination of Ackley, Frederick, and Thomas discussed above.", + "The rejection is not sustained.", + "The Examiner does not rely on Wrappe and P Peck in any manner that remedies the deficiency ofthe combination of Ackley, Frederick, and Thomas discussed above.", + "The rejection is not sustained.", + "The Examiner does not rely on Scavenger Hunt in any manner that remedies the deficiency ofthe combination of Ackley, Frederick, and Thomas discussed above.", + "The rejection is not sustained.", + "The Examiner does not rely on Bleecher Snyder in any manner that remedies the deficiency ofthe combination of Ackley, Frederick, and Thomas discussed above.", + "The rejection is not sustained." + ] +} \ No newline at end of file diff --git a/opinion_split/2020005432_Mail_Decision.json b/opinion_split/2020005432_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..02440a49238b9f6fb22bd378cc4c7c57f246a420 --- /dev/null +++ b/opinion_split/2020005432_Mail_Decision.json @@ -0,0 +1,58 @@ +{ + "appellant_arguments": [ + "Appellant argues the Examiner's first obviousness rejection of claim 1 is in error, because *there is no incentive or motivation to modify Eros as suggested.\" Appeal Br. 6.", + "P Particularly, Appellant contends \"Eros notes that its bracelet can be worn on the ankle, \" and *Eros does not describe any system where any data, or messages, are received by the device. \" Id.", + "Therefore, according to Appellant, \"a display offers no benefit to the device of Eros\" and Eros's *device would have to be changed significantly to be able to receive and display messages.\" Id.", + "Appellant states the Examiner's obviousness rejection of claim 3 is in error, because \"Claim 3 further requires a breath analyzer, \" and the \"Examiner has failed to demonstrate how the breath analyzer can be implemented into Eros.\" Appeal Br. 7.", + "Appellant argues the Examiner's second obviousness rejection of claim 1 is in error, because *Kozlay discloses getting continuous updates, \"(Reply Br. 3) and *[a]s such there is no benefit or incentive in modifying Kozlay, which provides continuous updates, to only providing updates when requested in view of Eros. Appeal Br. 8.", + "First, Appellant argues the Examiner's obviousness rejection of claim 14 is in error, because \"Kozlay teaches away from the modification proposed. \" Appeal Br. 9.", + "Particularly, Appellant contends Kozlay describes that using a tethered device, such as a wearable band, *offers less operational flexibility and more restrictive \u00b7 \u00b7 \u00b7\u00b7\u00b7 \u00b7 operations.\" Id. (quoting Kozlay I 11).", + "Second, Appellant argues the Examiner's obviousness rejection of claim 14 is in error, because the \"Examiner has not suggested what role the wearable monitoring band would play in Kozlay. \" Appeal Br. 10.", + "Particularly, Appellant contends \"Kozlay already teaches a fingerprint sensor and location identification features,\" \" and questions \"[h]ow would this additional monitoring band integrate into the system, and what role would it play?\" Id.", + "Appellant argues the Examiner's errs in rejecting 15 and 16 for the same reasons provided for claim 14. See Appeal Br. 10." + ], + "examiner_findings": [ + "Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. \uc6a9 103 as being unpatentable over Eros in view of Vardi. Final Act. 4", + "Claim 3 is rejected under 35 U.S.C. \uc6a9 103 as being unpatentable over Eros, Vardi, and Buck. Final Act. 5.", + "Claim 1 is rejected under 35 U.S.C. \uc6a9 103 as being unpatentable over Kozlay in view of Eros. Final Act. 6.2", + "Claims 13-17 are rejected under 35 U.S.C. 5 103 as being unpatentable over Kozlay, Eros, and Vardi. Final Act. 7", + "The Examiner finds, \"it would have been obvious to the skilled artisan to pursue the known options for querying, sending, and receiving data regarding a mobile device (as shown by Eros) that were within his/her technical grasp[]. \" Ans. 14.", + "Rather, the Examiner finds the teachings of Eros would be included in Kozlay, by an ordinarily skilled artisan. See Final Act. 6.", + "Thus, the Examiner's combination would be able to both receive updates continuously and on request. See id.; : Kozlay I 43 (\"probation release supervisory features which can be adjusted *on the fly' in response to changing circumstances\").", + "The Examiner finds **Vardi discloses a wearable monitoring band for communicating with a cellular device (column 11, lines 10-27), \" and \"it would have been obvious to the skilled artisan to modify the invention of Kozlay to include a wearable monitoring band so that the device could be attached to the individual and not easily lost, misplaced, or forgotten.\" Final Act. 7; see Ans. 16." + ], + "ptab_opinion": [ + "We have reviewed the Examiner's rejections in light of Appellant's arguments.", + "Arguments Appellant could have made but chose not to make are deemed to be waived. See 37 C.F.R. $41.37(c)(1)().", + "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 consistent with our analysis below.", + "We add the following primarily for emphasis.", + "We are not persuaded the Examiner errs.", + "First, Eros discloses the \"bracelet is secured to the wrist or to the ankle. \" Eros, Abstract (emphasis added).", + "Appellant does not challenge the Examiner's reliance on Eros's wrist bracelet teaching. See Final Act. 2.", + "Second, Eros, as cited by the Examiner, teaches \"a step is provided of receiving, by bracelet 1, a verification signal 42 by a central unit. \" Eros I 50; see also Eros abstract (\"When requested, the individual that wears the bracelet on a first arm receives a verification signal. \"); Final Act. 4; Ans. 11.", + "Thus, Appellant's argument--that Eros's device does not receive data--mischaracterizes the teachings of the reference, and fails to persuade us that one of ordinary skill would not modify Eros with Vardi's display teachings. See Appeal Br. 6; Final Act. 4; Vardi Fig. 1.", + "Accordingly, we do not find the Examiner errs in finding the limitations of claim 1 to be obvious in view of the combined teachings of Eros and Vardi. See Ans. 11.", + "Accordingly, we are not persuaded the Examiner errs in finding the limitations of claim 1 to be obvious in view of the combined teachings of Eros and Vardi.", + "Appellant does not persuade us of Examiner error.", + "Appellant's contention is essentially a bare assertion that the Examiner has not provided a prima facie case of obviousness, which is not sufficient to rise to the level of a substantive argument. See, e.g, In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 201 1) (\"[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. \").", + "Further, to the extent Appellant presents a substantive argument with respect to claim 3, we find this argument appears to presume a requirement for the bodily incorporation of Buck's s breath analyzer into the system of Eros. See Appeal Br. 7.", + "Such bodily incorporation is not required. See, e.g., Lear Siegler, Inc. V. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984) (\"Neither is the practitioner in reading the Avrea patent disclosure compelled to adopt every single aspect of its teaching without the exercise of independentjudgment. \").", + "Here, we find the Examiner has presented findings and analysis sufficient to justify the legal conclusion of obviousness, as we agree with the Examiner that one of ordinary skill would exercise their independentjudgment in order to combine known breathalyzer teachings (as evidenced by Buck) in the system of Eros. See Ans. 12; Final Act. 5; Buck 6:10-18 (\"measuring for the presence of alcohol and/or other drugs present in human subject 110 may be included in some embodiments of bracelet monitor\").", + "Accordingly, we are not persuaded the Examiner errs in finding the limitations of claim 3 to be obvious in view of the combined teachings of Eros, Vardi, and Buck.", + "We are not persuaded the Examiner* s second obvious rejection is in error.", + "We agree, as one of ordinary skill would have found it obvious to apply Eros's requested updates, as a predictable variation, to the system of Kozlay. See KSR Int 'I Co. V. Teleflex, Inc., 550 U.S. 398, 417 (2007) (\"If a person of ordinary skill can implement a predictable variation, 9 103 likely bars its patentability. \").", + "Moreover, Appellant's argument mischaracterizes the Examiner's rejection--the Examiner does not find that the combination of art would only provide updates when requested. Contra Appeal Br. 8.", + "Accordingly, we do not find the Examiner errs in finding the limitations of claim 1 to be obvious in view of the combined teachings of Kozlay and Eros. See Ans. 14.", + "We are not persuaded that Kozlay teaches away from the Examiner's combination.", + "\"A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. \" In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).", + "Kozlay states that the tethered device of the prior art--although appearing to be somewhat inferior--has \"merit and utility for some applications.' \" Kozlay I 11; Ans. 15, 16.", + "Kozlay, accordingly, does not \"discourage the solution claimed.\" In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).", + "Rather, we agree with the Examiner that the **skilled artisan would have had good reason to try providing a physical tether/wearable band in the invention of Kozlay when it was determined to be useful by the artisan. *, Ans. 16; Final Act. 7.", + "We are not persuaded the Examiner's rejection is in error.", + "We find the Examiner has presented a prima facie case of obviousness.", + "Appellant's argument provides a general allegation that the rejection is insufficient, without evidence or reasoning to show the Examiner errs.", + "Accordingly, we are not persuaded of error in the obviousness rejection of claim 14.", + "We sustain the Examiner* s rejection of claim 14.", + "Accordingly, we sustain the Examiner's rejection of claims 15 and 16 for the same reasons discussed above." + ] +} \ No newline at end of file diff --git a/opinion_split/2020005472_Mail_rehearing_decision.json b/opinion_split/2020005472_Mail_rehearing_decision.json new file mode 100644 index 0000000000000000000000000000000000000000..522a1e7dedc7ec7c29788a1fa0fe9d31e5913c38 --- /dev/null +++ b/opinion_split/2020005472_Mail_rehearing_decision.json @@ -0,0 +1,39 @@ +{ + "appellant_arguments": [ + "The Request applies the analysis in Gree, Inc. V. Supercell OY, PGR2018-00008, 2019 WL 8047 (PTAB Jan. 2, 2019) to the instant application.", + "Appellant relies on this case as support for its argument that we erred in determining what the claims are directed to.", + "Specifically, Appellant argues that there must be a correlation between the characterization of the abstract idea allegedly recited and the actual text recited in the claims. (Request 15).", + "As such, Appellant argues that the Examiner and the Board erred when characterizing the abstract idea recited in the instant claims as managing a health record.", + "Appellant also argues that the displaying step is a recitation in addition to any abstract idea recited and must be treated as such under step 2B of the Alice analysis.", + "Appellant argues that we erred because there is no evidence that the displaying step is well-understood, conventional and routine. (Request 3, 6).", + "Appellant argues that the displaying step provides a specific improvement over prior art systems that results in an improved user interface and presents a new technique for analyzing data contained in a medical record. (Appeal Br. 18, Request 18).", + "Appellant argues that because the displaying step is not insignificant extra solution activity and is not part of the abstract idea, we erred by not making a determination that the displaying step was well-understood, conventional and routine as required by step 2B of the Alice analysis." + ], + "examiner_findings": [ + "We note that the Examiner made the determination that the claims recite a certain method of organizing human activity e.g. managing a health record, in the Final Action. (Final Act. 4)." + ], + "ptab_opinion": [ + "Appellant filed a Request for Rehearing (\"Request\"), pursuant to 37 C.F.R. $ 41.52, on March 1, 2021, seeking reconsideration of our Decision on Appeal mailed Dec. 30, 2020 (\"Decision\"), in which we affirmed the Examiner's s rejection of claims under 35 U.S.C. $ 101 as directed to an abstract idea without significantly more.", + "We have jurisdiction over the Request under 35 U.S.C. 5 6(b).", + "DISCUSSION We note at the outset that a Request for Rehearing *must state with particularity the points believed to have been misapprehended or overlooked by the Board.\" 37 C.F.R. $ 41.52(a).", + "A Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief, filed April 13, 2020 (\"Appeal Brief\"), or in the Reply Brief, filed July 20, 2020 (\"Reply Brief\").", + "Neither is it an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked.", + "Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs also are not permitted except in the limited circumstances set forth in 46 41.52(a)(2) through (a)(4). Id.", + "To the extent the Appellant presents supplemental or new arguments in the Request, those arguments are untimely and, as such, will not be considered except where the arguments are based on a recent relevant decision of either this Board or a federal court, or on an allegation that the Board's decision contains an undesignated new ground of rejection. See id.", + "However, Appellant did not make this argument in the Appeal Brief.", + "Therefore, we will not address this argument because it is presented for the first time in the Request and, as we stated above, new arguments are not considered in the Request for Rehearing.", + "In any case, the decision in PGR2018-00008 is not precedential and thus not binding on this panel of the Board.", + "We do not agree that we erred in determining that the displaying step is a recitation of insignificant extra-solution activity.", + "As we stated on page 12 of the Decision, the displaying step recites insignificant or token activity because the displaying here merely presents the results of the abstract steps recited in the claim.", + "See Bilski V. Kappos, 561 U.S. 593, 610-11 (2010) (\"Flook [i.e., Parker V. Flook, 437 U.S. 584 (1978)] stands for the proposition that the prohibition against patenting abstract ideas `cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding finsignificant post-solution activity. \") (quoting Diamond V. Diehr, 450 U.S. 175, 191-92 (1981)).", + "See also 2019 Revised Guidance, 84 Fed. Reg. 55 n.31.", + "However, there is no indication in the claims that the displaying step requires any specialized computer or inventive computer components.", + "In fact, the Specification indicates just the opposite by disclosing that computing devices used may be generic devices with generic (unimproved interfaces). (Spec. I 50).", + "Instead, any improvement is to the abstract idea of managing health records.", + "See Elec. Power Grp., LLC V. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (gathering, sending, monitoring, analyzing, selecting, and presenting information does not transform the abstract process into a patent-eligible invention); Trading Techs. Int 'I, Inc. V. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (data gathering and displaying are well-understood, routine, and conventional activities); OIP Techs., Inc. V. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite **well-understood, routine conventional activit[ies],' either by requiring conventional computer activities or routine data-gathering steps'' (citation omitted) (alteration in original)).", + "Although Appellant may be correct that the claims recite a new technique for analyzing data, this would be an improvement to the abstract idea of managing a health record, not an improvement to the interface on which it is displayed or how the medical health record is displayed.", + "However, we made the determination that the displaying step is generic and conventional on page 9 of the Decision.", + "In addition, there is ample evidence of record that the interface on which the information is displayed is well- understood, conventional and routine because the Specification itself discloses that the interface is an unimproved interface on a generic computing device.", + "In addition, simply appending well-understood, routine and conventional activities previously known in the industry, such as displaying data, is indicative of an inventive concept not being present. See Guidance 84 Fed. Reg. at 56." + ] +} \ No newline at end of file diff --git a/opinion_split/2020005668_Mail_Decision.json b/opinion_split/2020005668_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..60b4c7a3818ad80aec1f68ee57b54bb7073199e0 --- /dev/null +++ b/opinion_split/2020005668_Mail_Decision.json @@ -0,0 +1,42 @@ +{ + "appellant_arguments": [ + "Appellant separately argues the patentability of claims 1 and 16. Appeal Br. 8-14.", + "Appellant's arguments focus on claim I's requirements that the battery pack housing defines a battery pack housing volume and a plurality of battery cells located within the battery pack housing defines a combined battery cell volume, and wherein a ratio of the combined battery cell volume to the battery pack housing volume is greater than 80%. Appeal Br. 16 (Claims App.).", + "Appellant argues that RoBkamp teaches a battery pack within a device housing, but fails to teach a plurality of battery cells defines a combined battery cell volume within a battery pack housing. Appeal Br. 9.", + "Appellant argues that even if RoBkamp teaches \"the battery pack housing defines a battery pack housing volume and the plurality of battery cells located within the battery pack housing defines a combined battery cell volume,\" RoBkamp fails to teach \"a ratio of the combined battery cell volume to the battery pack housing volume is greater than 80%.\" Id.", + "Appellant contends that teaching a sufficient volume within a housing to arrange components is not the same as teaching claim 1's ratio. Id.", + "Appellant argues that Urry does not cure the deficiency of RoBkamp. ld.", + "Appellant argues that Urry is incompatible with White because Urry fails to teach or suggest lithium-polymer battery cells. Id. at 10.", + "Appellant argues that White (Fig. 2) teaches a temperature sensor (50) is connected to the battery cells (20), but fails to teach the temperature sensor (50) being \"located between at least two adjacent ones of the cells,\" as required by claim 16. Appeal Br. 12.", + "Appellant does not present arguments contesting the Examiner's separate rejections of claims 6 and 21-24 under 35 U.S.C. 5 103." + ], + "examiner_findings": [ + "The Examiner maintains the following rejections on appeal (Ans. 3; Final Act. 3-13):", + "I. Claims 1, 3-5, 7-10, 12, 13, 16, 18-20, 25, and 26 are rejected under 35 U.S.C. $ 103 as unpatentable over White,3 Carrier,4 Kritzer,s Hirai,* and RoBkamp,7, as evidenced by Urry.", + "II. Claim 6 is rejected under 35 U.S.C. $ 103 as unpatentable over White, Carrier, Kritzer, Hirai, RoBkamp, Urry, and Johnson.", + "III. Claims 21 and 22 are rejected under 35 U.S.C. 5 103 as unpatentable over White, Carrier, Kritzer, Hirai, RoBkamp, Urry, and Han.", + "IV. Claim 24 is rejected under 35 U.S.C. $ 103 as unpatentable over White, Carrier, Kritzer, Hirai, RoBkamp, Urry, Han, and Barter.", + "The Examiner finds that White teaches claim I's lithium-polymer based battery pack that includes a plurality of battery cells located within the battery pack housing, but acknowledges that White fails to teach the battery pack housing defines a volume, the plurality of battery cells located within the battery pack housing defines a combined battery volume, and a ratio of the combined battery volume to the housing volume is greater than 80%. Final Act. 3, 6 (citing White 11 24, 25, 29, 30, Figs. 1, 3).", + "The Examiner finds that RoBkamp teaches a battery pack (15) housed in a compartment (16) within the device housing (9) of a power tool (1). Final Act. 6 (citing RoBkamp I 25).", + "The Examiner further finds that Urry teaches a battery pack (battery 10) including battery housing (12) and a plurality of battery cells (30) arranged parallel to each other in a compact relationship to closely abut the interior sides of the housing to fit compactly within the battery housing to maximize volume consumption of the housing so the internal volume of housing is fully utilized by batteries. Final Act. 7 (Urry ' 20, Figs. 1, 2).", + "Based on RoBkamp's and Urry's teachings, the Examiner finds that an ordinary skilled artisan would readily appreciate that the size/volume of the battery pack housing relative to the size/volume of the battery cells is a result-effective variable to arrange the battery pack in the housing in a space-saving manner. Final Act. 7.", + "The Examiner then determines that it would have been obvious for one of ordinary skill in the art modify White's battery pack so the battery pack housing defines a battery pack housing volume, the plurality of battery cells located within the battery pack housing defines a combined batter cell volume, and a ratio of the combined battery cell volume to the battery pack housing volume is greater than 80%. Final Act. 7.", + "The Examiner finds that White's paragraphs 26 and 28 teach claim 16's limitations. Final Act. 9." + ], + "ptab_opinion": [ + "After reviewing the evidence in light of the Appellant's and the Examiner's opposing positions, we determine that Appellant has not identified reversible error in the Examiner's rejections.", + "Thus, we sustain the Examiner' s rejections for the reasons expressed in the Final Office Action and the Answer.", + "We add the following primarily for emphasis.", + "The remaining rejected claims, claims 3-10, 12, 13, 18- 20, and 24-26, will stand or fall with claim 1. See 37 C.F.R. $ 41.37(c)(1)(v) (2019).", + "Appellant's arguments do not identify reversible error in the Examiner's 's rejection.", + "RoBkamp and Urry evince that it was well-known in the art to maximize volume of the battery housing to effectively use the volume of the housing. Ans. 16 (citing RoBkamp 11 7-8, Fig. 2; Urry I 20, Figs. 1-2); see In re Aller, 220 F.2d 454, 456 (CCPA 1955) (\"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. \").", + "Thus, we are not persuaded that the Examiner reversibly erred in concluding that it would have been obvious for one of ordinary skill in the art to optimize the volume in White's battery housing so the ratio of the combined battery cell volume to the battery pack housing volume is greater than 80%.", + "Appellant has not directed us to sufficient evidence of criticality, or otherwise persuaded us that the claimed ratio would not have been obvious to one of ordinary skill in the art.", + "In view of the foregoing, we sustain the obviousness rejection of claims 1, 3-5, 7-10, 12, 13, 18-20, 25, 26.", + "Appellant's argument does not identify reversible error in the Examiner's rejection.", + "Although White does not depict where the temperature sensor is located within the battery pack, as Appellant points out, White's teaching would have suggested to one of ordinary skill in the art to include a temperature sensor between at least two adjacent battery cells within White's battery pack.", + "Thus, we sustain the obviousness rejection of claim 16.", + "Consequently, we summarily sustain the separate reasons for rejecting those claims.", + "See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (\"If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection - the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. \"), and Manual of Patent Examining Procedure (MPEP) 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (\"If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer. \")." + ] +} \ No newline at end of file diff --git a/opinion_split/2020006642_Mail_Decision.json b/opinion_split/2020006642_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..36a4e5a27e8a7749361de89f8a8a35ddb3e86645 --- /dev/null +++ b/opinion_split/2020006642_Mail_Decision.json @@ -0,0 +1,33 @@ +{ + "appellant_arguments": [ + "The Appellant argues that the Examiner's obviousness rejection is based on an erroneous finding that the claim 1 recitation \"a second layer made of Cu\" reads on Butt's Cu alloy layer." + ], + "examiner_findings": [ + "The Examiner found that Butt discloses the claim 1 invention except for the claimed grain size, and relies on Cordero for a disclosure or suggestion of the grain size limitation.", + "Such second layer made of Cu encompasses second layer made of copper alloys, such as those used in Butt.", + "The rejection is not predicated on teaching or suggesting the claimed *Cu alloy* . . ." + ], + "ptab_opinion": [ + "The invention relates to a clad material comprising a stainless steel layer roll-bonded to a copper (Cu) layer or a Cu alloy layer. Spec. 1:11-15.", + "According to the Specification, the inventive clad material reduces or prevents reduced workability by significantly reducing or preventing a reduced elongation. Id. at 2:20-24.", + "The reduced elongation is achieved by using a grain size of 0.150 mm or less, such that the crystals of the Cu or Cu alloy are not excessively coarsened. ld. at 3:22-25.", + "Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A clad material comprising: a first layer made of stainless steel; and a second layer made of Cu or a Cu alloy and roll-bonded to the first layer and interatomic bonding by diffusion between the stainless steel and the Cu or the Cu alloy, wherein a grain size of the second layer made of Cu or the Cu alloy measured by a comparison method of JIS H 0501 is 0.075 mm or more and 0.150 mm or less and the Cu alloy contains 0.05 mass% or more and 0.15 mass% or less of Zr, or contains 4 ppm or more and 55 ppm or less of Ti, and 2 ppm or more and 12 ppm or less of s and 2 ppm or more and 30 ppm or less of O. Appeal Br. 21, App. A.", + "The Appellant's s arguments in support of patentability of the appealed claims are based on claim 1 limitations. See generally Appeal Br. 5-19.", + "The Examiner rejected claim 1 over the combination of Butt and Cordero. Non- Final Act. 3.", + "Butt discloses a composite article comprising a copper base alloy component bonded to an iron base alloy component. Butt 1:85-89.", + "The copper alloy contains 0.5 to 5.0% iron and/or 0.5 to 2.0% cobalt. Id. at 2:104-107.", + "The copper alloy may include other alloying substituents, such as 0.01-0.5% titanium. See id. at 2:108-115.", + "According to Butt, [b]y alloying iron and/or cobalt in small amounts[,] grain growth in the copper base alloy is substantially restricted during annealing at the temperature range required to soften the base alloy component after having formed the composite article.", + "By restricting grain growth the yield strength of the copper base alloy component can be increased to within at least 40% of the iron base component. Id. at 2:71-80.", + "See Reply Br. 11-13; Ans. 7", + "The Appellant's argument is persuasive of reversible error for the reasons discussed below.", + "During examination, claim terms are given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).", + "We determine that the Examiner applied an overly broad interpretation of \"layer made of Cu\" in rejecting the claims.", + "The Specification consistently uses \"Cu\" and *Cu alloy\" in the alternative.", + "Claim 1 explicitly requires that when the second layer is made of a Cu alloy, that alloy must contain specific components in specific amounts.", + "Although the ordinary artisan would have understood that a Cu layer might contain small amounts of elements as impurities (see, e.g., Butt 2:119-125), the Examiner has not provided sufficient evidence or explanation as to why the ordinary artisan would have understood the term \"Cu\" as encompassing Butt's Cu alloy containing 0.5 to 5.0% iron and/or 0.5 to 2.0% cobalt.", + "Cf CAE Screenplates, Inc. V. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (\"In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings. \").", + "Further, as argued by the Appellant, the Examiner also has not provided a reason why the ordinary artisan would have replaced Butt's Cu alloy with Cu or a Cu alloy as claimed. See Reply Br. 12-13.", + "Because the Appellant has identified reversible error in the Examiner's obviousness determination as to claim 1, we do not sustain the rejection of this claim or the rejections of claims 2-4 which depend from claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2020006793_Mail_Decision.json b/opinion_split/2020006793_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..f311d5c41995d9ba7ac773fe60de724e81e71a37 --- /dev/null +++ b/opinion_split/2020006793_Mail_Decision.json @@ -0,0 +1,30 @@ +{ + "appellant_arguments": [ + "The claims are directed to a composition including a polymer based on epoxide compounds. Spec. 1, lines 1-2.", + "Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A composition comprising components a), b) and c), wherein component a) comprises: 1) from 75 to 99.5% by weight of a polymer based on epoxide compounds, 2) from 0.5 to 25% by weight of at least one polyhydric alcohol and 3) optionally additives, wherein component b) comprises: 1) from 80 to 99% by weight ofa curing agent which is suitable for curing the polymer based on epoxide compounds, 2) from 1 to 20% by weight of a polycaprolactone- polysiloxane block copolymer, 3) optionally an accelerator, and 4) optionally additives, and wherein component c) comprises: optionally an accelerator.", + "Appellant argues that because the Dangayach composition already includes a toughening agent, one of ordinary skill in the art would not have had a reason to modify Dangayach' composition to include Karunakaran's 's poly(propylene oxide) polyol, which may have unknown synergistic effects on Dangayach* composition. Appeal Br. 12.", + "Likewise, Appellant argues that one of ordinary skill in the art would not have had a reason to modify Karunakaran 's composition to include Dangayach's polylactone- polysiloxane copolymer composition because it may have unknown synergistic effects on the composition. Id." + ], + "examiner_findings": [ + "Claims 1-13 stand rejected under 35 U.S.C. 9 103 as unpatentable over Dangayach3 in view of Karunakaran, as evidenced by Yamaguchi.", + "The Examiner finds that Dangayach teaches claim 1's composition except for component (a)(2), *from 0.5 to 25% by weight of at least one polyhydric alcohol. \" Final Act. 3.", + "The Examiner finds that Karunakaran, like Dangayach, teaches epoxy resin compositions that may be useful for encapsulation, such as electronic encapsulations. Ans. 8; Karunkaran, code (57), 7:30-40.", + "Specifically, the Examiner finds that Karunakaran teaches the use of polypropylene oxide polyols, such as polypropylene glycol, a polyhydric alcohol, as a toughening agent in epoxy compositions to enhance fracture toughness without sacrificing the glass transition temperature (Tg) of the final thermoset product. Final Act. 3 (citing Karunakaran, code (57), 7:30-40).", + "Based on Karunakaran's 's teaching, the Examiner finds that it would have been obvious to incorporate a polypropylene glycol in Dangayach' s polysiloxane-modified epoxy-based encapsulation composition. Final Act. 3." + ], + "ptab_opinion": [ + "After reviewing the evidence in light of the Appellant\\'s and the Examiner\\'s s opposing positions, we determine that Appellant has not identified reversible error in the Examiner\\'s rejection.", + "Thus, we sustain the Examiner\\'s rejection for the reasons well expressed in the Final Office Action and the Answer.", + "We add the following primarily for emphasis.", + "We find no merit in Appellant\\'s argument that the same or substantially the same claims in EP 3255103 B1 were found novel and non- obvious over Dangayach and thereby granted by the European P Patent Office (EPO). Appeal Br. 9; Reply Br. 2.", + "We are not bound by an earlier decision of the EPO.", + "In re Gyurik, 596 F.2d 1012, 1016 (CCPA 1979) (\"Each case is determined on its own merits; allowed claims in other applications or patents', are not considered in reviewing specific rejections of specific claims. \"); In re Giolito, 530 F.2d 397, 400 (CCP A 1976) (\"We reject appellants\\' argument that the instant claims are allowable because similar claims have been allowed in a patent. It is immaterial whether similar claims have been allowed to others. \").", + "Appellant\\'s arguments do not identify reversible error in the Examiner\\'s rejection.", + "Because both Dangayach polycaprolactone- polysiloxane block copolymer composition and Karunakaran\\'s poly(propylene oxide) polyol were known to provide improved toughness, using them together for that same purpose would have been obvious to one of ordinary skill in the art.", + "\"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose. \" In re Kerkhoven, 626F.2d 846, 850 (CCP A 1980).", + "\"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. \" KSR Int 'I Co. 12. Teleflex Inc., 550 U.S. 398, 416 (2007).", + "The data provided in Tables I and II in Appellant\\'s Specification does not weigh against the Examiner\\'s prima facie case of obviousness because, as Appellant admits, the results are not \"unexpected. \" Reply Br. 5.", + "\"[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art. \" In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).", + "In view of the foregoing, we sustain the Examiner\\'s rejection of claims 1-13 under 35 U.S.C. 6 103 over Dangayach and Karunakaran." + ] +} \ No newline at end of file diff --git a/opinion_split/2021000580_Mail_Decision.json b/opinion_split/2021000580_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..93d4f23e641a842fa27a19f73b5344880de2248a --- /dev/null +++ b/opinion_split/2021000580_Mail_Decision.json @@ -0,0 +1,144 @@ +{ + "appellant_arguments": [ + "Appellant's disclosure is directed to a method and system for assessing cognitive function using a portable touchscreen personal computing device, for self-administration of the test by the individual. Spec. I 11.", + "Appellant argues for the patent-eligibility of the claims subject to Rejection I, i.e., claims 1, 3, and 5-20, as a group. See Appeal Br. 10-14.", + "Addressing the issue of whether claim 1 is directed to an abstract idea, Appellant argues \"the claims are directed to an improvement in computer functionality\" because The claims (i) address a specific, technical problem: different response times, refresh rates, operating system performance and resolutions in computer assessment systems \u00b7 \u00b7 (ii) are directed to a technical improvement to solve that technical problem: an interactive touchscreen system to quantify cognitive function \u00b7 . \u00b7 and (iii) recite how to solve the technical problem. Appeal Br. 10 (citing Spec. 11 2, 10, 11) (emphasis omitted).", + "Thus, Appellant contends claim 1 is directed to an improvement to technology.", + "Appellant lists as technical problems the fact that different keyboards may have different response times, that traditional displays have different refresh' rates and resolutions, and that computer operating systems may affect data reliability. See id. at 10-12.", + "Appellant asserts that \"the interfaces of prior systems are inadequate.\" \" Id. at 10.", + "Appellant touts the recited use of a touch screen in claim 1 as something that improves \"the operation of computer functionality in a number of ways.\" ld. at 11.", + "Appellant also states that **accurately measuring reaction times from when an image is displayed to when the user reacts using a singular device, the *touchscreen, is a technical problem which cannot exist without the touchscreen technology.\" Id. at 12.", + "Appellant also argues that the process of quantifying cognitive function is a specific type of assessment that is \"rooted in technology.' ~ Appeal Br. 11.", + "According to Appellant, '`[u]nlike qualitative assessments, which could be determined based on feelings or intuition, a quantified assessment requires capturing and recording data, and \"\"[The solution to providing a quantified cognitive self-assessment disclosed by the Specification uses a Stouchscreen display of a portable computing device. *** Id.", + "Appellant rephrases this argument, stating that *accurately measuring reaction times from when an image is displayed to when the user reacts using a singular device, the *touchscreen, is a technical problem which cannot exist without the touchscreen technology.\" Id. at 12 (emphasis added).", + "Next, Appellant asserts that claim 1 recites \"at least two particular machines or items of manufacturer which are integral to the claim.\" Appeal Br. 12 (emphasis omitted).", + "Appellant first contends that *any accurate measurement will require some form of measuring device, a clock or chronometer-a tangible, non-abstract item,\" and **[h]uman beings cannot accurately measure reaction times solely in their mind, and would need some' physical tool (stopwatch, chronometer, sun dial, etc.) to measure the reaction.\" Id. at 13.", + "Second, Appellant poses the inquiry, \"how would one, *display, on a touch screen display of a portable computing device, an image, the image indicating to the user of the portable computing device to interact with the touchscreen display in a specified manner,' as recited in claim 1, without a touchscreen?\" Id.", + "Thus, on this second point, it appears Appellant contends that the touchscreen display itself amounts to a particular machine in the sense pertinent to patent eligibility.", + "In the Reply Brief, Appellant reiterates arguments from the Appeal Brief, and specifically, contends that [t]rying to accurately self-assess one's cognitive function, without technical means, is impossible.", + "If a user is sitting alone in a room, how are they supposed to determine if they are undergoing cognitive decline?", + "That is the problem being solved, and it is a 'technical' problem because it requires some form of physical, tangible device to make such a determination. Reply Br. 2.", + "Appellant also asserts that the step of normalization using data from a plurality of individuals solves a technical problem, namely, that different electronic devices may have different response times, refresh rates, operating system performance, and resolutions. Id.", + "As for the Examiner's finding that the claimed abstract idea is performable by humans, Appellant states, **[hJuman beings cannot display an image, receive tactile signals via the same surface the image was displayed on, then transmit data, all in our minds.\" ~ Reply Br. 3.", + "More generally, Appellant contends *the problem being solved is 'self-assessment,' and therefore multiple human beings could not solve the problem is question.", + "Indeed, the Appellant believes such a solution is impossible without a *portable computing device. \". Id. at 5.", + "Appellant argues for the patentability of the claims subject to Rejection II, i.e., claims 1, 3, 5-17, and 19-21, as a group. Appeal Br. 15- 20.", + "Appellant argues that the Examiner's proposed modification to Shephard \"would require modifying at least one of the references so as to be unsatisfactory for its intended purpose.\" Appeal Br. 16.", + "Specifically, Appellant asserts \"[a] first required element for John to perform the intended purpose disclosed is the use of the 'portable neurometric device,' which \" reads the electric potential of neurological activity in the patient's head.\" Id. (citing John 11 13, 27, 30, 33).", + "Appellant next asserts \"[a] second required element for John to perform the intended purpose disclosed are remote analysis modules which perform *at least one of various functions on the EEG data collected by the portable neurometric device.\" Id. (citing John 11 13-22, 40).", + "Third, Appellant argues that an intended purpose of John is that its system is intended to **operate equally on both conscious and unconscious individuals.' Id. (citing John ' 33).", + "Appellant concludes that these *intended purposes\" in John would be undermined by the Examiner's proposed combination of the teachings of Shephard and John. ld.", + "Expanding on this argument, Appellant sets forth a series of conclusions, stating, \"[flirst, the use of hand-held computing devices to take cognition tests (as required by Shepard) is incompatible with the requirement of John that user results/data be generated in both conscious and unconscious states, \"[sjecond, the remote analysis modules disclosed by John are specific to the analysis of an EEG, and are not, as disclosed, designed to interpret or analyze hand-held cognition test performance,\" and \"Ithird, John requires the use of a 'portable neurometric device,' which is a device which is attached to the user's is head to record brain activity.", + "Shepard requires the use of a hand-held computer device to take cognition tests.\" ~ Appeal Br. 16-17.", + "Appellant continues identifying aspects of the teachings of John, and contends the Examiner is improperly picking and choosing certain elements disclosed by John while ignoring other pertinent aspects of Shephard and John's disclosures. See id. at 17-20.", + "In support of Appellant's contention that the Examiner is improperly picking and choosing teachings from John, Appellant poses the inquiry:' Would one of ordinary skill in the art use EEG data analysis processes taught by John while ignoring (1) John's requirements that the data analysis processes work for both conscious and unconscious individuals, (2) John's explicit emphasis that the data analysis processes be used on EEG data, and (3) John's explicit description of a \"patient\" using a *neurometric device\" to capture the data, not a user performing a self-assessment? Id. at 19.", + "In reply, Appellant again contends the Examiner is ignoring *aspects of the prior art which would cause one of ordinary skill in the art to not combine the references,\" and is relying on **only those aspects of the references which, in the Examiner's opinion, disclose various features are cherry-picked from the references.\" Reply Br. 8; see also id. at 9 (stating \"John's requirements of (1) capturing data from an individual in both conscious and unconscious states, by (2) capturing EEG data, using (3) a device which is attached to the user's is head to record brain activity are improperly disregarded.\"). .\"", + "Appellant does not contest the Examiner's finding that John discloses the limitations in the last three clauses of claim 1, and which the Examiner finds are missing from Shephard. See Appeal Br. 15-20.", + "Appellant also does not contest the Examiner's specific rationales for the proposed modification to Shephard's method, stated on page 10 of the Final Office Action. See id." + ], + "examiner_findings": [ + "I. Claims 1, 3, and 5-20 are rejected under 35 U.S.C. S 101 as being directed to patent-ineligible subject matter.", + "II. Claims 1, 3, 5-17, and 19-21 are rejected under 35 U.S.C. $ 103(a) as unpatentable over Shephard and John.", + "The Examiner determines that claim 1 is \"directed to an abstract idea in the form of mental processes, in terms of a process that can be performed in the human mind or by a human using pen and paper.\" \" Final Act. 4.", + "The Examiner takes the position that the touchscreen and portable computing' device limitations in claim 1 are merely recitations relating to \"the extra- solution activity of data gathering and data display\" and do not require a *particular machine\" for the purposes of patent eligibility. Id. at 5, 15.", + "Specifically, the Examiner states, a computer, a portable touchscreen personal computing device, database, computer-readable-medium, eye tracking, and processing device are claimed, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering) and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. Final Act. 5.", + "Thus, the Examiner concludes that claim 1 fails to recite significantly more than the abstract idea.", + "The Examiner finds that the steps and structure recited in claim 1 that are not directed to a mental process are, alone or in combination, generic, routine, well-known, and conventional. See id. at 5-6 (citing Spec. II 152, 155, 156).", + "The Examiner responds that, in addition to reciting a mental process, the subject matter of claim 1 \"could also be characterized as a method of organizing human activity.\" \" Ans. 4, n.1.", + "The Examiner also states, **Appellant's claims are directed to collecting data, analyzing that data, and providing an output/display based on that analysis.\" \" ld. at 5.", + "The Examiner likens the subject matter of claim 1 to the subject matter held patent- ineligible in Electric Power Group, LLC V. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Id.", + "Further, the Examiner states, **Appellant's claimed invention is not, as Appellant would have it, 'rooted in technology' because Appellant['s] s] claimed abstract idea does not require any technology to perform and instead can be performed by human beings alone.' Id. at 7.", + "The Examiner states, *simply embodying an abstract idea on a generic computing device (`portable computing device\" with a *touchscreen*) does not necessarily render patent eligible subject matter when those devices are merely used for generic, well-known, and conventional purposes.\" ld. at 10.", + "The Examiner also finds that *any generic computing device\" would perform the time measurement function recited in claim 1, and the recited touchscreen merely performs data gathering. Id. at 12.", + "The Examiner finds that Shephard teaches many of the steps recited by claim 1, but relies on John to teach the limitations on the assessment computer requiring that it **normalizes the first cognitive assessment performance data\" and \"generates individual performance metrics. ++6 See Final Act. 7-10 (citing John 11 43-45, Fig. 2).", + "Additionally, the Examiner finds John teaches the limitations in the last \"wherein\" clause of claim 1. See id. at 9-10.", + "The Examiner determines that it would have been obvious to combine the above-noted teachings of Shephard and John in a way that satisfies all the requirements of claim 1 because *one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately; and one of ordinary skill in the art would have recognized that the results of the combination were predictable. \" Final Act. 10.", + "Aside from this reasoning, the Examiner concludes that it would have been obvious to have added the functionality taught by John in regard for having the performance metrics generated by a remote computer and based on normed performance metrics that were dynamically generated by the remote computer to the functionality otherwise taught by Shephard, in order to provide the most thorough and up to date dataset for comparison. Final Act. 10.", + "In reply, the Examiner characterizes Appellant's arguments as being based on a bodily incorporation of John's teachings in Shephard's method, and, therefore, unpersuasive. Ans. 13.", + "In this regard, the Examiner summarizes the relevance of John's teachings to the rejection of claim 1, stating: John is not relied upon for its teaching of capturing data from an individual in both conscious and unconscious states.", + "John is only relied upon for teaching that it is known in the prior art to normalize assessment data from a plurality of individuals, to generate metrics based on normed performance metrics, where those normed performance metrics are generated based on multiple individuals.", + "And Appellant does not allege that John fails to teach these claimed limitations. Id.", + "The Examiner continues to address Appellant's s arguments regarding the various teachings Appellant identifies, stating *John is not relied upon for its teaching of capturing EEG data\" (id. at 14), *John is not relied upon for its teaching of *a device which is attached to the user's head to record brain Activity\" (id. at 15), *John is not relied upon for its teaching of a *portable neurometric device\" .. (id. at 16).", + "The Examiner's response is summarized as follows: John is only relied upon in the Final [Office Action] for teaching that it is known in the prior art to normalize assessment data from a plurality of individuals, to generate metrics based on normed' performance metrics, where those normed performance metrics are generated based on multiple individuals.", + "And none of those teachings necessarily require the data to be captured from an individual in both conscious and unconscious states.", + "None of those teachings necessarily only pertain to EEG data.", + "None of those teachings necessarily require that that data is captured via \"a device which is attached to the user's head to record brain activity\".", + "Nor do any of those teachings require that the data be captured by a **portable neurometric device\". Ans. 17-18.", + "See Final Act. 10 (\"it would have been obvious to have added the functionality taught by John \u00b7 \u00b7 to the functionality otherwise taught by Shephard, in order to provide the most thorough and up to date dataset for comparison.\"). \")." + ], + "ptab_opinion": [ + "Claim 1, reproduced below, is illustrative of the claimed subject matter.", + "1. A method for assessing cognitive function before, after, and/or during exposure of a user to a chemical substance, the method comprising: displaying, on a touchscreen display of a portable computing device, an image, the image indicating to the user of the portable computing device to interact with the touchscreen display in a specified manner, wherein the user has had exposure to a known chemical substance, the exposure being at least one of before, after, or during the displaying of the image; receiving, at the portable computing device via the touchscreen display, tactile signals indicating the user is interacting with the touchscreen display in the specified manner; measuring, by the portable computing device, reaction times from when the image was displayed until the tactile signals were generated; transmitting, from the portable computing device to an assessment computer, first cognitive assessment performance data relating to the user, including responses to the image and the reaction times, wherein the assessment computer: normalizes the first cognitive assessment performance data using cognitive assessment performance data from a plurality of individuals defined by a plurality of demographic characteristics, resulting in normed performance metrics; generates individual performance metrics specific to the exposure for the user using at least a first cognitive baseline based on the normed performance metrics, and wherein the normed performance metrics relating to the plurality of individuals are dynamically generated by the assessment computer based on results collected from a plurality of portable touchscreen personal computing devices that enabled self-administration of at least one cognitive assessment test by the plurality of individuals. Replacement Claims App. 2.", + "The prior art relied upon by the Examiner is:", + "Name Reference Date Shephard US 2005/0053904 A1 Mar. 10. 2005 John US 2009/0312663 A1 Dec. 17. 2009", + "We select claim 1 as representative of the group, and claims 3 and 5-20 stand or fall with claim 1. 37 C.F.R. a 41.37(c)(1)().", + "For the following reasons, we sustain Rejection I.", + "An invention is patent-eligible if it claims a \"new and useful process, machine, manufacture, or composition of matter. \" 35 U.S.C. 9 101.", + "However, the Supreme Court has long interpreted 35 U.S.C. $ 101 to include implicit exceptions: \"`llaws of nature, natural phenomena, and abstract ideas\" are not patentable. E.g., Alice Corp. Pty. Ltd. V. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted).", + "In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. See Alice, 573 U.S. at 217-18 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).", + "In accordance with that framework, we first determine what concept the claim is \"directed to.\" Id. at 219 (\"On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. \"); see also Bilski V. Kappos, 561 U.S. 593, 611 (2010) (\"Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk. \").", + "Concepts determined to be abstract ideas, and, thus, patent-ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker V. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk V. Benson, 409 U.S. 63, 67 (1972)).", + "If the claim is *directed to\" an abstract idea, we turn to the second step of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an *inventive concept' sufficient to *transform* the claimed abstract idea into a patent- eligible application.\" \" Alice, 573 U.S. at 221 (internal citation omitted).", + "\"A claim that recites an abstract idea must include *additional features' to ensure *that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]. *** Id. (alteration in the original) (quoting Mayo, 566 U.S. at 77).", + "\"[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.\" ld.", + "In January of 2019, the PTO issued revised guidance on the application of $ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (hereinafter \"Revised Guidance\").", + "The Revised Guidance includes steps 1, 2A, and 2B.", + "Under Step 1, we consider whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.", + "Under Step 2A of the Revised Guidance, we look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (\"MPEP\") 66 2106.05(a)-(c), (e)- (h) (9th Ed., Rev. 08.2017, 2018)).", + "Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, in Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional\" in the field (see MPEP S 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Revised Guidance.", + "Claim 1 recites \"[a] method for assessing cognitive function before. \" Replacement Claims App. 2.", + "Therefore, the invention recited in claim 1 falls into the process category of subject matter.", + "Claim 19 recites similar' limitations in system format and its invention falls into the machine category of subject matter. ld. at 5.", + "Claim 1 recites, in part, *displaying, on a touchscreen display of a portable computing device, an image, the image indicating to the user of the portable computing device to interact with the touchscreen display in a specified manner.\" \" Replacement Claims App. 2 (emphasis added).", + "We agree with the Examiner that this step recites a method of organizing human activity, namely, it directs a user to perform an action so that a portable computing device may collect data about the user. See Ans. 4 n.1.", + "Claim 1 also recites \"the assessment computer: normalizes the first cognitive assessment performance data using cognitive assessment performance data from a plurality of individuals defined by a plurality of demographic characteristics, resulting in normed performance metrics.\" \" Replacement Claims App. 2 (emphasis added).", + "We agree with the Examiner that this step can be performed in the human mind, and, therefore, amounts to the recitation of a mental process. See Final Act. 4.", + "Although a portable computing device and assessment computer may enhance the speed and accuracy of the performance of these steps, this does not change the fact that the steps include a method of organizing human activity and a mental process.", + "Nor does the fact that claim 1 explicitly requires such steps to be performed on such hardware.", + "The recitation of computer components does not, by itself, establish that the claim does not recite mental steps. See, e.g., Versata Dev. Grp., Inc. V. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (\"Courts have examined claims that required the use of a computer and still found that the underlying, patent- ineligible invention could be performed via pen and paper or in a person's' Application 13/304,146 146 mind. \").", + "Also, \"lilf a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.\" Revised Guidance at 52 n.14 (citing Intellectual Ventures I LLC V. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).", + "In summary, we agree with the Examiner that claim 1 recites a mental process and a method of organizing human activity, and, further, that these steps are abstract ideas. See Final Act. 4-5.", + "Appellant's argument that claim 1 provides a technical solution to a technical problem does not apprise us of Examiner error.", + "The Specification, in the Background section, describes a problem to be solved by the invention as follows: Using traditional cognitive assessment methods, a pool of subjects representative of a population of interest is selected.", + "The statistically relevant sample of subjects is then tested to develop a normed performance metric.", + "Individuals taking the same test at a later time can then be compared to this historical pre-selected reference group.", + "Maintaining the currency of the normed performance metric is incredibly time-consuming and expensive because new sample groups must be repeatedly identified and tested with the results incorporated.", + "Identifying new sample groups is time consuming and expensive.", + "Also, the actual test administration is time consuming and expensive as well. Spec. I 5.", + "Further, the Specification states, \"[bjecause of the costs associated with maintaining currency of the data, the normed data sets are often outdated and do not reflect current societal norms.\" Id.", + "There are also drawbacks associated with traditional paper and pencil tests and computerized and internet-based tests.'", + "For example, paper and pencil tests generally must be individually administered by a trained clinician.", + "This makes the testing procedures inefficient and time consuming. Spec. 1 6 (emphasis added).", + "Consistent with a portion of Appellant's arguments, the Specification then explains that variations in the way traditional tests are administered, and differences amongst computer systems used to administer traditional tests (e.g., keyboard differences, refresh rates) may degrade the quality of the data obtained from the tests. See id. 11 7-10.", + "Appellant's solution to these problems does not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field.", + "Rather, Appellant's s claim recites an improvement to a cognitive assessment test that, as the Specification explains, can be performed via paper and pencil. See Spec. 11 4, 6.", + "Appellant's Specification also explains that some of the problems associated with administering a cognitive assessment test via pen and paper can be ameliorated by administering the test by generic computer or via the internet. See id. 11 4-10.", + "Appellant's claim 1 extends this improvement by administering a cognitive assessment test via the touchscreen of a portable computing device\" and analyzing the results via an \"assessment computer.", + "The use of electronic devices such as a portable computing device and assessment computer in claim 1 does result in an improvement to the functioning of these computers themselves, or another technology.", + "Rather, the portable computer and assessment computer merely perform functions Appellant admits were previously performed by pen and paper.4", + "Appellant's arguments regarding the inability of a person to self- assess cognitive function (Reply Br. 2), and that the method of claim 1 requires a clock and touchscreen (id. at 5) appear to rely on a false premise, specifically, the false premise that for the subject matter of a claim to be directed to a mental process, every limitation of the claim must be performed in the human mind (in particular, a single human mind).S", + "Appellant's implied legal standard is incorrect. See Intellectual Ventures I LLC, 838 F.3d at 1318 (\"with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper. \").", + "We also disagree with Appellant that these devices constitute *particular machines\" in the sense pertinent to 5 101.", + "Rather, we agree with the Examiner that *generic computers are very good at measuring time\" and *simply embodying an abstract idea on a generic computing device (`portable computing device' with a *touchscreen') does not necessarily render patent eligible subject matter when those devices are merely used for generic, well-known, and conventional purposes.\" Ans. 9, 10.", + "As for Appellant's contention that normalization of data solves a technical problem (Reply Br. 5), as discussed above, this function is an abstract idea, and therefore, a judicial exception.", + "As such, it does not integrate any of the judicial exceptions in claim 1 into a practical application in the sense required under Alice.", + "We agree with the Examiner that claim 1 does not require any additional elements that, when taken alone or in combination, recite significantly more than the above-noted judicial exceptions (see Final Act. 5), and Appellant makes no arguments traversing the Examiner's findings on this point (see Appeal Br. 10-14).", + "We have considered all of Appellant's s arguments in support of the patent-eligibility of claim 1, but find them unavailing.", + "Accordingly, we sustain the rejection of claims 1, 3, and 5-20 as being directed to patent- ineligible subject matter.", + "We select claim 1 as representative of the group, and claims 3, 5-17, and 19-21 stand or fall with claim 1. 37 C.F.R. $ 41.37(c)(1)(iv).", + "For the reasons discussed below, we sustain the Examiner's rejection of claim 1.", + "Instead, Appellant lists various aspects of Shephard and John's method and summarily concludes that these aspects demonstrate that the Examiner erred in rejecting claim 1.", + "We agree with the Examiner that Appellant's arguments rely on a bodily incorporation of John's method, i.e., Appellant's arguments are based on the assumption that, for the rejection of claim 1 to be proper, the additional aspects of John that Appellant identifies must be incorporated in the Examiner's proposed combination.", + "However, this assumption is incorrect.", + "\"It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.\" In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012); see also In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (\"A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment. \"); KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (obviousness inquiry must \"take account of the inferences and creative steps that a person of ordinary skill in the art would employ\").", + "Appellant does not provide any persuasive explanation as to why the aspects of John's invention identified by Appellant would interfere with the Examiner's proposed implementation of the teachings of John in Shephard's method.", + "Appellant also fails to provide any tenable reason as to why John's teachings regarding data capture during conscious or unconscious states, capturing EEG data, and the use of a device worn on the user's head must implemented in combination with the Examiner's proposed modification to Shephard's method.", + "Nor do we discern any.", + "We do not agree with Appellant that the Examiner is improperly picking and choosing, i.e., \"cherry-picking\" teachings from John. See Appeal Br. 17-20, Reply Br. 8-9.", + "Rather, we agree with the Examiner that the application of John's normalization teachings etc. would have been the combination of familiar elements according to known methods yielding no more than predictable results. See KSR, 550 U.S. at 415-416.", + "As for whether the Examiner'. s proposed combination of the teachings of Shephard and John would render \"at least one of the references\" unsatisfactory for its intended purpose (Appeal Br. 16), we note that the Examiner proposes to modify Shephard's method based on the teachings of John.", + "Thus, any argument that John would be rendered unsatisfactory for its intended use does not address the rejection as presented by the Examiner.", + "Regarding Shephard's intended purpose, as discussed above, Appellant does not identify any trenchant reason Shephard's method would be adversely affected by the Examiner's proposed modification, and Appellant's arguments rely on an unreasonable bodily incorporation of John's teachings.", + "Accordingly, we sustain the Examiner's rejection of claims 1, 3, 5-17, and 19-21 as unpatentable over Shephard and John." + ] +} \ No newline at end of file diff --git a/opinion_split/2021000687_Mail_rehearing_decision.json b/opinion_split/2021000687_Mail_rehearing_decision.json new file mode 100644 index 0000000000000000000000000000000000000000..ba5ea06f5f8998bc584a69368151c448c2991e93 --- /dev/null +++ b/opinion_split/2021000687_Mail_rehearing_decision.json @@ -0,0 +1,60 @@ +{ + "appellant_arguments": [ + "As Appellant's representative stated at Oral Hearing, *in order to get the link to work and actually authenticate all of [] that, you then have to supply the PIN; okay?", + "So when [Paulson] says the link key [is] transmitted in addition to the wireless identifier it's still not talking about the PIN\" (Oral Hearing Transcript 10:8-12).", + "In addition, Appellant's representative further stated at Oral Hearing that \"lilf what the [E]xaminer was doing here is trying to analogize a Bluetooth link key to a shared key well it just isn't, because it's not shared\" (Oral Hearing Transcript 11:14-16).", + "Notably, Appellant recognizes that devices may be *authenticated to each other using a *shared key' (typically a PIN)\" (Request 2), and points out that a shared key and PIN are equivalent (see Request 2).", + "Even Appellant recognizes that a shared key or PIN is used to authenticate a connecting device (see Oral Hearing Transcript 10:8-12; Request 2).", + "And, as noted in our Decision, *Appellant does not dispute that Gupta teaches creating a wireless connection a wireless identifier SSID and PIN\" (Decision 9, fn. 6)." + ], + "examiner_findings": [ + "In the Examiner's Answer, the Examiner relied on new findings with regard to Paulson, as discussed during the Oral Hearing (see Oral Hearing Transcript 9:11-16).", + "Specifically, the Examiner relied on an embodiment of Paulson for additional support, which was different from that originally relied upon, namely Paulson's Figures 9 and 12 (see col. 22, 1. 18-col. 30, 1. 19 (describing Figures 9 and 12) and portions of Paulson's columns 22, 23, 27, and 28, all of which concern the additional broadcast of an authentication key, in addition to a link key." + ], + "ptab_opinion": [ + "Appellant' has filed a Request for Rehearing under 37 C.F.R. $ 41.52 on December 22, 2021 (hereinafter, \"Request\"), from our Decision on Appeal mailed October 22, 2021 (hereinafter, *Decision*), wherein we affirmed the Examiner's rejection of claims 1-18, 20-24, and 26 (all of the pending claims) under 35 U.S.C. 103 over the combination of Paulson and Gupta (see Decision 1, 2, 10).", + "We grant the Rehearing Request to the extent that we consider the Appellant's arguments, but DENY the request to modify our Decision, because Appellant has neither shown any error of reasoning, or facts overlooked or misapprehended, in the Decision's 's affirmance of representative claim 1 (see Decision 4 (selecting claim 1 as representative of claims 1-18, 20-24, and 26 rejected over the combination of Paulson and Gupta)).", + "We maintain the affirmance of the obviousness rejection of claims 1-18, 20-24, and 26 for the reasons stated below.", + "STANDARD OF REVIEW A request for rehearing *must state with particularity the points believed to have been misapprehended or overlooked by the Board\" and *must specifically recite *the points of law or fact which appellant feels were overlooked or misapprehended by the Board.", + "Ex Parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) S 1214.03); see also 37 C.F.R. 9 41.52(a)(1).", + "A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision.", + "See 37 C.F.R. $ 41.52; see also Quist, 95 USPQ2d at 1141 (quoting MPEP $ 1214.03), and may not rehash arguments originally made in the Briefs, nor is it an opportunity to merely express disagreement with a decision.", + "The proper course for an Appellant dissatisfied with a Board's decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided.", + "See 35 U.S.C. 141, 145.", + "An argument presented for the first time in a Request but not advanced in the Appeal Brief or appropriately furnished in a Reply Brief (when one has been submitted) is not properly before the Board, at least in part, because the Examiner is not afforded a timely opportunity to respond and the Board is deprived of any such response that may have been supplied by the Examiner to the belatedly presented new argument.", + "See In re Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986).", + "\"A party cannot wait until after the Board has rendered an adverse decision and then present new arguments in a request for reconsideration.\"", + "\" Cooper V. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (citing Moller V. Harding, 214 USPQ 730, 731 (Bd. Pat. Int. 1982)).", + "\"Arguments not raised [in the briefs before the Board] \u00b7 \u00b7 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.\"", + "37 C.F.R. $ 41.52(a)(1).", + "In the instant case, Appellant has not specifically pointed out any points overlooked or misapprehended by the Board in its Decision, other than to argue that a link key (as taught by Paulson), is not the same as the *password, shared key or PIN\" (hereafter the \"shared key\") (Request 1), such as recited in claim 1.", + "We agree with Appellant's thorough descriptions of a link key as it applies to Bluetooth technology (Oral Hearing Transcript 10:22-11:20; Request 1-3).", + "A link key is not the same as a shared key or PIN.", + "Again, we agree on all counts.", + "Where we disagree with Appellant is on the issue of whether a password, shared key or PIN are equivalent to an authentication key (taught by Paulson), which is used to authenticate connecting devices in a Wi-Fi setup (as disclosed by Appellant (see Spec. I 41; see also Decision 3, and Gupta (see Gupta Abstract; 11 3, 6, 30, 34, 37, 48))).", + "Specifically, this was pointed out in our Decision on page 6: Paulson (i) suggests sending *other predetermined parameters\" along with the wireless identifier (see col. 23, 11. 7-8); (ii) discloses transmitting \"a wireless identifier and the authentication key in a[n] sonic Bluetooth code over the sonic carrier signal\" (col. 24, 11. 39-41); (iii) discloses *incorporate[ing] the authentication key as part of the sonic Bluetooth code transmitted . \u00b7 \u00b7 over the sonic carrier signal\" (col. 27, II. 61-63); and (iv) discloses that *an alternate implementation of the present invention may include the wireless identifier and authentication key in the sonic Bluetooth code transmitted\" (col. 28, 11. 36-39) in the sonic carrier signal 1212 (see col. 28, 1. 43).", + "Decision 6, fn. 3 (emphases added).", + "Although Appellant's representative contended at Oral Hearing that a link key is the same as an authentication key (see Oral Hearing Transcript 10:13-17), we determined in our Decision that this contention was not persuasive, not supported by record evidence, and in fact was contradicted by record evidence, such as Paulson (see Decision 8-9).", + "The plain and ordinary meaning of the term authentication key (in Paulson) encompasses any key that serves to authenticate.", + "It is the Board's s (and the Office's) practice to interpret references using the ordinary meaning of terminology.", + "Indeed, as we have explained, the **ordinary meaning of a claim term is not *the meaning of the term in the abstract.' \u00b7 \u00b7 Instead, *the **ordinary meaning\" of a claim term is its meaning to the ordinary artisan after reading the entire patent.", + "Eon Corp. IP Holdings LLC V. Silver SpringNetworks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016) (quoting Phillips V. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc)); see also Trustee of Columbia Univ. V. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (\"The only meaning that matters in claim construction is the meaning in the context of the patent. \").", + "This precedent is instructive here.", + "In the instant case, because (i) Paulson's 's authentication key serves to authenticate; and (ii) one of ordinary skill in the art would understand that a shared key, or PIN serve to authenticate, as supported by Appellant's recognition that a shared key or PIN is used to authenticate a connecting device (see Oral Hearing Transcript 10:8-12; Request 2), the \"password, shared key or PIN\" recited in claim 1 on appeal encompasses Paulson's authentication key.", + "Thus, Paulson's authentication key at least would have suggested to one of ordinary skill in the art the shared key or PIN recited in claim 1.", + "As a result, Appellant has not sufficiently shown that Paulson's authentication key does not teach or suggest the recited password, shared key, or PIN.", + "Therefore, we did not overlook or misapprehend the difference between a link key (disclosed by Paulson) and a shared key (taught by Paulson's authentication key and recited in Appellant's claim 1) or PIN (taught by Gupta and recited in Appellant's claim 1).", + "As a result, Appellant's Request for Rehearing has not shown that the Board's Decision overlooked or misapprehended any points of law or fact, and Appellant's Request is denied.", + "In the interest of compact prosecution, however, we will add the following.", + "Appellant, in the Request for Rehearing, misstates the issue at hand: \"The issue at hand is whether any of the prior art cited shows the sonic delivery of credentials of both categories (both 'Network ID' and *shared key\") to a device\" (Request 1).", + "As already discussed, Paulson teaches and suggests sending two credentials sonically.", + "Rather, the issue, as we stated in our Decision, is: Has Appellant shown that the Examiner erred in rejecting claims 1-18, 20-24, and 26 as being unpatentable under 103 over the combination of Paulson and Gupta, because the resultant combination fails to teach or suggest broadcasting a sonic tone, used for connecting to a wireless network, including both (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN, as recited in representative claim 12 Decision 5 (emphasis added).", + "Paulson discloses transmitting a network ID, wireless identifier, or MAC (see Paulson Abstract; col. 23, 1. 49; col. 25, 11. 10-12) and \"other predetermined parameters\" (Paulson col. 23, 11. 6-8), such as a link key and/or an authentication key (see Paulson Figs. 9-13), in a sonic signal to a device (see Paulson col. 5, II. 3-6; col. 6, 11. 16-22; col. 12, 1. 66-col. 13, 1. 2; col. 30, 11. 12-19).", + "Thus, Paulson teaches sonically sending a network ID along with at least one other piece of information in one sonic signal (see e.g., Paulson col. 24, 11. 38-42; col. 30, II. 12-19).", + "More specifically, Paulson teaches the \"other predetermined parameters\" (see Paulson col. 23, 1. 7-8) can be an authentication key used for authenticating the connection of the device (see generally Fig. 12, steps 1210, 1214, 1212; col. 24, 11. 39-41 (transmitting \"[a] wireless identifier and the authentication key in an sonic Bluetooth code over the sonic carrier signal\"); col. 27, II. 61-63 (*incorporateling] the authentication key as part of the sonic Bluetooth code transmitted \u00b7 \u00b7 over the sonic carrier signal\"); col. 28, 11. 36-43 (*an alternate implementation of the present invention may include the wireless identifier and authentication key in the sonic Bluetooth code transmitted\" in the sonic carrier signal 1212).", + "Gupta, though not needed in combination with Paulson to teach or suggest all of the claimed features of claim 1, also teaches authenticating a connection using a pairing code or PIN (see Gupta 11 6, 34, 37), or shared key or network key (see Gupta 11 6, 30), along with a network ID such as a network name or \"service set identifier (SSID)\" (Gupta I 30) or \"device identification\" (see Gupta I 34).", + "Accordingly, Appellant has not sufficiently shown, on this record, that the combination of Paulson and Gupta (or Paulson alone) fails to teach or suggest broadcasting a sonic tone, used for connecting to a wireless network, including both (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN.", + "Although we have considered the arguments raised by Appellant in the Request for Rehearing, Appellant has not identified that the Board has misapplied the relevant law or misapprehended Appellant's arguments.", + "Accordingly, Appellant's request for rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the decision." + ] +} \ No newline at end of file diff --git a/opinion_split/2021000942_Mail_Decision.json b/opinion_split/2021000942_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..add0e2cbaddf3c2420c90112048ad67e151e1f4b --- /dev/null +++ b/opinion_split/2021000942_Mail_Decision.json @@ -0,0 +1,117 @@ +{ + "appellant_arguments": [ + "Appellant argues that Yates, alone or in combination, fails to teach processing sensed engine inlet parameters to determine a surge fuel value. Appeal Br. 11-14, Reply Br. 4-5.", + "Instead, Appellant argues Yates merely describes that under certain conditions, accelerating an engine too fast can result in a surge. Appeal Br. 12-14.", + "Appellant further argues that although Yates describes a maximum desired fuel flow, there is no teaching as to how such a limit is determined based on sensed engine inlet parameters. Appeal Br. 12-14; Reply Br. 5.", + "In addition, because Yates does not teach determining a surge fuel value, Appellant asserts that Yates similarly fails to teach comparing the determined surge fuel value to a fuel command value. Appeal Br. 14-15; Reply Br. 5-6.", + "Regarding Stearns, Appellant asserts Stearns's sensors are used to sense compressor inlet parameters (e.g., pressure and temperature), not engine inlet parameters. Appeal Br. 16; Reply Br. 7-8.", + "Moreover, Appellant argues that an ordinarily skilled artisan would have been discouraged from combining Stearns with Yates because Yates teaches away from using additional sensors. Appeal Br. 16; Reply Br. 7.", + "Appellant advances similar arguments regarding the rejection of independent claim 16 as were presented regarding the rejection of independent claim 1. See Appeal Br. 17-23.", + "Similar to Appellant's argument regarding claim 1, Appellant asserts that Stearns teaches sensing compressor inlet parameters (i.e., temperature and pressure) rather than engine inlet parameters. Appeal Br. 24.", + "Appellant acknowledges that Yates describes *memory that stores information relating to values maximum or minimum desired fuel flow,' \" but fails to describe the memory as storing a look-up table of surge fuel values. Appeal Br. 25-26; Reply Br. 8.", + "Appellant further argues that the information stored in Yates's memory is *in the form of a rate of change with speed of a maximum or minimum desired fuel flow function at different engine speeds.\" \" Reply Br. 8.", + "Appellant asserts that McArthur fails to teach determining when the inlet guide vane position commands have reached a minimum bleed command of the inlet guide vane commands. Appeal Br. 26-27; Reply Br. 9.", + "Additionally, Appellant argues that Wagner \"has nothing whatsoever to do with inlet guide vane position commands.\" Appeal Br. 27; Reply Br. 9." + ], + "examiner_findings": [ + "1. Claims 1, 7, 8, 12, 15, 16, and 19 stand rejected under 35 U.S.C. 9 103 as being unpatentable over Yates (US 4,344,141; Aug. 10, 1982); Stearns et al. (US 3,527,051; Sept. 8, 1970) (\"Stearns\"); and McArthur et al. (US 5,117,625; June 2, 1992) (\"McArthur\"). Final Act. 2-12.", + "2. Claims 4, 11, and 18 stand rejected under 35 U.S.C. 5 103 as being unpatentable over Yates, Stearns, McArthur, and Wagner et al. (US 2013/0076120 A1; Mar. 28, 2013) (\"Wagner\"). Final Act. 12-16.", + "3. Claims 5, 13, and 20 stand rejected under 35 U.S.C. S 103 as being unpatentable over Yates, Stearns, McArthur, and Staroselsky et al. (US 2010/0296914 A1; Nov. 25, 2010) (\"Staroselsky). Final Act. 16-19.", + "4. Claims 6 and 14 stand rejected under 35 U.S.C. 9 103 as being unpatentable over Yates, Stearns, McArthur, Staroselsky, and Elsaesser et al. (US 4,060,980; Dec. 6, 1977) (\"Elsaesser\"). Final Act. 19-21.", + "In rejecting claim 1, the Examiner relies on the combined teachings of Yates, Stearns, and McArthur.", + "In response, the Examiner finds Yates teaches using a surge fuel limit as part of adjusting engine speeds and that the surge limit fuel flow changes for different temperatures and pressures. Ans. 22 (citing Yates, col. 5, 11. 9-13).", + "Additionally, the Examiner relies on Stearns's teaching of the surge limit as a function of inlet pressure and inlet temperature. Ans. 22-23 (citing Stearns, Fig. 3).", + "**Therefore, the combined invention uses the inlet temperature and pressure of Stearns in the system of Yates to determine the surge limits of Yates.\" Ans. 23.", + "As the Examiner explains, Stearns describes the engine (2) as comprising a compressor section (4), a burner (6), and a turbine section (8). See Ans. 24; see also Stearns, col. 4, 11. 35-40; Fig. 1.", + "As the Examiner explains, Yates's statement regarding using fewer inputs relates to the absence of fuel-flow and actuator position sensors. See Ans. 23 (citing Yates, col. 2, 11. 43-47, col. 5, II. 16-23); see also Yates, col. 1, II. 45-47.", + "In response, the Examiner finds that Y Yates teaches the memory storing a plurality of maximum fuel flows at different engine speeds. Ans. 24 (citing Yates, col. 1, II. 24-37).", + "Further, the Examiner finds that one of ordinary skill in the art would understand a plurality of maximum fuel flows at different engine speeds to be a table. Ans. 24.", + "In addition, the Examiner notes that Yates refers to determining the intermediate fuel flows *from the tables\" in stepping through the example of changing engine speed from NHs to NHm. See Ans. 24 (citing Yates, col. 5, II. 57-62).", + "As the Examiner explains, McArthur teaches adjusting the inlet guide vanes towards a closed position to prevent compressor surge. See Ans. 24; see also McArthur, col. 6, 11. 34-38, As discussed above, McArthur teaches a means for moving the inlet guide vanes between open, closed, and intermediate positions, sensing the position, and providing an indication of the sensed position. See McArthur, col. 3, II. 2-6.", + "Additionally, the Examiner finds Wagner teaches reducing electrical loads as a last resort in emergency conditions. Ans. 24-25 (citing Wagner I 25).", + "The Examiner explains that the occurrence of surge, even after the inlet guide vanes have been adjusted to their closed position, would constitute an emergency condition and cause a reduction in electrical loads, as taught by Wagner. Ans. 24-25." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Introduction Appellant's disclosed and claimed invention generally relates to \"avoiding compressor surge in gas turbine engines.\" Spec. I 1.", + "According to the Specification, gas turbine engines typically are designed such that the compressor has sufficient surge margin. Spec. I 3.", + "However, an issue is the *most gas turbine engines do not include systems to detect an impending surge or even if a compressor surge has occurred.\" Spec. I 3.", + "In a disclosed embodiment, a plurality of engine inlet parameters are sensed and processed to determine a surge fuel value. Spec. ' 6.", + "The surge fuel value indicates, based on the sensed engine inlet parameters, that if the fuel flow exceeds the surge fuel level, a compressor surge will likely occur. Spec. I 6.", + "Accordingly, if a fuel command value is greater than the surge fuel value, a protective action signal is generated. Spec. I 6.", + "The protective action signal may automatically trigger a reduction in engine load, or provide an indication for user action. Spec. I 20.", + "Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italies: 1. A compressor surge avoidance control method for a gas turbine engine, comprising the steps of: sensing a plurality of engine inlet parameters to thereby supply sensed engine inlet parameters; receiving, in a processor, a fuel command value; processing the sensed engine inlet parameters in the processor to determine a surge fuel value, wherein the surge fuel value is a fuel flow above which, for the sensed engine inlet parameters, a compressor surge will occur; comparing, in the processor, the surge fuel value and the fuel command value; and generating, in the processor, a protective action signal if the fuel command value exceeds the surge fuel value, wherein the step of generating the protective action signal comprises one or both of: generating an operator alert; and supplying inlet guide vane position commands to adjust inlet guide vane positions to cause a load reduction on the gas turbine engine.", + "The Examiner 's Rejections", + "ANALYSIS\" Claims 1, 5, 6, and 8", + "We begin our analysis with a brief review of these references.", + "Yates is generally directed to controlling fuel flow to a gas turbine engine to avoid surge and extinction conditions. Yates, col. 1, 11. 6-7, col. 3, 1. 60-col. 4, 1. 2.", + "Yates discloses that the control system does not require information regarding the flow of fuel to the engine, but instead uses the demanded engine speed and actual engine speed to determine a desired rate of change with time of the fuel flow to achieve the desired (i.e., demanded) engine speed while avoiding surge and extinction conditions. Yates, col. 1, 11. 24-44.", + "More particularly, Yates describes \"[the speed of a gas-turbine engine is a function of the ratio of fuel flow Wf to delivery pressure P3 of its high pressure compressor stage.\" \" Yates, col. 3, II. 5-7.", + "Figure 3 of Yates is illustrative and is reproduced below.", + "Fig.3. 102 100 Wf/P3 101 (WF/P3)M, M (wf/P3), 5 (Wf/P3)5 NHp NH NMS NHN NHM Figure 3 of Yates illustrates a graph showing the change in engine speed with a function of fuel flow. Yates, col. 2, II. 29-30.", + "As shown in Figure 3, the x-axis represents engine speed (NH) and the y-axis is the ratio of fuel flow to pressure of the engine (Wf/P3). Yates, col. 3, II. 18-22, col. 5, II. 6-8.", + "Yates discloses curve (100) shows the steady state condition in which the engine is operated at a constant speed. Yates, col. 5, 11. 8-9.", + "Yates also describes curve (101) as representing the limit below which extinction occurs. Yates, col. 5, 11. 9-11.", + "Further, Yates describes the family of curves (102) as *represent[ing] the limits above which surge will occur at various different values of such factors as ambient temperature or pressure.\" Yates, col. 5, 11. 11-13.", + "Yates discloses its system comprises memory for *storing information relating to values of a maximum or minimum desired fuel flow function at different speeds, the information being in the form of a rate of change with speed of a maximum or minimum desired fuel flow function at different engine speeds.\" Yates, col. 1, II. 29-35.", + "Yates also teaches that due to factors such as engine inertia and the time required to combust the fuel, a change in (Wf/P3) does not cause an immediate change in engine speed (NH). Yates, col. 5, II. 23-32.", + "Thus, Yates teaches that when a change in engine speed is requested, it is important that the ratio (Wf/P3) lies between curves (101) and (102). Yates, col. 5, II. 13-16.", + "In an exemplary scenario (with reference to Figure 3), Yates describes an engine operating at a constant speed (NHs), denoted at point (S) on curve (100). Yates, col. 5, 11. 37-39.", + "Y Yates describes a requested speed change to (NHm), which corresponds to ratio (Wf/P3)M on the y-axis. Yates, col. 5, 11. 39-42.", + "At engine speed (NHS), a fuel flow to pressure ratio (Wf/P3)m *would exceed the surge value\" defined by curve (102)--i.e., (Wf/P3) Yates, col. 5, II. 45-46 (emphasis added).", + "To avoid the surge that would otherwise result due to the lag between the change in (Wf/P3) and the change in engine speed (NH), Yates describes adjusting the ratio (Wf/P3) gradually \"so that the engine speed NH and the ratio Wf/P3 follow the path SLNM without crossing the surge line 102.\" Yates, col. 5, 11. 46-50.", + "Stearns generally relates to a fuel control system for gas turbine engines that uses *inlet air temperature\" and \"inlet air pressure\" to schedule acceleration of the engine within surge and temperature limits. Stearns, col. 1, II. 13-17, see also Stearns, col. 2, 11. 12-17 (describing inlet air temperature, inlet air pressure, and other parameters for scheduling acceleration of the engine within surge limits).", + "Stearns teaches that surge can be uniquely related to the identified parameters. Stearns, col. 2, II. 31-33.", + "Similar to Yates, Stearns describes it is known that fuel flow to the burner is scheduled as a function of WFP. Stearns, col. 1, 11. 46-47.", + "Figure 1 of Stearns is illustrative and is reproduced below.", + "FIG.1 www FUEL CONTROL -22 Figure 1 of Stearns shows a gas turbine engine (2) as well as the sensing lines of the fuel control system. Stearns, col. 4, II. 11-13.", + "More particularly, Figure 1 shows an engine (2) comprising a compressor section (4), combustion section (burner) (6), and turbine section (8). Stearns, col. 4, II. 35-40.", + "In addition to engine (2), Figure 1 illustrates a fuel control section (22) that senses, inter alia, the pressure and temperature at the compressor inlet via signal paths (36) and (38), respectively. Stearns, col. 4, 11. 60-64.", + "McArthur generally relates to an integrated bleed load compressor and turbine control system. See McArthur, Title.", + "In relevant part, McArthur teaches \"it is possible to operate such a gas turbine engine on the stable side of the surge line simply by varying the inlet guide vane geometry appropriate to bleed air flow allowing the turbine to be fueled only as required to meet the actual demand for power.\" McArthur, col. 2, II. 31-36.", + "McArthur also describes means for moving the inlet guide vanes between open, closed, and intermediate positions, sensing the position, and providing an indication of the sensed position. McArthur, col. 3, 11. 2-6.", + "McArthur further discloses in normal operation a control servo will progressively move the inlet guide vanes towards a closed position as bleed air flow is reduced to prevent compressor surge. McArthur, col. 6, 11. 34-38.", + "The test for obviousness is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).", + "Based on our review of the prior art, we determine the Examiner's findings are supported by a preponderance of evidence.", + "As discussed above, Yates teaches a family of curves representing the limit of the fuel flow, above which a surge will occur at various different values of ambient temperature and pressure. See Yates, col. 5, II. 9-13, Fig. 3 (102).", + "In addition to teaching the relationship between a surge fuel limit and inlet temperature and inlet pressure (see, e.g., Stearns, Fig. 3), as discussed above, Stearns teaches using temperature and pressure sensors to provide sensed inlet temperature and sensor signals, respectively. See Stearns, Fig. 1.", + "Moreover, we find Yates teaches comparing a maximum fuel level (i.e., the determined surge fuel level) to a demanded fuel level. See Yates, col. 1, 11. 49-53 (describing a first control means to control the engine when the demanded fuel flow exceeds a maximum fuel flow), col. 7, II. 36-39 (describing setting the maximum fuel flow to the surge limit); see also Ans. 23.", + "Regarding Appellant's argument that the sensors in Stearns are not sensing engine inlet readings (i.e., temperature and pressure), but rather compressor inlet readings, we are unpersuaded of error.", + "The Examiner finds, and we agree, \"[the compressor is the most upstream component of the engine, so that the compressor inlet parameters are also engine inlet parameters.\" Ans. 24.", + "We also find the Examiner's interpretation of Figure 2 of Stearns is consistent with Appellant's Specification and Figure 1 (illustrating a gas turbine engine (i.e., Auxiliary Power Unit) comprising a compressor (102), combustor (104), and turbine (106)).", + "As described in the Specification, the engine inlet parameters are supplied to surge avoidance logic via sensors. Spec. I 19.", + "Inlet air temperature sensor (124) *is configured to sense the temperature of the air at the compressor inlet\" and inlet air pressure sensor (126) *is configured to sense the pressure of the air at the compressor inlet.\" Spec. I 19.", + "In addition, we disagree with Appellant (see, e.g., Appeal Br. 19) that Yates teaches away from including engine (compressor) inlet sensors to determine surge fuel limits, as taught by Stearns.", + "As discussed above, Yates describes a control system for adjusting fuel flow based on a demanded engine speed and the actual engine speed. See Yates, col. 1, 11. 24-44.", + "Yates describes not using information regarding the flow of fuel to the engine. See Yates, col. 1, 11. 24-44.", + "Moreover, Yates does not explicitly discourage or discredit calculating surge limits using inlet temperature and pressure sensors.", + "See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (\"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. \").", + "Rather, Yates acknowledges that the surge limits vary based on ambient temperature and pressure. See Yates, col. 5, 11. 9-13.", + "As such, the ordinarily skilled artisan would not be discouraged from using information indicative of ambient temperature and pressure to better define the surge limits used in Yates.", + "For the reasons discussed supra, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's s rejection of independent claim 1.", + "For similar reasons, we also sustain the Examiner's s rejection of independent claim 8, which recites limitations commensurate in scope with claim 1 and was not argued separately. See Appeal Br. 11-17, see also 37 C.F.R. S 41.37(c)(1)().", + "In addition, we sustain the Examiner's rejections of claims 5 and 6, which depend directly or indirectly from claim 1 and were not argued separately. See 37 C.F.R. 41.37(c)(1)().", + "Claims 16 and 20", + "For similar reasons discussed regarding claim 1, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's rejection of independent claim 16 for similar reasons to those discussed regarding claim 1.", + "In addition, we sustain the Examiner's rejection of claim 20, which depends indirectly therefrom and was not argued separately. See 37 C.F.R. $ 41.37(c)(1)().", + "Claims 7 and 15", + "Claim 7 depends from claim 1 and recites *wherein the plurality of engine inlet parameters comprise engine inlet air temperature and engine inlet air pressure.\"", + "Claim 15, which depends from claim 8, recites limitations commensurate in scope to claim 7.", + "As discussed above with respect to claim 1, we are unpersuaded of error and agree with the Examiner that Stearns teaches sensing engine inlet parameters.", + "Accordingly, we sustain the Examiner's rejection of claims 7 and 15.", + "Claims 12 and 19", + "Claim 12 depends from claim 8 and recites in relevant part that the compressor avoidance system further comprises a memory in operable communication with the processor, \"the memory having stored therein a look-up table, the look-up table comprising a plurality of surge fuel values.", + "Claim 19 depends from claim 16 and recites limitations commensurate in scope to claim 12.", + "Yates describes storing in memory values ofa a maximum desired fuel flow for different engine speeds. See Yates, col. 1, II. 29-32.", + "Yates further describes the maximum desired fuel flow may be set to the surge fuel flow value. See Yates, col. 7, 11. 36-39.", + "Yates also describes the engine speed function signals are related to the rate of change in speed with time. Yates, col. 1, II. 47-48, Thus, we agree with the Examiner's findings (see Ans. 24) that Yates teaches the memory storing a plurality of maximum fuel flows at different engine speeds.", + "Accordingly, we sustain the Examiner's rejection of claims 12 and 19.", + "Claims 4, 11, and 18", + "Claim 4 depends from claim 1 and recites \"reducing an electrical load on the gas turbine engine when the inlet guide vane position commands have reached a minimum bleed command of the inlet guide vane position commands.' \"", + "Claims 11 and 18 depend from independent claims 8 and 16, respectively, and recite limitations commensurate in scope to claim 4.", + "We are unpersuaded of Examiner error.", + "As such, we agree with the Examiner that the combined teachings of McArthur and Wagner teach the disputed limitation recited in claim 4.", + "Accordingly, we sustain the Examiner's rejection of claims 4, 11, and 18." + ] +} \ No newline at end of file diff --git a/opinion_split/2021001037_Mail_Decision.json b/opinion_split/2021001037_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..8c8c1980317a1bf87e797c74ba0281961eb0964d --- /dev/null +++ b/opinion_split/2021001037_Mail_Decision.json @@ -0,0 +1,32 @@ +{ + "appellant_arguments": [], + "examiner_findings": [ + "Claims 1-30 are rejected under 35 U.S.C. 9 112(a) as failing to comply with the written description requirement.", + "Claims 1-3, 11-15, and 18-30 are rejected under 35 U.S.C. 8 103 as unpatentable over Knapic (US 2009/0125359 A1, pub. May 14, 2009), and Ramasamy (US 2018/0158162 A1, pub. June 7, 2018).3", + "Claim 4-10, 16, and 17 are rejected under 35 U.S.C. 9 103 as unpatentable over Knapic, Ramasamy, and Kozloski (US 2018/0189732 A1, pub. July 5, 2018).", + "In rejecting claims 1-30 as failing to comply with the written description requirement under 35 U.S.C. 112, first paragraph, the Examiner takes the position that the claims contain subject matter that was not described in the Specification in such a way to convey that the inventors had possession of the claimed invention at the time of filing. Non-Final Act. 5-6.", + "In particular, the Examiner maintains that the steps of generating a first blockchain and generating a second blockchain, as recited in independent claims 1 and 13, lack adequate support in the Specification. Id.", + "The Examiner maintains that the rejection of claims 1-30 under 35 U.S.C. 9 112(a) is proper because \"the [S]pecification discloses using blockchain[;] however, there is not [sic] recitation of a first generation of a first blockchain and a second blockchain wherein each of the first and second blockchains are based on different criterial,]\" as required by independent claims 1 and 13. Non-Final Act. 6.", + "In the Answer, the Examiner further explains that \"the terminology utilized in the claims is not the same as what is disclosed in the [S]pecification. The claims recite a first blockchain and a second blockchain[;] however, the Specification recites a baseline blockchain and a realized blockchain. \" Ans. 5.", + "In the Answer, the Examiner interprets the step of *generate a second blockchain, \" as recited in claim 1 and similarly recited in claim 13, to require generating an **entire blockchain from *start* to *end. ** Ans. 7.", + "Based on this interpretation, the Examiner reasons that it is impossible to add a realized block to the second blockchain, as required by claims 1 and 13, because the second blockchain has already been generated. Id. 8;see also id. at 6-8.", + "The Examiner relies on Knapic for teaching integrating a methodology management system with a project management system. Ans. 9-10; see also Non-Final Act. 10.", + "The Examiner acknowledges that Knapic does not disclose **performance ofthe project management on a blockchain, \" and relies on Ramasamy to teach \"the generation of the blockchains and the generation ofa single block in the blokchain (sic).\" \" Ans. 10; see also Non-Final Act. 11 (citing Ramasamy 11 66, 105, 151-53, 157, 159, Abstract, Figs. 1, 7-9, 10, *and all related text\").", + "In the Answer, the Examiner contends that the generation *ofmultiple blockchains amounts to mere duplication.\" Ans. 10-11." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 9 6(b).", + "However, we agree with Appellant that at least paragraphs 43-53 of the Specification reasonably convey to those skilled in the art that Appellant was in possession of the invention at the time of filing. Appeal Br. 16-17.", + "Although the Specification does not provide in haec verba support for the claimed subject matter at issue, we agree with Appellant that the Specification conveys with reasonably clarity that the inventor was in possession of the claimed subject matter at the time of filing.", + "However, we agree with Appellant that one of ordinary skill would understand that the step of generating requires generating an initial or genesis block that subsequent blocks are appended to and does not require generating an entire blockchain from start to end at once. Reply Br. 8.", + "Our understanding is consistent with conventional blockchain technology, as well as Appellant's Specification.", + "Accordingly, we do not sustain the rejection of independent claims 1 and 13 and their dependent claims under 35 U.S.C. 9 112(a) as failing to comply with the written description requirement.", + "We are persuaded by Appellant's arguments that the Examiner erred in rejecting independent claims 1 and 13 under 35 U.S.C. 5 103 because the combination of Knapic and Ramasamy does not teach or suggest at least: generate a second blockchain that \u00b7 \u25a0 \u00b7 includes one or more realized blocks having a second common data structure different than the first common data structure, the second common data structure comprising a header that includes a hash ofa preceding realized block in the second blockchain, a hash of a corresponding baseline block of the first blockchain associated with a corresponding milestone, and an indication of a level of achievement of the correspondingmilestone[.] as recited in claim 1, and similarly recited in claim 13.", + "We agree with Appellant that Ramasamy's 's disclosure of an embodiment using blockchain does not teach or suggest the claimed second blockchain that includes realized blocks having a second common data structure different than the first common data structure that comprises a header including a hash of a preceding realized block in the second blockchain and a hash of a corresponding baseline block of the first blockchain, as required by claims 1 and 13. Appeal Br. 48-50; see also Reply Br. 9-15.", + "The difficulty with the Examiner's reasoning, however, is that the claimed first and second blockchains comprise blocks having different common data structures.", + "Duplicating the first blockchain fails to teach the claimed second blockchain that includes blocks having a header that includes not only a hash of a preceding realized block in the second blockchain, but also a hash of a corresponding baseline block in the first blockchain).", + "Therefore, we do not sustain the rejection under 35 U.S.C. S 103 of independent claims 1 and 13 and dependent claims 2, 3, 11, 12, 14, 15, and 18-30.", + "The Examiner's rejection of claims 4-10, 16, and 17 does not cure the deficiency in the rejection of independent claims 1 and 13.", + "Therefore, we do not sustain the Examiner' rejection of claims 4-10, 16, and 17 under 35 U.S.C. 9 103." + ] +} \ No newline at end of file diff --git a/opinion_split/2021001357_Mail_Decision.json b/opinion_split/2021001357_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..6e16b137de524bb097910582410a4e343a89e4d6 --- /dev/null +++ b/opinion_split/2021001357_Mail_Decision.json @@ -0,0 +1,58 @@ +{ + "appellant_arguments": [ + "Appellant argues the Examiner has failed to provide some rationale, articulation, or reasoned basis to support the legal conclusion of obviousness.", + "Appellant argues the Examiner's rejection is based on hindsight reconstruction because five references were utilized to show the individual claim elements were independently known and the teachings of the references were combined guided by Appellant's invention. (Appeal Br. 5-6.)", + "Appellant argues the Examiner improperly utilized **official notice\" in support of the rejection. (Appeal Br. 6.)", + "Appellant argues the Examiner's reason for adding a handle to the filtration system is different from the claimed invention.", + "Appellant argues the handle of the claimed invention is *designed to remove the system, not just the filter, because, as required in claim 1, the filter is 'removably attached to the frame. .\" (Appeal Br. 7.)", + "Regarding the plurality of tabs limitation, Appellant argues Dorsey has nothing to do with an adjustable frame a system.", + "Appellant further argues **[a]dding the tabs from Dorsey' s L-bracket onto the Applicant's adjustable frame system is not suggested in Dorsey or any other reference cited by Examiner.' \" (Appeal Br. 7.)" + ], + "examiner_findings": [ + "I. Claims 1, 4, 7, and 9 are rejected under 35 U.S.C. 9 112(b) or 35 U.S.C. 9 112 (pre AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.", + "II. Claims 1, 4, 7, and 9 are rejected under 35 U.S.C. 9 103 as being unpatentable over the combined teachings of Sasaki (US 2004/0016692 A1, published Jan. 29, 2004) further in view of either of Lynch (US 2,624,405, issued Jan. 6, 1953) and/or McFarland (US 5,1 73, 181, issued Dec. 22, 1992), and Hanson (US 2008/0290042, published Nov. 27, 2008) and/or Dorsey (US 2008/01 79229 A1, published July 31, 2008).", + "Indefiniteness Rejection Claims 1, 4, 7, and 9 are rejected under 35 U.S.C. 9 112(b) or 35 U.S.C. 9 112 (pre AIA), second paragraph, as being indefinite.", + "The Examiner finds claim 1 is unclear to what structure Applicant corresponds to a **grate* or how the **plurality of tabs\" extending from the periphery of the frame frictionally engage the grate. (Final Act. 3).", + "The Examiner further determines the tabs depicted in the figures are orthogonal to the plain of the grate and therefore would not be able to create a friction fit. (Ans. 10.)", + "Obviousness Rejection Claims 1, 4, 7, and 9 are rejected under 35 U.S.C. \uc6a9 103 as unpatentable over the combined teachings of Sasaki, further in view of either of Lynch and/or McFarland, and Hanson and/or Dorsey.", + "The Examiner finds Sasaki discloses a catch basin filter having an adjustable frame. (Final Act. 4; Figs. 3, 4)", + "The Examiner finds Sasaki does not disclose the adjustable top and bottom parts of the frame are slidably connected by one or more pins. (Final Act. 4.)", + "The Examiner takes official notice that frames having top and bottom members slidably connected by a pin was well known to persons of ordinary skill in the art.", + "The Examiner cited McFarland and Lynch as evidentiary references to support the official notice statement. (Final Act. 4.)", + "The Examiner recognizes Sasaki fails to disclose the attachment ofa a handle.", + "The Examiner finds Hanson describes a handle connected to a fluid screening apparatus. (Final Act. 9.)", + "The Examiner determines that it would have been obvious to a person of ordinary skill in the art to include a handle on a filtering system to facilitate removal of the filter. (Final Act. 9.)", + "The Examiner cites Dorsey for teaching a filtering system that utilizes tabs to create a friction fit to hold the system in place. (Final Act. 10-11.)", + "The Examiner utilized **official notice\" for describing adjustable mechanisms utilized in the fluid screening/filtering art. (Final act 4.)", + "The Examiner further provided evidence of known adjustable mechanisms - McFarland and Lynch - in support of the official notice taken." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 8 6(b).", + "We affirm.", + "OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon.", + "Ex parte Frye, 94 USPQ2d 1072, 1075 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"It has long been the Board's practice to require an applicant to identify the alleged error in the examiner' rejections. \").", + "In light of Appellant's arguments, we limit our consideration to independent claim 1.", + "We reverse.", + "The Examiner does not adequately establish that the claim is unclear.", + "Consequently, we do not sustain the indefiniteness rejection.", + "We affirm.", + "After considering the argued claims in light of the case law presented in this Appeal and each of Appellant's arguments, we are not persuaded of reversible error in the appealed rejections.", + "We sustain the appealed rejection for the reasons the Examiner presents.", + "We add the following.", + "We perceive no convincing merit in Appellant's argument that the number of references (5) cited by the Examiner is evidence in and of itself that the invention is not obvious.", + "This is because the test for obviousness is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention. In re Gorman, 933 F. 2d 982, 986 (Fed. Cir. 1991).", + "The Examiner has cited evidence and adequately explained that the elements of the claimed invention were known to persons of ordinary skill in the art.", + "Given the teachings of the cited art, a person of ordinary skill in the art utilizing no more than ordinary creativity would have been led to incorporate conventional elements in the filtering art to form a drain inlet protection system. KSR Int 'I. Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one \"can take account of the inferences and creative steps that a person of ordinary skill in the art would employ\")", + "The Examiner has cited references that establish drain inlet protection systems, water permeable filtration material, adjustable frames, tabs, and handles are all elements known by persons of ordinary skill in the art.", + "We do not agree.", + "Appellant does not persuasively dispute this evidence and has not adequately established that adjustment mechanisms were not known to persons of ordinary skill in the art.", + "Appellant's argument lacks persuasive merit.", + "A person of ordinary skill in the art would have recognized the suitability of utilizing a handle for removal of the filtration system.", + "The Hanson reference as cited by the Examiner is evidence of utilizing such a handle.", + "Appellant's argument is not persuasive of ofreversible error.", + "A reference must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Dorsey is evidence that the use of tabs pinch between a grate and a periphery or wall for holding filtration media in place was known to persons of ordinary skill in the art. (Dorsey I 18.)", + "A person of ordinary skill in the art would have reasonably expected that tabs could have been incorporated in drain filtration apparatus is for the purpose ofholding the device in place.", + "Accordingly, we affirm the Examiner's obviousness rejection of claim 1, 4, 7, and 9." + ] +} \ No newline at end of file diff --git a/opinion_split/2021001820_Mail_Decision.json b/opinion_split/2021001820_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..46e7be60162d550dced8e2d3719305c9159c5b7e --- /dev/null +++ b/opinion_split/2021001820_Mail_Decision.json @@ -0,0 +1,23 @@ +{ + "appellant_arguments": [ + "Appellant argues that one having ordinary skill in the art would not have had a reasonable expectation of success, based on the general mention of elastomer in Bassot, that changing the honeycomb structure of Szpunar's s forward spacer 48 to be made of elastomer would have still been able to \"remain rigid and intact during normal operation and for small bird strikes\" and also \"buckl[e] upon reaching a predetermined limit Fmax of the axial impact force Fa transmitted from the dovetail 26 to the blade retainer 38 through the forward spacer 48 during a large bird strike\" as required by Szupnar. Appeal Br. 11-12 (citing Szpunar 5:1-6).", + "Appellant submits that the Examiner's proposed modification of Szupnar in view of Bassot changes the principle of operation of Szpunar, such that Szpunar would fail to perform its intended purpose. Id. at 12." + ], + "examiner_findings": [ + "OPINION Regarding independent claim 10, the Examiner finds that Szpunar discloses a lock (i.e., a blade retainer 38) that retains a blade axially relative to a disk, wherein each blade is fastened in a disk's slot by a blade root (i.e., via dovetail 32), and the lock is fastened to an axial end of the slot, as claimed. Final Act. 5 (citing Szpunar 1:5-10, 2:10-20, 2:57-60, 3:44-48, Figs. 1-3, 6-8).", + "The Examiner also finds that each of Szpunar's lock (or blade retainer 38) includes a damper pad (i.e., spacer 48) fastened to a body (i.e., retainer plate 42) of the lock and situated between the blade root and the lock's body. Id. (citing Szpunar 6:38-43, Fig. 3).", + "The Examiner relies on Jevons for disclosing a similar rotor lock (i.e., retainer plate 44) comprised of a *polymer matrix fiber-reinforced composite material with at least a portion of the reinforcement being 3D woven fiber. \" Final Act. 5-6 (citing Jevons 5:40-44, 6:39-44).", + "The Examiner reasons that it would have been obvious to an ordinarily skilled artisan to have replaced the material of Szpunar* s lock body with 3D woven composite material, as taught by Jevons, to provide, for example, weight reduction and increased strength. Id. at 6-7 (citing Jevons 1:65-2:6); see Ans. 6; id. (reasoning that \"Jevons teaches that the use of a known material, 3D woven composite, is suitable for rotor lock bodies, *, and thus, modifying Szpunar's s lock body, in view of Jevons, \"is merely the selection of an art known material suitable for use in the construction of a rotor lock body\"); id. at 7 (reasoning that *[d]etermining the specific arrangement of the fibers for a particular application is well within the ordinary skill level of one in the art\"); see also Jevons 1:65-2:6 (disclosing that \"[a] 3D-woven composite material retainer plate can provide significant weight-reduction compared with conventional, typically metallic, shear plates\" and that \"[a]Iternatively, for the same weight, the strength of the plate can be improved, allowing the plate to withstand greater axial loads\").", + "on Bassot for disclosing a similar lock adapted to retain a fan blade comprising a damper pad of elastomer (i.e., peg 17). Final Act. 7 (citing Bassot 1:5-8, 3:22-28).", + "The Examiner reasons that it would have been obvious to an ordinarily skilled artisan to have modified Szpunar, as modified by Jevons, \"to construct the damper pad of elastomer to ensure sufficient force is exerted on the blade roots such that they are positively pressed against the rotor lock body as this eliminates any axial clearance regardless of manufacturing tolerances\" (citing Bassot 2:12-16) and also so that \"the elastomer can be custom tailored to provide the desired amount of resiliency to suite the application (citing Bassot 2:17-18). Id.", + "The Examiner also reasons that \"the elements of Szpunar and Bassot, in combination are being employed in accordance with their recognized functions and would have predictably retained their respective functions [such that] there is a reasonable expectation of success. \" Ans. 8.", + "The Examiner further determines that \"Appellant has provided no evidence nor any fact based rationale to show why or how the spacer would not function as intended if made from elastomer versus honeycomb\" and reasons that *[a] person having ordinary skill in the art having read [Szpunar] would readily understand that the elastomer would remain in contact for normal operation but may not (by deforming) during exceptional foreign body ingestion evens, such as large bird strikes.\" \" Id.", + "The Examiner concludes that \"as Bassot teaches that the use of a known material, elastomer, is suitable for use in rotor lock body spacers, it is merely the selection of an art known material suitable for use in the construction of a rotor lock body spacer.\" Id." + ], + "ptab_opinion": [ + "We are persuaded by Appellant's s argument that the Examiner's is reasoning \"to construct [Szpunar's forward spacer 48] of elastomer to ensure sufficient force is exerted on the blade roots such that they are positively pressed against the rotor lock body [to] eliminate[] axial clearance regardless of manufacturing tolerances\" lacks rational underpinning. Final Act. 7.", + "The Examiner does not make of record sufficient evidence or technical reasoning to demonstrate why, without the benefit of hindsight, the skilled artisan would regard teachings relating to the material of Bassot' s peg 17 used to take up axial clearance as relevant to Szpunar' s forward spacer 48, which serves a very different purpose--to be selectively compressible when a maximum force is applied (i.e., via a bird strike).", + "Additionally, we determine that the Examiner's conclusion that a person of ordinary skill in the art would readily understand that an elastomer, as taught in Bassot, would remain in contact with the blade root, in Szpunar, during normal operation but would deform during a bird strike, or that an elastomer is suitable for use as Szpunar' s forward spacer 48, is speculative and insufficiently supported by evidence.", + "Accordingly, we do not sustain the Examiner's rejection of independent claim 10, and claims 12-15 depending therefrom." + ] +} \ No newline at end of file diff --git a/opinion_split/2021001952_Mail_Decision.json b/opinion_split/2021001952_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..a47f4c964a2c02bdf65cf96f63f45dc118aaf3d4 --- /dev/null +++ b/opinion_split/2021001952_Mail_Decision.json @@ -0,0 +1,206 @@ +{ + "appellant_arguments": [ + "1. A mobile electronic device, comprising: a display configured to display a graphical user interface (GUI) comprising a plurality of GUI elements and encompassing an entirety of the display for a user to control the mobile electronic device; and circuitry configured to determine whether an input commanding a shift of the GUI downward on the display is received at the mobile electronic device, wherein the input is a touch operation comprising a horizontal direction of motion; shift the plurality of GUI elements making up the GUI on the display downward and horizontally in a direction determined based on the horizontal direction of motion of the touch operation upon determining the input is received, such that a movement is applied to all of the plurality of GUI elements of the shifted GUI, and such that a background area is displayed after the shift in a region of the display no longer filled by the shifted GUI, determine whether a touch input is received at a touch panel of the mobile electronic device at a position outside of the shifted GUI, and return the shifted GUI to a position on the display prior to performing the shift and encompassing the entirety of the display, upon determining the touch input is received at the touch panel at a position outside of the shifted GUI.", + "Appeal Br. 17 (Claims App.).", + "Appellant seeks reversal of the rejections of claims 1-6, 13-30, 32, and 33 on the grounds that the prior art has not been shown to render these claims obvious.", + "Appeal Br. 7-14.", + "Appellant contends that the cited art does not teach shifting GUI elements downward and horizontally (i.e., diagonally downward) *in a direction determined based on the horizontal direction of motion of the touch operation,' as recited, e.g., in claim 1 (emphasis added to claim 1).", + "Id. at 7.", + "Appellant argues that Kawamoto has not been shown to disclose shifting a plurality of GUI elements in a direction based on the horizontal direction of \"motion of the touch operation,\" \" because Kawamoto discloses using a hardware key to shift GUI icons to the lower left-hand or right-hand corner of the display.", + "Appeal Br. 7-8.", + "Appellant also argues that Kawamoto teaches away from using touch motion to trigger a one-hand display mode, asserting that \"Kawamoto teaches that using a hardware key to transition from full-screen mode to one- handed mode is preferable to using a touch input operation.\"", + "Appeal Br. 8, 12 (citing Kawamoto I 65).", + "Appellant also attacks Ording2 individually, arguing that Ording2 describes shifting only a single GUI element in response to a touch operation, rather than shifting *the plurality of GUI elements making up the GUI on the display,\" as recited in claim 1.", + "Appeal Br. 9-10.", + "Appellant also argues that Ording2 does not translate (i.e., shift) a GUI element based on the horizontal direction of motion of the touch operation, as recited in claim 1.", + "Appeal Br. 10-11.", + "According to Appellant, Ording2 describes two scenarios for translating a GUI element, neither of which teaches the claimed feature.", + "Id.", + "In the first scenario, a swipe gesture is within a predetermined angle so that the gesture is generally vertical, and the GUI element is moved vertically.", + "ld. (citing Ording2 11 226-228).", + "In the second scenario, the swipe gesture is outside the predetermined angle, and the GUI element is translated two dimensionally (i.e., diagonally) in the direction of the swipe.", + "Id. (citing Ording2 I 226-228).", + "Appellant argues that this approach is different from that recited in claim 1, because in Ording2 \"no determination is made based on the horizontal direction of motion of the swipe.\"", + "Id. at 11.", + "Appellant argues that Ording1 fails to disclose the following recitation of claim 1: *return the shifted GUI to a position on the display prior to performing the shift . . upon determining the touch input is received at the touch panel at a position outside of the shifted GUL\"", + "Appeal Br. 13-14.", + "Appellant attacks Ording1 individually, arguing that Ording1 discloses using a mouse-click to initiate returning the display windows to their original positions, rather than using a touch input on a touch screen, as recited in claim 1.", + "Appeal Br. 13-14.", + "Appellant attacks Langlois individually, arguing that the icons in Langlois are not a shifted GUI as claimed, but rather are \"source icons.\"", + "Appeal Br. 14-15." + ], + "examiner_findings": [ + "Claims 35 U.S.C. Reference(s)/Basis Rejected S 1-3, 5, 6, 17-22, 103 Kawamoto, Ording1, Ording2 24-30, 32, 33 4. 23 103 Kawamoto, Ording1, Ording2, Langlois 13, 15, 16 103 Kawamoto, Ordingl, Ording2, Prasad 14 103 Kawamoto, Ordingl, Ording2, Prasad, Davidson 31 103 Kawamoto, Langlois", + "The Examiner relies primarily on Kawamoto (Final Act. 6-8), which, like the instant application, describes shifting GUI elements of a display screen diagonally downward so that a user's thumb may reach all GUI elements (Kawamoto (57), Figs. 1 and 3, 11 11-13).", + "However, the Examiner relies on Ording2 for teaching moving display elements on a display screen based on the horizontal direction of gestures on a touch screen.", + "Final Act. 7-8.", + "The Examiner relies, for example, on Kawamoto's teaching that a hand gesture may be used instead of a hardware key.", + "Final Act. 6 (explaining that Kawamoto discloses using a specific gesture to trigger a one-hand display mode); Kawamoto ' 63 (\"Alternately, switching from the full-screen display mode to the one-hand display mode may be realized by inputting a specific gesture using the acceleration sensor, instead of pressing a hardware key. .", + "As found by the Examiner, Kawamoto does not discourage the use of a touch operation.", + "Id.; Ans. 6 (finding that \"(Just because Kawamoto recognizes a potential difficulty of touch input, that does not go against the teachings of Kawamoto, and \"[the instance that Appellant refers to . \u00b7 . is merely an example and \u00b7 . when reading the entirety of the passage of Kawamoto, does not disparage the use of touch inputs\").", + "Final Act. 6; Ans. 4 (\"Kawamoto was cited to teach the actual downward and horizontal physical shift of the entirety of the display\").", + "The Examiner relies also on paragraph 204 of Ording2.", + "Final Act. 7-8.", + "The Examiner combines Ording2's teachings with Kawamoto's teaching of shifting GUI elements either to the lower-right of the display or to the lower-left of the display.", + "Ans. 5.", + "In light of this teaching in combination with Kawamoto's teaching of returning the shifted GUI to its original full screen display, the Examiner concludes it would have been obvious to return the GUI elements in Kawamoto to their original position in the manner claimed.", + "Final Act. 6-7 (citing Kawamoto I 76, Figs. 3-6; Ording1 11 34, 60, Figs. 3-8).", + "The Examiner does not rely on Ording1 alone for teaching the recitation at issue.", + "As explained by the Examiner, Kawamoto teaches, based on a received input, restoring the display from right-hand or left-hand display mode back to full screen display mode.", + "Final Act. 6-7 (citing Kawamoto II 58-63, 76, Figs. 3-6).", + "The Examiner, therefore, relies on Langlois's 's teaching of returning icons of a display screen to their original positions after a time-out interval has lapsed in which no input is received.", + "Id. at 18 (citing Langlois 11 36-39)." + ], + "ptab_opinion": [ + "Pursuant to 35 U.S.C. 134(a), Appellant' appeals from the Examiner's decision to reject claims 1-6 and 13-33, all the claims pending in the present application.\"", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM and enter a NEW GROUND OF REJECTION.", + "The instant application relates to shifting the location of graphical user interface (GUI) elements on the display screen of an electronic device.", + "Spec. 11 4-5.", + "The Specification explains that as screens have increased in size, difficulties arise *when a user wishes to perform a touch operation using a single hand (i.e., the hand holding the electronic device).\" \" Id. I 3.", + "In particular, \"a touch operation using a thumb on a single hand that is holding the electronic device becomes difficult because the user's thumb cannot reach all areas of the touch panel display surface.\" ld.", + "The Specification therefore discloses shifting the display of the interactive GUI elements to either the lower right-hand corner or lower left-hand corner of the display so that the user's thumb can reach all GUI elements.", + "Figures 2 and 5 of the Specification, reproduced below, respectively illustrate a screen both before and after shifting GUI elements.", + "Figures 2 and 5 of the Specification illustrating the display screen of an electronic device.", + "Figure 2 illustrates electronic device 100 held with a single hand, wherein the device's display 120 includes icons 211-238.", + "As shown in Figure 2, the user's thumb cannot reach all of icons 211-238.", + "Spec. 11 39- 40.", + "Figure 5 illustrates electronic device 100, also held with a single hand, wherein icons 211-238 have been shifted downward and horizontally to the right of display 120, so that the user's s right thumb may access all of icons 211-238.", + "ld. I 54.", + "Figure 3 of the Specification (not reproduced herein) is a flowchart that illustrates a method for shifting the display of GUI elements.", + "Notably, a user touches the touch screen in a particular way to cause the display to shift.", + "Id. 11 48, 51, 54; see also id. at Fig. 3B (step S17).", + "However, the device does not interpret the touch as a desire to shift the screen unless the device has been set to a specific mode, namely, \"adjust\" screen mode.", + "Id. ' 41; see also id. at Fig. 3B (step S16).", + "Claim 1, reproduced below, illustrates the claimed subject matter: 1.", + "The prior art relied upon by the Examiner is:", + "Name Reference Date Davidson US 8,745,514 B1 June 3, 2014 Prasad US 8,769,431 B1 July 1, 2014 Ording1 US 2004/0261037 A1 Dec. 23, 2004 Ording2 US 2008/0168404 A1 July 10, 2008 Langlois US 2011/0199322 A1 Aug. 18, 2011 Kawamoto US 2015/0084885 A1 Mar. 26, 2015", + "The claims stand rejected as follows:", + "For reasons discussed below, we affirm the Examiner's rejections.", + "Appellant presents several arguments to support this contention.", + "Before addressing Appellant's arguments, it is helpful first to briefly describe certain references relied on in the rejections.", + "Figures 1 and 3, reproduced below, illustrate, respectively, a full screen mode and a right-hand display mode in which GUI elements are shifted diagonally downward.", + "Figures 1 and 3 of Kawamoto illustrating the display screen of an electronic device.", + "Figure 1 shows portable electronic device 1 with display portion 10 comprising touch panel 21.", + "Kawamoto \" 36, 54.", + "Display portion 10 displays a plurality of icons 41, wherein the icons are displayed in full screen mode.", + "Id. ' 57.", + "Figure 3 illustrates right-hand display mode, in which icons 41 are shifted diagonally downward to the right.", + "ld. I 58.", + "Kawamoto also discloses a left-hand display mode (see Kawamoto Fig. 4), which is not reproduced here.", + "Kawamoto discloses that a user may switch from full screen mode to right-hand display mode or left-hand display mode \"by inputting a specific gesture.\"", + "Id. ' 63.", + "Kawamoto does not expressly disclose detecting the horizontal direction of the gesture to determine whether to switch to left- hand display mode or right-hand display mode.", + "Ording2 describes, on a touch screen display, translating (i.e., moving) icons representing electronic documents (e.g., thumbnails) in response to a swipe gesture.", + "See, e.g., Ording2 11 3, 10, 226-230.", + "For example, Ording2 discloses, in one embodiment, translating an icon diagonally in the direction of a swipe gesture.", + "Id. \" 227-230.", + "Ording2 also discloses, in another embodiment, that the direction of GUI translation need not be identical to the direction of movement of the finger, but instead may \"correspond\" to the direction of movement of the finger.", + "Id. I 204.", + "This argument is unpersuasive because it refers to an embodiment of Kawamoto that the Examiner does not rely on, and fails to address the teachings upon which the Examiner actually relies.", + "We disagree that Kawamoto teaches away from using a touch input operation.", + "Even if Kawamoto describes a benefit of using a hardware key, \"[a] reference does not teach away. \u00b7 if it merely expresses a general preference for an alternative invention.\"", + "DePuy Spine, Inc. V. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).", + "Ans. 6; see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (\"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. \").", + "On the contrary, Kawamoto expressly discloses that instead of pressing a hardware key, a touch input may be used on touch panel 21.", + "Kawamoto I 65.", + "Kawamoto acknowledges that there may be instances in which it may be difficult to use a touch screen operation, depending on the application software.", + "Id.", + "However, Kawamoto does not teach away from using a touch operation, but rather only points out that there may be instances in which a hardware key may be preferable.", + "This argument is unpersuasive because the Examiner relies on Kawamoto, not Ording2, for shifting the plurality of elements making up the display.", + "We are not persuaded by Appellant's arguments.", + "Appellant's arguments refer to an embodiment of Ording2 that *illustrate[s] an exemplary user interface for a browser in accordance with some embodiments.'", + "Ording2 I 211.", + "More specifically, Appellant focuses on an embodiment described in paragraphs 226-228 of Ording2, which describe only \"some embodiments\" (Ording2 I 226) that relate to Figures 8A-8D, and do not amount to the full teachings of Ording2.", + "This cited portion of Ording2 teaches that a GUI element may be moved in response to detecting movement of an object (e.g., a finger) on or near the touch screen display.", + "Ording2 11 203, 204.", + "Furthermore, Ording2 teaches that \"[i]n some embodiments,\" the direction of GUI translation may \"correspond[]\" to the direction of movement of the finger, \"but is not necessarily identical to the direction of movement of the\" finger.", + "Id. I 204.", + "In other words, Ording2 teaches that even if the direction of movement of the finger is horizontal, the GUI element is not necessarily translated horizontally, but rather may be translated in a direction that corresponds to the horizontal movement of the finger.", + "Id.", + "In determining whether the Examiner erred in finding that Kawamoto and Ording2's combined teachings would have led to the claimed invention, we note that the Examiner's analysis \"need not seek out precise teachings directed to the specific subject matter of the challenged claim,\" in order to *take account of the inferences and creative steps that a person of ordinary skill in the art would employ.\"", + "KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007).", + "In other words, Ording2 need not expressly disclose shifting a plurality of GUI elements diagonally (as taught by Kawamoto) based on the horizontal direction of the motion of a touch operation.", + "As we discussed above, Kawamoto teaches shifting GUI elements diagonally either to the lower left or lower right (i.e., downward and horizontally), and also teaches that a touch motion operation may be used to enact the shift.", + "Kawamoto 11 58-63, 65, Figs. 3-5.", + "Although it seems it would have been obvious to an ordinarily skilled artisan, even without Ording2, to use a swipe generally to the right to indicate switching to Kawamoto *s right-hand display mode, and a swipe generally to the left to indicate switching to Kawamoto's left- hand display mode, the Examiner introduces Ording2 to confirm what would have been obvious.", + "For example, Ording2 teaches translating a GUI element in a direction that corresponds to a horizontal touch motion (i.e., moving a GUI element based on the horizontal direction of motion of the touch operation).", + "Ording2 I 204.", + "For the reasons discussed above, the Examiner's findings and conclusion of obviousness are supported by the cited teachings of Kawamoto and Ording2, and we are not persuaded of reversible error in combining Kawamoto and Ording2 to arrive at the claimed feature at issue.", + "Ording1 generally describes rearranging windows on a computer display.", + "When multiple windows are open, rather than display them in a multi-layer view in which the windows overlap, Ording1 facilitates rearranging the windows into a flat single layer view in which the windows are shrunk so they all fit on the display.", + "Figures 3 and 5, reproduced below, illustrate this concept.", + "Figures 3 and 5 of Ording1 illustrating the display screen of a computer.", + "Figure 3 shows windows displayed in a multi-layer view.", + "Ording1 9 34.", + "Figure 5 shows windows displayed in a single layer view.", + "Id.", + "Ording1 discloses that a user may revert from the single layer view back to the original multi-layered view by issuing a command.", + "Id. 11 34, 60.", + "This argument is not persuasive.", + "Kawamoto does not explicitly disclose the input as being a touch input received at a touch panel position outside the shifted GUI.", + "Id.", + "However, as Appellant acknowledges, Ording1 teaches clicking a mouse around the border portion of each window to return the display elements to their original positions.", + "Ording1 ' ; see also Final Act. 6-7 (citing Ording1 11 34, 60, Figs. 3-8) and Ans. 6-7 (citing Ording1 11 33, 36, Figs. 3-8).", + "At the time of the alleged invention, substituting a mouse click on a display with a touch input on a touch screen display was well-known to skilled artisans, would have been easy to implement, and would have yielded predictable results.", + "Moreover, as we discussed above, Kawamoto discloses, in some embodiments, using a touch input on a touch screen.", + "Kawamoto I 65.", + "In light of Kawamoto's teachings of returning a shifted GUI display to full screen mode upon receiving an input (e.g., Kawamoto I 76) and using a touch screen input in some embodiments to switch display modes (e.g., id. I 65), and Ording1 's teaching of clicking a mouse on an area along the border of shifted windows in order to return the windows to their original display positions (Ordingl 11 34, 60, 76), Appellant has not identified reversible error in the Examiner's findings or conclusion that the claimed feature at issue would have been obvious in view of the combined teachings of the cited prior art.", + "For the foregoing reasons, we affirm the Examiner's s rejection of claim 1, and the rejections of claims 2-6, 13-30, 32, and 33, which Appellant argues with claim 1.", + "Claim 31 recites circuitry configured to \"return the shifted GUI to the position on the display prior to performing the shift of the GUI downward after lapse of a predetermined period of time greater than zero of not receiving a user input at the mobile electronic device.\" ~ Appeal Br. 22 (Claims App.) (emphasis added).", + "Although Kawamoto discloses returning the shifted GUI position on the display to the original position prior to shifting downward, Kawamoto does not discloses doing so after a predetermined period of time.", + "Final Act. 17-18 (citing Kawamoto II 58-63, 76, Figs. 3-6).", + "This argument is unpersuasive, because the Examiner relies on Kawamoto, not Langlois, for teaching shifting a GUI.", + "Final Act. 17-18.", + "Where, as here, the rejection is based on the teachings of a combination of references, Appellant cannot demonstrate non-obviousness by attacking Langlois individually, In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)), nor by arguing that Langlois fails to disclose a feature for which the Examiner does not even rely on Langlois, see Nat 7 Steel Car, Ltd. V. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1336-37 (Fed. Cir. 2004) (rejecting argument directed at the wrong reference).", + "For the foregoing reasons, Appellant has not shown reversible error by the Examiner in rejecting claim 31.", + "Pursuant to our authority under 37 C.F.R. 41.50(b), we enter a new ground of rejection.", + "Specifically, we reject claims 1-6, 13-30, 32, and 33 under 35 U.S.C. $ 112(a) for failure to satisfy the written description requirement.", + "Section 112(a) requires that \"[The specification shall contain a written description of the invention.\"", + "35 U.S.C. 9 112(a).", + "To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.", + "See, e.g., Moba, B. V. V. Diamond Automn., Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003).", + "We find that the following limitations of independent claims 1, 19, and 20 are not supported by the originally filed application, filed on July 31, 2014:", + "shift the plurality of GUI elements making up the GUI on the display downward and horizontally in a direction determined based on the horizontal direction of motion of the touch operation upon determining the input is received (Appeal Br. 17 (Claims App.)); shifting the plurality of GUI elements making up the GUI on the display downward and horizontally in a direction determined based on the horizontal direction of motion of the touch operation upon determining that the input is received (id. at 19); shifting the plurality of GUI elements making up the GUI on the display downward and horizontally in a direction determined based on the horizontal direction of motion of the touch operation input is received (id. at 20).", + "The originally filed claims do not recite the feature of shifting the plurality of GUI elements *downward and horizontally in a direction determined based on the horizontal direction of motion of the touch operation upon determining the input is received,\" as recited in pending claim 1, and similarly recited in pending claims 19 and 20.", + "Appeal Br. 17 (Claims App.) (emphasis added).", + "Rather, originally filed claim 1 includes a feature in which the device essentially is placed into a \"shift\" screen mode based on determining that certain touch criteria have been met.", + "Compare Claim 1 (July 31, 2014) (reciting \"initiate a process to shift the GUI on the display upon determining that an area of touch exceeds a predetermined area or a continuous duration) with Spec. ' 45 (\"[w]hen the size of the touched area exceeds a pre-determined threshold value, a1 or the time in which the continued touch[ed area] exceeds a pre-determined threshold value, t1. \u00b7 \u00b7 , the controller 110 moves to the next step, S14 [*shift' screen mode in Figure 3BJ\").", + "The touch used to place the device in the \"shift\" screen mode (e.g., step S13 of Fig. 3B) does not determine the direction of movement of the GUI elements, but rather leads to placing the device in a mode (i.e., **shift* screen mode, and \"adjust\" screen mode, shown in steps S14-S17) in which a subsequent touch operation may be used to determine the direction of movement of the GUI elements.", + "See, e.g., Spec. Fig. 3B (steps S13-S17), 11 41, 45-51.", + "The originally filed dependent claims include limitations narrowing the touch input.", + "However, they do not recite the feature of shifting the plurality of GUI elements *downward and horizontally in a direction determined based on the horizontal direction of motion of the touch operation upon determining the input is received.\"", + "This claim feature was added by amendment over five years after filing of the original application, in order to overcome rejections made under $ 103.", + "Amdt. 10, 11 (Nov. 4, 2019).", + "The feature first appears in an amendment dated November 4, 2019.", + "Claim 1 was amended, in pertinent part, as follows: determine whether a--predetermined an input commanding a shift of the GUI downward on the display is received at the mobile electronic device, wherein the input is a touch operation comprising a horizontal direction of motion; shift the plurality of GUI elements making up the GUI on the display downward and horizontally in a direction determined based on the horizontal direction of motion of the touch operation.", + "Id. at 3 (Claim 1) (Nov. 4, 2019).", + "\"Newly added claims or claim limitations must be supported in the [original] specification through express, implicit, or inherent disclosure.\"", + "Manual of Patent Examining Procedure (\"MPEP\") $ 2163.1.B (9th Ed., Rev. 10.2019 (June 2020)).", + "\"The proscription against the introduction of new matter \u00b7 \u25a0 \u00b7 serves to prevent an applicant from adding information that goes beyond the subject matter originally filed.\"", + "Id.", + "To show that the originally filed application provides written description support for the matter added to the claims, Appellant identified only paragraphs 40 and 54 of the original Specification.", + "Amdt. 10-11.", + "Neither of these cited paragraphs disclose, either expressly, implicitly, or inherently, shifting the plurality of GUI elements downward and horizontally in a direction determined based on the horizontal direction of a touch operation.", + "Paragraph 40 is not directed to the direction that GUI elements are shifted based on the motion of a touch operation.", + "Rather, this paragraph explains the difficulty of a thumb reaching icons on a large display screen during single-handed use.", + "Spec. ' 40.", + "Paragraph 54 describes moving elements of a GUI display based on the direction of movement of a user's 's finger or stylus.", + "Id. I 54.", + "However, this paragraph does not describe moving the elements downward and horizontally in a direction determined based on the horizontal direction of a touch operation.", + "Rather, it describes moving the elements in the direction of the movement of the touch operation (i.e., moving the elements diagonally downward in response to a touch operation that is downward and diagonal): Fig. 5 illustrates just one direction in which the screen image 121 can be displaced.", + "Embodiments include any direction, according to the user's s finger or stylus moving direction.", + "As an example, the bottom lower portion of the electronic device 100 can be held in the left hand and operated with the left thumb.", + "Movement of the left thumb downward towards the lower left area of the electronic device 100 will displace the display 120 towards the bottom left area.", + "A protruding portion of the display 120 will result along the left side of the electronic device 100, similar to area 123.", + "An empty area along the top left side, similar to area 122 will also result.", + "When the \"adjust\" screen mode is finished, the display 120 is still.", + "Spec. I 54.", + "There is no disclosure of the feature at issue and no indication that the inventor was in possession of such feature at the time the original application was filed.", + "\"Adequate written description means that the applicant, in the specification, must 'convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.\" *** Agilent Techs., Inc. V. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (citation omitted) (brackets in original), reh 'g en banc denied Sept. 18, 2009.", + "We note that although, as we discussed above, we find such feature would have been obvious in view of the prior art references cited by the Examiner, \"[the Federal Circuit has pointed out that, under United States law, a description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. 112.\"", + "MPEP 9 2163.I.A (citing Regents of the Univ. of Cal. V. Eli Lilly, 119 F.3d 1559, 1567 (Fed. Cir. 1997)).", + "Here, Appellant has not established that this feature would have been obvious in view of the originally filed application, much less that the inventor was in possession of such feature at the time.", + "For the foregoing reasons, we reject claims 1-6, 13-30, 32, and 33 under 35 U.S.C. $ 112(a) for lack of written description." + ] +} \ No newline at end of file diff --git a/opinion_split/2021002471_Mail_Decision.json b/opinion_split/2021002471_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..60808471bd0bada6b19a78684d7bf1a9e92ad00b --- /dev/null +++ b/opinion_split/2021002471_Mail_Decision.json @@ -0,0 +1,40 @@ +{ + "appellant_arguments": [ + "Appellant does not present separate arguments for the obviousness rejection, but contends \"claims 2 and 11 are patentable for at least the same reasons as the independent claims from which they depend. \" See Appeal Br. 19.", + "On appeal, Appellant challenges Examiner's finding that Karaoguz discloses the limitations requiring that the system: (1) \"determine a plurality of performers potentially depicted in the video content at the current time\" (i.e., the *potentially depicted\" limitation); and (2) \"generate a user interface configured to receive a user selection of a particular performer from the plurality of performers, the user selection indicating that the particular performer is depicted in the video content feature at the current time\" (i.e., the *user selection\" limitation). Appeal Br. 5-6, 10, 15.", + "According to Appellant, \"Karaoguz \"discloses fuser-selectable objects' for *actors/ actresses* who are *present in television programming. .. Id. at 6 (quoting Karaoguz I 17).", + "Appellant contends this *is different from determining performers who are potentially depicted in the video content feature at a current time, \". as recited in its claims, because \"performers who are *potentially depicted' may not actually be depicted, and Karaoguz does not show or suggest providing *user selectable objects' corresponding to those performers.\" Id.", + "Appellant further contends Karaoguz does not disclose the *user selection\" limitation. See Appeal Br. 8-9.", + "According to Appellant, [a]s recited with other elements in combination, the claimed **plurality of \"performers\" are *potentially depicted,' and the claimed user selection indicates that the particular performer *is depicted\" as opposed to *potentially depicted.\"", + "Karaoguz makes no such distinction, and it appears that the \"user- selectable objects\" are those that are currently in the television programming.", + "Accordingly, the user selection in Karaoguz does not \"indicate that the particular performer is depicted in the video content feature at the current time\" because it is already known that the selected object is on screen. Id.", + "Appellant contrasts Karaoguz with *\"[t]he present disclosure [that] discusses a crowd-sourcing model for generating extrinsic data-time associations\" by generating a user interface for the user to select the particular performer that is actually depicted from a plurality of performers potentially depicted at a particular time. Id. at 7.", + "Appellant explains that \"[there would be no need to generate the claimed user interface for crowd- sourcing the association if the system already could determine with certainty which performers are on screen at a given time.' \" Id." + ], + "examiner_findings": [ + "Claims 1, 3-5, 10, 12-14, and 19 under 35 U.S.C. S 102 as anticipated by Karaoguz;2", + "Claims 2 and 11 under 35 U.S.C. a 103 as obvious over Karaoguz and Covell;3 Appeal Br. 4.", + "Both of Examiner's rejections rely on the disclosure in Karaoguz for the limitations of independent claims 1, 10 and 19. See Final Act. 3-7.", + "Analysis Examiner finds that Karaoguz discloses all of the limitations of Appellant's independent claims. See Final Act. 3-7.", + "Examiner responds to Appellant's arguments by pointing out that the dictionary definition of \"potentially\" is \"possibly but not yet actually.\" Ans. 3.", + "Based on this definition, Examiner reasons that \"[ildentifying things that are definitely identified equals 100% possibility, ergo, it's 100% potential to be in the video.", + "The detection disclosed in the claims as written does not exclude a binary choice of is or is not regarding potentially depicted.\" ld.", + "For this reason, Examiner asserts that Karaoguz's disclosure of *user selectable objects presented in viewed content for viewer selection, wherein selectable objects are displayed at various time windows\" is sufficient to anticipate both the *potentially depicted\" and \"user selection\" limitations. Id. at 4." + ], + "ptab_opinion": [ + "Accordingly, we consider the rejections together in our analysis.", + "On this record, we are persuaded that Appellant has the better position.", + "Read together, the *potentially depicted\" and *user selection\" limitations require a user interface that allows the user to select the particular performer depicted at a current time in the video content from a plurality of performers that the system determines are potentially depicted at that time.", + "Examiner does not dispute that Karaoguz only discloses the selection of an object, e.g., a performer, that is actually depicted on the screen.", + "Thus, Examiner has not shown that Karaoguz discloses a system that determines a plurality of performers *potentially depicted\" and generates a user interface \"configured to receive a user selection of a particular performer from the plurality of [potentially depicted] performers, as recited in claim 1.", + "Examiner's claim interpretation argument is not persuasive.", + "According to Examiner's dictionary definition, potentially is not the same as actually. See Ans. 3 (stating that \"potentially\" is defined as \"possibly but not yet actually*\").", + "Thus, that definition does not support Examiner's attempt to equate the two.", + "Moreover, Appellant's claims require determining a **plurality* of potentially depicted performers and generating a user interface to select the actual performer from that \"plurality of performers.\" Appeal Br. 22 (Claim 1).", + "However, Karaoguz appears to allow only a single selection for each user-selectable object, i.e., the selection of the object actually on the screen.", + "Examiner has not sufficiently articulated how the selection of a single option in Karaoguz discloses a system that generates a user interface configured to receive a selection identifying the particular performer shown from a plurality of options, as recited in Appellant's claims.", + "For these reasons, Examiner has not sufficiently shown that Karaoguz discloses the *potentially depicted\" and \"user selection\" limitations of Appellant's independent claims.", + "We therefore reverse Examiner's s rejection of claims 1, 10, and 19.", + "Because the rejections of dependent claims 2-5 and 11-14 rely on the same underlying findings regarding the independent claims, we also reverse the rejections of those claims." + ] +} \ No newline at end of file diff --git a/opinion_split/2021002514_Mail_Decision.json b/opinion_split/2021002514_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..30d007603e900eb6c931365d34016ee098df987a --- /dev/null +++ b/opinion_split/2021002514_Mail_Decision.json @@ -0,0 +1,72 @@ +{ + "appellant_arguments": [ + "Appellant argues claims 1 and 7-17 together.", + "Appellant argues that \"[nJothing in Ramadan suggests that 240 mg is the appropriate dose for enzalutamide when co-administered with a strong CYP3A4 inducer.\" Appeal Br. 14.", + "Appellant argues that Hamilton provides drug-drug interaction (\"DDI\") studies \"in which rifampicin was co-administered with only a single drug, erlotinib.\" Appeal Br. 14.", + "According to Appellant, the Examiner provides \"no reason why a person skilled in the art would extrapolate the teachings of Hamilton to a different drug let alone one with a different mechanism of action, a different therapeutic effect, and a different metabolism.\" Id.", + "Appellant argues that \"[there is no indication that erlotinib [the drug used in Hamilton] itself is an inducer of CYP3A4,\" while enzalutamide is *both metabolized by and induces CYP3A4.* Id. at 14 n.52.", + "Appellant argues that \"[the rejection . \u00b7 \u00b7 does not explain why rifampin's effect on erlotinib has any relevance to how rifampin might affect enzalutamide in particular, which is structurally and functionally unrelated to erlotinib.\" ld. at 16.", + "In view of these differences, Appellant contends that the Examiner's rejection is deficient because it \"does not explain why rifampin's effect on erlotinib is representative of the way rifampin may or may not affect any other drug.\" Id. at 15.", + "As support, Appellant points to Figure 3B of Waters, which Appellant contends supports that \"the opposite is true,\" i.e, erlotinib is not representative.", + "Appellant explains that, *[i] Figure 3B, *AUCR* is the ratio of the AUC of the indicated drug in the presence of rifampicin to the AUC of the same drug in the absence of rifampicin.\" Appeal Br. 15 n.53 (citing Waters, 948).", + "Appellant argues that \"Figure 3B demonstrates the wide variability in the effect of rifampin on the metabolism of individual drugs.\" \" Appeal Br. 15.", + "As examples, Appellant points out that \"co-administration of rifampin has essentially no effect on the AUCR of fulvestrant,\" while *co- administration of rifampin dramatically lowered the AUCR of bosutinib. ~, Id.", + "Appellant cites Waters as supporting variation in the effects of co- administration of different drugs with the CYP3A4 inducer, rifampicin. Appeal Br. 15-16; Waters, 946 (identifying rifampicin as a CYP3A inducer).", + "Appellant argues that \"[n]one of the obviousness rejections made during the prosecution of this application provides any facts to support the assertion that it would have been reasonable to expect to identify a daily dose of enzalutamide that met the requirements of the claimed method or that 240 mg would have provided that dose.\" Appeal Br. 17.", + "According to Appellant, \"even if one of ordinary skill would have expected co- administration with rifampin to decrease enzalutamide's AUC, it does not follow that the AUC of the active metabolite M2 also would also decrease, or would decrease by the same magnitude, or that the magnitude of any combined decrease in enzalutamide and / or M2 could be addressed by increasing the daily dose of enzalutamide to 240 mg.' Id. at 18-19.", + "Appellant argues that the Examiner failed to account for rebuttal evidence demonstrating the unpredictability of drug-drug interactions. Appeal Br. 20-23.", + "As support, Appellant provides the following list of *factual evidence:\" 1. Drug-drug interactions with the strong CYP3A4 inducer rifampicin \"have always remained complex because rifampicin is involved to various degrees in the physiological processes that govern absorption, metabolism, distribution (uptake transporters), and excretion (efflux transporters and biliary excretion) of the co-administered drugs \u00b7 \u00b7 M 2. There is a wide variation in how co-administration of rifampicin affects the AUC of any particular drug. 3. The effect of a strong CYP3A4 inducer on any given drug's AUC cannot always be addressed with a safe and effective dose of the drug. 4. It is challenging to predict in vivo interactions from in vitro results **[w]hen there are multiple factors that affect clearance and multiple mechanisms of drug-drug interactions. . 5. At the time of enzalutamide's FDA approval, the metabolism of enzalutamide was known to be complex and was incompletely understood. 6. At the time of enzalutamide's FDA approval, the FDA had determined that **analysis of spontaneous postmarketing adverse events reported under subsection 505(K)(1) will not be sufficient to identify an unexpected serious risk of drug-drug interactions between the active metabolite N-desmethyl enzalutamide and CYP450 inducers or inhibitors. 7. Given the complexity of DDIs with strong inducers, the FDA required a postapproval DDI study to determine whether enzalutamide's active metabolite is metabolized by the major CYP450 isozymes. 8. Given the complexity of DDIs with strong inducers, the FDA required a postapproval clinical drug interaction trial to evaluate the effect of rifampin on the pharmacokinetics of enzalutamide and its active metabolite to address the serious risk of drug interactions with enzalutamide. Appeal Br. 20-21 (internal citations omitted).", + "Appellant contends that bosutinib, for example, shows that some drugs cannot be safely and effectively administered with a CYP3A4 inducer. Appeal Br. 20 (citing BOSULIF@ (bosutinib) prescribing information as supporting evidentiary point three); see also, id. at 15-16 (\"CYP3A4 inducers have such a large effect on the exposure of bosutinib that its prescribing information instructs physicians to avoid concomitant use of these inducers. \").", + "Appellant does not dispute that enzalutamide is metabolized by CYP3A4. See, e.g., Appeal Br. 4 (*enzalutamide . \u00b7 \u00b7 is metabolized by CYP3A4\")." + ], + "examiner_findings": [ + "The Examiner rejected claims 1 and 7-17 under 35 U.S.C. 9 103(a) as obvious over the combination of Ramadan,2 Hamilton,' FDA Draft Guidance for Industry, FDA Summary Review,s and Scher.* Final Act. 10- 16.7", + "In rejecting claim 1 as obvious, the Examiner finds that the ordinary artisan would have found it obvious to \"to optimize the dose of enzalutamide in the treatment of cancer when co-administering the drug in combination with a CYP3A4 inducer.\" Ans. 13-14.", + "The Examiner reasons that Ramadan provides **explicit disclosure\" directing to optimize the dose *in view of the common pathway of metabolism by CYP3A4.* Id. at 14; see also Ramadan, 875 (Table 4) (teaching that \"[d]osage adjustment and monitoring may be necessary\" when enzalutamide is co-administered with a strong CYP3A4 inhibitor).", + "The Examiner finds additional motivation in Hamilton's teaching that *when a drug is metabolized by CYP3A4, further co-administration of a CYP3A4 inducer leads to reduced (AUC and Cmax) drug exposure, and necessitates an increased dose of the drug in order to compensate for the concomitant CYP3A4 enzyme induction effect.\" Ans. 14; see also Hamilton, Abstract, 619-20 (teaching that erlotinib's starting dose is 100-150 mg/day and that studies suggest increasing erlotinib doses *up to 450-500 mg daily\" when co-administered CYP3A4 inducers).", + "Finally, the Examiner found motivation to use the claimed dose in Scher's teaching that the maximum tolerated dose of enzalutamide was 240 mg/day.", + "Moreover, as the Examiner points out, the very art Appellant relies on as teaching that rifampicin is \"complex\" also teaches that \"[k]etoconazole and rifampicin are the standard probe substrates used for, respectively, inhibition and induction of CYP3A4 in clinical protocols for DDIs.\" Srinivas\" 141-42.", + "With respect to Appellant's fifth evidentiary point, as the Examiner points out, and as reflected in the discussion above, the Examiner's is rejection relies on an aspect of enzalutamide's metabolism that was known: that it is metabolized by CYP3A4. Ans. 52 (*the issue at hand is not even the totality of all metabolic pathways, but just that via CYP3A4\").", + "Finally, with respect to Appellant's sixth, seventh, and eighth evidentiary points, the Examiner finds, and Appellant does not dispute, that FDA-required post-approval studies were \"common practice \u00b7 \u00b7 in the drug approval process.\" Ans. 53." + ], + "ptab_opinion": [ + "We designate claim 1 as representative.", + "We adopt the Examiner's s findings of fact and reasoning regarding the scope and content of the prior art, and agree that the claim 1 would have been obvious over the combination of Ramadan, Hamilton, FDA Draft Guidance for Industry, FDA Summary Review, and Scher.", + "We address Appellant's arguments below.", + "We are not persuaded.", + "The Examiner finds, and we agree, that Ramadan`s 's teaching that CYP3A4 inducers **antagonize[]* enzalutamide suggests that \"more of enzalutamide is needed to achieve therapeutic effect, i.e. the dose of enzalutamide needs to INCREASED.\" Ans. 31.", + "Taken together with Scher's teaching that a 240 mg/day dose of enzalutamide was tolerated in monotherapy, we agree with the Examiner that it would have been obvious to use a dose of 240 mg/day to treat prostate cancer when co-administered with a CYP3A4 inducer, as claimed.", + "We are not persuaded by Appellant's arguments that rifampin's effect on erlotinib is not representative of how rifampin would affect enzalutamide.", + "These facts support an expectation that rifampin would have a similar effect on both erlotinib and enzalutamide.", + "Moreover, this expectation is consistent with, and further supported by, Ramadan's 's teaching that \"[e]nzalutamide may be antagonized by \u00b7 \u00b7 \u00b7 CYP3A4 inducers\" and thus, \"[d]osage adjustment and monitoring may be necessary.\" Ramadan 875.", + "Taken together these teachings provide reason to adjust and increase the dose of enzalutamide when it is administered with a CYP3A4 inducer to treat prostate cancer.", + "But Waters Figure 3 shows that co-administration with rifampicin significantly lowered the AUCR for the vast majority of the drugs (21 out of 22) that were co-administered.", + "Waters thus supports a reasonable expectation that one would need to increase the dose of enzalutamide if it was co-administered with a CYP3A4 inducer.", + "See Tr. 8-9 (\"[Board]: \u00b7 . . doesn't [Waters figure 3] support an expectation that while you may not be able to quantify the exact amount or the exact dosage you would need, you would need to increase the dose of enzalutamide if it was co-administered with a CYP3A4 inducer? [Appellant's counsel]: It wouldn't be unreasonable to expect that but you still wouldn't know by how much which is important because the method is a method of treatment and the amount of enzalutamide needs to be safe and effective. \").", + "We are not persuaded.", + "We acknowledge that the art does not allow one to quantify with precision the exact highest dose of enzalutamide that would be safe and effective when enzalutamide is co-administered with a CYP3A inducer.", + "However, the inability to predict exact appropriate dosing absent experimentation does not, by itself, render the claimed dosage non-obvious.", + "Applying this reasoning to the present case, it cannot be the case that any new dosage of co-administered enzalutamide is patentable simply because one must test to quantify the extent of a recognized drug-drug interaction.", + "And, as discussed above, Ramadan, Hamilton, and Waters support increasing the dosage when co-administering enzalutamide with a CYP3A4 inducer. Ramadan 875 (Table 4); Hamilton 620; Waters 954 (Figure 3).", + "Taken together, we find that these teachings support that the ordinary artisan would reasonably have expected success in administering 240 mg of enzalutamide with a CYP3A4 inducer to treat prostate cancer, as claimed.", + "We consider Appellant's evidence of unpredictability together with the evidence, discussed above, supporting that an ordinary artisan would have reasonable expectation of success in practicing the method of claim 1.", + "With respect to Appellant's first and second evidentiary points, we acknowledge the unpredictability of drug-drug interactions in general, and of interactions with rifampicin in particular.", + "We also acknowledge variation in how co-administration of rifampicin affects the AUC of any particular drug.", + "However, as discussed above, the evidence of record supports an expectation that one would need to increase the dosage of drugs metabolized by CYP3A4 when co-administering them with a CYP3A4 inducer. Ramadan 875 (Table 4); Hamilton 620.", + "As to co-administration with the specific CYP3A4 inducer, rifampicin, Waters supports an expectation that one would need to increase dosage when co-administering with rifampicin. Waters 954 (Figure 3).", + "Accordingly, the complexity and variability of drug-drug interactions involving rifampicin does not meaningfully diminish the expectation of success in co-administering enzalutamide with a CYP3A4 inducer to treat prostate cancer.", + "With respect to Appellant's third and fourth evidentiary points, we acknowledge that it can be challenging to predict in vivo interactions from in vitro results.", + "We further acknowledge that there may be circumstances where a particular drug cannot be safely and effectively administered with a strong CYP3A4 inhibitor.", + "Even crediting Appellant's s example of bosutinib as a drug that cannot be administered safely and effectively with a CYP3A4 inducer, the evidence of record supports a reasonable expectation of success.", + "Although the existence of a drug that cannot be administered with a CYP3A4 inducer does somewhat diminish the expectation of success, the law does not require absolute predictability.", + "Here, the expectation fostered by the prior art discussed above is strong enough to support an expectation that enzalutamide could be co-administered successfully with a CYP3A4 inhibitor to treat prostate cancer even when considered with evidence of a different, unclaimed drug that cannot be co-administered with a CYP3A4 inhibitor.", + "As discussed above, this fact supports a reasonable expectation that dosage of enzalutamide would need to be increased when administered with a CYP3A4 inducer. Ramadan 874 (Table 4); Hamilton 620.", + "Moreover, the need to conduct post-marketing studies is not dispositive with respect to reasonable expectation of success.", + "On the one hand, there would be no need to conduct the studies if the outcome were entirely predictable.", + "On the other hand, the ordinary artisan might reasonably understand that the FDA would not require, or even authorize, a study for which there was no expectation of a successful outcome.", + "And, the FDA requirement for post-marketing trials does provide strong motivation for the ordinary artisan to study co-administration of enzalutamide with a CYP3A4 inducer.", + "In sum, considering the FDA requirement for post-approval study together with the cited prior art, the evidence of record supports that the ordinary artisan would have a reasonable expectation of success in co-administering enzalutamide with a CPY3A4 inducer as claimed.", + "Accordingly, we affirm the Examiner's rejection of claim 1.", + "Because they were not argues separately, claims 7-17 fall with claim 1." + ] +} \ No newline at end of file diff --git a/opinion_split/2021002560_Mail_Decision.json b/opinion_split/2021002560_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..0e32f9bd38ebb4054854669a67901e1630737ada --- /dev/null +++ b/opinion_split/2021002560_Mail_Decision.json @@ -0,0 +1,52 @@ +{ + "appellant_arguments": [ + "Appellant contends Broad is limited to communication within a single network and is silent with regards to considering *transmission cost of energy expenditure as a factor when determining whether to migrate from one network to another.* Appeal Br. 13.", + "Appellant contends the teachings of Broad and Prehofer are mutually exclusive and that one skilled in the art would not look to these references to teach determining whether to migrate from the current AN to another AN based in part of the transmission cost of energy. Id. at 14.", + "Appellant contends Prehofer does not teach or suggest **consideration of 'communication with potential parent devices in the other AN. ** ld. at 15.", + "Appellant contends Broad does not consider the amount of energy required to transmit the message bur teaches calculation the probability of a neighboring module receiving the packet. ld. at 16.", + "Appellant contends Broad does not teach or suggest considering transmission energy cost expenditure as a factor to determine whether to migrate from one network to another as Broad is only concerned with communications within a single network. Appeal Br. 13.", + "Appellant contends Prehofer does not teach or suggest does not teach *consideration of 'communication with potential parent devices in the other AN. \" Appeal Br. 15.", + "Appellant contends Broad uses a probability factor in its calculation of cost rather than the actual cost in energy. Appeal Br. 16.", + "Appellant's arguments with respect to these claims incorporates the arguments made with respect to claim 11 above. Appeal Br. 18-20.", + "Appellant also contends that Popa does not remedy the deficiencies of Prehofer and Broad. Id.", + "In addition to the arguments presented with respect to claim 11, Appellant contends neither Broad nor Prehofer teach that the energy cost is measure in data per energy unit. ld." + ], + "examiner_findings": [ + "Claims 11, 12, 21-23, 34, and 36 have been rejected under 35 U.S.C. S 103 as unpatentable over Prehofer in view of Broad.", + "Claims 14-17, 24-29, 32, and 33 have been rejected under 35 U.S.C. $ 103 as unpatentable over Perhofer in view of Broad and Popa.", + "The Examiner finds Perhofer teaches all of the elements of claim 11 except the limitation *and transmission cost of energy expenditure by the battery powered device to communicate with other parent devices in the current AN as compared to transmission cost by the battery powered device to communicate with potential parent devices in the other AN.\" Final Act. 5-6.", + "The Examiner finds Broad determining \"transmission cost of energy expenditure by the battery powered device to communicate with other parent devices in the current AN as compared to transmission cost to the battery powered device to communicate with potential parent devices in the other AN.\" Id. at 6-7.", + "The Examiner finds Broad teaches selecting a parent node based on which node would yield the lowest total energy cost. Id. at 7.", + "The Examiner concludes It would have been obvious to one of the ordinary skill in the art before the effective filling date of the claimed invention to modify / combine the features of Prehofer by using the above recited features, as taught by Broad, in order to provide wireless networks of interactive modules that self-adapt to changing transmission conditions where the modules conserver power and thus have a longer operating time (see Broad col 1 lines 61-67)(emphasis omitted). Id.", + "Thus, as the Examiner points out, \"While a probability variable is utilized in the calculation (\"probability factor'), a cost for each path is still calculated as clearly stated in col 6 lines 9-21.", + "The mere utilization of a number that represents a probability in the calculation does not mean a cost for the paths are not calculated and used in the determination. \" Ans. 5." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "The issue with respect to these claims is whether a preponderance of the evidence supports the Examiner's finding that the subject matter of claims 11, 12, 21-24, 34, and 36 would have been obvious to one of ordinary skill in the art as of the effective filing date of the present application over Perhofer combined with Broad.", + "We adopt the Examiner's findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection.", + "We find the Examiner has established a prima facie showing that the subject matter of the claims would have been obvious over Prehofer combined with Broad to a person of ordinary skill in the art as of the effective filing date of the present application.", + "Appellant has not produced evidence showing, or persuasively argued, that the Examiner's determinations on obviousness are incorrect.", + "Only those arguments made by Appellant in the Briefs have been considered in this Decision.", + "Arguments not presented in the Briefs are waived. See 37 C.F.R. S 41.37(c)(1)(iv).", + "We have identified claim 11 as representative; therefore, all claims, except claims 21 and 36 which were argued separately, fall with claim 11.", + "We address Appellants' arguments below.", + "We are not persuaded by this argument.", + "Appellant's argument is an attack on the teachings of Broad alone and not Broad combined with Prehofer.", + "**Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . \u00b7 [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. ~ In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "We agree with the Examiner that the combination of Prehofer and Broad teaches this limitation. Final Act. 7.", + "This argument is unpersuasive.", + "We agree with the Examiner Therefore, it is clear that Prehofer discloses that there is a determination whether to migrate way from a current AP (API **current AN\") to another AP (AP 2 \"the other AP\") and or to stay connected to a current AP (API **current AN\") via different ad hoc path to the current AP (i.e. node A' stays connected to current AP I via the bottom two mobile device depicted in fig. 2) based on a multitude of consideration/ availability of connection to the current AP. Ans. 4.", + "We remain unpersuaded by this argument.", + "Claim 11 only refers to \"transmission cost of energy expenditure\" and does not refer to actual costs. See Appeal Br. 23 (Claims Appx.).", + "Thus Appellant is arguing a limitation not recited in the claims.", + "That argument merely restates Appellant's prior argument made with respect to claim 11 that neither Broad nor Prehofer teach the limitation regarding determining whether to migrate from the current AN to another AN based in part on energy costs. Id.", + "For the reasons stated above, we find this argument unpersuasive.", + "We find this argument unpersuasive.", + "\" We find this passage teaches the limitation data per energy unit. See Appeal Br. 12.", + "Based on the foregoing we conclude that a preponderance of the evidence supports the Examiner's finding that the subject matter of claims 11, 12, 21-24, 34, and 36 would have been obvious to one of ordinary skill in the art as of the effective filing date of the present application over Perhofer combined with Broad.", + "As noted above, we do not find the teachings of Prehofer and Broad to be deficient.", + "Therefore, we affirm this rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/2021003631_Mail_Decision.json b/opinion_split/2021003631_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..49a74bc3ef71ceec17b97f3cd57c3a89f9411156 --- /dev/null +++ b/opinion_split/2021003631_Mail_Decision.json @@ -0,0 +1,92 @@ +{ + "appellant_arguments": [ + "Appellant contends the Examiner erred because Nixon merely discloses \"a graphical configuration system 34 which generally facilitates the creation of control and monitoring schemes\" and \"making the graphical displays that will be displayed to users, instead of actually controlling an actual interface to an alarm generator.\"", + "Appeal Br. 18; Reply Br. 3-4.", + "Appellant contends the Examiner erred because there is \"no disclosure that controller 40 of Nixon is configured to receive an alarm request from an alarm generator.\"", + "Appeal Br. 19; Reply Br. 4.", + "As Appellant correctly notes, the rejection does not otherwise **appear to indicate where this 'pull' method is disclosed in\" Nixon.", + "Appeal Br. 19.", + "Appellant contends the Examiner erred because the disclosed **pinging/pulling in [Day] is not by an alarm generator from an alarm server.\"", + "Reply Br. 2.", + "Appellant contends the Examiner erred because Nixon fails to teach \"confirmation of an alarm.' \"", + "Appeal Br. 20; Reply Br. 5.", + "Appellant contends the Examiner erred because Nixon's mobile server 178 does not have a local alarm and Day' pump 12 (i.e., where a local alarm is issued) *is not equivalent to an alarm server.\"", + "Appeal Br. 21; Reply Br. 5-6.", + "Appellant contends the Examiner erred because although Nixon discloses that mobile server 178 sends data to remote computing devices, \"that data is sent according to [a] data list that is stored on the mobile server 178.\"", + "Appeal Br. 15." + ], + "examiner_findings": [ + "In rejecting claim 1, the Examiner finds that Nixon's process plant environment teaches or suggests [1] *one or more interfaces for communication with one or more alarm sources and with one or more alarm generators.\"", + "Final Act. 3 (citing Nixon 11 64, 74, 87, 110); Final Act. 10-11 (further citing Nixon 11 70, 72, Fig. 1A, 11-J); Ans. 8-10.", + "In rejecting claim 1, the Examiner further relies on Nixon's notification or alarm criteria to teach or suggests a control module [2] \"configured to receive an alarm request from an alarm generator.'", + "Final Act. 3-4 (citing Nixon 11 99, 103-04, 110); Ans. 10-12.", + "In rejecting claim 1, the Examiner finds that Nixon fails \"to teach the control module being configured to provide or confirm the information relating to the alarm to the alarm generator according to a pull method for the alarm generator.\"", + "Final Act. 4.", + "The Examiner, however, finds that Day's using of \"pings\" to determine pumps that are available for configuration teaches or suggests a pull method because ***pinging* the pumps to determine their current status is analogous to 'pulling* information regarding their current status.\" \"", + "Ans. 5-6 (citing Day I 55, Fig. 5).", + "The Examiner, however, relies on Nixon, not Day, to teach or suggest an alarm generator and alarm server.", + "Final Act. 3-4.", + "In rejecting claim 5 as obvious, the Examiner finds that Nixon's teaching of use of a mobile device to view details of an alarm teaches or suggests a control module configured to [4] \"forward it to the alarm generator with confirmation of the alarm. \"", + "Final Act. 6 (citing Nixon I 87); Ans. 12-14.", + "In rejecting claim 6 as obvious, the Examiner finds that Day's issuance of a local alarm if an acknowledgement message is not received teaches or suggest modifying Nixon's system to include a control module configured to [5] \"trigger a local alarm at the alarm server after confirmation of the presence of an alarm to the alarm generator if the alarm generator fails to confirm an acknowledgment of a presence of an alarm by a user after a predefined time.", + "Final Act. 6 (citing Nixon 11 99, 110; Day ' 35); Ans. 14- 15.", + "In particular, the Examiner relies on Nixon to teach the claimed alarm server (Final Act. 6 (citing Nixon 11 99, 110)) and on Day to teach or suggest a local alarm triggered if acknowledgment of a presence of an alarm by a user is not received after a predefined time (Final Act. 6 (citing Day 1 35)).", + "The Examiner reject method claim 26 for reasons similar to the Examiner's rejection of alarm server device claim 1.", + "Final Act. 6.", + "We note that in rejecting claim 26, the Examiner finds that Nixon's sending of requested notifications or alarms to a remote computing device when corresponding criteria are met teaches or suggests [6] \"monitoring a first alarm generator for an alarm request.\"", + "Final Act. 3-4 (citing, e.g., Nixon ' 110); Ans. 4-5." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "Appellant's argument is not persuasive because the process plant environment of Nixon, further illustrated in Nixon's Figure 1A, which is reproduced below, teaches or suggests the claimed interfaces.", + "The disclosed communications in Nixon would make use of interfaces such as input/output devices or cards or their wireless counterparts.", + "See, e.g., Nixon I 65.", + "These enable communications with the field devices, which the Examiner correctly finds teaches the claimed alarm sources.", + "Final Act. 7.", + "They also enable communications with the mobile devices, which teach the claimed alarm generators.", + "ld. at 9.", + "Therefore, Nixon's mobile services infrastructure and other device communications with the field devices (i.e., alarm sources) and with the mobile devices (i.e., alarm generators) teach or suggest [1] *one or more interfaces for communication with one or more alarm sources and with one or more alarm generators.'", + "Appellant's arguments are not persuasive because Nixon specifically teaches that \"a user of the remote computing device may set notification or alarm criteria associated with any process data of the process control system by inclusion in the data list or by otherwise communicating such criteria to the mobile server 178.\"", + "Nixon I 110.", + "Such criteria fall within a reasonably broad interpretation of the claimed alarm request because, as Nixon teaches, mobile server 178 may \"send any requested notifications or alarms to the remote computing device when the corresponding criteria are met.\"", + "ld. (emphasis added).", + "Moreover, as noted above, the remote computing device, or mobile device, teaches or suggests the claimed alarm generator.", + "See also Nixon I 185 (\"the disclosure herein generally exemplifies remote computing devices as mobile devices 14\"); Final Act. 9.", + "Therefore, we agree with the Examiner that Nixon teaches or suggests a control module [2] \"configured to receive an alarm request from an alarm generator.'", + "Appellant's argument against Day individually is not persuasive given the Examiner's reliance on the combined teachings of Nixon and Day.", + "In re Keller, 642 F.2d 413, 426 (CCPA 1981).", + "Furthermore, we agree with the Examiner that Day's using of pinging to determine the current status of pumps teaches or suggests a pull method because the current status information is not sent until monitor/controller system 18 pings for the available pumps.", + "Day Fig. 5.", + "Moreover, Appellant does not show error in the Examiner's conclusion that it would have been obvious to modify Nixon using the teachings and suggestions of Day *in order to provide [an] opportunity [for] alarm suppression.", + "~ Final Act. 5 (citing Day I 25).", + "Therefore, we agree with the Examiner that the combination of Nixon and Day teaches or suggests a control module [3] \"configured to provide or confirm the information relating to the alarm to the alarm generator according to a pull method for the alarm generator.\" \"", + "Accordingly, we sustain the Examiner's 35 U.S.C. 103 rejection of claim 1, and claims 2, 4, 20, and 21, which Appellant argues are patentable for similar reasons.", + "Appeal Br. 19-24.", + "Appellant's arguments are not persuasive because they do not distinguish the claimed confirmation of an alarm from the alarm details of Nixon.", + "Although recitation [4] recites that information is forwarded to an alarm generator along with confirmation of the alarm, we are unable to find a disclosure in the Specification supporting an interpretation where the confirmation of the alarm forwarded to the alarm generator is separate from the message itself.", + "Thus, a broad but reasonable interpretation of the claimed \"confirmation of the alarm\" encompasses an alarm message.", + "Nixon broadly teaches that, using a mobile device (i.e., an alarm generator), a *user may view the details of the alarm, such as the alarm name, description, time and date of the alarm, time to respond, functional classification, trends associated with the process value that triggered the alarm, recommended corrective actions, etc.' \"", + "Nixon ' 87.", + "Thus, like the alarm server disclosed and claimed, Nixon's system provides an alarm, including the details of the alarm, to an alarm generator.", + "This falls within a broad but reasonable interpretation of forwarding alarm details along with confirmation of the alarm.", + "Therefore, we agree with the Examiner that Nixon teaches or suggests a control module configured to [4] **forward it to the alarm generator with confirmation of the alarm.\"", + "Accordingly, we sustain the Examiner's 35 U.S.C. 103 of claim 5.", + "We note that the use of the pronoun \"it\" in recitation [4] may be ambiguous.", + "Thus, we recommend that in the event of further prosecution Appellant and the Examiner ensure claim 5 is definite.", + "Appellant's arguments are not persuasive because Appellant attacks Nixon and Day individually even though the Examiner relies on their combined teachings and suggestions.", + "Keller, 642 F.2d at 426.", + "This modification to Nixon's mobile server 178--providing a backup alarm when an alarm is not acknowledged within a predetermined time (Day I 35)- would have been obvious to an artisan of ordinary skill as a way of limiting the risk that conditions that *may require urgent attention\" to \"avoid system failure, \u00b7 \u00b7 \u00b7 injury or damage, as well as significant . \u00b7 \u00b7 downtime\" are not left unaddressed for too long (Nixon ' 110 (cited in Final Act. 6).", + "Therefore, we agree with the Examiner that the combination of Nixon and Day teaches or suggests recitation [5].", + "Accordingly, we sustain the Examiner's 35 U.S.C. $ 103 rejection of claim 6.", + "We do not find Appellant's arguments with respect to claim 26 persuasive to the extent they are similar to Appellant's arguments with respect to claim 1, discussed above.", + "Appellant's arguments are not persuasive because even if Nixon's criteria for requested notifications or alarms are stored on mobile server 178, the criteria are set by a user of a remote computing device (i.e., an alarm generator).", + "Nixon I 110.", + "Claim 26 does not preclude storing an alarm request that is received (e.g., that is set by the user of a remote computing device).", + "Moreover, Nixon emphasizes that \"mobile server 178 is able to send the requested notifications or alarms to the remote computing device substantially in real time\" and that this is important because conditions may require \"urgent attention \u00b7 \u00b7 to avoid system failure, \u00b7 \u00b7 \u00b7 injury or death, [and] significant \u00b7 . downtime.\"", + "Id.", + "Thus, Nixon's criteria for requested notifications or alarms teaches or suggests an alarm request to both store for use with respect to future alarms and use immediately for pending alarms (possibly requiring urgent attention) as well.", + "Ans. 4-5 (citing Nixon ' 110).", + "Therefore, we agree with the Examiner that Nixon teaches or suggests recitation [6].", + "Accordingly, we sustain the Examiner's 35 U.S.C. 103 rejection of claim 26." + ] +} \ No newline at end of file diff --git a/opinion_split/2021003639_Mail_Decision.json b/opinion_split/2021003639_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..b74502e40b6d1b7623b7f85f0202dea2be7be79b --- /dev/null +++ b/opinion_split/2021003639_Mail_Decision.json @@ -0,0 +1,74 @@ +{ + "appellant_arguments": [ + "Turning back to the arguments in more detail, Appellant contends: the Examiner cites Bowman as teaching a server that distributes media content to playback devices for synchronized playback, buffers the content for distribution, and searches the buffered content in response to a device's request to be added to the distribution; but the cited disclosures rather merely teach the server as buffering frames of content for distribution to a master playback device and slave playback devices, fulfilling a request from the master device to add a slave device to the distribution, and fulfilling a request from the master device to distribute more content. Appeal Br. 14- 15.", + "Appellant also contends: the Examiner cites Ducheneaut as teaching a server that buffers media content for distribution and searches the buffered content for a most recent I-frame; but the cited disclosures rather merely teach playback devices that buffer content received from a server and synchronize their playback of the content by (in each device) determining imminently played I-frames of the content, reporting those I-frames to the other devices, and using the reports to align playback at a same **synchronization GOP\" (\"group of pictures\"). Appeal Br. 15-20.", + "Appellant rather contends that Ducheneaut does not teach how frames are selected for streaming to a newly-added device. Appeal Br. 18-20.", + "Appellant also contends a playback device's \"mechanism for selecting and initiating a media stream\" is not, as claimed, a playback device's request for synchronized playback that prompts a search of the content. Appeal Br. 21.", + "Appellant also contends that Ducheneaut does not teach \"a server component at all.\" Reply Br. 8.", + "Appellant also contends that the Examiner fails to address the claimed combination of buffering a *most recent I-frame and . . . subsequent frames\" and distributing only those frames to the added playback device. Reply Br. 8-9.", + "Appellant also contends that the Examiner incorrectly finds, at page 24 of the Answer, Bowman teaches the \"master\" playback device 102B of Figure 12 embodiment as being newly-added to the server's multicast of content; whereas the \"master\" device plainly always participates in the multicast (i.e., is plainly designated to a playback device of the multicast when initiated). Reply Br. 10." + ], + "examiner_findings": [ + "Claims 4-12 stand rejected under 35 U.S.C. 9 103 as being unpatentable over Bowman (US 2006/0149850 A1; July 6, 2006), Yoneda (US 2008/0177822 A1; July 24, 2008), and Ducheneaut (US 2006/0112344 A1; May 25, 2006). Ans. 10-22." + ], + "ptab_opinion": [ + "We have reviewed the rejection in light of the Examiner's s Answer and Appellant's briefs.", + "For the below reasons, we are unpersuaded of error in the Examiner's conclusion that the claims are obvious over the applied prior art.", + "However, because this Decision articulates reasoning and cites support for the combination so as to address omissions of the Examiner's s record (i.e., the Answer and Final Action) that denied Appellant sufficient information to understand the rejection, we designate our below determinations as including new grounds of rejection pursuant to 37 C.F.R. $ 41.50(b).", + "See In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (\"Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner. \"); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (Notice requirement of 35 U.S.C. 9 132 *is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. \").", + "A specific example of insufficient information in the Examiner's record is the lack of a clear explanation that the Examiner's proposed combination of Bowman's 's and Ducheneaut's teachings (herein *combination*) assigns a *master** function to a multicasting server.", + "See infra 8 (describing this feature of the combination).", + "Appellant does not realize this difference between Bowman's cited embodiment (which assigns the function to a client playback device) and the combination.", + "See, e.g., Appeal Br. 13, 23-24; Reply Br. 6-7, 9-10; see also infra 14 (addressing one of Appellant's argument that mischaracterizes the combination as assigning the function to a client playback device).", + "Appellant's misunderstanding of the combination is warranted; we understood the combination's assignment of the \"master\" function only because of the Answer's s quotation of Bowman's teaching that \"the media server may act as the master for playback synchronization purposes.\" Ans. 13 (quoting Bowman I 53).", + "This critical difference between the applied prior art's cited embodiments and the combination cannot be, as here, implied by the Examiner's record.", + "See Jung, 637 F.3d at 1362 (notice requirement); Leithem, 661 F.3d at 1319 (\"The ultimate criterion . . is whether applicants have had fair opportunity to react to the thrust of the rejection. \"); compare In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (\"[W]e will uphold a decision of less than ideal clarity if the agency's 's path may reasonably be discerned.' \" (quoting Bowman Transp., Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281, 285 (1974))).", + "Another specific example of insufficient information in the Examiner's record is that, to explain the how the combination achieves the argued claim features, our below analysis necessarily presents several *common sense\" rationales (supported by reasoning and evidence) to address gaps between the combination and argued claim limitations.", + "See infra 10-12.", + "The below \"common sense\" rationales constitute, in their particular instances, reasoning that Appellant has not had an opportunity to address.", + "See Leithem, 661 F.3d at 1319 (above-noted **opportunity to react\"); see also, e.g., In re Nouvel, 493 F. App'x 85, 93 (Fed. Cir. 2012) (addressing a **common sense\" rationale that constituted new grounds of rejection).", + "The above being said, our conclusions comport with the Examiner's record.", + "Our conclusions are entered as new grounds of rejection only in view of adding explanations and citations to the Examiner's record, e.g., to show the combination's puzzle-piece construction and common-sense operation (which are described below).", + "The Examiner's record still guides the rejection.", + "Turning to the contested claim limitations, we select the above-reproduced claim 4 as illustrative thereof.", + "See generally Appeal Br. (addressing only claim with particularity).", + "We conclude the combination achieves the disputed claim features.", + "To explain why, we first describe the combination in detail (because the Examiner's s record lacks sufficient detail).", + "In view of Bowman's Figure 2 embodiment, the combination includes a server that multicasts media content to client playback devices. Ans. 3-6 (citing Bowman 11 35-47).", + "Per Bowman's disclosure of optional features, the combination designates the server--not the above client device 102B---as the master playback device. Ans. 13 (citing Bowman I 53).", + "Thus, in addition to multicasting the content, the server also plays the content and performs the above \"master\" functions. Id. \" 53, 57, 59.", + "Accordingly, the server buffers the already-streamed content in a same-size buffer, empties the content when/as played, and multicasts content such that the content-level of the buffer stays within the threshold range of the nominal level. Id. 11 42-44, 47.", + "In view of Ducheneaut's Figure 12 embodiment, the combination's playback devices synchronize their playback of received media content (e.g., received via satellite) to a same \"group of pictures\" (GOP) of the content (in addition to synching their playback rates in view of Bowman). Ans. 12, 15-17 (citing Ducheneaut 11 139-40), 27 (citing Ducheneaut 11 128, 140, 143-44); see also Ducheneaut II 58, 64, 96.", + "Per Ducheneaut's disclosure of optional features, the combination adds a playback device to the playback despite that the other devices have already begun the playback (as is also contemplated by Bowman); that is, the combination aligns playback of an added device. Ans. 21, 27; see also Ducheneaut 11 146-47; Bowman 1 46.", + "We are unpersuaded of Examiner error because, as previously stated, the combination achieves the disputed claim features.", + "We determine so in view of the combination's puzzle-piece construction and common-sense operation, which are emphasized below to address the arguments.", + "In the combination, the first portion of the content received by the added device (i.e., first sent by the server to the added device) would be the content buffered by the server.", + "It is common sense for the added device to first receive this content because doing so avoids unnecessarily waiting for the server's next multicast of content.", + "See KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 421 (2007) (\"Rigid preventative rules that deny factfinders recourse to common sense . . are neither necessary under our case law nor consistent with it. \").", + "Also, doing so is supported by Ducheneaut's teachings because the content has not-yet been played (i.e., can align un-played GOPs), comprises the un-played GOPs near the start GOP (which has been played), and comprises GOPs near the current playback positions of the other devices.", + "Supra 6-7 (explaining Ducheneaut's s applied teachings); see e.g., Ducheneaut 11 144, 147, 164.", + "Thus, as claimed, the combination* server would distribute buffered content to playback devices, continue to buffer the content after the distribution, receive a device's request for synchronized playback with devices that already received the content, and respond by sending only the buffered content (and subsequent content) to the added device.", + "It is also common sense that such sending of the buffered content to the added device would, as claimed, entail a search of the content for a most recent I-frame.", + "It is common sense because the combination's buffer comprises at least the first-played frame of the next-played GOP (which is an I-frame because, per the combination's MPEG-2 video format (Ans. 16; Final Act. 16), GOPs are defined by the intervals between I-frames (Ducheneaut 11 75, 101, 137, 139)), the last-played frame thereof, and the frames therebetween.", + "And, retrieving these frames from the buffer would plainly entail identifying the first-played frame of the next-played GOP as the first frame that will be sent to the added device.", + "Nothing more is required of the claimed search for a most recent I-frame.", + "The Specification confirms that the search can be achieved by merely accessing buffered, already-distributed content to send an included first frame and subsequent frames of a next-played GOP (e.g., to avoid waiting for the next multicast of frames). Spec. 43:16-30.", + "Moreover, Appellant does not assert a different meaning of the claimed \"search\" for a *most recent I-frame,\" ~ much less show a required meaning that distinguishes the claimed invention over the combination's above features.", + "Appellant's contentions are not persuasive because it is common sense that the combination`s server would, in view of Ducheneaut, provide frames in increments of an I-frame/GOP because Ducheneaut's characterizations and synchronizations are directed to increments of one \"I-frames/GOPs.\" Ducheneaut 11 139-40, 144.", + "And, even MPEG-2 \"groups-of-pictures (GOP)\" (id. ' 75) terminology suggests that operations of the standard are directed to increments of one GOP.", + "We are unpersuaded of Examiner error because, as discussed, the combination`s 's server does not merely select and initiate a media stream.", + "The server receives a playback device's 's request for synchronized playback (with devices that already received the content) and responds by (in part) searching the content for a most recent I-frame. Supra 8.", + "To the extent Appellant contends Ducheneaut does not teach or suggest that such a playback device requests to be added, we disagree in two respects.", + "First, it is common sense that the added device requests to be added.", + "Second, Ducheneaut at least suggests (perhaps even teaches) that the added device requests to be added inasmuch that the *non-audience member who desired to join the shared social space\" (Ducheneaut I 146) and \"the non-audience member's device \u00b7 . request[s] the audience members' devices to characterize the GOPs near their current playback positions\" (id. ' 147); thus, a desire and capability to request the addition are respectively associated with the added member and their playback device.", + "See also KSR, 550 U.S. at 418 (\"[Obviousness] analysis \u00b7 \u00b7 \u00b7 can take account of the inferences . . . a person of ordinary skill in the art would employ. \").", + "We disagree because Ducheneaut teaches: '*an optional content provider service 419 that provides an experiential data stream\" (Ducheneaut I 58); \"[the control link used in the shared social space can be \u00b7 \u00b7 \u00b7 supported by a server\" (id. I 64); and \"relevant devices are determined depending on the type of communication architecture used to support the shared social space \u00b7 . . [, e.g., i]n a client-server architecture, \u00b7 \u00b7 [a] computer . \u00b7 \u00b7 accumulates and distributes information from each audience member's device\" (id. ' 96).", + "We are unpersuaded of Examiner error because, as discussed, the combination's server searches for the most recent I-frame within a buffer holding at least the next-played GOP--namely searching for the first-played frame thereof--and only that I-frame and subsequent frames are provided to the added device. Supra 8-9.", + "We agree with Appellant inasmuch that Bowman describes each of the embodiment's playback devices 102A-C as receiving the streamed content from the server.", + "We are unpersuaded of Examiner error, however, because the combination does not add the embodiment's master playback device 102B but rather designates the server as the \"master\" and adds another \"slave\" to the server's multicast. Ans. 4 (citing Bowman I 46), 13 (citing Bowman I 53).", + "Though the Examiner describes the *master** role with reference to the master playback device 102B, that is due to quoting Bowman's 's corresponding description of the *master* role (which selects playback device 102B as performing the \"master\" role). Ans. 23-24.", + "The quoting is intended to explain the **master* role and thereby show that the combination's server--by performing the \"master\" role--buffers already-distributed content (to dictate the playback rates of the playback devices). Id.; see also Bowman 11 13-14, 29-34, 43- 44.", + "We can discern this intent because the Examiner is responding to Appellant's argument that \"the buffer within [Bowman's] server [includes] the *new packets\"[.] Ans. 22 (quoting Appeal Br. 14).", + "For the foregoing reasons, we reverse the Examiner's rejection of claims 4-12 and enter new grounds of rejection pursuant to 37 C.F.R. $ 41.50(b)." + ] +} \ No newline at end of file diff --git a/opinion_split/2021004286_Mail_Decision.json b/opinion_split/2021004286_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..73a23814c840936259d83fa113fe8929ae6baa19 --- /dev/null +++ b/opinion_split/2021004286_Mail_Decision.json @@ -0,0 +1,52 @@ +{ + "appellant_arguments": [ + "Appellant argues that the \"claim is not attempting to monopolize organizing human behavior or an economic practice\" and that \"the claimed subject matter includes meaningful elements that link the exception to a particular technological environment. \" (Appeal Br. 8 (emphasis omitted).)", + "Nonetheless, Appellant asserts that *[i]ndependent claims 11 and 19 are different from claim 2 and must be interpreted and examined on their own merits. \" (Id.)" + ], + "examiner_findings": [ + "The Examiner determines that \"[the claim(s) recite(s) a method of playing a roulette game using financial market indicators. \" (Final Action 2.)", + "The Examiner determines that \"[a]s a roulette game, the claims are drawn to a method of determining financial obligations using probability.", + "They are also drawn to a method of forming gambling contracts.", + "\u00b7 Thus, the claims are drawn to methods of organizing human activity and are drawn to an abstract idea. \" (Answer 5.)" + ], + "ptab_opinion": [ + "With regard to step one of the Alice framework, we apply a \"directed to\" two-prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim **appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\" \"", + "Under step one of the Alice framework, we \"look at the *focus of the claimed advance over the prior art' to determine if the claim's Scharacter as a whole' is directed to excluded subject matter. \"", + "The Specification provides evidence as to what the claimed invention is directed.", + "In this case, the Specification discloses that the invention relates \"to systems and methods for providing a roulette game based on multiple financial market indicators. \" (Spec. 1, 11. 16-17.)", + "Claim 2 provides further evidence.", + "In short, claim 2 recites receiving data, displaying data, and processing/analyzing data.", + "Receiving, displaying, and processing/analyzing data have been determined to be directed to an abstract idea.", + "Claim 2 performs these steps through the recited generic at least one processor, memory, communication network, and electronic device.", + "In other words, the steps are performed using a generic computer system communicating over a generic communication network. (See Spec. 6, 11. 7- 15; 6,1. 31-7, 1. 8; 17, II. 19-15, see also Final Action 3.)", + "We agree with the Examiner that the claims recite a method of forming gambling contracts; specifically, by playing a roulette game, i.e., receiving a bet regarding the spin of a virtual roulette wheel, determining a result of the spin, and determining the outcome of the bet.", + "Claim 2 does not recite technological implementation details or \"a particular way of programming or designing the software \u00b7 \u00b7 \u00b7 , but instead merely claim[s] the resulting system[].\"", + "Specifically, claim 2 does not recite how the communication network receives input from the electronic device, how the processor causes the device to display the virtual roulette wheel spinning, how the processor determines the result of the spin, or how the processor determines the outcome of the bet.", + "Claim 2 does not recite a specific asserted improvement to computer technology.", + "Even if we consider claim 2 to be limited to a particular technological environment, **limiting the claims to [a] particular technological environment \u00b7 \u00b7 . is, without more, insufficient to transform them into patent- eligible applications of the abstract idea at their core.\"", + "Additionally, we do not find any indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing.", + "Nor do we find anything of record that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention **appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. \", (See 2019 Guidance at 54-55.)", + "In cases such as we have here, the inquiry as to whether the claims are directed to an abstract idea *often turns on whether the claims focus on *the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an *abstract idea\" for which computers are invoked merely as a tool.", + "Here, \"the claimed invention merely improves the abstract concept. \u00b7 \u00b7 using a computer only as a tool This is not what the Supreme Court meant by improving the functioning of the computer itself nor is it consistent with [Federal Circuit] precedent applying this concept.' \"", + "Moreover, \"[a] claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. \", In re Mohapatra, 842 F. App'r 635, 638 (Fed. Cir. 2021).", + "With regard to Appellant's monopolization/preemption argument, \"[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. \"", + "In other words, \"preemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility. \"", + "Thus, under prong one of the two prong test in the 2019 Guidance, claim 2 recites the abstract idea of certain methods of organizing human activity and, under prong two, additional elements in claim 2 do not **apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. \" (See 2019 Guidance at 54.)", + "As such, under step one of the Alice framework, claim 2 is directed to an abstract idea, and we move to step two.", + "Under step two, we examine, inter alia, whether a claim element or combination of elements **[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present. *, (2019 Guidance at 56.)", + "Taking the claim elements separately, the functions performed in claim 2 by the generic processor, memory, communication network, and electronic device are purely conventional.", + "Receiving, displaying, and processing/analyzing data are well-understood, routine, and conventional functions previously known to the industry.", + "Considered as an ordered combination, the generic computing components of Appellant's claimed invention add nothing that is not already present when the limitations are considered separately.", + "For example, claim 2 does not, as discussed above, purport to improve the functioning of the processor, memory, communication network, and electronic device themselves.", + "Nor does it effect an improvement in any other technology or technical field.", + "Instead, claim 2 amounts to nothing significantly more than an instruction to apply the abstract idea using generic computer components performing routine computer functions.", + "That is not enough to transform an abstract idea into a patent-eligible invention.", + "In view of the foregoing, we are not persuaded that the Examiner erred in rejecting claim 2 under 8 101.", + "Appellant does not present separate arguments for claims 3-21. (See Appeal Br. 9.)", + "However, in this case, the system claims are no different from the method claims in substance.", + "The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.", + "This Court has long \"warn[ed] \u00b7\u00b7\u00b7 against\" interpreting 101 *in ways that make patent eligibility 'depend simply on the draftsman's art. , \"", + "The article of manufacturing claims are similarly infirmed.", + "Therefore, with regard to claims 3-21, we are not persuaded that the Examiner erred in rejecting independent claims 11 and 19 or dependent claims 3-10, 12-18, 20, and 21." + ] +} \ No newline at end of file diff --git a/opinion_split/2021004556_Mail_Decision.json b/opinion_split/2021004556_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..ca02f3d100d256d69181fb6aaaf0902c494a8ed6 --- /dev/null +++ b/opinion_split/2021004556_Mail_Decision.json @@ -0,0 +1,65 @@ +{ + "appellant_arguments": [ + "Appellant contends: The Final Office Action fails to indicate where Cohn discloses any determination that any of the first, second or third instances of any dataset do not match, much less sending any fault message.", + "In fact, there is no mention anywhere in Cohn of any *fault message\", much less sending a fault message \"to management services\".", + "Appeal Br. 16; see Reply Br. 4.", + "Appellant replies: Paragraph [0045] of Cohn describes various types of events that may be received from IoT devices.", + "Presumably, the Examiner is asserting that the *instrumented part fails\" message is analogous to the **fault message\" of claim 1.", + "However, even assuming arguendo that the *instrumented part fails\" message of paragraph [0045] describes a type of fault message, it would only describe a fault message per se and not a fault message sent *in response to determining that at least one of the first instance of the dataset, the second instance of the dataset, and the third instance of the dataset do not match\" as recited in claim 1.", + "The messages described in paragraph [0045] of Cohn are types of messages that may be sent from a device within an IoT network; paragraph [0045] simply does not describe any type of matching performed between devices in or message sent using that network, and a fortiori does not describe \"determining that at least one of the first instance of the dataset, the second instance of the dataset, and the third instance of the dataset do not match\".", + "Reply Br. 4.", + "Appellant contends that the Examiner errs for two reasons.", + "Appeal Br. 19-22.", + "First, Appellant contends that the Examiner fails to show where Y Yeager discloses receiving a fault message that includes all received instances of the dataset.", + "Id. at 19-20.", + "Second, Appellant contends that the Examiner fails to show where Y Yeager discloses, *incrementing a faulty peer counter for the identified peer computing device.\"", + "Id. at 20-22.", + "Appellant replies that *related to\" is insufficient to show that Yeager discloses receiving fault messages, much less fault messages \"comprising all instances of a dataset received at the peer computing device.\"", + "Reply Br. 5, 6; Appeal Br. 26 (Claims App.); see Verdegaal Bros., 814 F.2d at 631 (\"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.\").", + "Moreover, Appellant replies that *peer monitoring\" is too general a disclosure to show fault detection, and that the specific examples in Yeager's paragraph 255 simply are not analogous to fault detection and fault messages, as recited in claim 12.", + "See Reply Br. 6." + ], + "examiner_findings": [ + "The Examiner rejects: a. claims 1-11 and 14-21 under 35 U.S.C. a 102(a)(2) as anticipated by Cohn (Final Act. 2-7); b. claims 12 and 13 under 35 U.S.C. 9 102(a)(1) as anticipated by Yeager (id. at 7-8).", + "As noted above, the Examiner rejects independent claim 1 as anticipated by Cohn.", + "Final Act. 2-3, 4-6.", + "The Examiner finds that Cohn discloses this element.", + "Final Act. 2-3 (citing Cohn I 17), 8-10 (citing Cohn 11 42, 43, 58); see Ans. 10 (citing Cohn I 45).", + "The Examiner finds, however, that: In regard the argument which states; \"The Final Office Action fails to indicate where Cohn discloses any determination that any of the first, second or third instances of any dataset do not match, much less sending any fault message.", + "In fact, there is no mention anywhere in Cohn of any *fault message\", much less sending a fault message *to management services? .C7 Examiner respectfully disagrees.", + "Cohn in Paragraph 45 partially discloses; \"An event can be received from a peer and/or within the [Internet of Things (IoT)] network.", + "Examples of events that can occur can be a sensor meeting a threshold value, instrumented part fails.' \" Argument is not correct.", + "Ans. 10.", + "As noted above, the Examiner rejects independent claim 12 as anticipated by Yeager.", + "Final Act. 7-8, 10.", + "The Examiner finds that Y eager discloses this disputed element.", + "Final Act. 7-8 (citing Yeager 11 125, 452), 10 (citing Y eager 11 452, 453, 457); see Ans. 11-12 (citing Yeager 11 145, 255, 270, 452, 457).", + "Regarding the first reason, the Examiner finds Yeager discloses: Pipes provide virtual communication channels among peers.", + "Messages sent in pipes may support transfers of data, content, and code in a protocol independent manner, allowing a range of security, integrity, and privacy options.", + "In one embodiment, messages may be structured with markup language such as XML.", + "Peer monitoring enables control of the behavior and activity of peers in a peer group and can be used to implement peer management functions including access control, priority setting, traffic metering, and bandwidth balancing.", + "Ans. 11 (quoting Yeager I 255, emphasis added).", + "The Examiner finds that *behavior monitoring is related to fault detection.\"", + "Id. (emphasis added).", + "Thus, the Examiner finds Y Yeager discloses receiving the recited fault messages." + ], + "ptab_opinion": [ + "We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon.", + "Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "Because we determine that reversal of the rejections of independent claims 1 and 12 are dispositive, except for our ultimate decision, we do not discuss the merits of the rejections of independent claims 9 and 13 or of dependent claims 2-8, 10, 11, and 14-21 further herein.", + "We address the rejections below.", + "For the reasons given below, we disagree with the Examiner's findings.", + "We agree with Appellant.", + "Although Cohn may disclose a fault message, the Examiner fails to show that Cohn's fault message is in response to the determination that instances of the dataset received in messages from the different peer computing devices do not match.", + "We are persuaded that the Examiner fails to show that Cohn discloses the disputed element of independent claim 1.", + "Because we are persuaded of Examiner error by at least one of Appellant's contentions, we need not reach the merits of Appellant's other contentions.", + "Accordingly, we do not sustain the Examiner's anticipation rejection of independent claim 1, of independent claim 9, which recites an element corresponding to the disputed element of claim 1, or of dependent claims 2-8, 10, 11, and 14-21, which are challenged based on alleged deficiencies in the rejection of their base claims.", + "See Appeal Br. 19.", + "For the reasons given below, we disagree with the Examiner's findings.", + "We disagree with the Examiner.", + "We agree with Appellant.", + "We are persuaded that the Examiner fails to show that Y Yeager discloses the disputed element of independent claim 12.", + "Because we are persuaded of Examiner error by at least one of Appellant's contentions, we need not reach the merits of Appellant's other contentions.", + "Accordingly, we do not sustain the Examiner's anticipation rejection of independent claim 12 or of independent claim 13, which recites an element corresponding to the disputed element of claim 12." + ] +} \ No newline at end of file diff --git a/opinion_split/2021004738_Mail_Decision.json b/opinion_split/2021004738_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..8f8122fbaca78129ab434285a89747cfc99b81c7 --- /dev/null +++ b/opinion_split/2021004738_Mail_Decision.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "The premise of Appellant's arguments is that Viswanathan distinctly defines the terms \"die\" and *heatsink (flange\") and, therefore, that Viswanathan's 's device does not have a thickness substantially the same as the thickness of the conductive pads \u00b7 Appeal Br. 9-10; Viswanathan 11 19, 22.", + "Appellant contends that these disclosures identify die 41 and heat sink (flange) 25 as distinct components. Appeal Br. 9-10.", + "Thus, Appellant argues that Viswanathan does not disclose dies having substantially the same thickness as the thickness of the conductive pads as recited in claim 1. Id. at 8." + ], + "examiner_findings": [ + "According to the Examiner, under the broadest reasonable interpretation, the claim term \"die\" is a broad term that encompasses Viswanathan's combined die 41/heat sink 25 assembly. Ans. 4.", + "Recognizing that Viswanathan does not disclose using dies having a thickness substantially the same as the thickness of the conductive pads, the Examiner relies on the combined thicknesses of Viswanathan's assembly components to meet the thickness limitation recited in the claim. Ans. 4; Viswanathan Figure 2 (compare conductive pad 31 vs. die 41/heat sink 25 assembly)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 9 6.", + "We reverse.", + "After review of the respective positions provided by Appellant and the Examiner, we reverse the Examiner's prior art rejection of claims 1-6 under 35 U.S.C. a 102(a)(1) for the reasons Appellant presents and add the following for emphasis.", + "We refer to the Examiner's Final Office Action for a complete statement of the rejections. Final Act. 2; see also Ans. 4-5.", + "The rejection turns on whether the combination of die 41 and heat sink 25 disclosed by Viswanathan can be considered \"a die\" as recited in claim 1. Appeal Br. 8-10; Ans. 4.", + "The Examiner bears the initial burden of presenting a prima facie case of anticipation and/or obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "The Examiner must first interpret a claim before the claim can be compared to the prior art.", + "\"[DJuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification. In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).", + "See also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.) (citations omitted); Phillips V. A AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (\"[T]he specification *is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. *** (Citation omitted)).", + "Appellant has identified reversible error in the Examiner's finding of anticipation.", + "Viswanathan's paragraph 22 defines die as a unit comprising specific active and passive components.", + "Viswanathan 11 19 and 22 both disclose that the \"die\" can be mounted on flanges (heat sinks).", + "One skilled in the art would reasonably conclude from these disclosures that the die and the heat sink of Viswanathan are distinct units.", + "That is, one skilled in the art would have understood that Viswanathan`s 's heat sink is not a component of the die, contrary to the Examiner's finding. Ans. 4.", + "Therefore, Viswanathan fails to teach using dies having substantially the same thickness as the thickness of the conductive pads.", + "Accordingly, we will not sustain the Examiner's prior art rejection of claims 1-6 under 35 U.S.C. S 102(a)(1) for the reasons Appellant presents and we give above." + ] +} \ No newline at end of file diff --git a/opinion_split/2022000452_Mail_Decision.json b/opinion_split/2022000452_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..6c3875940615a56304798795749309025cfa0364 --- /dev/null +++ b/opinion_split/2022000452_Mail_Decision.json @@ -0,0 +1,29 @@ +{ + "appellant_arguments": [ + "Appellant argues that Neuhauser only mentions neural networks regarding audio classification using feature vectors, but fails to teach hidden layers of a neural network.", + "In addition, Appellant argues that \"Lee does not disclose storing any vector including the values of any of the hidden layers of the CDBNs [(convolutional deep belief networks)] as vector representations of audio data whose spectrogram was used to generate features [sic] maps that were in turn used to determine the values of the hidden layer(s).\" Appeal Br. 7.", + "Further, Appellant argues that the Examiner did not provide a reason as to why an ordinarily skilled artisan would have modified Neuhauser with Lee or how the proposed combination would include the storing of a vector, as recited.", + "Appellant also argues that because neither Neuhauser nor Lee teach storage of the claimed vector including values for a hidden layer as a vector representation of audio data, the Examiner's proposed combination also fails to teach comparing the vector representation to vector representations of one or more songs and generating a playlist based on the comparison." + ], + "examiner_findings": [ + "The Examiner 's Rejection Claims 1, 3-6, 8, 9, 11-14, 16, 17, and 20 stand rejected under 35 U.S.C. 9 103 as being unpatentable over Neuhauser et al. (US 2014/0180674 A1; June 26, 2014) (\"Neuhauser\"); Honglak Lee, et al., Unsupervised feature learningfor for audio classification using convolutional deep belief networks, 1-9 (Stanford University, 2009) (\"Lee\"); and Heitz, III et al. (US 2012/0290621 A1; Nov. 15, 2012) (\"Heitz*\").", + "ANALYSIS\" In rejecting claim 1, inter alia, the Examiner finds Neuhauser teaches receiving a spectrogram generated from audio data, storing a vector as a vector representation of the audio data, and comparing the vector representation of the audio data to the vector representation data received for one or more songs.", + "The Examiner relies on Lee to teach applying a convolution to the spectrogram to create a feature map, determining values for a hidden layer of a neural network based on the feature map wherein the hidden layer comprises a vector comprising the values for the hidden layer, and determining a label for the audio data based on the determined values for the hidden layer of the neural network.", + "The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of Appellant's invention to modify Neuhauser': method for producing supplemental information for audio signature data to incorporate Lee's application of convolutional deep belief networks to unlabeled auditory data.", + "The Examiner explains that the proposed combination would *improve accuracy for audio classification by augmenting Neuhauser's extracted ***Mel-frequency cepstral coefficients (MFCCs)' \u00b7 \u00b7 . with Lee's features . . . because Lee's *second-layer features produce higher accuracy than the first-layer features, which justifies the use of deep learning approaches for audio classification.", + "In addition, the Examiner relies on Heitz to teach generating a playlist comprising one or more songs based on the comparison of vector representations." + ], + "ptab_opinion": [ + "Appellant's arguments are not persuasive of Examiner error because, at least, the arguments are not responsive to the rejection as articulated by the Examiner.", + "More specifically, as discussed above, the Examiner relies on Lee, not Neuhauser, to teach determining values for a hidden layer of a neural network based on the feature map wherein the hidden layer comprises a vector comprising the values for the hidden layer.", + "In addition, the Examiner relies on Neuhauser, not Lee, to teach storing a vector as a vector representation of the audio data.", + "Further, contrary to Appellant's assertions, the Examiner has set forth articulated reasoning with rational underpinning to support the proposed combination.", + "Specifically, the Examiner explains that Lee describes the benefits of using deep learning algorithms to various audio classification tasks (such as those described in Neuhauser).", + "As discussed above, we do not find Appellant's s arguments persuasive that the combination of Neuhauser and Lee fails to teach storing the vector comprising the values for the hidden layer as a vector representation of the audio data.", + "As such, Appellant's arguments are unavailing that the Examiner's s proposed combination also fails to teach comparing the stored vector representation to the vector representations of one or more songs and generating a playlist based on the comparison.", + "For the reasons discussed supra, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's rejection of independent claim 1.", + "For similar reasons, we also sustain the Examiner's s rejection of independent claims 9 and 17, which recite similar limitations and which were not argued separately.", + "In addition, we sustain the Examiner's rejection of claims 3-6, 8, 11-14, 16, and 20, which depend directly or indirectly therefrom and were not argued separately." + ] +} \ No newline at end of file diff --git a/opinion_split/2022001881_Mail_Decision.json b/opinion_split/2022001881_Mail_Decision.json new file mode 100644 index 0000000000000000000000000000000000000000..b4884fdf97b6b5e8b51fe7baa0ed68b252427097 --- /dev/null +++ b/opinion_split/2022001881_Mail_Decision.json @@ -0,0 +1,61 @@ +{ + "appellant_arguments": [ + "Appellant contends that Hao does not disclose the claimed **subscriber-specific platform configuration information\" because Hao discloses only that a client device may request a standard definition version or a high-definition version of the digital content. Appeal Br. 12-13.", + "In particular, Appellant argues that Hao discloses client devices and different customers or content consumers, rather than the same content provider having different configuration information for different properties, as required by claim 1 and supported by Appellant's Specification. Id. at 13-14, Reply Br. 3-5.", + "Appellant further argues that Hao's paragraph 53 *states nothing about the `configuration information 660,' which is cited by the office action as the claimed first and second configuration information.\" Appeal Br. 12-13.", + "Regarding Hao's Figure 6, Appellant argues that **[]here is no indication that the table 600 of Hao would include different subscriber-specific platform configuration information for two different properties of the same content provider.\" ld. at 13.", + "According to Appellant, \"[a] particular content provider in Hao may, for example, have the same configuration information for all properties - e.g., deliver in high definition if the resolution of the client device exceeds a threshold.\" ld. at 14-15; Reply Br. 4.", + "Appellant additionally contends the Examiner erroneously relies on Hao's configuration information 660 to disclose the claimed subscriber- specific platform configuration information: [t]here is no indication that *`configuration information 660* in Hao (a) includes any information about origin servers; (b) is obtained by a control service from platform configuration storage in response to a request by a delivery server; or (c) is provided to the delivery server or is used by a delivery server to form local configuration information for the particular subscriber (content provider) based on the capabilities of the delivery server. Appeal Br. 15.", + "According to Appellant, Hao's **`configuration information* \u00b7 \u25a0 is clearly just version of information for content (and not configuration information that a delivery server in a content delivery network[] requests, receives, and customizes). \" Id. at 16.", + "Regarding the combination of Newton and Hao, Appellant contends that \"the alleged combination of Hao with Newton would not have led one of ordinary skill in the art to the method of claim 1.\" Appeal Br. 15-16; Reply Br. 5-6.", + "Specifically, Appellant argues, \"[o]ne of ordinary skill in the art would not read Newton and Hao and determine that it would be advantageous to modify the customer configuration scripts (CCSs) of Newton . . . to make such CCSs specific to a particular property of a subscriber.\" Id. at 16.", + "Appellant further contends that the Examiner's articulated reasoning to combine *presupposes[] \u00b7 \u00b7 that one of ordinary skill in the art would recognize a benefit to making the CCSs of Netwon resource-specific,\" but that \"the Office Action has not alleged that Newton discloses such benefit.\" Id.", + "Appellant also argues that Hao discloses *an entirely different system,\" and \"`[]here is no indication that the *script* recited in Hao is, itself, in any way combinable with a CCS or would be used' to control delivery of content for a subscriber, let alone to create different configuration information for different properties of the same subscriber.\" \" Id.; Reply Br. 6." + ], + "examiner_findings": [ + "In rejecting claim 1, the Examiner relies on Newton as disclosing all of the limitations except \"the subscriber-specific platform configuration information . \u00b7 \u00b7 includes first configuration information applicable to a first property of the particular subscriber and second configuration information applicable to a second property of the particular subscriber, wherein the first configuration information and the second configuration information are different,\" for which the Examiner relies on Hao. Final Act. 6-9.", + "Specifically, the Examiner finds that Newton's \"Customer Configuration Scripts [(CCSs]\" correspond to the claimed \"subscriber-specific platform configuration information,\" and the Examiner maps the claimed delivery server and origin servers to Newton's 's servers 1102, 1114. ld. at 6-8; Ans. 7- 8.", + "The Examiner additionally relies on Newton as disclosing that the claimed subscriber is a content provider. Final Act. 6; Ans. 7.", + "As to Hao, the Examiner maps the claimed first and second configuration information to Hao's configuration information for a standard definition version of digital content and Hao's configuration information for a high-definition version of the digital content. Final Act. 8-9 (citing Hao Fig. 6, II 43, 53, 55-57); Ans. 8-9.", + "The Examiner explains that Hao's data record includes *configuration information 660 column [that] has a different row for each identified digital content/property, wherein the standard definition version is different than the high definition version. Final Act. 9 (emphasis omitted).", + "The Examiner determines that the skilled artisan would have used Hao's data record \"to modify [Newton's]'s] Customer Configuration Scripts to include information identifying content providers, particular pieces of content, and version information related to each piece of content.\" Final Act. 9.", + "The Examiner reasons that using Hao's data record would have **enhance[d] the delivery of [Newton's] *s] content by making it resource-specific\" and \"by linking identified digital content with the identified version information.' Id.", + "The Examiner reasons, in other words, that combining the teachings of Hao and Newton would allow Newton's CCSs \"to comprise additional information\" and Newton's CDN server \"to optimally retrieve data that is applicable to resources available,\" thereby \"enhancing information retrieval.\" Ans. 9-10.", + "Further relying on Newton, the Examiner finds that Newton's CCSs correspond to subscriber-specific platform configuration information that meets the claimed steps of being \"generat[ed] \u00b7 \u00b7 for said at least one property of said particular subscriber\" in response to being received from the content provider; being *stor[ed] \u00b7 \u00b7 \u00b7 in platform configuration storage\"; being *obtain[ed] . . and provid[ed] by the control service . \u00b7 . to said at least one CDN component, wherein the at least one CDN component is a delivery server\"; being \"receiv[ed] by the delivery server\"; **compris[ing] origin servers from which to fill requests for the at least one property\", and *in response to [being] receiv[ed] \u00b7 \u00b7 from the control service, [being] customiz[ed] by the delivery service \u00b7 \u00b7 \u00b7 to form local configuration information for said particular subscriber based on capabilities of the delivery server.' Final Act. 6-8; Ans. 7-8." + ], + "ptab_opinion": [ + "We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon.", + "Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"Ilt has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections. M).", + "We disagree with Appellant's arguments, and we adopt as our own (1) the pertinent findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 6-24) and (2) the corresponding reasons set forth by the Examiner in the Examiner's s Answer in response to Appellant's Appeal Brief (Ans. 5-10).", + "We concur with the applicable conclusions reached by the Examiner and add the following to address and emphasize specific findings and arguments.", + "In rejecting claims under 35 U.S.C. 9 103, the Examiner must establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).", + "However, there is no ipsissimis verbis test for determining whether a reference discloses a claim element, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).", + "Furthermore, the Examiner's obviousness rejection must be based on *some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness\" .", + "[H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int 'I Co. V. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).", + "If the Examiner's s burden is met, the burden then shifts to Appellant to overcome the prima facie case with argument and/or evidence.", + "Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "We are unpersuaded by Appellant's arguments that the Examiner's findings concerning the teachings of Hao are in error.", + "In the Examiner's cited portions of Hao, Hao discloses \"block 510\" that identifies information including a client device's request for digital content. Hao I 53.", + "Hao discloses that \"`[The request [for digital content] may further include, for example, information regarding a requested format and/or version of the content (e.g., a standard definition version or a high-definition version of the digital content).\" \" Id.", + "Hao further discloses that \"block 510 may include service provider 110 storing a data record, such as exemplary data record 600.\" Id. I 55.", + "Hao's \"\"[d]ata record 600 may further include configuration information 660 that identifies a version of the digital content that is compatible with client device 130.\" Id. ' 56.", + "Accordingly, contrary to Appellant's arguments (Appeal Br. 13-15), because Hao describes block 510 as including storing data record 600, the Examiner's finding that Hao's configuration information 660 identifies a standard definition version of content or a high-definition version of content, is reasonable.", + "Furthermore, in view of Hao's disclosures, as outlined above, the Examiner reasonably infers that Hao at least suggests that a standard definition version of content and a high-definition version of the content are different properties that would require different configuration information. Final Act. 8-9.", + "Appellant's arguments do not point out the deficiencies in those findings, nor establish that the Examiner's findings are unreasonable.", + "For example, Appellant's s speculation that \"[a] particular content provider in Hao may, for example, have the same configuration information for all properties,\" \" does not address the Examiner's specific findings. Appeal Br. 14-15; Reply Br. 4.", + "Appellant's arguments discussing the references separately are also unpersuasive because the Examiner's rejection is based on the combined teachings of Newton and Hao, rather than Hao alone.", + "One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Here, the Examiner relies on Hao only to disclose the subscriber- specific platform configuration information including first and second different configuration information applicable to first and second properties. Final Act. 8-9; Ans. 8.", + "Notably, the Examiner relies on Newton--not Hao-- to disclose both the claimed features of the subscriber and the remaining claimed features of the subscriber-specific platform configuration information.", + "Specifically, the Examiner finds that Newton discloses the subscriber being a content provider. Final Act. 6; see also Appeal Br. 12-15, Reply Br. 3-5 (both briefs arguing Hao does not disclose a content provider or the same content provider).", + "We are also unpersuaded by Appellant's arguments pointing out error in the Examiner's rationale to combine the teachings of Newton and Hao in the manner the Examiner articulates.", + "We agree with the Examiner's findings and conclusion and adopt them as our own. Final Act. 9; Ans. 9-10.", + "As the Examiner explains, the skilled artisan would have combined Newton and Hao's teachings to modify Newton's CCSs to include, among other information, version information for the content. Final Act. 9.", + "Accordingly, the Newton-Hao CCSs would have included one CCS including first configuration information for a first, e.g., standard definition, version of the content, and a second, different CCS including second configuration information for a second and different, e.g., high-definition, version of the content.", + "Because the Newton-Hao CCSs would have, therefore, separately identified the standard definition version of content from the high-definition version of content, we are unpersuaded of error in the Examiner's reasoning that content delivery would have been enhanced by including version-specific information to deliver a particular version of the content requested by a user. Final Act. 9; Ans. 9-10.", + "With respect to Appellant's s arguments that \"the Office Action has not alleged that Newton discloses such benefit [to making Newton's CCSs resource-specifie]\" (Appeal Br. 16), that Hao relates to *an entirely different system\" (id.), and that Hao's script is not indicated as being combinable with Newton's CCSs (Reply Br. 6), these arguments ignore that \"`[The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . \u00b7 . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.\" See Keller, 642 F.2d at 425 (citation omitted).", + "Accordingly, Newton is not required to disclose a benefit of being combined with Hao.", + "Furthermore, the Examiner does not purport to combine Hao's entire system or Hao's script with Newton's CCSs or CDN.", + "Instead, the Examiner specifically modifies Newton's CCSs to enhance the configuration information including different information similar to Hao's different configuration information that identifies version information. Final Act. 9; Ans. 9-10." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022000513_02-23-2023.json b/opinion_split/Decision_2022000513_02-23-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..6c7a36f264caf7bae1a434e9e51ad7b372bbb415 --- /dev/null +++ b/opinion_split/Decision_2022000513_02-23-2023.json @@ -0,0 +1,26 @@ +{ + "appellant_arguments": [ + "Appellant argues, among other things, that none of the references discloses the organization element is 'formed as one element* as recited in claim 1. Appeal Br. 7-8." + ], + "examiner_findings": [ + "In rejecting claim 1 as unpatentable over Q-tips, 4sgm, Ishikawa, and Aldridge, the Examiner found Q-tips (as evidenced by 4sgm) discloses a package for a product including a hard-shell container, first receptacle, second receptacle, and inner graphic bonding layer visible through the transparent container. Final Act. 2.", + "The Examiner found Q-tips does not disclose an organization element as recited in claim 1. Id. at 2-3.", + "The Examiner found Ishikawa discloses a package for a product including an organization element, belly band 252, that is inserted into a first receptacle to secure an arrangement of the product in place. Id. at 3.", + "The Examiner determined that it would have been obvious to have modified Q-tips to include an organization element in the inside of a graphic branding layer as an obvious matter of choice or design. Id.", + "The Examiner found that Ishikawa discloses a plurality of belly bands defining a plurality of compartments, and determined that because such an arrangement is known, it would have been obvious to employ a plurality of such elements to secure multiple stacks of product in place to contain the desired amount of the product. Id. at 3-4.", + "The Examiner determined also that when a plurality of belly bands is used as depicted in Ishikawa's Figure 41, the belly bands would be formed as one element. See id. at 5-6; Advisory Action entered February 25, 2021, Continuation Sheet.", + "The Examiner's position is that this arrangement is 'a plurality said bands \u00b7 \u00b7 \u00b7 used in a side-by-side manner to form the organization element as one element.' Ans. 6." + ], + "ptab_opinion": [ + "We reverse.", + "We confine our discussion to claim 1, which is sufficient to decide the rejections on appeal.", + "We are persuaded by Appellant's arguments.", + "Thus, in view of the Specification, the recitation in claim 1 that \"the organization element is formed as one element comprising the plurality of belly bands\" does not include a collection of separately provided belly bands.", + "We understand from Ishikawa's disclosure that the bands 252 are bonded to the tray 224, but the bands 252 are not bonded to one another. Id. I 189.", + "However, as discussed above, Ishikawa's arrangement constitutes a collection of separately provided belly bands, which according to the Specification, is a different arrangement than a number of belly bands provided as one element. See Reply Br. 2.", + "Accordingly, Ishikawa does not disclose an *organization element is formed as one element comprising the plurality of belly bands' as recited in claim 1.", + "As a result, we reverse the Examiner's decision to reject claim 1, as well as independent claim 12 containing similar limitations, and the claims dependent therefrom.", + "The additional prior art cited by the Examiner does not remedy the deficiencies discussed above. See Final Act. 6-7.", + "Accordingly, we reverse Rejections 2 and 3 for similar reasons as discussed above for Rejection 1." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022001035_06-27-2023.json b/opinion_split/Decision_2022001035_06-27-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..fdc9e8e7ac694385c9908bc7f31c18823d9818b5 --- /dev/null +++ b/opinion_split/Decision_2022001035_06-27-2023.json @@ -0,0 +1,133 @@ +{ + "appellant_arguments": [ + "Appellant argues the pending claims as a group. Appeal Br. 6-12.", + "Appellant argues that the Examiner erred in determining that claim 1 recites an abstract idea, because the Examiner does not identify a sub- grouping of the certain methods of organizing human activity grouping of abstract ideas. Appeal Br. 7-8.", + "Appellant argues that at Prong Two of the analysis the Examiner *improperly considers the well-understood, routine, and conventional activity of the additional elements in finding that the claims do not integrate the judicial exception into a practical application.\" Appeal Br. 9.", + "Appellant argues that claim 1 improves the functionality of a call center by assigning a first resource as mandatory and a second resource as optional (limitation (1); connecting the devices with both resources (limitation g); and modifying the composition of the team of resources by assigning the first resource as optional after determining the composition requires a change (limitation (). See Appeal Br. 9-10.", + "Appellant contends that by designating a work item as mandatory for one resource and optional for another, claim 1 ensures that the correct resource is working on the correct work item and/or has the option to not work on the work item. Id. at 10.", + "Also, by dynamically updating the workforce when the team composition requires a change, claim 1 helps the contact center *improve[] in its goal of ensuring that the best group of agents is provided to all customer contacts.\" Id. (citing Spec. 11 7-12); see also Reply Br. 2-3.", + "We also are not persuaded by Appellant's argument regarding preemption. Appeal Br. 11.", + "Appellant argues that claim 1 uses the judicial exception with a particular machine or manufacture that is integral to the claim. Appeal Br. 11-12.", + "In particular, Appellant contends that \"the processor is an additional element \u00b7 \u25a0 \u00b7 that interacts with an IVR system, which is a particular machine that is integral to the claim.** Id. at 11.", + "Without the IVR system, \"no information related to the request from the customer would be gathered.\" Id.", + "Appellant further contends that claim 1 *transform[s] [information] by a processor in a call center\" (id.), such that \"the assignment of a team resources could not occur without the information gathered by the IVR system\" (id. at 12).", + "Appellant argues that claim 1 **enable[s] a network topology to be modified by connecting one or more devices associated with the first and second resources to the communication device associated with the customer, establishing a node architecture.\" Appeal Br. 12.", + "According to Appellant enabling communications to one node instead of another node provides an inventive concept. Id.", + "Appellant argues that the Examiner erred in rejecting independent claims 1, 11, and 19 because Pierce does not teach \"assigning, via the processor, the first resource as mandatory for the work item and the second resource as optional for the work item, as recited in independent claim 1, limitation (f), and similarly recited in claims 11 and 19. See Appeal Br. 12- 14; see also Reply Br. 3." + ], + "examiner_findings": [ + "Claims 1-20 are rejected under 35 U.S.C. 5 101 as directed to a judicial exception without significantly more.", + "Claims 1, 3, 4, 8, 10, 11, 13, 14, and 18-20 are rejected under 35 U.S.C. 9 103 as unpatentable over Makagon (US 2009/0168990 A1, pub. July 2, 2009), Flockhart (US 2013/0083915 A1, pub. Apr. 4, 2013), and Pierce (US 2013/0058475 A1, pub. Mar. 7, 2013).", + "Claims 5 and 15 are rejected under 35 U.S.C. S 103 as unpatentable over Makagon, Flockhart, Pierce, and Jordan (US 2008/0065450 A1, pub. Mar. 13, 2008).", + "Claims 6, 7, 16, and 17 are rejected under 35 U.S.C. $ 103 as unpatentable over Makagon, Flockhart, Pierce, and Stuart (US 6,639,982 B1, iss. Oct. 28, 2003).", + "Claim 9 is rejected under 35 U.S.C. $ 103 as unpatentable over Makagon, Flockhart, Pierce, and Parad (US 5,369,570, iss. Nov. 29, 1994).", + "Claims 2 and 12 are rejected under 35 U.S.C. 5 103 as unpatentable over Makagon, Flockhart, Pierce, Parad, and Kohler (US 2012/0183131 A1, pub. July 19, 2012).", + "The Examiner determined that claim 1 recites a method of dynamically assigning resources in a contact center, which is a method of organizing human activity. Final Act. 4-6.", + "The Examiner further determined that claim 1 does not recite additional elements that integrate the abstract idea into a practical application and that amount to significantly more than the abstract idea. Id. at 6-9.", + "The Examiner determined that the remaining claims are directed to the same abstract idea, and do not recite additional elements that integrate the abstract idea into a practical application and that amount to significantly more than the abstract idea. See id. at 9-15.", + "For example, at page 6 of the Final Office Action, the Examiner determines that the claimed steps \"represent[ ] organizing a workforce for conducting commerce and amount[ ] to managing sales activities, business relations, personal behavior, and/or interactions between people.\" See also id. at 5 (determining that the claimed method \"sets forth a series of steps for conducting commerce between a customer and human resources of a contact center, and that certain steps are \"tasks that are those traditionally carried out when initiating business with a customer*).", + "Instead, the Examiner determines that the additional elements are recited at a high level of generality, such that they amount to mere instructions to apply the abstract idea in a particular technological environment, namely, an automated contact center. Id. at 7.", + "The Examiner further determines that claim 1 lacks the details necessary to carry out the abstract idea such that the additional elements amount to a generic statement to apply the abstract idea in an automated contact center. Id. at 8; see also Ans. 5-6.", + "The Examiner found that these elements, considered individually and in combination, are recited at a high degree of generality, and are insufficient to make claim 84 amount to significantly more than the abstract idea. Final Act. 15-17 (citing Spec. 11 168, 171, 176).", + "In rejecting claim 1, the Examiner relies on Pierce as disclosing the argued limitation. See Final Act. 19 (citing Pierce 11 59, 60, 63, 64, 70-73, Figs. 4-6), 23, 24.", + "The Examiner finds that Pierce teaches \"assigning agent A as preferred, i.e. 'mandatory,' and Agent B as non-preferred, i.e. 'optional,' based on matching attributes of the customer contact, determining during the call that the Agent B is better matched, and assigning Agent B as the preferred agent, after which Agent A may drop from the call, i.e. is non- preferred or *optional. *** Final Act. 19.", + "In the Answer, the Examiner finds that Pierce's preferred agent is the claimed \"mandatory\" resource because \"it is the agent that is ultimately required to service the contact because of the high level of matching attributes,\" and that Pierce's non-preferred agent is the claimed **optional** resource because the customer has the option to wait for a preferred agent or to connect to a non-preferred agent. Ans. 13-14 (citing Pierce 11 65, 67, 68).", + "The Examiner determines that \"the claim features of *assigning' resources as 'mandatory' and 'optional' and subsequently 'modifying' these assignments are taught by the assignment of 'preferred' and 'non-preferred' agents in Pierce.\" Id. at 15." + ], + "ptab_opinion": [ + "Appellant appeals under 35 U.S.C. 5 134(a) from the Examiner's final rejection of claims 1-20.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "Appellant identifies Avaya Inc. as the real party in interest. Appeal Br. 2.", + "On May 18, 2023, at Reel 063690, Frame 0359; Reel 063705, Frame 0023; and Reel 063779, Frame 0622, three assignments were recorded at the Office, releasing three security interests in this application.", + "The assignees to these assignments include Avaya Management L.P., Avaya Inc., Intellisist, Inc., Avaya Integrated Cabinet Solutions LLC, Octel Communications LLC, VPNET Technologies, Inc., Zang, Inc. (formerly Avaya Cloud Inc.), Hyperquality, Inc., Hyperquality II, LLC, and CAAS Technologies, LLC.", + "The panel does not have a conflict with any of these entities.", + "Appellant's claimed invention relates generally to contact centers. Spec. I 1.", + "Claims 1, 11, and 19 are the independent claims on appeal.", + "Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter:", + "1. A method of dynamically assigning processing resources in a contact center, comprising: [a] receiving, at a processor of the contact center, a contact communication from a communication device associated with a customer comprising a request for a processing resource of the contact center; [b] gathering, by an Interactive Voice Response (IVR) system of the contact center, information related to the request; [c] transforming, via the processor, the information related to the request into a work item stored in a data structure; [d] determining, via the processor and based on the work item, at least one need of the customer; [e] determining, via the processor and based at least partially on the at least one need of the customer, a team of resources for assignment to the work item over a duration of the work item, the team of resources comprising at least a first resource and a second resource; [f] assigning, via the processor, the first resource as mandatory for the work item and the second resource as optional for the work item; [g] connecting, via a communication interface, one or more devices associated with each resource in the team of resources with the communication device associated with the customer; [h] determining, automatically via the processor, that a change in the work item requires a change to a composition of the team of resources; and [i] modifying, automatically while the work item is being handled by the team of resources and in response to determining that the composition of team of resources requires the change, the composition of the team of resources by assigning, via the processor, the first resource as optional. Appeal Br. 16 (Claims App.).", + "We select independent claim 1 as representative.", + "The remaining claims stand or fall with claim 1. See 37 C.F.R. 9 41.37(c)(1)().", + "An invention is patent eligible ifit is a *new and useful process, machine, manufacture, or composition of matter.\" \" 35 U.S.C. 9 101.", + "However, the Supreme Court has long interpreted section 101 to include implicit exceptions: *[l]aws of nature, natural phenomena, and abstract ideas are not patentable.\" E.g., Alice Corp. V. CLS Bank Int 7, 573 U.S. 208, 216 (2014) (quoting Ass 'n for Molecular Pathology V. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).", + "In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-part framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice, \"for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.\" Alice, 573 U.S. at 217.", + "The first step in that analysis is to *determine whether the claims at issue are directed to one of those patent-ineligible concepts,\" such as an abstract idea. Id.", + "According to Supreme Court precedent, concepts determined to be abstract ideas include certain methods of organizing human activity, such as fundamental economic practices (id. at 219-20; Bilski v. Kappos, 561 U.S. 593, 611 (2010); mathematical formulas (Parker V. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk V. Benson, 409 U.S. 63, 67 (1972)).", + "If the claims are not directed to a patent-ineligible concept, such as an abstract idea, the inquiry ends.", + "Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered *individually and *as an ordered combination\"\" to determine whether there are additional elements that \"transform the nature of the claim' into a patent-eligible application.\" Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).", + "This is \"a search for an *inventive concept' and i.e., an element or combination of elements that is *sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. *** Id. at 217-18.", + "The U.S. Patent and Trademark Office (\"USPTO\") has set out agency policy with respect to its interpretation of Supreme Court and Federal Circuit decisions concerning the requirements for subject matter eligibility. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019) (\"2019 Guidance\"); see also October 2019 Update (responding to comments on the 2019 Guidance solicited from the public); Berkheimer Memo.", + "\"The guidance sets out agency policy with respect to the USPTO's interpretation of the subject matter eligibility requirements of 35 U.S.C. [\uc6a9] 101 in view of decisions by the Supreme Court and the Federal Circuit.\" 2019 Guidance 51.", + "However, the \"guidance . \u00b7 \u00b7 does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO* and \"[r]ejections will continue to be based upon the substantive law.\" Id.", + "Because the MANUAL OF Patent Examination Procedure 66 2104-06, Ninth Edition, Rev. 07.2022 (Feb. 2023) (\"MPEP\") now incorporates the 2019 Guidance, the October 2019 Update, and the Berkheimer Memo, this opinion refers to the MPEP instead of those materials.", + "The MPEP acknowledges that \"\"[the Alice/Mayo two-part test is the only test that should be used to evaluate the eligibility of claims under examination.\" MPEP $ 2106(1).", + "It treats the first step (i.e., whether the claim is directed to a judicial exception) as a two-prong inquiry. Id. $ 2106.04(II).", + "\"Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?\" Id. 9 2106.04(II)(A)(1).", + "For determining whether a claim recites an abstract idea, the MPEP defines enumerated groupings of abstract ideas, distilled from precedent. Id. 56 2106.04(a), 2106.04(a)(2) (defining abstract idea groupings).", + "If the claim recites a judicial exception, then the claim requires further analysis at Prong Two. Id. $ 2106.04(II)(a)(1).", + "\"Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application?'' Id. 66 2106.04(1I)(a)(2), 2106.04(d).", + "Only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the additional elements, individually or in combination, provide an inventive concept. See id. 46 2106(III), 2106.05.", + "*An inventive concept *cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. .. MPEP $ 2106.05(1) (quoting Genetic Techs. V. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).", + "Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional\" in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP $ 2106.05(II).", + "We are not persuaded by Appellant's arguments that the Examiner errs in determining that independent claim 1 is directed to an abstract idea. See Appeal Br. 6-1 1; see also Reply Br. 2-3.", + "The Federal Circuit has explained that \"the *directed to' inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether *their character as a whole is directed to excluded subject matter. .. Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. V. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).", + "It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an *abstract idea\" for which computers are invoked merely as a tool. See id. at 1335-36.", + "Here, it is clear from the Specification (including the claim language) that claim 1 focuses on an abstract idea, and not on an improvement to technology and/or a technical field.", + "Appellant's Specification describes that an enterprise employs a contact center to service customer contacts. Spec. 1 3.", + "A customer contact waits in a contact center queue to be helped by an agent. ld. 92.", + "In this manner, the queue is much like a line at a bank for an available teller. ld.", + "If the teller at a bank answers the customer's question quickly and accurately, customer satisfaction increases. Id.", + "In contrast, if a customer is switched from teller to teller, frustration occurs. Id.", + "The Specification describes that it has become increasingly unlikely for a single agent at the contact center to have the needed skills or expertise to fully service a customer contact due to increased complexity and diversity of the products and problems supported by the contact center. ld. 1 4.", + "To service customer contacts more effectively, current contact centers use a work assignment mechanism to assign a customer contact to an agent based on the agent's skills and/or attributes. ld.", + "Typically, a fixed team of agents is created to provide a mix of skills to suit a customer's situation and to achieve consistently high levels of customer service. Id. I 5.", + "Fixed teams generally are assembled once and applied to customer contacts of the contact center. ld.", + "This traditional fixed team assignment suffers limitations in assigning the best agent or group of agents. Id. I 7.", + "For example, even when the needs of a customer contact change during a communication with a contact center, the fixed team of agents assigned to the customer contact remains unchanged. ld.", + "Suboptimal assignments of one or more work items to customer contacts can go unnoticed by a contact center, causing contact center performance and long- term customer service to suffer. ld. I 6.", + "Appellant's claimed invention seeks to address these issues. Id. ' 8.", + "Consistent with the description, claim 1 recites a method for dynamically assigning processing resources in a contact center that involves gathering information related to a request for a processing resource, i.e., receiving, at \u00b7 . . the contact center, a contact communication . . . associated with a customer comprising a request for a processing resource of the contact center; gathering, by . \u00b7 \u25a0 the contact center, information related to the request (limitations (a) and (b); analyzing the information for assignment to a team of resources, i.e., transforming . the information related to the request into a work item stored in a data structure; determining, \u00b7 \u00b7 based on the work item, at least one need of the customer; [and] determining, . . \u00b7 based at least partially on the at least one need of the customer, a team of resources for assignment to the work item over a duration of the work item, the team of resources comprising at least a first resource and a second resource (limitations (C)-(e); assigning the team of resources, i.e., **assigning, \u00b7 \u00b7 \u00b7 the first resource as mandatory for the work item and the second resource as optional for the work item\" (limitation (1); connecting the team of resources and the customer (i.e., \"connecting, . \u00b7 each resource in the team of resources with . the customer\") (limitation (g); *determining \u00b7 that a change in the work item requires a change to a composition of the team of resources\" (limitation (h); and modifying the team of resources, i.e., *modifying, . while the work item is being handled by the team of resources and in response to determining that the composition of team of resources requires the change, the composition of the team of resources by assigning \u00b7 \u00b7 the first resource as optional\" (limitation (1).", + "These limitations, when given their broadest reasonable interpretation, recite a series of steps for assigning processing resources in a contact center to handle a request from a customer.\"", + "For example, the method receives a request at a contact center from a customer for a processing resource, gathers information related to the request, processes the request as a work item for assignment to a team of resources, assigns the work item to the team, connects each resource of the team to the customer, determines that a change in the work item requires a change to a composition of the team of resources, and changes the compositions of the team.", + "The method, considered in light of the Specification, can be fairly characterized as managing a commercial interaction, including sales activities or behaviors and business relations, which is a method of organizing human activity and, therefore, an abstract idea. See MPEP 66 2106.04(a), 2106.04(a)(2)(I)(B).", + "Appellant does not apprise us of Examiner error.", + "As described above, we determine that the concept recited in claim 1 falls into the subgrouping of commercial interactions, including sales activities or behaviors and business relations.", + "Our determination is consistent with the analysis set forth by the Examinner. See Final Act. 4-6; see also Ans. 5.", + "Having concluded that claim 1 recites a judicial exception under Step 2A, Prong One, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. MPEP 46 2106.04(II)(a), 2106.04(d).", + "Relevant considerations for evaluating whether additional elements integrate a judicial exception into a practical application include: an improvement in the functioning of a computer or an improvement to other technology or a technical field, as discussed in MPEP \uc6a9\uc6a9 2106.04(d)(1) and 2106.05(a); applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP S 2106.04(d)(2); implementing a judicial exception with, or using a judicial exception in conjunction with a particular machine or manufacture that is integral to the claim, as discussed in MPEP S 2106.05(b); effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP $ 2106.05(c); and applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, as discussed in MPEP S 2106.05(e). MPEP $ 2106.04(d).", + "However, the Examiner makes no assertion at Prong Two that the additional elements recite well-understood, routine, and conventional activity. See Final Act. 6-8.", + "The inquiry as to whether the claims are directed to an abstract idea *often turns on whether the claims focus on *the specific asserted improvement in computer capabilities . \u00b7 \u00b7 or, instead, on a process that qualifies as an \"abstract idea\" for which computers are invoked merely as a tool. . Finjan, Inc. V. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, 822 F.3d at 1335-36).", + "Here, the claimed assigning, connecting, and modifying, as recited in limitations (f), (g), and (i) of claim 1, may well ensure that a correct resource is working on the correct work item, that a resource has the option to not work on the work item, and that the best group of agents is provided to all customer contacts.", + "However, these improvements are focused on a process that is itself the abstract idea, not an improvement in computer capabilities.", + "Beyond the abstract idea, claim 1 additionally recites a processor, an IVR system, a communication device, a communication interface, and one or more devices.", + "Yet, the Specification describes the additional elements and their interaction at a high level of generality, i.e., as generic computer components. See, e.g., Spec. 11 3, 55, 57, 117-120, Fig. 1.", + "As such, they do not integrate the abstract idea into a practical application. See Alice, 573 U.S. at 223 (\"[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. \").", + "\"Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.\" Ariosa Diagnostics, Inc. V. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).", + "In other words, \"preemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.\" Id.", + "Yet, there is no indication in the Specification that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, or is otherwise implemented using other than generic computer components to perform generic computer functions.", + "Requiring an abstract idea to be performed in a particular technological environment having a generic IVR system and a generic processor does not save the claims from abstraction. See Content Extraction & Transmission LLC V. Wells Fargo Bank, Nat'l Ass 'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (observing that a limitation requiring part of the claimed method to be performed on a scanner merely limited the abstract idea to a particular technological environment); see also MPEP 46 2106.04(d), 2106.05(b).", + "Yet, that a generic IVR system gathers data and that data are manipulated by the call center, does not persuade us that claim 1 recites a transformation. See CyberSource Corp. V. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (holding that \"*[t]he mere manipulation or reorganization of data . . does not satisfy the transformation prong [of the machine-or-transformation test]\"); see also MPEP \uc6a9\uc6a9 2106.04(d), 2106.05(c).", + "We are not persuaded that claim 1 recites any improvement to computer functionality, or to other technology or technical field, or that claim 1 implements the abstract idea with a particular machine or manufacture, effects a transformation or reduction of a particular article to a different state or thing, or that it otherwise indicates that the claimed invention integrates the abstract idea into a \"practical application.\" MPEP $ 2106.04(d).", + "Instead, we conclude that claim 1 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea.", + "Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea.", + "Having determined under step one of the Mayo/Alice framework that claim 1 is directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether claim 1 includes additional elements or a combination of elements that provides an *inventive concept,\" i.e., whether the additional elements amount to *significantly more\" than the judicial exception itself. MPEP 5 2106.05(I).", + "The Examiner's findings are well-supported by the Specification (see, e.g., Spec. 11 70, 172- 182, 189, 191, Figs. 1, 2, 29), and Appellant does not persuade us of error. See, e.g., Spec. 11 70, 172-182, 189, 191, Figs. 1, 2, 29.", + "At most, the additional elements link the use of the abstract idea to a particular technological use, which is insufficient. See MPEP 56 2106.04(d), 2106.05(h).", + "In view of the foregoing, we sustain the Examiner's rejection under 35 U.S.C. 9 101 of claim 84 and the remaining pending claims, which fall with claim 84.", + "Pierce relates to contact center resource management that provides customer service using a first agent while waiting for a second agent. Pierce I 2.", + "The method involves determining a preferred agent and the preferred agent's availability. Id. I 59, Fig. 4.", + "A preferred agent has skills and attributes more closely matching the skills and attributes requested by the customer than those of a non-preferred agent. Id.", + "If the preferred agent is available, the customer is assigned to the preferred agent. Id. I 60.", + "Otherwise, the customer is assigned to a non-preferred agent. Id.", + "The customer is delivered to the non-preferred agent in the contact center, and the method continues to search for and wait for a preferred agent. See id. 11 61-63, Fig. 5.", + "If a preferred agent becomes available, the preferred agent joins the call and the non-preferred agent drops off the call. Id. 11 61, 64, 70, 72, Figs. 5, 6.", + "The Examiner's findings in the Final Action are unclear, at least because the Examiner identifies \"Agent A\" as both the unavailable preferred agent and the non-preferred agent that drops from the call after the preferred agent is available. See id.", + "Yet, Pierce does not teach assigning the preferred agent as mandatory for a work item and a non-preferred agent as optional, as required by claim 1, limitation (f), and similarly required by claims 11 and 19.", + "Instead, Pierce teaches assigning either a preferred agent or a non-preferred agent based on availability. See, e.g., Pierce 11 58 (\"If the preferred agent is available, then the contact is assigned to the preferred agent. Otherwise, the contact is assigned to a non-preferred agent. \"), 61 (describing that the contact selector may continute to search for or wait for a preferred agent after the contact is assigned to a non-preferred agent), 64 (describing that when a preferred agent becomes available, the preferred takes over the call, and the non-preferred agent drops off).", + "In another embodiment of Pierce, referenced in the Answer, a customer chooses whether to use a non-preferred agent or wait for a preferred agent. See Pierce 11 65-68.", + "In this embodiment, either the non- preferred agent or preferred agent is selected for assignment by the customer, not both.", + "For at least the foregoing reasons, on this record the Examiner does not adequately support the obviousness rejection of independent claims 1, 11, and 19.", + "Therefore, we do not sustain the Examiner's rejection of independent claims 1, 11, and 19, and dependent claims 3, 4, 8, 10, 13, 14, 18, and 20.", + "The rejections of dependent claims 2, 5, 6, 7, 9, 12, 13, 15, and 17 do not cure the deficiency in the rejection of the independent claims.", + "Therefore, we do not sustain the Examiner's rejections of dependent claims 5, 6, 7, 9, 12, 13, 15, and 17 under 35 U.S.C. S 103 for the same reasons set forth above with respect to the independent claims." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022001519_02-16-2023.json b/opinion_split/Decision_2022001519_02-16-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..fcef56df737d26de8471479faacbb3164d07321a --- /dev/null +++ b/opinion_split/Decision_2022001519_02-16-2023.json @@ -0,0 +1,54 @@ +{ + "appellant_arguments": [ + "Appellant contends Bhagwat describes over 50 different lysosomal storage diseases and 21 different compounds that can be used to treat them. Appeal Br. 5.", + "Appellant contends that Bhagwat provides no teaching or direction that would have led one skilled in the art to use apilimod to treat NPC. Id.", + "Appellant contends one skilled in the art would not have had a reasonable expectation of success in using apilimod to treat NPS. Id.", + "Appellant contends that the wide number of disorders and compounds disclosed in Bhagwat provides no more than a hope that a specific compound will work against a specific disease or disorder. Id.", + "Appellant contends that while Bhagwat lists the IC502 values for the different compounds.", + "The data would still not have led one skilled in the art to use apilimod. Id. 5-6.", + "Appellant contends that many other compounds listed in Bhagwat have the same IC50 value as apilimod, leaving a large group of compounds that could be used. Id.at 6.", + "In addition, Appellant contends that there is no evidence of record that the assays reported in Bhagwat are a relevant model to show that the compounds can decrease the accumulation of cholesterol or to treat NPC. Id.", + "Appellant contends that Bhagwat teaches treating over 50 disorders with 21 different compounds. Appeal Br. 5.", + "Appellant contends there is not direction that would have led one skilled in the art to select apilimod to treat NPC. Id.", + "Appellant next argues that one skilled in the art would not have had a reasonable expectation of success in decreasing cholesterol in a target cell by administering apilimod. Appeal Br. 5.", + "Appellant contends that the data presented in Bhagwat is limited to a single disorder, mucopolysacchridoses (\"MPS\") which is different than NPC.", + "Appellant contends that apilimod's activity regarding MPS \"provides no expectation of success with respect to the claimed method.\"" + ], + "examiner_findings": [ + "REJECTION Claims 17-25 have been rejected under 35 U.S.C. S 103 as unpatentable over Bhagwat in view of Chang.", + "The Examiner finds Bhagwat teaches a method for treating lysosomal disorders comprising administering an effective amount of a PIKfyve inhibitor. Final Act. 3.", + "The Examiner finds Bhagwat teaches the use of a PIKfyve inhibitor that is the same as apilimod. Id. at 4.", + "The Examiner finds that the lysosomal disorders that can be treated by administration of a PIKfyve inhibitor include NPC. Id.", + "The Examiner concludes: It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to administer apilimod to a human suffering from Niemann-pick type C because Bhagwat et al. teaches a method of treating a lysosomal storage disorder which includes Niemann-pick disease type C comprising administering to a subject such as human a PIKfyve inhibitor or a pharmaceutically acceptable salt thereof, and Bhagwat et al. teaches that PIKfyve inhibitor can be apilimod or a pharmaceutically acceptable salt thereof.", + "One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to administer an effective amount of apilimod to a human suffering from Niemann-pick type C with reasonable expectation of success of treating Niemann-pick type C. Id. at 4-5." + ], + "ptab_opinion": [ + "CLAIMED SUBJECT MATTER Neimann-Pick disease type C (\"NPC\"), is caused by genetic mutations which render individuals unable to normally metabolize cholesterol and other lipids. Spec. I 2.", + "This inability to metabolize cholesterol and other lipids causes them to accumulate in the liver, spleen, and brain. Id.", + "NPC is always fatal.", + "Apilimod, a PIKfyve inhibitor, has been found to reduce the intracellular accumulation of lipids, making it a potential treatment for NPC. Id. I 8.", + "The claims are directed to compositions and methods for treating NPC.", + "Claim 17, reproduced below, is illustrative of the claimed subject matter: 17. A method for decreasing cholesterol accumulation in a target cell of a subject in need thereof, the method comprising administering to the subject at least one PIKfyve inhibitor selected from the group consisting of apilimod or a pharmaceutically acceptable salt thereof, APY0201 ((E)-4-(5- (2-C-metyllinglethylityleyforth-gyde- yftpyranda(L3-alpyrimin-7-7-stinetinetinetine,tngye and YM-201636 (6-amino-N-(3-(4- morpholisopyrido(3,2~4,5)furo(3,2,2- d)pyrimidin-2-yliphenylinkotinamide),", + "REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bhagwat, et WO 2017/040971 A1 Mar. 9, al. 2017 Chang et Niemann-Pick Type C Disease and Intracellular 2005 al. Cholesterol Trafficking, 280 J. Bio. Chem. 20917", + "OPINION The issue before us is whether a preponderance of the evidence supports the Examiner's finding that the subject matter of claims 17-25 would have been obvious to a person of ordinary skill in the art as of the effective filing date of the present application over Bhagwat combined with Chang.", + "We adopt the Examiner's findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection.", + "We find the Examiner has established a prima facie showing that the subject matter of the claims would have been obvious over Bhagwat combined with Chang to a person of ordinary skill in the art as of the effective filing date of the present specification.", + "Appellant has not produced evidence showing, or persuasively argued, that the Examiner's determinations on obviousness are incorrect.", + "Only those arguments made by Appellants in the Briefs have been considered in this Decision.", + "Arguments not presented in the Briefs are waived. See 37 C.F.R. I 41.37(c)(1)(iv) (2015).", + "We have identified claim 17 as representative; therefore, all claims fall with claim 17.", + "We address Appellants' arguments below.", + "We have considered Appellant's argument as well as the evidence of record and we are not persuaded that the rejection is in error.", + "Claim 1 is directed to a method for decreasing cholesterol accumulation in a target cell of a subject in need thereof. Appeal Br. 8 (Claims Appx.).", + "Bhagwat teaches a method for treating lysosomal disorders including NPC. Bhagwat, Abstract, 1-2.", + "In addition, Bhagwat specifically lists NPC as a disorder that can be treated in the claims. Bhagwat, 36, claim 14.", + "Chang teaches that in NPC, accumulation of cholesterol, sphingolipids and other lipids within cells and various tissues occurs.", + "With respect to the specific compounds, while we agree with Appellant that Bhagwat teaches 21 different compounds, the number of possible compounds is not so numerous as to support a finding of non- obviousness.", + "\"When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.\" KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 1732 (2007); see also Merck & Co. Inc. V. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (\"Disclos[ure of] a multitude of effective combinations does not render any particular formulation less obvious.\"). \").", + "\" We have considered Appellant's arguments and we remain unpersauded that the Examiner erred.", + "Bhagwat teaches that both MPS and NPC are lysosomal storage disorders. Bhagwat 1-2, 9, 10.", + "Bhagwat teaches the use of a PIKfyve inhibitor to treat lysosomal disorders. Id. 1, 6-9, 24.", + "Bhagwat teaches that apilimod is a PIKfyve inhibitor. Id. 19.", + "We find, given the teachings of Bhagwat, one skilled in the art would have had a reasonable expectation of success in administering apilimod to reduce cholesterol in a target cell." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022002386_06-14-2023.json b/opinion_split/Decision_2022002386_06-14-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..e7342fbc6d3667e24725a1045f261d5f50557a89 --- /dev/null +++ b/opinion_split/Decision_2022002386_06-14-2023.json @@ -0,0 +1,157 @@ +{ + "appellant_arguments": [ + "CLAIMED SUBJECT MATTER Appellant's *invention relates generally to children's toys and games, and in particular to an electrical construction toy system.\" (Spec. I 5.)", + "It recites: 1. An electrical construction toy system, comprising: a) a flat base; b) said flat base being made of a plurality of base pieces; c) at least one of said plurality of base pieces having a power source embedded within the at least one of said plurality of base pieces; d) each of said plurality of base pieces being connected to other base pieces located on sides of said each of said plurality of base pieces; e) an electrical connection being provided such that power from the power source passes between connected base pieces; and f) one or more powered effects; g) said one or more powered effects being activated when the one or more powered effects are connected to the power source; h) building blocks; i) said plurality of base pieces being connected to the building blocks located on top surfaces of said plurality of base pieces; j) an electrical connection being provided such that power from the power source passes between the connected base pieces and the building blocks; k) said building blocks being connected to other building blocks; and 1) an electrical connection being provided such that power from the power source passes between connected building blocks.'", + "Appellant argues that *`[b]attery block 602 of Fig. 6 of Seymour is larger than the non-conductive building blocks 601.\" (Appeal Br. 7.)", + "Appellant argues that \"FIGs. 12 and 14 of Rosen show construction module 44 and each construction module 10 are of the same size. \u00b7 . Rosen requires construction module 44 and construction module 10 are of a same cubical size. ~ (Id.)", + "Appellant further argues that **[m]odifying Rosen from having a same size of construction module 44 and construction module 10 to having larger construction module 44 and smaller construction module 10 changes the principle of operation of Rosen\" and that a proposed modification to a reference may not change the principle of operation of that reference. (Id.)", + "Appellant argues that \"Rosen teaches away from being modified in view of Seymour so as to change from power from the power source passing between connected base pieces to not passing between connected base pieces.\" (Appeal Br. 8 (emphasis omitted).)", + "Claim 2 recites: 2. The electrical construction toy system of claim 1, further comprising an image; said image being printed on the top surfaces of the plurality of base pieces such that when said plurality of base pieces are assembled in a specific order, the image is completed; wherein power is supplied to each base piece of the plurality of base pieces when connected in the specific order.", + "Appellant argues that Rosen's 's panels are made of translucent material. (Appeal Br. 9 (citing Rosen, col. 4, II. 2-3).)", + "Appellant argues that Binder *recites that *a jigsaw puzzle produces a complete picture, typically of a recognizable image. .. (Id. (citing Binder I 2).)", + "Appellant argues that \"Rosen teaches away from being modified in view of Binder to include *an image* because the 'complete' image (picture) of Binder will make the six panels non-translucent. Modifying Rosen from translucent to non- translucent changes the principle of operation of Rosen.\" (Id.)", + "Appellant also argues that \"[the circular pattern of protrusions 20 and cavities 22 of Rosen cannot be applied to a side surface of a jigsaw piece of the jigsaw puzzle of Binder. Therefore, Rosen teaches away from being modified in view of Binder for the limitation *said plurality of base pieces are assembled in a specific order. .. (Appeal Br. 10-11.)", + "Claim 4 recites: 4. An electrical construction toy system, comprising: one or more base pieces, a corresponding portion of an image being printed on a top surface of each of the one or more base pieces; a power source embedded within at least one of the one or more base pieces; one or more powered effects; and one or more building blocks; wherein the electrical construction toy system is characterized by: a disassembled condition in which the one or more base pieces are separated from one another; and the one or more building blocks are separated from one another; and an assembled condition in which the one or more base pieces are connected in a pre- determined order so that a flat base is formed and the image is formed on a top surface of the flat base; the one or more building blocks are connected; a subset of the one or more building blocks are connected to the top surface of the flat base; and an electrical connection is provided so that power from the power source activates the one or more powered effects.", + "Appellant relies on arguments presented with regard to claims 1 and 2. (See Appeal Br. 11.)", + "Claim 6 recites: 6. The electrical construction toy system of claim 1, wherein said building blocks are of building shapes; and wherein the electrical construction toy system is of a town's 's appearance.", + "Appellant argues: Rosen recites that \"The construction module 10 is three- dimensional and includes six panels made of translucent material\". column 4, lines 2-3, (emphasis added). The ground and the roads of a town are not transparent. Using construction module 10 of Rosen to build the ground and the roads of a town results in modifying Rosen from translucent to non-translucent thereby changing the principle of operation of Rosen. (Appeal Br. 12 (citation omitted).)", + "Appellant presents similar arguments for claim 23. (See Appeal Br. 14-15.)", + "Claim 18 recites: 18. An electrical construction toy system, comprising: one or more base pieces; a power source embedded within at least one of said one or more base pieces; one or more building blocks; and one or more powered effects; wherein the electrical construction toy system is characterized by: a disassembled condition in which the one or more base pieces are separated from one another; and the one or more building blocks are separated from one another; and an assembled condition in which the one or more base pieces are connected in a pre-determined order so that a flat base is formed; the one or more building blocks are connected; a subset of the one or more building blocks are connected to a top surface of the flat base; and an electrical connection is provided so that power from the power source activates the one or more powered effects.", + "Appellant relies on arguments presented with regard to claims 1 and 2. (See Appeal Br. 12.)", + "Claim 19 recites: 19. The electrical construction toy system of claim 18, wherein said one or more building blocks are of cylindrical or conical shapes such that when connected the electrical construction toy system is of a shape of a tree with a plurality of branches.", + "Appellant argues: Item 10 and item 1710 of Rosen are from different embodiments. Item 1710 of FIGs. 17 and 21 of Rosen will not connect to the bottom / ground level of items 10 and 44 of FIG. 14 of Rosen because item 1710 does not have the protrusions 20 and cavities 22 on the panels 12 arranged in a circular, alternating pattern. Therefore, Rosen fails to teach the limitation **cylindrical or conical shapes\" and the limitation \"a subset of the one or more building blocks are connected to a top surface of the flat base\" of claim 19 (from independent claim 18). (Appeal Br. 13.)", + "Claim 21 recites: 21. The electrical construction toy system of claim 18, wherein the one or more base pieces are made of wood and wherein the one or more building blocks are made of wood.", + "Appellant argues that Rosen recites use of a translucent material, that *[w]ood is not a translucent material\" and that \"[w]ood is not suitable for making of the construction module 10 of Rosen.\" (Appeal Br. 14.)", + "Appellant argues that \"[the limitation of the claim is not *part of the one or more base pieces are made of wood' as contended by the Examiner.' (Id.)", + "Appellant also argues that *[m]odifying Rosen from having a translucent construction module 10 to having a non-translucent (wood) construction module 10 changes the principle of operation of Rosen.\" (Id.)", + "Appellant presents similar arguments for claim 22. (See Appeal Br. 14.)", + "Claim 28 recites: 28. An electrical construction toy system of claim 18, wherein said one or more building blocks are of cylindrical or conical shapes such that when connected the electrical construction toy system is of a shape of a tree with a plurality of branches; wherein a first building block of conical shape, a second building block of conical shape and a third building block of conical shape are directly connected at a branching location of the tree.", + "Appellant argues that the center pin elements (2020) of Rosen are not conical in shape. (Appeal Br. 16.)", + "Claim 29 recites: 29. The electrical construction toy system of claim 1, wherein the flat base comprises a length along a first direction; a width along a second direction perpendicular to the first direction; and a thickness along a third direction perpendicular to the first direction and the second direction; wherein the third direction is perpendicular to a top surface of the flat base; wherein a corresponding thickness along the third direction of each of the plurality of base pieces is smaller than a corresponding length along the first direction of each of the plurality of base pieces; and wherein the corresponding thickness along the third direction of each of the plurality of base pieces is smaller than a corresponding width along the second direction of each of the plurality of base pieces.", + "Appellant argues that \"Rosen teaches away from being modified so as to include different thicknesses because panels 12 of all cubes of Rosen need to contain the alternating patterns in order to connect to [the] adjacent cube. ~ (Appeal Br. 17.)", + "Appellant presents similar arguments for claim 30. (See Appeal Br. 17.)" + ], + "examiner_findings": [ + "REJECTIONS Claims 1, 6-10, 18-20, and 28 are rejected under 35 U.S.C. $ 103 as unpatentable in view of Rosen (US 7,322,873 B2, iss. Jan. 29, 2008) and Seymour (US 2008/0166926 A1, pub. July 10, 2008).", + "Claims 2-4, 21-23, 26, and 27 are rejected under 35 U.S.C. $ 103 as unpatentable in view of Rosen, Seymour, and Binder (US 2011/0031689 A1, pub. Feb. 10, 2011).2", + "Claims 6, 23, 29, and 30 are rejected under 35 U.S.C. 9 103 as unpatentable in view of Rosen, Seymour, and Cyrus (US 7,517,269 B2, iss. Apr. 14, 2009).", + "The Examiner finds that Rosen teaches all of the limitations of Appellant's claim 1 except that \"Rosen fails to teach the feature of the power source being embedded within a base piece.\" \" (Final Action 4.)", + "However, the Examiner finds that Seymour \"teaches a power source embedded within a building block (item 704, fig. 6).\" (Id.)", + "Additionally, the Examiner determines: It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the electrically conductive building block system of Rosen with the feature of an integral / embedded power source as taught by the electrically conductive building block system of Seymour for the purpose of powering the block setup while eliminating the need for external cords as taught / shown by Seymour (paragraph 0056 and fig. 6), making the device easier to use, less cumbersome, and more visually and aesthetically attractive to the users.", + "(Id.)", + "The only feature used from Seymour used in the rejection is the feature of a battery embedded in a building block, teaching that embedding a power source within a block in a system of blocks is well known and it would be obvious to do so in the primary reference [(Rosen)] in light of the secondary reference [(Seymour)].", + "(Id. at 5.)", + "*Further, batteries come in many different sizes, and, it would not be difficult to provide a battery that fits within a base block of Rosen.\"", + "(Id.)", + "The Examiner finds that Binder teaches an image printed on the top surfaces of a \"plurality of base pieces such that when said plurality of base pieces are assembled in a specific order, the image is completed; wherein power is supplied to each base piece of the plurality of base pieces when connected in the specific order.\" \" (Final Action 9 (citing Binder I 91, Figs. 12a, 12b).)", + "The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time to have provided the electrically connected construction device of Rosen with the feature of an image where power supply is completed when the pieces are connected in a specific order as taught by the electrically connected construction device of Binder for the purpose of adding an additional puzzle element to the device with a reward for completion of the puzzle as taught by Binder (abstract), making the device more versatile, more useful as an intellectually challenging device, and making the device more interesting and attractive to the users.", + "(Id.)", + "\"The examiner does not find any recitation in Binder where the blocks are required to be non-translucent,\" as asserted by Appellant. (Answer 6.)", + "The Examiner finds that an alternate embodiment of Rosen teaches *one or more building blocks are of cylindrical or conical shapes (items 1710, fig's 17 and 21) such that when connected the electrical construction toy system is of a shape of a tree with a plurality of branches (fig. 17, note *shape of a tree' is extremely broad). \" (Final Action 7; see also Answer 10.)", + "The Examiner answers that **this is a 103 rejection, and an alternate embodiment of Rosen has been used to address the features of: cylindrical or conical shapes in a branching orientation, only. There is no requirement that all of the elements of the claim be taught in a single embodiment in a 103 rejection.\" (Answer 10.)", + "The Examiner finds that Binder teaches \"wherein the one or more base pieces are made of wood and wherein the one or more building blocks are made of wood.' \" (Final Action 9 (citing Binder 11 138-39, emphasis omitted).)", + "Additionally, the Examiner determines that it would have been obvious to one of ordinary skill in the art at the time to have provided the electrically connected construction device of Rosen with the feature of making the blocks and pieces of wood as taught by the electrically connected construction device of Binder for the purpose of using a known, easy to use, and inexpensive material as taught by Binder (paragraphs 00138 and 00139), making the device inexpensive, easy to make, and more attractive to the users. (Id. at 10.)", + "The Examiner notes that even \"lilf the device of Rosen were made of wood it could still have translucent portions, open portions, or otherwise let light through. There is no reason when modifying the device of Rosen with the material of wood, specifically, one would need to encase the light of Rosen completely so that the device does not emit light.\" (Id. at 20.)", + "The Examiner finds that Rosen teaches: wherein said one or more building blocks are of cylindrical or conical shapes (items 1710, fig's 17 and 21) such that when connected the electrical construction toy system is of a shape of a tree with a plurality of branches (fig. 17, note *shape of a tree\" is extremely broad); wherein a first building block of conical shape, a second building block of conical shape and a third building block of conical shape are directly connected at a branching location of the tree (an item 2020, fig's 17 and 20, tips of connectors are tapered, making the end conical).", + "It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the building block system of Rosen with the feature of making the building blocks in the shape of cylinders and in the shape of a tree as taught by alternate embodiments of Rosen for the purpose of allowing the device to be used to construct any of a particularly desired wide array of desired shapes and models as taught by Rosen (column 8 lines 21-31), making the device more versatile, and more interesting and attractive to the users. (Final Action 7-8.)" + ], + "ptab_opinion": [ + "Claims 1, 4, and 18 are the independent claims on appeal.", + "Claim 1 is illustrative.", + "ANALYSIS Under 35 U.S.C. $ 103, the question is whether \"the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.\"", + "Obviousness is a legal conclusion involving a determination of underlying facts.", + "Under S 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.", + "Against this background, the obviousness or nonobviousness of the subject matter is determined.", + "Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.", + "KSR Int'l 'I Co. V. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham V. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).", + "\"[R]ejections 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.\"", + "Id. at 418 (brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).", + "The Examiner answers, and we agree, that *[r]elative building block sizes are not claimed, and were not used in the rejection.\" (Answer 4.)", + "Rosen discloses \"construction toys for building stable three- dimensional structures utilizing various construction elements, at least some of which have luminescent characteristics.' \" (Rosen, col. 1, 11. 14-17.)", + "Specifically, Rosen discloses that blocks may have \"internal light-emitting attributes.\" (Id. at col. 1, 11. 54-56.)", + "Rosen discloses mating multiple modules to form the desired construction. (See, e.g., id. at col. 5, 11. 40-61.)", + "Rosen discloses construction modules with connectors (modules 10) and similar construction modules (modules 44) that also include a \"receptacle 46 of conventional construction and having respective positive and negative contacts 48, 50 for receiving low-voltage DC power from an external source.\" (Id. at col. 5, 11. 23-28.)", + "Figure 14 of Rosen is reproduced below.", + "Figure 14 is a perspective view of a construction formed by Rosen's construction modules. (Id. at col. 3, 11. 15-18.)", + "More specifically, Figure 14 shows a construction assembled \"by combining a construction module 44 with a plurality of construction modules 10 assembled in all three axial directions from the construction module 44, and a power cord 54 connected to a low-voltage DC power source (not shown).\" \" (Id. at col. 6, II. 30-35.)", + "Seymour's disclosed *invention generally relates to a mechanical structure having electronic circuits that easily and quickly connect together.", + "The mechanical structures may be building blocks which are stackable and reusable.\" (Seymour, Abstract.)", + "Figure 6 of Seymour is reproduced below.", + "Figure 6 \"illustrates a perspective view of a constructed wall that uses standard non-conductive building blocks and the conductive building blocks of the present invention and further illustrating some of the possible functions in [sic] which the conductive building blocks may carry out.\" (Id. I 42.)", + "Seymour discloses that \"[a] switch 613 on a battery block 602 may change the output between fixed DC out 608 or AC output 609\" and that \"[the DC power source or battery 704 must also be contained inside the battery conductive building block 602.\" (Id. I 56.)", + "Appellant's argument is premised on the assertion that Rosen requires construction modules 10 to be the same size as construction modules 44.", + "We find no such requirement, and Appellant does not direct us to such a requirement, in Rosen.", + "Rather, Appellant cites to Figures 12 and 14 of Rosen showing modules being of the same size.", + "But Rosen informs us that **[t]he foregoing disclosure of the preferred embodiments of the present invention has been presented for purposes of illustration and description. It is not intended to be exhaustive or to limit the invention to the precise forms disclosed.\" (Rosen, col. 9, 11. 44-47.)", + "Because we do not agree with the premise to Appellant's argument, we are not persuaded by the argument.", + "Appellant also does not persuasively argue why having different size construction modules, e.g., a construction module 44 having twice the footprint of a construction module 10, would change the principle of operation of Rosen.", + "Indeed, Appellant does not clearly articulate what principle of operation is arguable changed - such modules may still provide a **construction toy[] for building stable three-dimensional structures utilizing various construction elements, at least some of which have luminescent characteristics.\" (See Rosen, Abstract.)", + "Nor does Appellant persuasively argue why the Examiner erred in finding that \"batteries come in many different sizes, and, it would not be difficult to provide a battery that fits within a base block of Rosen.\" (Answer 5.)", + "Additionally, we note that Appellant does not indicate a requirement in claim 1 for base pieces to be of the same size.", + "At best, claim 1 recites \"a flat base\" and that the flat base is *made of a plurality of base pieces.\"", + "But the flat base could, e.g., include pieces having various footprints.", + "The Examiner answers, and we agree, that \"there is no reason why one of ordinary skill in the art, when replacing the corded power source of Rosen with a battery power source, as taught by Seymour, would also for some reason use additional non-conductive blocks of different portions of the Seymour reference.\" (Answer 6.)", + "\"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.\"", + "In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).", + "\"Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention.\"", + "Syntex (U.S.A.) LLC V. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).", + "Appellant does not persuasively argue what in Rosen would have discouraged one of ordinary skill in the art from modifying Rosen in view of Seymour as suggested by the Examiner.", + "In sum, Appellant does not persuasively argue why the Examiner erred in determining that substituting an embedded battery for the low voltage DC power source of Rosen would have been an obvious modification.", + "We are not persuaded that the Examiner erred in rejecting claim 1.", + "Binder discloses \"a two-dimensional or three-dimensional jigsaw puzzle. The puzzle pieces include conductive pads connected by a conductor such as a wire, a metallic strip or a conductive paint, so that upon assembling the puzzle, the pads are in contact to form a continuous conductive path. (Binder, Abstract.)", + "We agree.", + "Moreover, paragraph two of Binder, cited by Appellant, is part of the *Background of the Invention\" section of Binder and simply provides a general description of jigsaw puzzles. (See Binder I 2.)", + "We also agree with the Examiner that, contrary to Appellant's argument, Binder discloses translucent surfaces.", + "Specifically, Binder discloses: It will be appreciated to those skilled in the art that the puzzle frame, the puzzle pieces or any game set parts may be made of paper (card-board), wood (stain sheets), synthetic resins (soft and hard material), synthetic material, stone materials, woven or non- woven fabries, cork, metals, leather, glass, plastic, cast metal, cast plaster, case stone, papier-mache or other materials and may have a design imprinted on its exposed surface or surfaces or may have a surface sheet of imprinted design applied to its exposed surface or surfaces. (Id. I 138 (emphasis added).)", + "Additionally, even if we agreed with Appellant that Rosen was restricted to translucent panels and Binder was restricted to non-translucent panels, Appellant does not clearly articulate what principle of operation would arguably be changed if Rosen's panels were modified to be non-translucent.", + "At best, such a modification would change a feature of the invention.", + "In view of the foregoing, we do not agree with the premise of Appellant's argument, i.e., that Binder teaches the use of only non- translucent panels/puzzle pieces.", + "We do not find Appellant's argument persuasive.", + "We do not find this argument persuasive.", + "Binder is not limited to two-dimensional jigsaw puzzle, but includes three-dimensional puzzles. (Binder, Abstract.)", + "Appellant does not persuasively argue why a side of a three-dimensional Binder puzzle piece cannot include an electrical and/or mechanical connection to connect the puzzle pieces in a specific order. (See id. I 139 (disclosing a building block toy set with game pieces that \"can be assembled together in a single way using mating indentations and protrusions\").)", + "We are not persuaded that the Examiner erred in rejecting claim 2.", + "For the reasons discussed, we do not find those arguments persuasive.", + "Claim 23 depends from claim 4 and recites similar language.", + "As discussed above, Appellant does not clearly articulate what principle of operation would arguably be changed if Rosen's panels were modified to be non-translucent.", + "At best, such a modification would change a feature of the invention.", + "Cf In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (determining that a tightly pressed incompressible seal from a first reference could not use spring fingers from a second reference to increase the resilient deformation of the seal without \"a substantial reconstruction and redesign of the elements shown in [the first reference] as well as a change in the basic principles under which the [first reference] construction was designed to operate.\") \")", + "Therefore, we are not persuaded that the Examiner erred in rejecting claim 6.", + "For the reasons discussed, we are not persuaded that the Examiner erred in rejecting claim 23.", + "For the reasons discussed, we do not find those arguments persuasive.", + "Figure 17 of Rosen is reproduced below.", + "Figure 17 shows \"a perspective view of a structure formed by combining a plurality of construction elements and connectors in accordance with yet another embodiment of the [Rosen] invention.\" (Rosen, col. 3, II. 26-29.)", + "Dependent claim 19, like independent claim 18 from which it depends, recites \"[a]n electrical construction toy system \u25a0 \u00b7 \u00b7 \u00b7 characterized by: \u00b7 \u00b7 . an assembled condition in which the one or more base pieces are connected in a pre-determined order so that a flat base is formed.\"", + "We agree with the Examiner that Rosen teaches such a toy system, at least with respect to the embodiment shown in Figure 14 (above) where modules 10 and 44 are clearly shown forming a flat base.", + "However, Figure 17 shows a different embodiment of the Rosen invention.", + "The Examiner does not sufficiently explain where the embodiment shown in Figure 17 teaches a flat base.", + "Nor does the Examiner sufficiently explain why it would have been obvious to modify the embodiment shown in Figure 17 to include a flat base in an assembled condition, as recited in claim 19.", + "Therefore, we will reverse the rejection of claim 19.", + "Claim 22 depends from claim 1 and recites similar language.", + "\"During examination, 'claims \u00b7 \u00b7 \u00b7 are to be given their broadest reasonable interpretation consistent with the specification, and \u00b7 \u00b7 claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. *** In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).", + "We find no requirement in claim 21 that a base piece or building block be made of only wood.", + "Nor does Appellant's is Specification indicate a requirement that the pieces and blocks be made of a single material: \"The base pieces 11 and the building blocks 15 are preferably manufactured from rigid, durable materials which are easily cleaned, such as wood, plastic, or acrylic polymer. Components, component sizes, and materials listed above are preferable, but artisans will recognize that alternate components and materials could be selected without altering the scope of the invention. (Spec. I 24.)", + "Applying a broadest reasonable interpretation, we determine that the recitation *one or more base pieces are made of wood\" includes a base piece made of more than one material provided one of the materials is wood.", + "We similarly interpret the term *one or more building blocks are made of wood.\"", + "Appellant does not persuasively argue why wood would not be a suitable material for making at least portions of the construction module of Rosen.", + "Nor does Appellant clearly articulate what principle of operation would arguably be changed if some portion of one or more of Rosen's construction modules were made of wood.", + "Therefore, we are not persuaded that the Examiner erred in rejecting claim 21.", + "For the reasons discussed, we are not persuaded that the Examiner erred in rejecting claim 22.", + "Figures 19 and 20 of Rosen are reproduced below.", + "Figure 19 is a perspective view of a connector as shown in Figure 17.", + "Figure 20 is an interior view of such a connector. (See Rosen, col. 3, II. 26- 33.)", + "Rosen discloses: Center pin system 1920 is used to receive the coaxial connector or plug 1840 of element 1710. In particular, center pin system 1920 contains two or more center pin elements 2020, each pin 2020 exposed by connecting hole 1910 to receive an element 1710. Center pin system 1920 is not limited to a particular arrangement of pin elements 2020 or to a particular number of pin elements 2020. (Id. at col. 8, II. 6-12.)", + "As an initial matter, we do not agree with the Examiner that either Figure 17 or Figure 20 shows pin 2020 being of conical shape.", + "Rosen simply does not show sufficient detail to establish the shape of pin 2020.", + "At best, Rosen shows the end of an element of center pin system 1920, with center pin 2020, having a frustoconical shape.", + "We also do not agree with the Examiner that **changes in shape are obvious matters of design choice\" because *merely making the blocks or other elements of the system in particular shapes, or with the appearance of a tree or other particular model are aesthetic design features, would not change the operation of the device, and are not patentably distinct features.\" (Final Action 8.)", + "In Rosen, the end of an element of center pin system 1920, including pin 2020, serves as a coaxial connector to link elements 1920 to 1710, both mechanically and electrically. (See, e.g., Rosen, col. 7, 11. 23-28.)", + "The Examiner does not sufficiently explain why the shape of the dual-purpose connector, i.e., providing both mechanical and electrical connection, is simply an aesthetic design feature and is not a patentably distinct feature.", + "Therefore, we will reverse the rejection of claim 28.", + "Claim 30 depends from claim 4 and recites similar language.", + "The Examiner determines, and we agree: Simply because the blocks of Rosen are shown to be the same size, it does not logically follow that modifying the blocks (in particular the base blocks), to be a different size / shorter, would somehow destroy the operation of the device. Both blocks and connectors can be made of different sizes and would operate the same way, regardless of size, as long as they have appropriate mating connections. Merely changing the size or shape of the blocks (or connectors) in order to produce a specific aesthetic, or to create a more specific set of blocks, would be an obvious modification in light of the secondary reference of Cyrus, [3] and is not a patentable distinction. This is further evidenced . \u00b7 . [by] the references used in the office action (Seymour and Binder) which teach various shaped and sized blocks that all interconnect and make electrical connections with light features. (Answer 14-15.)", + "Appellant does not persuasively argue why the Examiner erred in determining: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the building set of Rosen with the feature of making the base elements shorter and making the system have the appearance of a town as taught by the building set of Cyrus for the purpose of providing elements that are more stable for a base of a building system as taught by Cyrus (column 4 lines 37- 46), as well as to create a building set model that has the appearance of a town, providing more educational opportunities as well as providing a more entertaining structure as taught by Cyrus (column 1 lines 12-21), making the device more versatile, and more interesting and attractive to the users. (Final Action 14.)", + "Therefore, we are not persuaded that the Examiner erred in rejecting claim 29.", + "For the reasons discussed, we are not persuaded that the Examiner erred in rejecting claim 30." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022002403_07-21-2023.json b/opinion_split/Decision_2022002403_07-21-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..1f3f69b831c78334d1670ef655167d78edddf6e9 --- /dev/null +++ b/opinion_split/Decision_2022002403_07-21-2023.json @@ -0,0 +1,89 @@ +{ + "appellant_arguments": [ + "Appellant argues, on the other hand, the paragraphs 34 through 36 of the Specification *describe a fabric or article of clothing that clearly encompasses a single ply material, including *metal-shedding polymer material located on an outer perimeter of the yarn strand(s). \" Appeal Br. 10.", + "Appellant also argues that paragraph 113 of the Specification \"discloses that the fabric was tested in one example embodiment as *an undergarment consisting of a single layer of all-cotton T-shirt. \" Id. (emphasis removed).", + "Appellant argues that the Examiner reversibly erred because a skilled artisan would recognize, based on certain examples in Huang, \"higher [thermal protection] performance demands would require a weight of at least 5.5 oz/yd2 ~ Appeal Br. 12.", + "Combining McKee's teaching of a fabric weight between 2 to 12 oz/yd2 would result in \"a decrease in the weight of the fabric\" and *its corresponding performance\" therefore rendering Huang unsatisfactory for its intended purpose. ld.", + "Appellant argues next that the Examiner reversibly erred by \"fail(ing] to show any reasonable expectation of success.\" Appeal Br. 16.", + "Appellant also argues that the Examiner reversibly erred by **ignor[ing] or improperly [dismiss[ing] the unexpected results of the claim limitations.\" Appeal Br. 16.", + "Appellant argues lastly that \"it appears possible that the Examiner is relying on an argument of inherency to remedy the deficiencies of the prior art.", + "Even if an argument of inherency is intended, the Office Action fails to provide any rationale or evidence tending to show inherency.\" Appeal Br. 16.", + "Appellant argues that the focus of Huang \"is to provide increased heat resistant characteristics in a more soft and supple fabric relative to conventional fire-retardant fabrics\" whereas Caldwell teaches *very different types of fabrics\" such as water-resistant fabrics without heat or corrosion resistance. Appeal Br. 17.", + "Appellant argues that Huang teaches away *from treatments such as taught in\" Caldwell. Id.", + "Appellant argues next that a comparison of sample fabric C59 and sample fabric C59E shows unexpected results for second degree burn prevention based on the inclusion of the silicon-based polymer encapsulation.", + "Appeal Br. 19-20 (\"The results clearly demonstrated that the silicone-based polymer treatment according to the current claims reduced charring, essentially eliminated shrinkage, adherence and perforation while completely preventing a second-degree burn.\" (emphasis removed).", + "Appellant argues lastly that there is no teaching in the references that would allow a skilled artisan \"to predict such advantages\" including burn prevent. Appeal Br. 20.", + "Appellant argues that there is no reasonable expectation of success of such advantage. Id." + ], + "examiner_findings": [ + "The Examiner relies on the following references to reject the claims:", + "Name Reference Date", + "Caldwell US 5,418,051 May 23, 1995", + "Huang US 6,287,686 B1 Sept. 11, 2001", + "Hanyon US 2004/0091705 A1 May 13, 2004", + "McKee US 2005/0208856 A1 Sept. 22, 2005", + "The Examiner maintains the following rejections:", + "Claim(s) Rejected 35 U.S.C. S Reference(s)/ Basis", + "22 112 Written description", + "1-6, 8, 10, 21 103 Huang, McKee", + "13-19, 23 103 Huang, McKee, Caldwell, Hanyon", + "22 103 Huang", + "11, 12 103 Huang, McKee, Caldwell", + "The Examiner rejects claim 22 for lack of written description support because the Specification does not describe a single ply material. Non-Final Act. 4." + ], + "ptab_opinion": [ + "Pursuant to 35 U.S.C. 5 134(a), Appellant' appeals from the Examiner's decision to reject claims 1-6, 8, 10-19, and 21-23.", + "See Non- Final Act. 3, 4, 7, 8, 11.", + "We have jurisdiction under 35 U.S.C. a 6(b).", + "Claims 1 and 13, reproduced below, illustrate the claimed subject matter:", + "1. A protective fabric that is lightweight, breathable, and flexible, the protective fabric comprising: flexible yam strands woven, knitted or otherwise joined together so as to form a protective fabric that is lightweight, breathable, and flexible, the fabric comprising about 60% to about 95% by weight of oxidized polyacrylonitrile fibers having an LOI of 50 to 65, the fabric comprising about 5% to about 40% by weight of organic strengthening fibers, including at least aramid fibers having an LOI of of27-36 and rayon fibers having an LOI of 16-17, wherein the protective fabric is free of strengthening filaments and has a weight in a range of about 2 oz/yd2 to 5 oz/yd2.", + "13. A lightweight, breathable and flexible protective article of clothing for protection from hot burning flammable materials, hot molten metals, hot high heat capacity materials, hot sparks, burning phosphorus, or hot or corrosive acids, the protective article of clothing comprising: a fire retardant and heat resistant protective fabric comprised of yarn strands woven, knitted or otherwise joined together so as to form a protective article of clothing selected from a jump suit, sock, welding bib, welding mask shroud, breacher's coat, protective head gear, or undergarment, the protective fabric comprising about 25% to about 99.9% by weight oxidized polyacrylonitrile having an LOI of 50 to 65 and about 0.1 % to about 75% by weight of organic strengthening fibers comprising at least aramid fibers having an LOI of of27-36 and rayon fibers having an LOI of 16-17, wherein fibrous components of the protective fabric consist of the oxidized polyacrylonitrile, the aramid, and the rayon, wherein the protective fabric includes metallic, ceramic or O-Pan filaments having a diameter in a range of about 0.0001 inch to about 0.01 inch, and the protective fabric has a weight in a range of about 4 oz/yd2 to about 14 oz/yd2, wherein the protective fabric includes an elastomeric silicone-based polymer applied to the fabric, and wherein the fabric is breathable rather than being a laminate or plugged fabric.", + "We review the appealed rejections for error based upon the issues Appellant identifies and in light of the arguments and evidence produced thereon.", + "Cf Ex parte Frye, Appeal No. 2009-006013, 2010 WL 889747, at *4 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"It has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections. \").", + "Having considered the evidence presented in this Appeal and each of Appellant's contentions, we are not persuaded that Appellant has identified reversible error, and we affirm the Examiner's written description and obviousness rejections essentially for the reasons expressed in the Final Office Action and the Answer.", + "We add the following primarily for emphasis.", + "Claim 22 depends from claim 1 and additionally recites: \"wherein the protective fabric having a weight in a range of 2 oz/yd2 to 5 oz/yd2 is formed as a single ply.\"", + "Appellant's arguments are unpersuasive because they are unsupported by the record before us.", + "Paragraph 113 of the Specification states: \"Each fabric 104 was tested using an undergarment consisting of a single layer of all-cotton T-shirt.' \" Spec. ' 113.", + "The record, however, does not clearly establish that fabric 104 is encompassed by the claim language.", + "For example, the title of the immediately preceding paragraph 112 describes fabric 104 as **Comparative Example 1\" (Spec. ' 112) contrasted with the embodiments of the invention which are illustrated by examples 1-62. Spec. I 75.", + "Appellant has not identified portions of the Specification that establish the single layer tested only has a single ply.", + "The preponderance of the evidence supports the Examiner's written description rejection.", + "Appellant's argument that *one skilled in the art would have no reason to make the proposed combination but instead be led away from such a modification\" (Appeal Br. 13) (emphasis removed) is unpersuasive.", + "We are not persuaded by Appellant's argument first and foremost because the Specification acknowledges Huang teaches *[f]lame retardant and heat resistant fabrics \u25a0 \u00b7 \u00b7 hav[ing] a weight ranging from about 1-12 oz/yd2\" (Spec. I 7) which is within the claim range.", + "Appellant\" argument is unsupported by the record including the Specification and does not persuade us that Huang's teachings prohibit all other fabric weight than those specifically disclosed as examples.", + "\"(Just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.\" In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).", + "\"Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention.", + "A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.\" Syntex (U.S.A.) LLC V. Apotex, 407 F.3d 1371, 1380 (Fed. Cir. 2005).", + "In this case, Appellant's argument is unsupported by evidence showing that Huang \"suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.\" In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).", + "Moreover, Appellant's argument is unpersuasive because it does not address the Examiner's rationale in combining the references.", + "Compare Appeal Br. 14, with Final Act. 6 (providing that a skilled artisan would have combined the references based on McKee's teaching regarding multi-ply fabrics); see also KSR Int 'I Co. V. Teleflex, 550 U.S. 398, 417 (2007) (\"If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. \").", + "Appellant's argument regarding \"the intended use\" (Appeal Br. 15) of the fabric recited in claim 1 is unpersuasive because the argument does not structurally distinguish the prior art.", + "\"[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.\" Catalina Mktg. Int 7, V. Coolsavings.com, 289 F.3d 801, 809 (Fed. Cir. 2002).", + "It is well- established that \"the expectation of success need only be reasonable, not absolute.\" Pfizer V. Apotex, 480 F.3d 1348, 1364 (Fed. Cir. 2007).", + "Appellant's argument is unsupported by evidence of unpredictability and is therefore unpersuasive.", + "\"It is well settled that unexpected results must be established by factual evidence.", + "Mere argument or conclusory statements in the specification does not suffice.' \" In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).", + "In this case, Appellant cites paragraphs 24 and 26 of the Specification in support of this argument. Appeal Br. 16.", + "Paragraph 24 of the Specification provides that \"[the ability to protect a wearer from heat from hot high heat capacity materials and/or hot corrosive materials is quite different from simply shedding liquids, even flammable liquids, such as gasoline, and is an unexpected result.\"", + "Appellant has not carried the burden of showing unexpected results because *it is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.\" In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).", + "Evidence showing what would have been expected also is not explicitly conveyed by the Specification.", + "See Pfizer, v. Apotex, 480 F.3d 1348, 1369 (Fed. Cir. 2007) (holding that a proper evaluation of a showing of unexpected results considers what properties were expected).", + "Paragraph 26 of the Specification is likewise insufficient because it does no more than a general statement that certain encapsulated yarn strands \"is in sharp contrast to simply applying a coating of silicone to one or both sides of a fabric, which yields a stiff, heavy, laminated sheet having a board-like quality rather than a comfortable flexible and/or breathable fabric.* ~", + "The record before us does not show that the obviousness rejection relies on inherency.", + "Appellant's argument regarding inherency therefore does not address the fact findings in support of the rejection and does not identify error.", + "From the outset, it is unclear which claims are separately argued under the section \"B\" of the Appeal Brief titled \"The Examiner's Rejection of Claims 11-19 and 23 In View of Huang, McKee, Caldwell and Hanyon Should Be Reversed.\" Appeal Br. 16.", + "Section \"B\" starts by reciting what claims 13, 18, 23, 11, and 12 require. Id. at 16-17.", + "The arguments thereafter, however, do not specifically identify any claims other than independent claims 13, 18, and 23 which are argued as a group. See id. at 16-20.", + "Appellant's briefing does not comply with 37 C.F.R. $ 41.37(c)(1)(iv), which requires that *any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claims by number. \"", + "We choose claim 13 as representative for the disposition of the obviousness rejection of all remaining claims. See 37 C.F.R. 9 41.37(c)(1)().", + "As noted supra, \"a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention.\" Syntex (U.S.A.) LLC, 407 F.3d at 1380.", + "Appellant's argument is unsupported by evidence showing that Huang \"suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.\" Gurley, 27 F.3d at 553.", + "Moreover, Appellant's argument is unpersuasive because it does not address the Examiner's rationale in combining the references.", + "Compare Appeal Br. 17, with Final Act. 8 (providing that a skilled artisan would have combined the references based on the desirability \"to provide the fabrics with improved breathability and flexibility while maintaining its functional properties\"); see also KSR Int \" Co., 550 U.S. at 417 CUF a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. \").", + "We are not persuaded by the argument because it does not acknowledge the Examiner's position that the evidence is incommensurate in scope with the claim language.", + "Compare id, with Ans. 20-21.", + "\"It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims.\" ~ In re Lindner, 457 F.2d 506, 508 (CCPA 1972).", + "We are not persuaded by these arguments because these arguments are unsupported by evidence showing (1) structural distinction between the fabric recited in claim 13 (Catalina Mktg. Int '1, 289 F.3d at 809); and (2) the Examiner's proposed combination is *more than the predictable use of prior art elements according to their established functions.\" KSR Int'l Co., 550 U.S. at 417." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022002624_02-07-2023.json b/opinion_split/Decision_2022002624_02-07-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..91ec57756b4d75ccecf67c84eb10eae9840528f6 --- /dev/null +++ b/opinion_split/Decision_2022002624_02-07-2023.json @@ -0,0 +1,69 @@ +{ + "appellant_arguments": [ + "The Appellant's Response The Appellant disagrees and contends that \"there is--in fact--- *objective evidence in the file that the present invention actually produces an observed birefringence pattern change after exposure to neutrons. \"", + "Specifically, the Appellant relies on the Declaration of Michael Heibel Under 37 C.F.R. $ 1.132, filed May 14, 2021 (\"Declaration\" or \"Decl. \" at pages 3-4 for providing such \"objective evidence** and to \"rebut[] Examiner's other assertions, as presented in the Response to the Arguments [of the Non-Final Action].\" Appeal Br. 6-7.", + "The Appellant further contends that \"[a] person of ordinary skill would recognize that the figure presented in the Declaration \u00b7 \u00b7 \u00b7 represents a gradient birefringent pattern that is changing based on varying degrees of pressure within the fiber optic cable\" (id. at 7), particularly as \"a person of ordinary skill in the art would have substantial and sophisticated experience in the nuclear and optical sciences\" (id. at 11).", + "Regarding the Wands factors, the Appellant argues that \"a person of ordinary skill in the art at the time of filing would be able to resolve any undisclosed details, including the dimensioning of the fiber optic cable and application of the principles that are enabled by the Subject Application\" and *would recognize that the selection of a specific form, proportion, or degree of the claimed device would require merely routine experimentation to optimize the performance of the claimed device.\"", + "The Appellant further asserts that \"the breadth of the claims is proportional to the scope of the disclosure\" (id.) and \"\"[]he claimed principles (e.g., the relationship between a birefringent pattern and pressure, as well as the ability of neutron sensitive materials to generate pressure when exposed to neutrons) are sufficiently and clearly disclosed throughout the Subject Application\" (id. at 9; see also id. at 10-11).", + "Further, the Appellant contends that \"the level of ordinary skill in the relevant art \u00b7 \u00b7 is relatively high** and \"a person of ordinary skill in the art would have substantial and sophisticated experience in the nuclear and optical sciences and understand that birefringence is extremely sensitive to pressure, in view of the disclosure presented in the Subject Application, such that undue experimentation would not be required.\" \"", + "The Appellant also asserts that \"the nature of the invention and the state of the prior art indicate that the disclosure is complete\" because the Specification explains how *the birefringent pattern of a fiber optic cable can shift as a result of pressure applied to the cable and that a neutron sensitive material, if installed within a fiber optic cable, would generate a pressure within the fiber optic cable when exposed to neutrons\" and that \"these principles can be integrated into the claimed invention with routine (not undue) experimentation.\"", + "The Appellant also contends that *the amount of guidance and direction provided by the Subject Application is commensurate with the amount of knowledge in the state of the art as well as the predictability in the art.\"", + "Finally, the Appellant asserts Based on the disclosed relationship between the absorbed neutrons, pressure, and exhibited birefringence pattern, a person of ordinary skill would recognize that, in view of the disclosure presented by the Subject Application, the quantity of neutron sensitive material and the design of the fiber optic cable itself would merely be a selection of form, proportion, and/or degree that would merely require routine experimentation and optimization.", + "Accordingly, a person skilled in the nuclear arts would understand that I was in possession of the claimed invention--a fiber optic cable featuring a neutron sensitive material capable of shifting the birefringent pattern of the cable when exposed to neutrons---and thus, that the invention was ready for patenting at the time the Subject Application was filed.", + "The Appellant's Response The Appellant disagrees and argues that the \"Examiner has, in fact, not identified any mention of birefringence in any of the prior art references cited in the rejection--let alone the use of a shift in birefringent pattern to detect the presence of neutrons\" (Appeal Br. 15) and **neither McCollum, Losee, nor Jamison teach or suggest a plurality of cores, such that a neutron sensitive material can be positioned within the plurality of cores, as claimed\" (id.)." + ], + "examiner_findings": [ + "Claims 5-7 and 13 stand rejected under AIA 35 U.S.C. S 112(a) as failing to comply with the enablement requirement.", + "Claims 5-7 and 13 stand rejected under pre-AIA 35 U.S.C. a 103(a) as being unpatentable over McCollum, Losee, and Jamison.", + "The Examiner's Rejection Here, the Examiner rejects claim 13 because the subject matter claimed in limitations (a) and (d) of the fiber optic cable being configured to produce a first and second birefringent pattern is \"not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.\"", + "The Examiner finds that the Appellant's conclusion that \"the gas increases the pressure within the cavity of the fiber optic cable to apply stress to the fiber optic cable, \" as recited in limitation (d), *is based on the theoretical--rather than practical--nature of the disclosure as well as the omission of critical information necessary for one to practice the claimed invention from the description.\"", + "The Examiner applies the factors set forth by In re Wands and concludes that \"the specification at the time the application was filed, would not have taught one skilled in the art how to make the full scope of the claimed invention without undue experimentation.\"", + "Regarding the Wands factors, for factor (1), the Examiner finds that \"a skilled artisan would be required to conduct an unreasonable amount of experimentation to make and use the present invention\" as the Specification \"provides only a theoretical basis for the invention and omits all practical information necessary for its construction and use.'", + "For Wands factor (2), the Examiner finds that \"the amount of direction provided by the inventor is inadequate to enable a skilled artisan to make and use the claimed invention\" because \"the prior art is devoid of devices that operate by the same mechanism as the present invention and there is no predictability in the art,\" and the Specification does not include all the necessary information to make and use the claimed device.", + "Applying Wands factor (3), the Examiner notes there are no working examples described in the Specification but only a \"prophetic example based on predicted results rather than work actually conducted or results actually achieved.\"", + "Regarding Wands factors (4) and (5), the Examiner finds *\"[t]he nature of the invention and the state of the prior art indicate that the disclosure is incomplete\" in that, based on the art cited in the application file (i.e., the references cited on the Information Disclosure statements and Notices of References Cited), \"there is no known device that operates by the same theoretical mechanism as the present invention.\"", + "The Examiner notes that there is no discussion of the prior art cited by the Appellant in the Specification, i.e., the \"various devices and methods known in the art for measuring and monitoring neutron dose received by a reactor vessel and related components and structures in a nuclear power plant.\"", + "For Wands factor (6), \"the examiner believes that the level of ordinary skill in art is not relevant to the issue of enablement in this application, because the disclosure omits so much information that even the most skilled artisan would be unable to make and use the claimed invention.\" \"", + "Regarding Wands factor (7), the Examiner finds that \"[blecause there is no body of art that provides a technological underpinning for the present invention, there is also no predictability in the art, and a skilled artisan would be unable to readily anticipate the effect of a change within the subject matter to which that claimed invention pertains.\" \"", + "The Examiner further finds, relevant to Wands factor (8) (the breadth of the claims) that **t]he specification fails to demonstrate the fundamental concept that underpins the mechanism of the invention: the ability to observe a change in birefringence pattern as a result of exposure of a fiber optic cable to neutrons.\" \"", + "See Ans. 6 (*In order to demonstrate a change, there must be at least two measurements which are compared to one another. This simple observation is not disclosed anywhere in the application file. \").", + "The Examiner's Rejection The Examiner finds that McCollum teaches the structural limitations of independent claim 13 and provides the effects of the neutron sensitive material absorbing a neutron emitted from the reactor vessel as it passes through the cavity, the material producing a gas within the cavity, and the gas increasing the pressure within cavity to apply stress to the cable.", + "The Examiner relies on the combination of McCollum, Losee, and Jamison for teaching the functional limitations regarding producing different birefringence patterns.", + "See Non-Final Act. 14-15, Ans. 10 (\"If a skilled artisan is knowledgeable enough to supply the vast amount of information missing from the present disclosure, surely it is within the skill of the same artisan to combine the prior art to arrive at the claimed invention.\"). " + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "We select independent claim 13 as representative of the group.", + "The remaining claims stand or fall with claim 13.", + "After careful review of the record before us, we conclude that the Examiner has met the burden to set forth a reasonable explanation, and the Appellant has not provided suitable proof that the Specification is enabling.", + "Thus, the Examiner sets forth a comprehensive, reasonable explanation as to why they believe that the scope of protection provided by that claim is not adequately enabled.", + "We find the evidence provided by the Appellant does not provide the requisite proof to show that the Specification adequately enables the subject matter of a fiber optic cable producing first and second birefringence patterns and determining or observing the difference between the first and second birefringent patterns as indicative of the presence of neutrons in the cable cavity, as recited in limitations (a) and (d).", + "We note that the Appellant submits that their submitted prior art references *illustrate a potential technological underpinning for the claimed invention,\" but \"do not operate by the same theoretical mechanism as the claimed invention.\"", + "There is no structure for the tool provided, nor is such a tool claimed.", + "There are no further details on how the measurement of the change, the deduction of the amount of gas, nor the total neutron exposure are determined or performed.", + "However, paragraphs 12 and 13 of the Specification describes those figures as \"show[ing] an expected optical birefringence pattern of a fiber optic cable having Sensor 1 and Sensor 2 at atmospheric pressure\" (emphasis added).", + "There is no indication where the Appellant's cable and/or sensors are installed for these expected results.", + "Bock does not show both patterns at atmospheric pressure, but at pressures almost 150 to 250 times atmospheric pressure.", + "There is no discussion in the Specification that these patterns were replicated from Bock's experiment for the fiber optic cable following exposure to neutrons near a nuclear vessel.", + "Nor does Bock discuss using the white-light interference patterns to determine patterns to indicate the presence of neutrons or any application relating to nuclear radiation.", + "There are no further details, i.e., formulas or scientific principles, on how the change in birefringence pattern is used to determine an accurate numerical change in the stress distribution.", + "However, as discussed above, these Figures are reproductions of Bock's Figure 3.", + "And, the Declaration does not discuss how the Figures illustrate such a relationship.", + "However, this simply indicates that birefringent patterns of a fiber optic cable can shift based on applied pressure and a material generating pressure when exposed to neutrons.", + "At best, this provides evidence that the inventors had possession of the invention and a reduction to practice of the claimed structure of a fiber optic cable with a cavity and configured to produce a first birefringent pattern when pressure is applied, and having a plurality of cores positioned within the cavity with a neutron sensitive material.", + "It does not explain how or under what circumstance any difference in birefringent patterns would occur nor how they would indicate the presences of neutrons in the cavity of the fiber optic cable as claimed.", + "However, there are no details regarding the experiment to which Mr. Heibel refers.", + "For example, there is no discussion of what was measured, what was used to measure, what pressures were tested, the location of the cable relative to a reactor vessel and/or a containment building, any results, whether a first and/or second pattern was produced, whether there were differences in the two patterns, nor how any differences were measured or determined to indicate the presence of neutrons.", + "That the cable was **capable** of producing a birefringent pattern does not explain whether the cable actually produced the results, nor is there any indication that the cable would produce different results based on a location or pressure such that a comparison can be made.", + "Conclusion The Appellant has not provided suitable proof that the Specification enables the contested subject matter.", + "Upon consideration of the entire record, we agree with the Examiner that the Specification does not describe the invention *in such full, clear, concise, and exact terms\" (35 U.S.C. $ 112(a)) to enable a person of ordinary skill in the art, even one having *\\'substantial and sophisticated experience in the nuclear and optical sciences\" (Appeal Br. 11), to practice the invention without undue experimentation.", + "We therefore sustain the Examiner's rejection of the claims under 35 U.S.C. I 112(a).", + "We select independent claim 13 as representative of the group.", + "The remaining claims stand or fall with claim 13.", + "Analysis Based on the record before us, the Examiner's rejection does not have adequate support because we are not convinced that a person of ordinary skill in the art would understand how to combine the references to meet the claimed functions as recited.", + "The Examiner speculates regarding the effects of the proposed combination.", + "However, there is not enough evidence or technical reasoning to support the Examiner's determinations that a person of ordinary skill in the art would understand how the combination of McCollum, Losee, and Jamison would provide the effects and functions claimed.", + "Conclusion We therefore do not sustain the Examiner's rejection of the claims under 35 U.S.C. S 103(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022002636_04-04-2023.json b/opinion_split/Decision_2022002636_04-04-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..c0b03fb97b45547fc2ae1712fb88dfc29037e2a6 --- /dev/null +++ b/opinion_split/Decision_2022002636_04-04-2023.json @@ -0,0 +1,121 @@ +{ + "appellant_arguments": [ + "Appellant contends that the combination of Gaull '015, Wittke, Hirai, and Actor do not teach or suggest the claimed methods, the claimed methods are not obvious because Appellant demonstrated unexpected results, and the Examiner has failed to explain why a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed methods. Appeal Br. 6-16.", + "Appellant contends the rejection is in error because the references do not teach all of the claim limitations.", + "Appellant contends 1) Gaull *015 teaches away from using bovine lactoferrin; 2) Wittke does not teach the claimed range of bovine lactoferrin; 3) Actor does not teach or suggest how pro-inflammatory cytokines would be modulated; and 4) Gaull '015, Wittke, Hirai, and Actor do not teach the claimed patient population. Appeal Br. 6- 9, 14-16.", + "According to Appellant, \"Gaull 12 does not merely express a general preference for an alternative formulation, but actively states that *if a synthetic infant milk formula is prepared based on cow's milk, it would be difficult, if not impossible, to more closely simulate the protein composition of human milk. \" Appeal Br. 7 (emphasis in original; citing Gaull I I 6).", + "Appellant argues that \"Gaull I teaches that many of the proteins of human milk have functional and/or protective value as well which cannot be duplicated in synthetic infant formulas based on bovine or soy proteins,\" so both Gaull I and Gaull '015 teach adding human lactoferrin to synthetic infant formula. Id. (emphasis omitted); see also Reply 3.", + "Appellant contends that Gaull I and Gaull '015 \"do not teach or suggest the addition of bovine lactoferrin to synthetic formulas[] because it cannot duplicate the functional or protective value of human lactoferrin.\" Appeal Br. 7 (emphasis omitted; citing Gaull I 11 6, 32; Gaull '015 2:18-26, 3:4-7, claim 1).", + "Appellant argues Wittke teaches lower amounts of bovine lactoferrin than the claims require. Id.", + "Appellant converted Wittke's teaching of using 70 kCal/100 mL bovine transferrin in infant formula to match the units of measurement in the claims, g/L. Id.", + "According to Appellant's calculation, Wittke teaches using 0.49-1.54 g/L lactoferrin in infant formula, which is outside of the range recited in claim 1. Id.", + "Appellant argues that Actor teaches that proinflammatory cytokines, TNF-u, IL-6, and IL-13, can be modulated by lactoferrin, but does not teach or suggest which way (i.e., increased or decreased) the proinflammatory cytokines would be modulated. Id. at 8; see also Reply 5.", + "Appellant also argues that Actor does not teach or suggest which way the proinflammatory cytokines would be modulated by bovine lactoferrin fed orally to a newborn mammal that has not consumed any colostrum or breast milk. Appeal Br. 8.", + "According to Appellant, Actor also teaches that there are significant differences between bovine and human lactoferrin that could be expected to result in different immunological properties. Id. at 9.", + "Appellant contends that taken together, these teachings do not provide motivation for a person of ordinary skill in the art to arrive at the claimed methods. Id.", + "Appellant argues that none of Gaull *015, Wittke, Hirai, or Actor \"teach or suggest the claimed patient population, that is, a newborn mammal that has not consumed any colostrum or breast milk. \" Id. at 14.", + "Appellant likens the instant case to Perricone V. Medicis Pharmaceutical Corp., 432 F.3d 1368 (Fed. Cir. 2005), a case in which the Federal Circuit found that the claims at issue which recited **applying to skin sunburn\" were patentable over prior art that teaches topical application, but not application to skin sunburn. Id. at 15-16.", + "According to Appellant, **[s]ince there was no disclosure in the prior art of applying the compounds to skin of subjects with sunburned skin, the claims reciting treating skin of subjects with sunburn with the compounds were found to be patentable, despite the disclosure of the use of the compounds on skin of subjects with non-sunburned skin.\" Id. (emphasis in original).", + "Appellant argues that [s]imilar to the issue presented in Perricone, Gaull ['015], Wittke, Actor, and Hirai do not teach or suggest administering an infant formula comprising about 2.0 to about 10 g/L of bovine lactoferrin to the newborn mammal that has not consumed any colostrum or breast milk.", + "The newborn mammal that has not consumed any colostrum or breast milk of the instant claims are analogous to the subject with sunburned skin of Perricone where the prior art did not teach administration of the compounds to the specifically claimed patient population.", + "The art cited by the Office in the instant case does not teach or suggest the administration of the claimed compositions to newborn mammal that has not consumed any colostrum or breast milk, a required element of the claims. Id.", + "Appellant further argues that \"there is nothing 'implicit' about a teaching of the claimed patient population by merely mentioning pre-term newborns, just like in the case of Perricone, where the mention of application to skin in general did not suggest application of lotion to sunburned skin.\" Reply 12.", + "Appellant relies on the same rationale in distinguishing claims 3, 8, 9, 11, 16, and 19 from the prior art. Id. (\"None of the cited art teaches or suggests the patient populations of claims 3, 8, 9, 11, 16, and 19.\").", + "Appellant contends the claimed methods are not obvious because Appellant demonstrated unexpected results.", + "According to Appellant, **Appellants have provided ample evidence that newborn mammals that have not consumed any colostrum or breast milk are not expected by one of ordinary skill in the art to respond to lactoferrin in the same manner as infants who have had their immune systems primed by colostrum and/or breast milk.\" Appeal Br. 12 (citing Declaration of Dr. Sarah S. Comstock, dated October 5, 2018 (\"Comstock Decl. \").", + "Appellant defines \"priming\" as \"the first contact of a T- or B-cell with its specific antigen, which causes differentiation into effector T- or B-cells (cytotoxic, cytokine, antibody).\" Id. at 13 (citing Comstock Decl. I 13).", + "Appellant contends that \"li]t is unexpected that the claimed methods would work to increase immune cell function in newborn mammals that have not consumed any colostrum or breast milk, because these infants lack immune priming provided by other ingredients present in human breast milk or colostrum.' \" Id. at 12; see also id. at 13.", + "According to Appellant, the data in the Specification show \"[the lower cytokine secretion by cells from piglets fed formula without lactoferrin (e.g., the control) supports that those cells were not primed in vivo to be able to respond to stimuli ex vivo, whereas the cells from 3.6 g/L lactoferrin (LF3) had a higher level of cytokine secretion.\" Id. (citing Spec. 9-12 (Example 1); Comstock Decl. I 14).", + "Appellant points to additional results in the Specification and an article written by the inventors as evidence of unexpected results, specifically working examples that show that \"dietary lactoferrin increased IL-10 production by ex vivo LPS- stimulated cells, ~ \"dietary lactoferrin increased TNF-a production by ex vivo LPS-stimulated cells,\" only spleen cells from piglets fed 3.6 g/L lactoferrin (and not spleen cells from piglets fed 1.0 g/L lactoferrin) produced more IL- 10 and TNF-a than control piglets, and 3.6 g/L lactoferrin affected cytokine production by systemic immune cells. Reply 8-9 (citing Spec. 11; Comstock et al., Dietary bovine lactoferrin alters mucosal and systemic immune cell responses in neonatal piglets, 144 J. Nutr. 525, 527, Figs. 4C, 4D (2014).", + "Appellant contends the rejection is in error because the Examiner has not explained why a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed methods.", + "According to Appellant, the Examiner's finding that the claims are obvious based upon routine experimentation is insufficient because the Examiner did not explain why a person of ordinary skill in the art would have had a reasonable expectation of success. Appeal Br. 9.", + "Appellant argues that \"there would not have been a reasonable expectation of success in arriving at a method of increasing immune cell function in a newborn mammal that has not consumed any colostrum or breast milk by administering an infant formula comprising about 2.0 to about 10 g/L of bovine lactoferrin to the newborn mammal that has not consumed any colostrum or breast milk, such that the immune cell function of the newborn is increased.' Id. at 9-10 (emphasis omitted).", + "According to Appellant, the Examiner has not \"provided reasoning or evidence as to why one of ordinary skill in the art would have had a reasonable expectation of success other than to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.\" ld. at 11 (emphasis omitted).", + "Appellant contends that the Examiner *is clearly relying on an impermissible argument that one of ordinary skill in the art would be motivated to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.' \" Id. at 11." + ], + "examiner_findings": [ + "The Examiner finds Gaull '015 teaches synthetic infant formula compositions that closely simulate the composition of human milk and are used to improve the nutrition of newborns, particularly infants with very low birth weights. Final Act. 3.", + "The Examiner also finds Gaull '015 teaches that there are many situations in which infants cannot be fed mother's milk and as a result, synthetic infant milk formulas, predominantly based on cow's milk, have been prepared and used to nourish the infant. Id.", + "The Examiner further finds Gaull '015 teaches that the synthetic infant formula compositions include lactoferrin as a host resistance factor in an amount from 2 to about 5000 times the concentration of the host resistance factor in human milk. Id. at 3-4.", + "The Examiner finds Wittke teaches that administering nutritional compositions containing bovine lactoferrin, such as infant formula, stimulates innate immune cells and the production of cytokines from macrophages. Id.", + "The Examiner finds Wittke also teaches that the amount of lactoferrin in infant formula is 70-220 mg/100 kCal. ld.", + "The Examiner finds Wittke teaches that unlike human lactoferrin, bovine lactoferrin maintains bactericidal activity even if exposed to the low pH (i.e., below 7, and even as low as about 4.6 or lower) and/or high temperatures (i.e., above about 65 OC and as high as about 120 \") that are expected during certain processing methods for nutritional compositions, such as pasteurization. Id. at 5.", + "The Examiner finds Hirai teaches that the lactoferrin content of human breast milk varies during lactation. Id. at 6.", + "The Examiner also finds Hirai teaches that human breast milk generally contains about 2-5 g/L of lactoferrin and colostrum contains about 7 g/L of lactoferrin, so the complete range of lactoferrin in human breast milk is about 2-7 g/L. Id.", + "The Examiner finds Actor teaches that lactoferrin is a critical component in the mediation of immune responses, especially coordinated interactions between innate and adaptive components and associated responses. Id.", + "The Examiner finds Actor also teaches that lactoferrin is a key molecule involved in the engagement of innate components that trigger signal pathways to promote inflammation and ensure that invading pathogens remain in check while the specific immune response is either generated or upregulated. Id.", + "The Examiner concludes: [i]t would have been obvious to one of ordinary skill in the art at the time the claim[ed] invention was made to administer infant formula supplemented with lactoferrin in a formula with a constituent composition that simulates human milk/colostrum such as advantageously taught by Gaull [*015] to a subject suffering/in need thereof (i.e., very low birth weight infant) and specifically [to] employ bovine lactoferrin for the benefits set forth by Wittke et al. and the amount of lactoferrin is between 2 and 7 g/L because Hirai et al. beneficially disclose that this is the range of lactoferrin content of human breast milk/colostrum. In order to promote optimum development of newborns the skilled practitioner would supplement infant formulae with ingredients in an amount[] that simulates that found in human breast milk. Given the importance of colostrum in development of infants it would have been well within the purview of the skilled practitioner to employ lactoferrin, a known immune modulator as taught by Actor et al., within formulae given to infants with compromised immune function (e.g., premature infants, those born to mothers with immune disorders) in an amount found in human colostrum. Id. at 6-7.", + "The Examiner further concludes that *determining an appropriate daily dose of lactoferrin to be administered to any particular infant depending on the state of development, species of mammal being treated, etc.[] is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. \" Id.", + "According to the Examiner, *[f]rom the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention.\" \" Id. at 9." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Pursuant to 35 U.S.C. I 134(a), Appellant' appeals from the Examiner's decision to reject claims 1-22.", + "See Final Act. 1.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We AFFIRM.", + "CLAIMED SUBJECT MATTER Formula-fed infants have higher incidences of infectious diseases and other immune-related diseases including allergy and autoimmune diseases than breastfed infants. Spec. 1:6-8.", + "There is a need to reduce infectious diseases and improve immune development of formula-fed infants. Id. 1:14- 15.", + "The claims are directed to methods of modulating of immune function by administering dietary bovine lactoferrin.", + "Claim 1, reproduced below, is illustrative of the claimed subject matter:", + "1. A method of increasing immune cell function in a newborn mammal that has not consumed any colostrum or breast milk comprising administering an infant formula comprising about 2.0 to about 10 g/L of bovine lactoferrin to the newborn mammal that has not consumed any colostrum or breast milk, such that the immune cell function of the newborn is increased. Appeal Br. 19 (Claims App.).", + "REFERENCES The prior art relied upon by the Examiner is:", + "Name Reference Date Gaull *015 US 6,020,015 Feb. 1. 2000 Wittke US 2012/0171231 A1 July 5. 2012 Hirai Concentrations of lactoferrin and iron in human 1990 milk at different stages of lactation, 36 J. Nutr. Sci. Vitaminol. 531 Actor Lactoferrin as a natural immune modulator, 15 2009 Curr. Pharm. Design 1956", + "REJECTION Claims 1-22 have been rejected under 35 U.S.C. S 103(a) as unpatentable over Gaull *015, Wittke, Hirai, and Actor.", + "OPINION The issue before us is whether a preponderance of the evidence supports the Examiner's finding that the subject matter of claims 1-22 would have been obvious to one of ordinary skill in the art as of the effective filing date of the present application over Gaull *015 combined with Wittke, Hirai, and Actor.", + "We adopt the Examiner's findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection.", + "We find the Examiner has established a prima facie showing that the subject matter of the claims would have been obvious to a person of ordinary skill in the art as of the effective filing date of the present application over Gaull '015 combined with Wittke, Hirai, and Actor.", + "Appellant has not produced evidence showing, or persuasively argued, that the Examiner's determinations on obviousness are incorrect.", + "Only those arguments made by Appellant in the Briefs have been considered in this Decision.", + "Arguments not presented in the Briefs are waived. See 37 C.F.R. $ 41.37(c)(1)(iv) (2015).", + "We have identified claim 1 as representative; therefore, other than the claims separately discussed below, all claims fall with claim 1.", + "We address Appellant's arguments below.", + "Whether the References Teach All of the Claim Limitations", + "the rejection is in error.", + "First, we are not persuaded that Gaull *015 teaches away from the claimed invention.", + "\"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant\" and a reference does not teach away *if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.\" DePuy Spine, Inc. V. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).", + "As Appellant noted, Gaull I states that *if a synthetic infant milk formula is prepared based on cow's milk, it would be difficult, if not impossible, to more closely simulate the protein composition of human milk.\" Gaull I I 6.", + "Gaull *015 includes this same statement. See Gaull '015 2:18-21.", + "And, as the Examiner pointed out, Gaull '015 specifically states that [i]t has been considered for a long time by nutritionists that the best food or nutrition supplied to an infant is its own mother's milk; i.e. fresh human milk. It is recognized, however, that many situations arise wherein the infant cannot be fed mother's 's milk and as a result synthetic infant milk formulas, predominantly based on cow's milk, have been prepared and used to nourish an infant. However, since it is generally believed that human milk provides superior nutrition for infants, much effort has been made to improve synthetic infant milk formulas to more closely [simulate] mother's milk. Gaull '015 1:16-27.", + "Taken together, we find that these statements indicate that Gaull '015 teaches that using human lactoferrin in synthetic infant formula is a preferred embodiment when the formula is administered to human infants.", + "We agree with the Examiner that Gaull '015 teaches that administering human milk to human infants is the \"the gold standard, but that does not mean that in situations when this is unavailable other inferior alternatives are not to be used.' \" See Ans. 11.", + "We are not persuaded that Gaull *015 or Gaull I teach away from the claimed invention.", + "\"Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. , In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).", + "Additionally, we agree with the Examiner that claim 1 does not require that the recited \"newborn mammal\" is a human infant.,", + "Second, we are not persuaded that the Examiner erred in rejecting the claims as obvious because Wittke does not teach the claimed range of bovine lactoferrin. See Appeal Br. 7.", + "`*Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . \u00b7 \u00b7 [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.\" In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).", + "Regarding the claimed range of bovine lactoferrin in the infant formula, the Examiner relied on the teachings in Hirai (not Wittke) and found that \"the amount of lactoferrin is between 2 and 7 g/L because Hirai et al. beneficially disclose that this is the range of lactoferrin content of human breast milk/colostrum. Final Act. 6.", + "We agree.", + "Third, we are not persuaded that Actor does not provide motivation for a person of ordinary skill in the art to arrive at the claimed methods because Actor does not specify whether proinflammatory cytokines increase or decrease with treatment with lactoferrin.", + "The claims do not require any particular change in proinflammatory cytokines, so there is no requirement that any specific cytokines increase or decrease.", + "Fourth, we are not persuaded that the prior art does not teach the relevant patient population.", + "We agree with the Examiner that the patient population of the instant claims (i.e., \"a newborn mammal that has not consumed any colostrum or breast milk\" as recited in claim 1) can include any mammal that for whatever reason has not had access to mother's milk (e.g., pre-term infants or very low birth weight infants) and this requirement is implicitly disclosed in the cited references. Ans. 18.", + "For example, Wittke teaches that its *'nutritional compositions may be administered to preterm infants\" (Wittke I 27), which the Examiner recognizes may not be able to be administered colostrum or breast milk (see Ans. 17).", + "Unexpected Results", + "We have considered Appellant's arguments and data and are not persuaded that the rejection is in error.", + "The burden of establishing that unexpected results support a conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).", + "The relied-upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003).", + "We agree with the Examiner's finding that Appellant's allegedly unexpected results are not commensurate with the full scope of the claims. Ans. 15-16.", + "The claims recite \"a newborn mammal\" which the Specification defines as \"any mammal including, e.g., human, pig, canine, equine, or feline.\" See Spec. 3:17-18, 9:6-7; Appeal Br. 19.", + "However, Appellant's only tested the effects of lactoferrin on newborn, colostrum-deprived piglets.", + "Appellant has not provided results for experiments performed on any other mammal.", + "The claims also recite a range of lactoferrin of \"about 2.0 to about 10 g/L.\" Appeal Br. 19.", + "However, Appellant only provided results for experiments in which the subjects received 0.4, 1.0, or 3.6 g/L of bovine lactoferrin. See Spec. 9:6-7.", + "Only one of these amounts is within the claimed range and this amount is only at the lower limit of the claimed range.", + "Thus, the evidence of unexpected results presented by Appellant does not include the full scope of the claims.", + "We are also not persuaded by Appellant's arguments regarding allegedly unexpected results because Appellant failed to compare the claimed invention to the closest prior art, such as Wittke or Hirai.", + "\"[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.\" In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).", + "Appellant has not provided any results from experiments that supplement infant formula with the amounts of lactoferrin that Wittke and Hirai teach.", + "We agree with the Examiner that Appellant may have discovered the mechanism of action by which lactoferrin supplementation stimulates the immune system of an immunocompromised infant, but the prior art already teaches that it would be beneficial to supplement infant formula with lactoferrin. Ans. 16.", + "Reasonable Expectation of Success", + "the rejection is in error.", + "Appellant's arguments largely reiterate Appellant's positions that the prior art does not teach the claim limitations and that the inventors found unexpected results. See Appeal Br. 9-11; Reply 6-7.", + "We do not find those arguments persuasive for the reasons discussed above.", + "We disagree.", + "The Examiner did not find that Appellant's entire claimed invention is a matter of routine experimentation.", + "Instead, the Examiner found that it would have been routine to find the optimal amount of lactoferrin to use to supplement infant formula, starting with the range of lactoferrin Hirai teaches. Final Act. 7; Ans. 14.", + "We agree with the Examiner's finding and agree that a person of ordinary skill in the art would have had a reasonable expectation of success.", + "As discussed above, both Gaull '015 and Wittke teach that lactoferrin can be added to infant formula, Hirai teaches that lactoferrin is naturally found in mother's milk, and Wittke and Actor teach that lactoferrin modulates the immune system.", + "Taken together, a person of ordinary skill in the art would have had a reasonable expectation of success that administering infant formula supplemented with lactoferrin would modulate the immune system.", + "Based on the foregoing, we conclude that a preponderance of the evidence supports the Examiner's finding that the subject matter of claims 1-22 would have been obvious to one of ordinary skill in the art as of the effective filing date of the present application over Gaull '015 combined with Wittke, Hirai, and Actor." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022003800_12-21-2023.json b/opinion_split/Decision_2022003800_12-21-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..c6253dfaf3504ac720dcc8db8f7ecc192cf6e854 --- /dev/null +++ b/opinion_split/Decision_2022003800_12-21-2023.json @@ -0,0 +1,40 @@ +{ + "appellant_arguments": [ + "Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth below (with text in bold for emphasis only):", + "1. A filter housing assembly for use with a first type of filter element having a first sealing interface at a first end of a first tube of filter media and alternatively for use with a second type of filter element having a second sealing interface at a first end of a second tube of filter media and having a third sealing interface at a second end of the second tube of filter media, the first sealing interface being configured differently than the second sealing interface, the filter housing assembly comprising: an housing body extending axially between a first end and an open second end, the housing body defining a filter element mounting cavity; a filter head being at the first end of the housing body, the filter head including: a first housing sealing interface configured to sealingly mate with a first sealing interface when a filter element of the first type is located within the filter element mounting cavity; a second housing sealing interface configured to sealingly mate with a second sealing interface when a filter element of the second type is located within the filter element mounting cavity; and a cover member removably attached to the second end of the housing body, the cover member including a third housing sealing interface configured to sealingly mate with a third sealing interface when the filter element of the second type is located within the filter element mounting cavity.", + "Beginning on page 5 of the Appeal Brief, Appellant argues that the Examiner erred in finding that Ergican's cover member 240 is removably attached.", + "Appellant argues that in fact Ergican teaches that cover member 240 is locked in place permanently, and refers to 11 59 and 62 in this regard.", + "Appeal Br. 6-7." + ], + "examiner_findings": [ + "The prior art relied upon by the Examiner is:", + "Name Reference Date Coates US 5,715,699 Feb. 10, 1998 Hoffmann US 2002/0104794 Al Aug. 8, 2002 Ardes US 2014/0190881 Al July 10, 2014 Ergican US 2014/0238920 Al Aug. 28, 2014", + "1. Claims 1-6, 13, 14, 23-25, 27, and 28 are rejected under 35 U.S.C. $ 102 being anticipated by Ergican as evidenced by Hoffmann.", + "2. Claims 7 and 8 are rejected under 35 U.S.C. 9 103 as being obvious over Ergican.", + "3, Claims 9, 25, 27, and 28 are rejected under 35 U.S.C. 9 103 as being obvious over Ergican in view of Hoffmann.", + "4. Claims 10-12 are rejected under 35 U.S.C. $ 103 as being obvious over Ergican in view of Ardes.", + "5. Claim 26 is rejected under 35 U.S.C. $ 103 as being obvious over Ergican in view of Coates.", + "The Examiner's statement of the rejection is set forth on pages 8-15 of the Final Office Action.", + "Therein, the Examiner finds, inter alia, that cover member 240 (Figure 4C of Ergican) is removably attached to an end of a housing body.", + "Final Act. 9.", + "Ergican, I 59.", + "In response, the Examiner refer to 11 23, 24, and 37 of Ergican as supposedly disclosing embodiments wherein the cover member is not locked.", + "Ans. 3-4." + ], + "ptab_opinion": [ + "Pursuant to 35 U.S.C. 134(a), Appellant' appeals from the Examiner's decision to reject claims 1-14 and 23-28.", + "We have jurisdiction under 35 U.S.C. $ 6(b).", + "We REVERSE.", + "We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon.", + "Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"It has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections.\"). \").", + "Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant's position in the record.", + "Accordingly, we reverse each of the Examiner's rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis.", + "However, we agree with Appellant's stated reply made on pages 5-7 of the Reply Brief.", + "Therein, Appellant persuasively explains that the Examiner erroneously interprets Ergican in this regard for the reasons presented on pages 5-7 of the Reply Brief.", + "We add that one must look to the whole reference for what it teaches to one skilled in the art.", + "See In re Courtright, 377 F.2d 647, (CCPA 1967) and In re Nehrenberg, 280 F.2d 161, 164 (CCPA 1960).", + "In sum, the rejection does not direct us to sufficient evidence in Ergican for disclosing that the cover member in Ergican is removably attached as recited in Appellant's claim 1.", + "In view of the above, we reverse Rejection 1.", + "We also reverse Rejections 2-5 for the same reasons (any additionally applied refences in these other rejections are not relied upon by the Examiner to cure the aforementioned stated deficiencies of Ergican)." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022004109_11-20-2023.json b/opinion_split/Decision_2022004109_11-20-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..b72c0587932a648d362038bc94de74207ac9ae34 --- /dev/null +++ b/opinion_split/Decision_2022004109_11-20-2023.json @@ -0,0 +1,36 @@ +{ + "appellant_arguments": [ + "Appellant's disclosure: [R]elates to a protective agent for the keratoconjunctiva or a suppressive agent for a keratoconjunctival disorder, and more particularly relates to a protective agent for the keratoconjunctiva or a suppressive agent for a keratoconjunctival disorder, which suppresses a keratoconjunctival disorder caused by drying or the like and protects the keratoconjunctiva. (Spec.3 1.)", + "Appellant's independent claims 1 and 10 are reproduced below:", + "1. A method of protecting keratoconjunctiva from dry eye in a subject, the method comprising: administering to the subject's eye an ophthalmic formulation comprising and effective amount of glucosylglycerol and an ophthalmically acceptable carrier, wherein the glucosylglycerol is present in an amount of from 0.01 to 10% by mass of the ophthalmic formulation. (Appeal Br. 13.)", + "10. A method for treating dry eye in a subject, the method comprising: administering to the subject's eye an ophthalmic formulation comprising an effective amount of glucosylglycerol and an ophthalmically acceptable carrier, wherein the glucosylglycerol is present in an amount of from 0.01 to 10% by mass of the ophthalmic formulation. (Id.)", + "As Appellant explains, Examiner seeks to associate treating dye eye to treating allergic conjunctivitis by citing Yoshida *234.", + "However, Yoshida '234 does not support such an association.", + "Yoshida *234 never mentions allergic conjunctivitis; rather, Yoshida '234 teaches the use of ebselen (an . . entirely different . [active agent compound]) for treating keratoconjunctival disorders caused by endogenous diseases or external damage such as injury, not allergen.", + "Thus, the Examiner has not identified a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed invention does." + ], + "examiner_findings": [ + "Claims 1, 3, 10, and 14 stand rejected under 35 U.S.C. 103(a) as unpatentable over the combination of Yoshida '862,' Yoshida '234,' Schwarz *136,* and Schwarz *568.7", + "Examiner finds, however, that Yoshida *862 fails to disclose the use of its composition in a method of protecting keratoconjunctiva from dry eye in a subject or a method of treating dry eye in a subject, as set forth in Appellant's claims 1 and 10 respectively (Final Act. 3-4; see also id. at 4 (Examiner finds that Yoshida *862 fails to disclose the \"specific concentration range of the active agent \u00b7 \u00b7 \u00b7 [set forth] in [Appellant's] claims 1 and 10. \").", + "Based on the foregoing, Examiner speculates that *from the teachings of Yoshida et al one of ordinary skill in the art will recognize that glucosylglycerol can be used for protecting keratoconjunctiva caused by dry eye\" (Final Act. 4).", + "(Appeal Br. 11; ef Final Act. 4 (citing Yoshida '234 ' 10) (Examiner finds that Yoshida '234 discloses that a keratoconjunctival disorder is not limited to **conjunctivitis (as in Yoshida *862) but also includes dry eve\" and, thus, \"[e]ven though Yoshida *234 does not teach the use of glucosylglycerol as the active agent, one of ordinary skill in the art will recognize that the keratoconjunctiva due to dry eye can be treated using glucosylglycerol in view of Yoshida ['862]\").)", + "Examiner finds that Schwarz '568 discloses **that glucosylglycerol is a substance that has moisture-adding properties and can be employed as a moisturizer\" and also \"has bactericidal and fungicidal effects\" (Final Act. 4 (citing Schwarz '568 (11 3, 4, 11, 16).", + "Examiner, therefore, reasons: This teaching of Schwarz tells one of ordinary skill in the art that glucosylglycerol can be used as an active agent in a method of protecting keratoconjunctiva caused by drying in a subject's s eye using its composition as instantly claimed, wherein moisturization is needed.", + "The artisan will recognize that moisturization of the eve will protect keratoconjunctiva that may arise due to dry eye [as in Appellant's claim 1].", + "This is also treating dry eye in a subject as in instant claim 10. (Final Act. 4.)" + ], + "ptab_opinion": [ + "7 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness?", + "\"[T]he [E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. \" In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "*[R]ejections 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.\" In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).", + "See generally Allergan, Inc. V. Sandoz Inc., No. 6:11-CV-441, 2014 WL 12622277 at *33 (E.D. Tex. Jan. 13, 2014), affd, 796 F.3d 1293 (Fed. Cir. 2015) (\"[T]he Court finds that ophthalmic formulation is an unpredictable art. \"), On this record, Yoshida '862 discloses an antiallergic agent composition, i.e. ophthalmic solution, comprising alpha-D-glucopyranosyl glycerol as the active agent and an ophthalmically acceptable carrier, i.e. eyewash, for use in the therapy and prevention of allergosis, such as allergic conjunctivitis (Yoshida '862 11 14, 15, 22; see also Final Act. 3).", + "Examiner failed, however, to identify an evidentiary basis in Yoshida *862 to support the foregoing conjecture.", + "We find that Appellant has the better position on this record.", + "We are not persuaded.", + "Schwarz discloses the use of glucosylglycerol *as a constituent of skin care agents, for example moisturizers, \"as a component of sweetening agents for diabetics, dietary supplements or to stabilize biomolecules such as proteins and lipids\" (Schwarz '568 I 20).", + "Contrary to Examiner's assertion, Schwarz '568 does not disclose the administration of glucosylglycerol to a subject's s eye for any purpose (see Appeal Br. 11 (Appellant correctly contends that \"Schwarz does not disclose any ophthalmic use. \").", + "In sum, Examiner failed to establish an evidentiary basis on this record to support a conclusion that those of ordinary skill in this art would have found it prima facie obviousness to use glucosylglycerol in a method of protecting keratoconjunctiva from dry eye in a subject or in a method of treating dry eye in a subject, as set forth in Appellant's claims 1 and 10, respectively.", + "Examiner also failed to establish that the subjects treated in Yoshida '862, the only reference on this record that suggests administering glucosylglycerol to the eye, exhibit dry eye or are otherwise in need of a method of treating dry eye or protecting keratoconjunctiva from dry eye.", + "Therefore, we are not persuaded by Examiner's inherency rationale (see Ans.\" 4-5)." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2022004539_05-18-2023.json b/opinion_split/Decision_2022004539_05-18-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..36e4f772e3eda4072bfc0e78ea2f15fb0c4fbbb2 --- /dev/null +++ b/opinion_split/Decision_2022004539_05-18-2023.json @@ -0,0 +1,79 @@ +{ + "appellant_arguments": [ + "The Appellant argues that \"there is no prima facie case of obviousness\" because, contrary to the Examiner's finding, *[nlowhere[] does Kennedy disclose any information of a lipstick bullet or any desire to address the aim of the imitation lipstick bullet of the present invention.\"", + "In that regard, the Appellant argues that the Specification discloses that the **term imitation lipstick bullet serves to define that the imitation lipstick bullet has a shape, size and geometry that resembles a real lipstick bullet for applying lipstick to a user. ***", + "According to the Appellant, \"there is no way the pick (14) [of Kennedy] can reasonably [be] considered an imitation lipstick bullet,\" \" and the Examiner is engaging in *impermissible hindsight reconstruction.\"", + "The Appellant asserts that a \"lipstick bullet\" is \"a very well-known term in the art, in which the bullet is molded of the material (lipstick) that is applied to the lips of the user\" and is \"molded in what is known in the art as a *bullet mold. ***", + "Rather, the Appellant attempts to distinguish Kennedy's 's device by pointing out that Kennedy's device includes a portion that is used for cleaning certain teeth.", + "Specifically, the Appellant states, \"[the fact that Kennedy discloses a very pronounced (long) pick (14) for cleaning at the back molars (Fig. 8) explicitly speaks to the fact that there is no way the pick 2 The Appellant's discussion of the process by which a lipstick bullet is manufactured (via a bullet-mold) does not identify any additional structural limitation.", + "(14) can reasonably considered an imitation lipstick bullet in the context of an obviousness rejection.\"", + "The Appellant further argues that **Kennedy may resemble a lipstick applicator for liquid lipstick, however that is not what is recited in the claims,\" and that the Examiner's finding of equivalency between the toothpick of Kennedy and the recited imitation lipstick bullet \"is not correct.\"", + "The Appellant also argues that Silver \"does not disclose any fimitation lipstick bullet' or a *toothpick. \".", + "The Appellant further argues that Silver does not include *any written disclosure with respect to the dimensional relationship\" between the height of the projection and the diameter of a lipstick bullet, and that \"the proportions of Silver, as alleged by the [E]xaminer, based only upon the drawings is precluded.\"", + "The Appellant also argues that the dimension is not applicable to an imitation lipstick bullet because **neither Kennedy nor Silver make any mention of an fimitation lipstick bullet. ***", + "The Appellant also argues that the Specification discloses the importance of the recited length in that **this dimensional feature helps to further conceal the pick 15 and the fact that the user is using a tooth cleaning device and is not applying lipstick, though it is meant to look like the user is applying lipstick.\"", + "The Appellant further argues that the suggested combination is contrary to \"construction . \u00b7 . deliberately chosen by Kennedy to provide for the nesting as shown in Fig. 4\" by having the tooth cleaning implement be coaxial with the axis of the hollow cylindrical base 26.", + "According to the Appellant, the \"axial alignment makes the molding tooling easier to produce as the finished part ejection from the tool is linear.\"", + "The Appellant asserts that if Kennedy is modified in the manner suggested by the Examiner, the *resultant structures will not work as well\" because \"[a] slanted surface with a pick would result in the pick interfering with the recess in which it is nested. \"", + "As the Appellant pointed out, its Specification discloses that the *term imitation lipstick bullet serves to define that the imitation lipstick bullet has a shape, size and geometry that resembles a real lipstick bullet for applying lipstick to a user.'", + "As the Appellant argues, \"the specification of the application sets forth why the shape of a lipstick bullet is critical to the invention and not merely just for *decorative purposes', as further alleged by the examiner.'" + ], + "examiner_findings": [ + "The Examiner rejects claims 1, 2, 16, 17, 25, and 26 as being unpatentable over Kennedy in view of Silver.", + "As to independent claim 1, the Examiner finds that Kennedy discloses a tooth cleaning device substantially as claimed, including \"a toothpick/imitation lipstick bullet (14; 14a). \"", + "However, the Examiner finds that Kennedy fails to disclose that the planar longitudinal end face is slanted relative to the cylindrical outer wall, or that the height of the tooth cleaning implement is less than a diameter of the lipstick bullet.", + "To remedy these deficiencies, the Examiner finds that Figures 1 and 3 of Silver disclose a tooth cleaning device with a tooth cleaning implement extending from a slanted planar longitudinal end face and having a height that is less than the diameter of the longitudinal end face.", + "In view of the teachings of Silver, the Examiner concludes that it would have been an obvious matter of design choice to modify the tooth cleaning device of Kennedy to provide a slanted planar longitudinal end face because \"the resultant structures will work equally well, and have the tooth cleaning implement extend at a height that is less than the diameter of the lipstick bullet \"based upon conventional design considerations, such as to increase the rigidity of the tooth cleaning implement.\"", + "The Examiner also concludes that To the extent that the toothpick of Kennedy is not considered equivalent to an imitation lipstick bullet as claimed, it would have been obvious to one having ordinary skill in the art to modify the toothpick of Kennedy as modified so the toothpick is constructed having a shape [that] resembles a lipstick bullet for decorative purposes and because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results.", + "In the rejection, the Examiner further concludes that even if the toothpick of Kennedy is not considered an imitation lipstick bullet, \"it would have been obvious to one having ordinary skill in the art to modify the toothpick of Kennedy \u00b7 . so the toothpick is constructed [to have] a shape [that] resembles a lipstick bullet for decorative purposes.\"" + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 9 6(b).", + "We AFFIRM.", + "Thus, we deem independent claim 1 as representative and the remaining claims stand or fall with claim 1.", + "We are not persuaded by the Appellant's arguments.", + "Although claim 1 recites \"an imitation lipstick bullet, \" it fails to recite any language that structurally defines what a lipstick bullet is and fails to otherwise limit its meaning and scope so as to exclude the toothpick of Kennedy.", + "In addition, although the Appellant relies on the Specification in support, the cited passage of its Specification is not helpful in that, although it states that \"[the term imitation lipstick bullet serves to define that the imitation lipstick bullet has a shape, size and geometry that resembles a real lipstick bullet for applying lipstick to a user, \" the passage then further states that \"real lipstick bullets have various shapes, such as conical, dome, flat top, with or without a slanted surface, \" thereby encompassing the shape and geometry of Kennedy's is toothpick 14.", + "In addition, the Appellant's assertion that the rejection engages in improper hindsight reconstruction is unpersuasive because the Examiner's s position is that Kennedy discloses the claimed imitation lipstick bullet.", + "However, the Appellant does not provide any persuasive evidence in support of its assertion.", + "The Appellant does not assert that, in light of the Specification, the term *imitation lipstick bullet\" requires any specific structural feature.\"", + "We reproduce Figure 8 of Kennedy below.", + "The Appellant's argument regarding Figure 8 of Kennedy does not identify Examiner error because claim 1 recites \"an imitation lipstick bullet disposed on said handle portion, said imitation lipstick bullet having a tooth cleaning implement protrudingfrom from a continuous outer surface.\"", + "Thus, contrary to Appellant's argument, under its broadest reasonable interpretation, not only may an imitation lipstick bullet include a tooth cleaning implement, the tooth cleaning device recited in claim 1 explicitly requires its imitation lipstick bullet to have such an implement.", + "Further, the Appellant's Figures disclose a similar structure.", + "Accordingly, the Appellant's attempt to patentably distinguish Kennedy's device based on Kennedy's inclusion of \"a very pronounced (long) pick (14) for cleaning at the back molars (Fig. 8)\" (Appeal Br. 8) is not commensurate with the scope of claim 1.", + "Therefore, we are not apprised of error the Examiner's statement that \"[there are various forms of lipstick bullets and the tooth cleaning device of Kennedy has a shape which is considered equivalent to one of the forms of the lipstick bullets.\"", + "However, as discussed, neither the language of the claim nor the cited portion of the Specification excludes the toothpick of Kennedy.", + "Accordingly, in view of the above, the Appellant's arguments asserting that Kennedy lacks an *imitation lipstick bullet\" as required by claim 1 are unpersuasive.", + "The Examiner's alternative reasoning based on \"decorative purposes,\" and the Appellant's s response thereto, are moot.", + "However, Silver was not relied upon for disclosing an imitation lipstick bullet.", + "Moreover, Silver explicitly discloses that its toothbrush includes a pointed projection 5, which \"by virtue of its shape, serves to clean between-the-teeth areas by effectively projecting into these narrow spaces.\"", + "Thus, contrary to the Appellant's assertion, Silver clearly discloses a toothpick.", + "The Appellant is not entirely correct.", + "It is true that extraction of quantitative values based on measurements of a drawing are of little value.", + "However, we observe that the rejection does not extract precise dimensions from the drawings of Silver.", + "Rather, the rejection reasonably relies on the figures of Silver to observe that its pointed projection is smaller than that of the surface from which it extends.", + "Such an observation is not precluded because drawings can be relied on for what they reasonably disclose and suggest to one of ordinary skill in the art.", + "However, as discussed above, the Appellant's arguments with respect to Kennedy lacking an imitation lipstick bullet fail to identify Examiner error, and the rejection does not rely on Silver for disclosing an imitation lipstick bullet.", + "However, we agree with the Examiner that *the selection of the specific length for the tooth cleaning implement would appear to have been an obvious matter of design choice based upon conventional design consideration, such as to increase the rigidity of the tooth cleaning implement.\"", + "Whether such a length facilitates concealment of tooth picking is immaterial as the Examiner has set forth an adequate rationale for providing a tooth cleaning implement having the recited length, i.e., to increase rigidity of the tooth cleaning implement.", + "However, we find persuasive the Examiner's explanation that the toothpick 14 of Kennedy as modified from the teaching of Silver can be nested within another similar toothpick since Silver teaches a pointed end of the pointed projection/toothpick 5 does not extend beyond an end point of the handle portion 1 \u00b7 \u00b7 \u00b7 Therefore, the toothpick of Kennedy as modified is capable to be nested within another similar toothpick to provide the nesting arrangement as shown in Fig. 4.", + "It would have been obvious to one of ordinary skill in the art to modify Kennedy in view of Silver as suggested by the rejection, in a manner so that the toothpick would be angled and sized accordingly to not impede nesting.", + "Furthermore, although the axial alignment may make the molding tooling easier, that does not mean that it would have been unobvious or technically not feasible to provide an angled pick relative to the cylindrical base.", + "Therefore, in view of the above considerations, we find the Appellant's arguments unpersuasive and affirm the rejection of claims 1, 2, 16, 17, 25, and 26.", + "I respectfully dissent because I agree with the Appellant that the Examiner has not made a proper prima facie case of obviousness.", + "Specifically, I find the Appellant's argument that Kennedy does not disclose *an imitation lipstick bullet\" persuasive, and find the lack of a \"lipstick\" in the applied art to be problematic.", + "~ The Examiner has relied on pick 14 of Kennedy as disclosing an imitation lipstick bullet, but there is no indication that pick 14 is associated with a lipstick bullet, either real or an imitation thereof.", + "Indeed, there is no indication that anything of Kennedy is associated with a lipstick at all.", + "In my view, this definition structurally and functionally defines what an imitation lipstick bullet is to one of ordinary skill, and is contrary to the Examiner's assertion that \"the claims do not indicate the imitation lipstick bullet has a shape, size, and geometry that resembles a real lipstick bullet.\"", + "Although the majority opinion further relies on the subsequent broader description of the possible shapes of a lipstick bullet, in my view, the disclosure of various possible shapes of a lipstick bullet does not broaden its meaning to encompass other objects that have a similar shape, but are not associated with a lipstick bullet.", + "However, although a change in shape has been held obvious as a matter of design choice where an Appellant did not show the shape was significant or beyond what was obvious to perform the same function, that is not the case here.", + "As such, the shape of the claimed invention is significant.", + "The Examiner's application of Silver also does not remedy this defect in Kennedy in that it also lacks any disclosure or teachings pertaining to a lipstick.", + "In seeming acknowledgement of the lack of a lipstick in the applied art, the Examiner belatedly cites U.S. Patent 2014/0166033 A1, pub. June 19, 2014 (\"Declouet\") as evidence of *various forms of lipstick bullets.\"", + "However, Declouet is not part of the rejection.", + "In addition, at best, Declouet discloses an elongate cosmetic dispenser having similar appearance to Kennedy's 's pen for dispensing liquid lip gloss using an included applicator.", + "Declouet still fails to disclose a lipstick or a lipstick bullet.", + "Therefore, because I believe the Examiner's rejection should be reversed for the above reasons, I respectfully dissent." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023000031_06-17-2024.json b/opinion_split/Decision_2023000031_06-17-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..939dbc0eba12a831fda8e8cb55e0011146827d9d --- /dev/null +++ b/opinion_split/Decision_2023000031_06-17-2024.json @@ -0,0 +1,35 @@ +{ + "appellant_arguments": [ + "Appellant contends among other things that \"Crew teaches use of [its] various lists of osmogens for a completely different purpose, to solve a completely different problem, in a different manner from Appellant's claimed dosage form.\" Appeal Br. 8." + ], + "examiner_findings": [ + "Claims 1, 2, 6-9, and 11-16 are rejected under 35 U.S.C. S 103 as being obvious over Crew.2", + "The Examiner finds that Crew teaches pharmaceutical compositions comprising (1) a solid dispersion of a drug in concentration-enhancing polymer, (2) osmogens,\" and (3) excipients including glidants, which are the three ingredients recited, respectively, in elements a), b), and c) of independent claims 1 and 14. Final Act. 5-7.", + "The Examiner finds that Crew teaches many of the same osmogens and glidants recited in the claims, including osmogens having the required molecular weights of less than 500 Da. Final Act. 5-7.", + "The Examiner finds that, although Crew does not expressly teach osmogens having water solubility of at least 2.5 mol/kg, *the instantly claimed water solubility would be implicit because the product and its properties are not separate.\" Id. at 6.", + "With respect to the claim limitation that the dispersion be granulated, the Examiner finds Crew teaches its composition *in the form of granules \u00b7 \u00b7 which suggests the dispersions, osmogens and glidant are all co-granulated absent evidence to the contrary. Id. at 8.", + "The Examiner finds Crew teaches amounts of dispersions and osmogens that overlap the claimed amounts. Id. at 5-6.", + "With respect to the amounts of glidant, the Examiner finds Crew teaches that the amount of excipient used varies depending on its type, that glidant and lubricant are used for the same function of **prevent[ing] agglomeration of the capsule contents,\" and that lubricant may be used in an amount that overlaps the claimed amounts of glidant. ld. at 7-8.", + "Finally, the Examiner finds that Crew teaches its compositions may be in the form of a capsule. Final Act. 5.", + "The Examiner concludes that, in light of the above, and \"based on the well-established proposition . . that no invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effective of the ingredients, the claims are obvious over Crew. Id. at 8.", + "The Examiner asserts, among other things, that \"when a patent [*]simply arranges old elements with each performing the same function it had been known to perform[*] and yields no more than one would expect from such an arrangement, the combination is obvious.\" \" Ans. 10 (quoting KSR V. Teleflex, 550 U.S. 398, 417 (2007)).", + "The Examiner also asserts that, \"as long as Crew requires same osmogens as the applicant's osmogens, solving a problem which is different from that which the applicant was trying to solve may also be considered for the purposes of 35 U.S.C. 103.\" Id. at 15." + ], + "ptab_opinion": [ + "Pursuant to 35 U.S.C. I 134(a), Appellant' appeals from the Examiner's decision to reject claims 1, 2, 6-9, and 11-16. See Final Act. 1.", + "We have jurisdiction under 35 U.S.C. S 6(b).", + "We REVERSE.", + "The claims are directed to dosage forms comprising a dissolvable capsule and a fill material having the recited composition.", + "Claim 1, reproduced below, illustrates the claimed subject matter: 1. A dosage form comprising a dissolvable capsule and a fill material, said fill material comprising a) a dispersion of an active agent and a polymer, said dispersion being granulated, b) an osmogen, wherein the osmogen is magnesium chloride, magnesium sulfate, lithium chloride, sodium chloride, potassium chloride, potassium hydrogen phosphate, lithium dihydrogen phosphate, sodium dihydrogen phosphate, potassium dihydrogen phosphate, potassium sulfate, sodium carbonate, sodium sulfite, lithium sulfate, sodium sulfate, magnesium succinate, glucose, sucrose, maltose, xylitol, sorbitol, glycerol, urea, tartaric acid, lactitol, maltitol, erythritol, or combinations thereof, and c) a glidant, wherein said glidant is silica, fumed silica, silicon dioxide, magnesium aluminosilicates, magnesium aluminometasilicates, or a mixture thereof, and comprises 0.5 wt% to 5 wt% of said fill material; wherein said dispersion comprises 10 wt% to 90 wt% of said fill material, said osmogen comprises from 15 wt% to 40 wt% of said fill material, and wherein the osmogen has a water solubility of at least 2.5 mol/kg, and a molecular weight of less than 500 Da. Appeal Br. 18 (Claims).", + "\"[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.\" In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "We agree with Appellant that the Examiner has not established a prima facie case that the claims on appeal are obvious over Crew.", + "In particular, the claims are directed to \"[a] dosage form comprising a dissolvable capsule and a filler material,' where the filler material comprises a dispersion of an active agent and a polymer, an osmogen, and a glidant. Appeal Br. 18-19 (Claims).", + "Although Crew teaches the use of the claimed osmogens in a capsule, Crew teaches them in the context of **[c]ontrolled release 'extrusion' delivery dosage forms,\" in which the coating is non- dissolving and non-eroding. Crew I 167 (describing *[c]ontrolled release *extrusion* delivery dosage form\" of Crew's invention as having (1) \"a core containing an osmotic agent and Drug A composition\" and (2) \"a non- dissolving and non-eroding coating surrounding the core\"), \" 175-176 (describing osmogens useful in the core of Crew's extrusion delivery dosage form but stating as one of the **ssential constraints\" on the coating for the dosage form that it be ``non-dissolving and non-eroding during release of the drug formulation\").", + "The Examiner has not articulated a reason why a skilled artisan would have combined the osmogens taught in Crew as useful in a controlled release extrusion delivery dosage form, where the capsule is non-dissolving, with a dosage form comprising a dissolvable capsule as required by the claims.", + "We are not persuaded.", + "In this case, the claims do not simply recite a rearrangement of old elements, because they require the combination of osmogens with a dissolvable capsule, a combination that is not taught or suggested by Crew.", + "Likewise, although we agree that **neither the particular motivation nor the avowed purpose of the patentee\" is controlling in determining obviousness, the Examiner must still identify some \"need or problem known in the field of endeavor at the time of invention and addressed by the patent\" that \"provide[s] a reason for combining the elements in the manner claimed.\" KSR, 550 U.S. at 419-20.", + "As discussed above, the Examiner has not articulated a persuasive reason why a skilled artisan would have combined the osmogen used in Crew's controlled release extrusion delivery dosage form, which has a non- dissolving and non-eroding coating surrounding the core, with a dissolvable capsule as recited in the claims.", + "KSR, 550 U.S. at 418 (*[R]ejections 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.\"). ." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023000383_09-12-2023.json b/opinion_split/Decision_2023000383_09-12-2023.json new file mode 100644 index 0000000000000000000000000000000000000000..cbf99a72122ff29090af5156bf8e31814533b9c2 --- /dev/null +++ b/opinion_split/Decision_2023000383_09-12-2023.json @@ -0,0 +1,63 @@ +{ + "appellant_arguments": [ + "Appellant contends the Examiner errs by relying on Pendharkar's *second leaf level\" nodes to teach or suggest the claimed plurality of `leaf nodes, each leaf node associated with a ranking of a plurality offirst machines.", + "Specifically, Appellant argues that Pendharkar uses non-standard terminology when describing the tree in FIG. 15.", + "For instance, Pendharkar uses the term *'leaf-level'' to describe what is commonly referred to as a \"level\" and Pendharkar uses the term \"leaf\" (referring to Massociated lower-level\" tree nodes in lines 60 and 61 of column 15) to describe what is commonly referred to as \"child nodes.\" Appeal Br. 12 (citing Tree structure, Wikipedia, available at https://en. wikipedia.org/wiki/Tree structure (last accessed Sept. 3, 2023); S. Rasoul Safavian and David Landgrebe, A Survey of Decision Tree Classifier Methodology, IEEE Trans. on Systems, Man, and Cybernetics, 21(3), 660- 74, available at haps:/lecexplessinceaae/decumenene9Tor (May 1991) (\"Safavian\")).", + "Appellant argues \"that nodes without children (leaf nodes) in Pendharkar are only associated with their own single node ranking, not with a ranking of a 'plurality' of nodes.\" Id." + ], + "examiner_findings": [ + "REFERENCES The Examiner relies on the following references (only the first named inventor is listed): Name Reference Date Chang US 2003/0088847 A1 May 8, 2003 Danielson US 2006/0004682 A1 Jan. 5, 2006 Pendharkar US 9,292,350 B1 Mar. 22, 2016 Koormamtharayil US 2017/0228198 A1 Aug. 10, 2017 Jeong US 2017/0320182 A1 Nov. 9, 2017 Dato US 2018/0217991 A1 Aug. 2, 2018 Good US 2019/0049929 A1 Feb. 14, 2019 Kaseda JP 2017-021657 A Jan. 26, 2017", + "REJECTIONS The Examiner rejects claims 1-20 as follows: Claims Rejected 35 Reference(s)/Basis Citation U.S.C. S 1, 3, 7, 9, 13, 15 103 Kaseda, Good, Final Act. 3-25 Pendharkar 2, 8, 14 103 Kaseda, Good, Final Act. 25-26 Pendharkar, Chang 4, 10, 16 103 Kaseda, Good, Final Act. 26-27 Pendharkar, Danielson 5, 11, 17 103 Kaseda, Good, Final Act. 27-28 Pendharkar, Danielson, Chang 6, 12, 18 103 Kaseda, Good, Final Act. 29-30 Pendharkar, Danielson, Koormamtharayil 19 103 Kaseda, Good, Final Act. 30-31 Pendharkar, Dato 20 103 Kaseda, Good, Final Act. 31-32 Pendharkar, Jeong", + "In rejecting claim 1 as obvious, the Examiner relies on Pendharkar's multi-level n-ary tree to teach or suggest [1] a decision tree comprising a plurality of leaf nodes, each leaf node associated with a ranking of plurality offirst machines. Final Act. 9 (citing Pendharkar 14:23-55); Ans. 5 (further citing Pendharkar 26:41-42).", + "For the limitation of *each leaf node [being] associated with a ranking of the plurality of first machines\" (emphasis added), the Examiner relies on nodes in the \"first leaf level\" of Pendharkar's tree that represent clusters of hardware nodes (i.e., that represent a plurality of machines). Ans. 5-6 (citing Pendharkar 14:1-7, 23-28, Fig. 14).", + "The Examiner's findings rely on nodes in Pendharkar that have children to teach or suggest the claimed \"leaf nodes associated with a ranking of the plurality of first machines.\" \" Final Act. 9; Ans. 6-8.", + "Rather, the Examiner proffers that the rejections are based on the broadest reasonable interpretation of the claim limitations.", + "The Specification does not have a definition for the term \"leaf\".", + "Since Pendharkar discloses n-ary tree containing multiple leaf levels, it reads on the claim limitations.", + "Ifit is Appellant's intent to claim a specific leaf, then it should be explicitly recited in the claims. Ans. 8." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Pursuant to 35 U.S.C. I 134(a), Appellant' appeals from the Examiner'. s decision to reject claims 1-20.", + "We have jurisdiction under 35 U.S.C. a 6(b).", + "We REVERSE.", + "SUMMARY OF THE DISCLOSURE Appellant's claimed subject matter relates to \"a machine learning model that uses a decision tree to facilitate the work of a supervisor on the production line to choose a machine to perform a particular operation on a particular part. \" Abstract.", + "ANALYSIS Claim 1, which is illustrative with respect to the Examiner's rejections of claims 2-20, is reproduced below with a bracketed reference numeral added and the key limitations emphasized.", + "1. A method in a production line, the method comprising: training a decision tree using a machine learning algorithm and training data based on part attributes, operation attributes, and operation results for operations on parts by a plurality of first machines in the production line, [1] the decision tree comprising a plurality of leaf nodes, each leaf node associated with a ranking of the plurality of first machines; receiving attributes of a part to be processed in the production line; receiving attributes of an operation to be performed on the part; selecting a machine from among the plurality of first machines in the production line that can perform the operation on the part, including: executing the decision tree using the attributes of the part and the attributes of the operation to determine a leaf node associated with a ranking of machines selected from the plurality of first machines, the ranking of machines representing machines determined by the decision tree to be suitable for the operation to be performed on the part, wherein the machines in the ranking of machines are ranked based on the attributes of the part and the attributes of the operation and indicate their suitability to perform the operation on the part; outputting the ranking of machines to a decision maker; and receiving input from the decision maker indicative of a machine selected based on the ranking of machines; and deploying the selected machine to perform the operation on the part. Appeal Br. 14 (Claims App.).", + "An example of Pendharkar's multi- level n-ary tree is illustrated in Pendharkar's Figure 15, which is reproduced below.", + "1500 Node A 1502A Node B Node E Node I 1502B 1502E 15021 Node c Node D Node F Node G Node H Node J Node K Node L 1502C 1502D 1502E 1502G 1502H 1502J 1502K 1502L", + "Pendharkar's Figure 15 illustrates an n-ary tree comprising root node A (1502A), which has child nodes B (1502B), E (1502E), and I (15021), which Pendharkar labels the *first leaf level.\" Pendharkar 14:44-45.", + "Node B (1502B) has child nodes C (1502C) and D (1502D), node E (1502E) has child nodes F (1502F), G (1502G), and H (1502H), and node I (15021) has child nodes J (1502J), K (1502K), and L (1502L).", + "Pendharkar labels this the \"second leaf level.\" Id. at 14:45-46.", + "Pendharkar's \"tree node 1502B represents cluster 1400A and tree node 1502E represents cluster 1400B.\" Pendharkar 14:49-50.", + "\"[C]luster 1400A includes several [hardware] nodes, e.g., [hardware] nodes 1402A and 1402B.\" Id. at 13:64-65, Fig. 14.", + "\"[S]econd cluster 1400B includes [hardware] nodes 1402C and 1402D.\" Id. at 14:5-6, Fig. 14.", + "The \"second leaf level\" nodes of Pendharkar represent hardware nodes. Id. at 14:50-54 (\"[T]he second leaf nodes represent at least some of the [hardware] nodes of each cluster, e.g., tree node 1502C represents [hardware] node 1402A, tree node 1502D represents [hardware] node 1402B, etc. \").", + "The Examiner does not present findings or analysis that show Pendharkar's nodes without children (i.e., Pendharkar's \"second leaf level\" nodes) teach or suggest leaf nodes that are each associated with a ranking of a plurality offirst machines.", + "The Examiner does not, however, provide sufficient support to show that the claimed leaf nodes, when read in light of the Specification, encompass nodes that have children, such as the cluster nodes of Pendharkar's \"first leaf level. \"", + "During prosecution, claims must be given their broadest reasonable interpretation, in light of the Specification, as they would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).", + "Although we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).", + "Our reviewing court states that \"the words of a claim fare generally given their ordinary and customary meaning. .. Phillips v. a WH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation omitted).", + "The broadest reasonable interpretation differs from the broadest possible interpretation. In re Smith Int 'I. Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017).", + "The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is *an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is `consistent with the specification. \" Id. at 1382-83 (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).", + "Provided an inventor's idiosyncratic *meaning of an expression is made reasonably clear and its use is consistent within a patent disclosure, an inventor is permitted\" to act as the lexicographer for a claimed invention so as \"to define the terms of [the] claims.\" Lear Siegler, Inc. V. Aeroquip Corp., 733 F.2d 881, 888 (Fed. Cir. 1984) (citations omitted).", + "An isolated idiosyncratic definition for a term found, for example, in a cited prior art reference may be insufficient to show that a non-standard meaning for the term falls within the broadest reasonable interpretation of that term, absent explicit adoption of the idiosyncratic meaning in the Specification of the application whose terms are being interpreted.", + "Rather, multiple examples showing that artisans of ordinary skill have adopted a new meaning for a term may be needed. See, e.g., Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential as to the treatment of the rejection under 35 U.S.C. S 101) (citing to twenty public patent applications, filed on behalf of thirty-six unique inventors and assigned to fifteen different assignees, as extrinsic evidence that claims to computer readable media encompass transitory signals).", + "Here, Appellant's characterization of a leaf node as having no child nodes accords with the plain meaning of the term.", + "At the time the application was filed, Appellant's cited Wikipedia article stated \"Nodes without children are called leaf nodes, 'end-nodes', or 'leaves. \". Tree structure, Wikipedia, available at https//cn.wikipodia.org/windex.phg] title=Tree structure@coldid-843284106 (revision as of May 28, 2018).", + "This definition accords with the cited disclosure that a \"node with no proper descendant is called a leaf (or a terminal).\" Safavian, 660.", + "This definition also accords with dictionary definitions of a leaf as \"[i]n a tree, a node that has no children\" (IEEE 100: The Authoritative Dictionary of IEEE Standard Terms (74 ed.), IEEE, 611 (Dec. 2000)) and \"a node at the end of a branch--- one that has no descendants\" (Microsoft* Computer Dictionary (54 ed.), Microsoft Press (Mar. 2002)).", + "Appellant's characterization of a leaf node as having no child nodes further accords with the Specification.", + "For example, the Specification provides an example of leaf nodes in Figure 5, which is reproduced below.", + "decision tree, 602 root node, 504 stribute(s) attributs) attribute(s) child nodes. 506 attribute(s) attribute(s) stribule(S) attribute(s) 8 attribule) attributors) ranking of machines 116a leaf nodes, 508 categories of 116 (FIG 6A) machine rankings, 510", + "The Specification`s Figure 5 illustrates decision tree 502, which consists of root node 504, several child nodes 506, and several leaf nodes 508.", + "None of the leaf nodes have child nodes. Spec. ' 45 (\"[t]he decision tree 502 terminates at the leaf nodes 508\" (emphasis added)).", + "The Specification further discloses an example of traversing a decision tree in which \"the traversal ends up at leaf node 608A.\" Id. 1 48 (emphasis added); see also id. I 50, Fig. 6A-B.", + "Similarly, in disclosing how a training algorithm is applied to train a decision tree using a training data set, the Specification discloses a process that \"continues with each child node until the leaf nodes are reached.\" Id. I 66 (emphasis added); see also id. Fig. 8.", + "Based on the Specification and the extrinsic evidence of record, we agree with Appellant that the broadest reasonable interpretation of the claimed decision tree \"leaf nodes\" does not encompass nodes having child nodes.", + "And the Examiner does not rely on Kaseda or Good to teach or suggest disputed recitation [1]. Final Act. 3-8.", + "Therefore, we agree with Appellant that the Examiner's s findings do not show that the combination of Kaseda, Good, and Pendharkar teaches or suggests [1] the decision tree comprising a plurality of leaf nodes, each leaf node associated with a ranking of the plurality of first machines.", + "Accordingly, we do not sustain the Examiner's obviousness rejection under 35 U.S.C. S 103 of claim 1, and claims 3, 7, 9, 13, and 15, which have similar recitations.", + "The Examiner does not show that Chang, Danielson, Koormamtharayil, Dato, or Jeong, alone or in combination, cure the noted deficiency of Kaseda, Good, and Pendharkar. Id. at 25-32.", + "Therefore, we also do not sustain the Examiner's obviousness rejections under 35 U.S.C. $ 103 of claims 2, 4-6, 8, 10-12, 14, and 16-20." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023000901_06-27-2024.json b/opinion_split/Decision_2023000901_06-27-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..95d7ae273168bfc776c1bf4fc5612210769ffa70 --- /dev/null +++ b/opinion_split/Decision_2023000901_06-27-2024.json @@ -0,0 +1,67 @@ +{ + "appellant_arguments": [ + "As discussed by Appellant, the Specification shows that using times and temperatures which are not determined using the claimed steps result in steel sheets which do not have the desired properties (Appeal Br. 10, citing Spec. II 55-59).", + "Moreover, as discussed extensively by Appellant (Appeal Br. 6-9), this claim is quite similar to claim in Diamond V. Diehr, where the Supreme Court held that a rubber molding claim which included a mathematical concept was subject matter eligible." + ], + "examiner_findings": [ + "REJECTION Claims 22-42 are rejected under 35 U.S.C. \u25cf 101 on the grounds that the invention is directed to an abstract idea without significantly more." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Pursuant to 35 U.S.C. .8 134(a), Appellant' appeals from the Examiner' s January 14, 2022 decision to finally reject claims 22-42 (\"Final Act.\").", + "We have jurisdiction under 35 U.S.C. \u25cf 6(b).", + "We reverse.", + "\u00b7 CLAIMED SUBJECT MATTER The claims are directed to a method for manufacturing a recovered steel sheet having an austenitic matrix with at least one mechanical property M equal to or above a target value Mtarget (Appeal. Br. 2).", + "Claim 22, reproduced below, illustrates the claimed subject matter:", + "22. A method for manufacturing a recovered steel sheet having an austenitic matrix presenting at least one mechanical property (M) equal or above a target value Mtarget whose composition comprises, in weight: 0.1 < C < 1.2%, 13.0 < Mn < 25.0%, s < 0.030%, P < 0.080%, N < 0.1%, Si < 3.0%, the remainder of the composition making up of iron and inevitable impurities resulting from development, the method comprising: A. calibrating, wherein the calibrating includes: I. performing heat treatments between 400 and 900 during 40 seconds to 60 minutes on at least 2 samples of said steel, the heat treatments having Pareq values P, Pareq being defined by an equation: Pareq = -0.67*1og(j-AH/RT)*dt), with AH: energy of diffusion of iron in iron, T = temperature of the heat treatment, the integration being over the heat treatment time, the heat treatments being different heat treatments carried out at different temperatures for different times, II. submitting said samples to X-ray diffraction so as to obtain spectrums including a main peak whose width at mid height FWHM is being measured, III. measuring a mechanical property (M) of said samples, IV. identifying a recovery or recrystallization state of each sample, V. drawing a curve of M as a function of FWHM in a domain where the samples are recovered from 0 to 100%, but not recrystallized, B. calculating, wherein the calculating includes: I. determining, from the curve, a value FWHMget corresponding to a target mechanical property Mearget, II. determining a pareq value Ptarget of the heat treatment to perform to reach Miarget based on the M and Pareq values P determined during the calibrating, and III. selecting a time Itarget and a temperature To target for the Ptarget value using the equation, C. feeding a recrystallized steel sheet having a Mrecrystallization, D. cold-rolling the recrystallized steel sheet in order to obtain a steel sheet having a Mcold-roll and E. annealing the cold rolled steel sheet at the selected temperature To target for the selected time Itarget to achieve at least one mechanical property M equal or above the target value Miarget.", + "OPINION The Examiner does not specifically analyze each of the claims*, but appears to focus only on claim 22 and does not meaningfully review any dependent claims (see, Final Act. 8).", + "Accordingly, we will conduct our analysis with respect to claim 22.", + "We summarily reverse the section 101 rejections for the remaining claims, because the Examiner has not done an evaluation on a claim-by-claim basis.", + "MPEP 2106.07.", + "The correct analysis requires that each claim in an application be considered separately based on the particular elements recited therein.", + "Id.", + "We address the rejection of claim 22 under \u25cf 101 with a short summary of the applicable law, followed by the application of that law to the claim.", + "Legal background.", + "An invention is patent-eligible if it claims a \"new and useful process, machine, manufacture, or composition of matter.\"", + "35 U.S.C. I 101.", + "However, the U.S. Supreme Court has long interpreted 35 U.S.C. S 101 to include implicit exceptions: \"`l]aws of nature, natural phenomena, and abstract ideas\" are not patentable.", + "E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l. 573 U.S. 208, 216 (2014).", + "In determining whether a claim falls within an excluded category, we are guided by the Court's two-part framework, described in Mayo and Alice.", + "Alice, 573 U.S. at 217-18 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).", + "In accordance with that framework, we first determine what concept the claim is *directed to.\"", + "See Alice, 573 U.S. at 219 (\"On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.\"); see also Bilski V. Kappos, 561 U.S. 593, 611 (2010) (\"Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk.\").", + "Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker V. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk 12. Benson, 409 U.S. 63, 67 (1972)).", + "Concepts determined to be patent eligible include physical and chemical processes, such as \"molding rubber products\" (Diamond V. Diehr, 450 U.S. 175, 191 (1981)); \"tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores\" (id. at 182 n.7 (quoting Corning V. Burden, 56 U.S. 252, 267-68 (1853)); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane V. Deener, 94 U.S. 780, 785 (1876))).", + "In Diehr, the claim at issue recited a mathematical formula, but the Court held that \"a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.\"", + "Diehr, 450 U.S. at 187, 191 (\"We view respondents* claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.\").", + "Having said that, the Court also indicated that a claim \"seeking patent protection for that formula in the abstract \u00b7 \u00b7 . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.\"", + "Id. at 187 (\"It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.\") (citation omitted) (citing Benson and Flook), 191.", + "If the claim is *directed to\" an abstract idea, we turn to the second part of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an finventive concept? sufficient to 'transform' the claimed abstract idea into a patent-eligible application.\"", + "Alice, 573 U.S. at 221 (quotation marks omitted).", + "\"A claim that recites an abstract idea must include *additional features' to ensure *that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].\" Id. (quoting Mayo, 566 U.S. at 77).", + "\"[M]erely requirling] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.\" Id.", + "In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of section 101.", + "The Manual of Patent Examining Procedure (\"MPEP\") now incorporates this revised guidance and subsequent updates at section 2106 (9th ed. Rev. 10.2019, rev. June 2020).", + "Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not \"well-understood, routine, conventional activity\" in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.", + "Our analysis, based on the foregoing framework, follows:", + "Guidance Step 1.", + "Claim 22 recites a process for manufacturing a recovered steel sheet.", + "Such a process is plainly within one of the statutory categories of eligible subject matter.", + "Guidance Step 2A (Prong One).", + "Under Step 2A of the Guidance, we first consider whether claim 22 recites a judicial exception.", + "Claim 22 recites, inter alia, (1) identifying a recovery or recrystallization state of each beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.", + "Guidance Step 2A (Prong Two).", + "Step 2A, Prong Two requires that we determine whether claim 22 has additional elements that integrate the judicial exception into a practical application.", + "This analysis requires (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.", + "\"A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\"", + "In this instance claim 22 recites a number of elements beyond the judicial exceptions, for example, (1) \"feeding a recrystallized steel sheet having a Mrecrystallization\", (2) cold-rolling the recrystallized steel sheet in order to obtain a steel sheet having a Mcold-roll; and (3) *annealing the cold rolled steel sheet at the selected temperature To target for the selected time Learget to achieve at least one mechanical property M equal or above the target value Miarget.", + "Each of these steps are process steps which show that the claim is not a drafting effort designed to monopolize an abstract idea.", + "In particular, the times and temperatures resulting from the calibration and calculation steps are used in the annealing step so as to ensure that the final product has a specific mechanical property.", + "This means that the judicial exceptions are integrated into practical applications, which reduce the risk that the desired final mechanical properties of the steel are not obtained.", + "450 U.S. at 191.", + "The Examiner's arguments seeking to distinguish Diehr do not persuade us that a different result is warranted here.", + "Although the specific use of the mathematical formula in Diehr is different from the use in the present claim, the end result is similar.", + "That is, in Diehr the mathematical formula is used to ensure that the final product has the desired mechanical properties (i.e. it is not over- or under-cured), while in this case, the use of the mathematical formula ensures that the desired mechanical properties are obtained in the final product.", + "Based on our analysis that claim 22 has additional elements that integrate the judicial exception into a practical application (\"Step 2A, Prong Two\"), we conclude that the claims recite patentable subject matter, and reverse the rejection under S 101.", + "MPEP \u25cf 2106.04(a)." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023001214_03-20-2024.json b/opinion_split/Decision_2023001214_03-20-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..225b309bf5107c0092fe3f0961044924ff383cf4 --- /dev/null +++ b/opinion_split/Decision_2023001214_03-20-2024.json @@ -0,0 +1,144 @@ +{ + "appellant_arguments": [ + "Appellant contends that the Specification provides a *description of the algorithm for implementation of the claimed method on a programmed computer.\" Appeal Br. 12 (citing Spec. 73-74).", + "Appellant also asserts that various passages in the Specification describe the computer version of the method. Id. at 13-15 (citing Spec. 14, 15, 28, 32-33).", + "Appellant argues that the Examiner has distorted the text of the claim and the claim merely recites different ways of making bets in different embodiments. Appeal Br. 16-18.", + "Regarding this claim language, Appellant indicates that the two parts refer to two games that \"are fully described in claim 1\" and \"[eJach of the games comprises\" steps of **[p]lacing and writing down or recording bets; [plicking single betting elements at random and writing down or recording results of the game; [and clomparing results of the game with bets made by each player.\" Appeal Br. 21.", + "Appellant first asserts that the claims were amended \"to emphasize that the method for playing lotto games is claimed and not the implementation of the method on a programmed computer readable medium.\" Appeal Br. 36.", + "However, Appellant acknowledges that the tools used for implementing the recited method are not considered \"as a special apparatus for implementation of the method.\" \" Id.", + "Appellant also admits that *the claimed method belong[s] to judicial exceptions.\" Id. at 37.", + "Appellant argues that the claim provides an inventive concept as follows: The claimed method uses various types of betting elements, wherein betting elements of each type comprise single elements and sub-elements of at least two kinds, of which these single elements are composed. Each set of single elements comprises all possible combinations of sub-elements, wherein each single element is one of such combinations and the number of single elements equals the product of numbers of sub-elements of each kind in each other. Betting elements of all the types with the structure described above have common feature: each group of single elements having common sub-element of one kind comprises single elements with every sub-element of the other kind. For example, a standard deck of playing cards. Cards of each suit comprise cards of every value and cards of each value comprise cards of every suit. The claimed method is based on particular way of using said feature of betting elements, consisting in that, that each single element belongs to at least three different groups of ofbetting elements: single elements and single elements having common sub-element of each kind. When all single elements are picked at random one by one from a set in the game constituting the first part of the method, each single element takes part in creation of random sequences of betting elements in each of said groups, that is random sequences of single elements and single elements having common sub-element of each kind, fulfilling at least three functions at the same time. Further, when all single elements having common sub-element are picked out, the sub-element is drawn out, which brings about creation of random sequences of sub-elements of each kind. As a result, random sequences of single elements, single elements having common sub-element of each kind and sub-elements of each kind are created. When a particular number of single elements are picked out at random and returned to the set one by one in the game constituting the second part of the method, each single element takes part in creation of random sequences of single elements and sub-elements of each kind, fulfilling at least three functions at the same time. As a result, random sequences of single elements and sub-elements of each kind allowing repetitions are created. So, random sequences of betting elements containing all possible combinatorial types are created in the claimed method. Reply Br. 33.", + "Appellant asserts that an example of such betting elements can be found in a standard deck of cards." + ], + "examiner_findings": [ + "Claim(s) Rejected 35 U.S.C. s Reference(s)/Basis 1-38 112(a) Written Description 1-38 112(b) Indefiniteness 1-38 101 Eligibility", + "The Examiner finds that claim 1 lacks written description support to the extent it \"recites the alternative of for in a computer version of the method. .. Final Act. 2.", + "The Examiner explains that although it may be **routine to use computers to perform certain game functions . . . applicant has not disclosed how the computer is to be used in the particular steps of [the] claimed method or any algorithm that would be necessary to do so.\" \" Id. at 3.", + "Similarly, the Examiner finds that claim 38 lacks written description support because *the [S]pecification fails to show any algorithm or how each step of the method is related to the handling by any algorithm. \" Id. at 4.", + "Additionally, the Examiner determines that the claim lacks written description support to the extent that the claim *now recites that a player has the alternative of putting tokens on appropriate spaces of tables in a casino, or a lottery ticket, or on a screen, or using virtual tools.' ~, Final Act. 3.", + "According to the Examiner, the written description only supports alternative embodiments for either using a casino table, a lottery ticket, or a computer version for playing a game and does not support the claim to the extent the claim recites a method that mixes the various embodiments. Id. at 3-4.", + "First, the Examiner finds that the claim is presented in improper form because it is not drafted as a single sentence, i.e., it includes several periods indicating multiple sentences are used. Final Act. 4.", + "Next, the Examiner finds that the claimed \"both parts of said method\" lacks proper antecedent basis. Final Act. 4.", + "Under this step of the analysis, the Examiner finds that the claim recites an abstract idea in the form of rules for playing a game. Final Act. 8.", + "The Examiner indicates that such rules recite abstract ideas in the form of mental processes and methods of organizing human activity such as interpersonal interactions. Id.", + "Additionally, the Examiner finds that the claim recites an arrangement of indicia for playing a game. Id.", + "The Examiner also finds that \"there is no recitation or insufficient recitation of a machine or transformation and no transformation takes place. The mere rearrangement and placement of betting elements is not considered a transformation to a different state or thing.\" Id. at 8-9.", + "The Examiner also indicates that there are no additional elements in the claim that integrate the abstract ideas into a practical application. See id. at 9-11.", + "The Examiner finds that to the extent the claim requires implementation on a computer, this *is merely a field of use limitation\" and the computer required would be generic with no specialized hardware needed. Id. at 10.", + "The Examiner also finds that the claims do not require implementation with anything more than an equally generic deck of cards, lottery ticket, and gaming table. Id. at 9- 11.", + "Here, the Examiner determines that the additional elements in the claim do not amount to significantly more than the judicial exception itself. See Final Act. 9-11.", + "The Examiner further explains that the claim recites the use of betting paraphernalia such as a deck of cards that **add nothing significantly more to the abstract idea as using indicia bearing cards in the play of such games was conventional [and] well-known.\" Ans. 21.", + "The Examiner further explains the use of conventional cards 0 as random indicia and a substrate upon which [] the play of a game occurs is conventional and well- understood, suggesting that such do not add substantially more to the abstract idea for it to be considered an exception. Hence, merely adding the substrate upon which the game is intended to operate or conventional cards has been found insufficient to suggest the claims are substantially more than an abstract idea of playing a game. Id.", + "Still further, the Examiner explains that the claim requires only conventional use of betting elements even to the extent the claim requires various combinations of betting elements, as \"[t]his is nothing new to cards and the play of games using them as *betting elements. ~ Id. at 22.", + "Further, *the type and combination of indicia selected by [A]ppellant do not suggest that substantially more than playing a game is being recited.\" Id." + ], + "ptab_opinion": [ + "STATEMENT OF THE CASE Pursuant to 35 U.S.C. S 134(a), Appellant' appeals from the Examiner's decision to reject claims 1-38.", + "See Final Act. 1.", + "We have jurisdiction under 35 U.S.C. 6(b).", + "We AFFIRM.", + "CLAIMED SUBJECT MATTER The Specification describes that *[t]he present invention belongs generally to lotto games, and more particularly to lotto games allowing player[s] to choose bet combinations and sequences.\" Spec. 1.", + "The claims recite a method for playing lotto games.", + "Claim 1, reproduced below, illustrates the claimed subject matter: 1. A method for playing lotto games using various types of betting elements having one common feature \u00b7 betting elements of each type comprise single betting elements and sub-elements of at least two kinds, forming said single betting elements. Said method is based on particular way of using said feature of betting elements, consisting in that, that each single betting element belongs to at least three different groups of betting elements: single betting elements and single betting elements having common sub-element of each kind, and when single betting elements are picked at random, each single betting element takes part in creation of random sequences of betting elements in each of said groups fulfilling at least three functions at the same time, as single betting element and as single betting element comprising particular sub-element of each kind. Said method creating many random sequences of betting elements containing all possible combinatorial types thereof and consisting of two parts, comprises the following steps: \u00b7 placing bets by a player putting tokens on appropriate spaces of one or more tables in a casino or marking appropriate spaces of one or more tables in a lottery ticket, or in a computer version of the method, marking appropriate spaces of one or more tables or combo boxes displayed on a screen, which are written down by a game operator or designated using virtual indicating tools, recorded and saved by a program respectively. Said bets are selected from betting on single betting elements, single betting elements having common sub-element and sub- elements, and combinations, variations, permutations, combinations with repetitions and variations with repetitions thereof; . picking out single betting elements at random one by one from a set of said betting elements by the casino dealer or the lottery operator, or by the program in the computer version of the method and putting or displaying on the screen respectively each betting element face up on a space representing it in a table having a number of spaces according to the number of single betting elements, arranged in rows and columns according to numbers of sub-elements, such that each single betting element is represented by a particular space of said table as a combination of two sub-elements, which makes visual creation of random sequences forming results of games constituting both parts of said method, as follows: . picking out all single betting elements at random one by one from the set of said betting elements in a game constituting the first part of said method, which brings about: picking out all single betting elements having common sub-element of each kind in random order among them respectively and picking out all sub-elements of each kind in random order among them respectively, and results in creation of random sequences of single betting elements, single betting elements having common sub-element of each kind and sub-elements of each kind, which are permutations containing variations and combinations of different numbers of said single betting elements, single betting elements having common sub-element and sub-elements and also of variations with repetitions and combinations with repetitions of different numbers of said sub-elements; \u00b7 writing down or recording and saving said random sequences separately from each other in the order of their picking, i.e. in the order of picking said single betting elements, single betting elements having common sub-element and sub- elements of each kind respectively, by the game operator using tables and auxiliary tools provided for these purposes or by the program using virtual tools in the computer version of the method, which are virtual tables and auxiliary tools of the same kinds as those being used in the casino and in the lottery, and combo boxes; - picking out at random and returning to the set, one by one a particular number of said single betting elements in a game constituting the second part of said method, which brings about creation of random sequences of different kinds allowing repetitions of previously selected said single betting elements and sub-elements of each kind, containing variations with repetitions and combinations with repetitions of different numbers of said single betting elements and sub-elements of each kind respectively; . writing down or recording and saving said random sequences separately from each other in the order of their picking, i.e. in the order of picking said single betting elements and sub-elements of each kind respectively, by the game operator using tables and auxiliary tools provided for these purposes or by the program using virtual tools in the computer version of the method, which are virtual tables and auxiliary tools of the same kinds as those being used in the casino and in the lottery, and combo boxes; picking out at random by the game operator or by the program and writing down or recording and saving respectively, at least two additional betting elements; comparing results of the game with bets made by each player and determining whether a successful bet has occurred by the game operator or by the program in the computer version of the method, and in the affirmative case, calculating winning amount which is granted to a player according to the probability of success of his bet. Appeal Br. 50-52 (Claims App.).", + "REJECTIONS The Examiner maintains the following rejections:", + "OPINION Written Description The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. V. Mahurkar, 935 F.2d 1555, 1563-1564 (Fed. Cir. 1991).", + "\"[T]he written description requirement is satisfied by the patentee's disclosure of *such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. \" Id. (quoting Lockwood 17. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).", + "However, \"to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.\" Purdue Pharma L.P. V. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).", + "We agree with Appellant.", + "It is not entirely clear to us what the Examiner finds to be lacking in the written disclosure regarding implementation in a computer version.", + "As noted by Appellant, the Specification describes a specific algorithm for performing the invention on a computer (see Spec. 72-73) and describes performing the various method steps using a computer (see, e.g., Spec. 32-33).", + "We determine that these descriptions in the Specification convey with reasonable clarity that Appellant was in possession of a computer version of the methods claimed.", + "We reach the same conclusion regarding the Examiner's is separate statements directed to claim 38.", + "We are not persuaded of error.", + "As discussed further below, the claim may be interpreted in a manner that requires the use of physical betting elements and virtual betting elements at the same time and during the same game.", + "To the extent the claim allows for this mixture of embodiments, we agree with the Examiner that the written disclosure does not convey with reasonable clarity that, at the time of filing, Appellant was in possession of the method as now claimed.", + "As Appellant notes, the Specification describes the making of bets in physical embodiments and in computerized embodiments separately. Appeal Br. 17.", + "We do not see any disclosure that allows for mixing physical and virtual gaming methods, and thus, the written description does not appear to provide support for the full scope of the claim language.", + "Based on the foregoing, we sustain the rejection of claims 1-38 under 35 U.S.C. I 112(a).", + "Indefiniteness A claim must **particularly point[] out and distinctly claim[] the subject matter which the inventor or joint inventor regards as the invention.\" 35 U.S.C. I 112(b) (2018).", + "\"As the statutory language of 'particular[ity]' and *distinct[ness]' indicates, claims are required to be cast in clear---as opposed to ambiguous, vague, indefinite--terms.\" In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).", + "\"[A] claim is indefinite when it contains words or phrases whose meaning is unclear.\" ld. at 1322; Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566 at *5 (PTAB Aug. 25, 2017) (precedential) (quoting Packard, 751 F.3d at 1314).", + "\"In determining whether the claim is sufficiently definite, we must analyze whether *one skilled in the art would understand the bounds of the claim when read in light of the specification. \" Allen Eng 'g Corp. V. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002) (citations omitted).", + "Further, \"we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts.\" Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).", + "Additionally, the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation. Halliburton Energy Servs., Inc. 17. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008).", + "The Examiner raises several issues regarding the clarity of claim 1.", + "We discuss these issues as necessary below.", + "We agree.", + "We see at least two extra periods in the preamble of the claim including the recitations of \"forming said single betting elements. Said method is \u00b7 \u00b7 ~ and \"comprising particular sub-element of each kind. Said method creating \u00b7 \u00b7 \", Appeal Br. 50.", + "The use of these extra periods adds to the ambiguity in the claim that is discussed below.", + "We do not agree that this phrase lacks antecedent basis.", + "Earlier claim language identifies \"Said method \u00b7 \u00b7 consisting of two parts,\" which provides antecedent basis for this recitation.", + "However, we do agree that the claim is unclear based on the recitation of the method having two parts and the further reference to both parts of the method because it is not clear what the two parts of the method are.", + "The claim does not clearly recite what are the two parts of the method.", + "One might understand from the claim that the two parts refer to the use of a physical game and a computerized game.", + "However, as discussed above, it is not clear if the game requires separation of the physical method and the computerized method or if the claim allows for a mixture of the two.", + "Alternatively, the two parts of the method may relate to the physical or virtual division of game pieces, such as the separation of a deck of cards into picture cards and non-picture cards, as described in the Specification. See Spec. 54.", + "In this instance, the claimed recitation of parts may be referring to two parts of the *many random sequences of betting elements containing all possible combinatorial types thereof.\"", + "Yet the claim does not clearly define what the two parts of those betting elements would be or how they are obtained.", + "Still further, the two parts of the method may simply refer to the placing of bets and the picking of betting elements.", + "In short, the person of ordinary skill in the art is left to guess at what the \"two parts\" of the method are and how they are derived or implemented.", + "Although the claim provides steps for picking, writing down, recording, and comparing results with bets made, we do not see any indication that this refers to two separate games except for the possible reference to a physical game and a virtual game as discussed.", + "This appears to represent yet another different possible interpretation of the \"two parts\" claimed.", + "Based on the foregoing, we are not persuaded that the Examiner erred in determining that the claims are indefinite.", + "Accordingly, we sustain the rejection of independent claim 1 as indefinite and the rejection of the dependent claims as indefinite based on their dependency from claim 1.", + "We acknowledge that the Examiner has found claim 1 and certain dependent claims indefinite based on other language. See Final Act. 4-7.", + "However, we decline to evaluate these limitations here because we would need to have a clear understanding of the language discussed above in claim 1 before doing so.", + "Eligibility Appellant argues the claims as a single group. See Appeal Br. 35-48.", + "We select claim 1 as representative. See 37 C.F.R. S 41.37(c)(1)(iv).", + "35 U.S.C. 5 101 Legal Framework An invention is patent eligible if it claims a *new and useful process, machine, manufacture, or composition of matter.\" 35 U.S.C. a 101.", + "However, the U.S. Supreme Court has long interpreted 35 U.S.C. 101 to include implicit exceptions: \"[Il]aws of nature, natural phenomena, and abstract ideas\" are not patentable. E.g., Alice Corp. V. CLS Bank Int 7, 573 U.S. 208, 216 (2014).", + "In determining whether a claim falls within an excluded category, we are guided by the Court's two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217-18 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).", + "In accordance with that framework, we first determine what concept the claim is \"directed to.\" See Alice, 573 U.S. at 219 (\"On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. \"); see also Bilski 17. Kappos, 561 U.S. 593, 611 (2010) (\"Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk. \").", + "Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk V. Benson, 409 U.S. 63, 67 (1972)).", + "Concepts determined to be patent eligible include physical and chemical processes, such as \"molding rubber products\" (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); *tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores\" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853)); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane V. Deener, 94 U.S. 780, 785 (1876)).", + "In Diehr, the claim at issue recited a mathematical formula, but the Court held that \"a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.\" \" Diehr, 450 U.S. at 187, 191 (\"We view respondents* claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.\").", + "Having said that, the Court also indicated that a claim \"seeking patent protection for that formula in the abstract . \u00b7 is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. \" Id. (citing Benson and Flook), 187 (It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. \").", + "If the claim is \"directed to\" an abstract idea, we turn to the second step of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an finventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application.\" Alice, 573 U.S. at 221 (quotation marks omitted).", + "\"A claim that recites an abstract idea must include *additional features' to ensure *that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]. \". Id. (quoting Mayo, 566 U.S. at 77).", + "\"[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.\" ld.", + "We are also guided by U.S. Patent and Trademark Office (\"USPTO\") Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, 50 (Jan. 7, 2019) (\"Guidance, 84 Fed. Reg.\") and the October 2019 Update: Subject Matter Eligibility (\"October 2019 Update*), and incorporated into the Manual of Patent Examining Procedure 55 2104-06, Rev. 07.2022 (\"MPEP\") in February 2023.", + "\"The guidance sets out agency policy with respect to the USPTO's interpretation of the subject matter eligibility requirements of 35 U.S.C. $ 101 in view of decisions by the Supreme Court and the Federal Circuit.\" Guidance, 84 Fed. Reg. at 51.", + "Although \"[a]II USPTO personnel are, as a matter of internal agency management, expected to follow the guidance, ~ the guidance \"does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO.\" Id.", + "The Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Guidance, 84 Fed. Reg. at 50.", + "Under USPTO guidance, we first look to whether the claim recites: (1) any judicial exceptions, including laws of nature, natural phenomena, and products of nature (see MPEP 55 2106.04(II)(A)(1), 2106.04(b)) (\"Step 2A, Prong One\"); and (2) additional elements that integrate the judicial exception into a practical application? (see id. 46 2106.04(II)(A)(2), 2106.04(d)) (\"Step 2A, Prong Two*).3 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the additional elements, individually or in combination, provide an inventive concept. See MPEP 2106(11), 2106.05.", + "\"An inventive concept 'cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself. *** MPEP S 2106.05 (quoting Genetic Techs. Ltd. 17. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)).", + "Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional\" in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP S 2106.05(II); Guidance, 84 Fed. Reg. at 56.", + "Step One of the Mayo/Alice Framework Under the first step of the Mayo/Alice framework and Step 2A of USPTO guidance, we first determine to what claim 1 is directed, i.e., whether the claim recites an abstract idea and if so, whether the claims are directed to that abstract idea.", + "The Federal Circuit has explained that \"the *directed to' inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether *their character as a whole is directed to excluded subject matter. *** Enfish, LLC V. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. 17. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 201 5).", + "It asks whether the focus of the claim is on a specific improvement in relevant technology or on a process that itself qualifies as an *abstract idea\" for which computers are invoked merely as a tool. See id. at 1335-36.", + "Here, it is clear from the Specification, including the claim language, that claim 1 focuses on an abstract idea, and not on any improvement to technology and/or a technical field.", + "We substantially agree with the Examiner.", + "Here, the claim recites steps for placing bets, picking out betting elements at random, writing down or recording random sequences, and comparing game results with bets.", + "We agree with the Examiner that each of these steps may be performed as a mental process.", + "We also agree that these steps recite a method of organizing human activity to the extent they recite steps of a commercial interaction and steps for managing relationships and interactions between people during a wagering game.", + "More broadly, we agree with the Examiner that each of the steps recited are merely rules for playing a wagering game.", + "These rules for playing a wagering game are substantially similar to the concept of \"rules for conducting a wagering game\" in In re Smith, 815 F.3d at 818-19 (Fed. Cir. 2016).", + "See also In re Marco Guldenaar Holdings B. V., 911 F.3d 1157 (Fed. Cir. 2018) (holding ineligible claims directed to a set of rules for playing a dice game).", + "Thus, we find that each of the method steps recites a rule for playing a wagering game, which is an abstract idea.", + "We also agree with the Examiner that the additional elements claimed do not integrate the abstract idea into a practical application.", + "The claim recites generic betting elements, **tables in a casino, \" \"a lottery ticket,\" and \"a computer version of the method. \"", + "These elements are recited generically and the Specification indicates that they are nothing more than standard or general-purpose versions of the objects and computer indicated.", + "For example, the Specification describes The present invention discloses a method for playing lotto games, which is implemented with the help of each type from a plurality of types of betting elements comprising 52 cards of a standard deck of playing cards, 64 squares of chess or checkers board, 100 squares of an international draughts board, 28 dominos, symbols relating to other table games, numbers or letters of the alphabet of different colours, pictures of different colours and any types of betting elements comprising single betting elements and sub-elements of at least two kinds, forming said single betting elements. Spec. 3.", + "We also note that the Specification does not provide any specific description of a computer required to perform the steps of the method.", + "The Specification indicates that any computer that is suitable for playing a computer game would suffice. See id. at 15.", + "As such, one of ordinary skill in the art would understand that only a generic computer is required to implement the method claimed.", + "Thus, we agree with the Examiner and determine that claim 1 recites an abstract idea and does not provide additional limitation that integrate the abstract idea into a practical application, i.e., claim 1 is directed to the abstract idea recited.", + "Appellant does not appear to argue otherwise.", + "Thus, Appellant appears to concede that the claim is directed to the abstract idea recited, and the majority of Appellant's s arguments are directed to whether the claim includes an inventive concept.", + "Step Two of the Mayo/Alice Framework Under the second step in the MayolAlice framework and USPTO guidance Step 2B, we *[e]valuat[e] additional elements to determine whether they amount to an inventive concept [which] requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.\" Guidance, 84 Fed. Reg. at 55; MPEP I 2106.05(I).", + "Alice is clear, as described above, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and \"as an ordered combination\" to determine whether the additional elements, i.e., the elements other than the abstract idea itself, *transform the nature of the claim\" into a patent-eligible application. Alice, 573 U.S. at 217; see also Mayo, 566 U.S. at 72-73 (requiring that \"a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an *inventive concept, sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.\").", + "In other words, the inventive concept under step two of the Mayo/Alice framework cannot be the abstract idea itself. See BSG Tech, LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (\"It has been clear since Alice that a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention *significantly more' than that ineligible concept. \").", + "We agree with the Examiner and adopt the Examiner's responses to Appellant's arguments in the Answer. See Ans. 20-24.", + "We agree with the Examiner that the additional elements recited do not provide an inventive concept because they are well-understood, routine, and conventional when considered individually and as an ordered combination.", + "Specifically, the claim merely relies on well-understood, routine, and conventional functions in managing a set of rules for a lotto game and including the routine use of a computer for managing such a game.", + "The claim merely sets forth indicia for playing a game that are implemented using conventional game apparatuses or a computer, which are recited at a high level of generality.", + "We see no indication in the claim or Specification that the claim represents anything other than that which is well-understood, routine, and conventional in the presentation and marking of tables for wagering games.", + "We make this determination both with respect to the claim limitations individually and with respect to the claim limitations as an ordered combination.", + "We are not persuaded otherwise by Appellant's arguments.", + "We fail to see how this provides an inventive concept that ensures the claim amounts to significantly more than the abstract idea itself.", + "We agree with the Examiner's assessment that the claim merely uses a standard betting element such as a deck of cards in a conventional way, i.e., a deck of cards is conventionally used in wagering games to provide combinations and sub- combinations of betting elements.", + "Based on the foregoing, we determine that claim 1 is directed to an abstract idea without significantly more.", + "We reach the same conclusion regarding the dependent claims for substantially the same reasons.", + "Accordingly, we sustain this rejection." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023001225_04-15-2024.json b/opinion_split/Decision_2023001225_04-15-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..dee0c8c034cbc885a76a7e68d737f7e96e66dc96 --- /dev/null +++ b/opinion_split/Decision_2023001225_04-15-2024.json @@ -0,0 +1,88 @@ +{ + "appellant_arguments": [ + "b. Appellant's 's Contentions Appellant contends the Examiner errs in rejecting claim 1 as obvious over the combined teachings of DeVore, Erman, and Ramer. Appeal Br. 12-14, Reply Br. 5-7.", + "Appellant contends that Ramer does not teach or suggest the disputed limitation of claim 1. Appeal Br. 12-13 (quoting Ramer 11 12-13).", + "In particular, Appellant contends that Ramer still does not compare a network operator associated with an application to the wireless provider and certainly does not determine \"whether a network operator associated with at least one of the one or more identified applications is the same as a provider providing a communication network service to the user device,\" as required by claim 1. Id. at 13-12 (emphasis added).", + "Appellant replies, Ramer teaches a wireless provider having access to a database (which is associated with \"subset of carrier business rules 130 that determine the type of access to wireless content that a user is permitted,\" Ramer, para. [0164]) containing information from the wireless provider 's business partners from which the wireless provider derives additional advertising or profit sharing revenues.", + "However, Ramer's above teachings still do not compare a network operator associated with at least one identified application to a provider providing a communication network service to a user device, and thus do not determine *whether a network operator associated with at least one of the one or more identified applications is the same as a provider providing a communication network service to the user device, ~ as required by claim 1. Reply Br. 6-7 (emphases added); of Spec. I 82 (quoted above and discussing the third party information provider's s partnership with the network operator).", + "Similar to its contention with respect to claim 1, Appellant contends, Ramer still does not compare a network operator associated with an application to the wireless provider and does not determine *that a network operator associated with another one of the one or more identified applications is different from the provider providing the communication network service to the user device,\" \" as required by claim 3. Appeal Br. 15 (emphasis added).", + "As with its contentions regarding independent claim 1, Appellant replies, Ramer's above teachings still do not compare a network operator associated with another one identified application to the provider providing the communication network service to the user device, and thus do not determine \"that a network operator associated with another one of the one or more identified applications is different from the provider providing the communication network service to the user device,\" as required by claim 3. Reply Br. 8 (emphasis added).", + "Although Appellant does not concede that \"Cantrell could be combined with Devore, Erman, and Ramer in the manner alleged in the Final Office Action\" and asserts that \"the additional features recited [in] claims 4, 5, 9, 10, 14, 15 are not obvious over Devore, Erman, and Ramer further in view of Cantrell,\" Appellant does not present substantive arguments or evidence supporting either assertion. Appeal Br. 15-16." + ], + "examiner_findings": [ + "The Examiner rejects: 1. claims 1-3, 6-8, 11-13, 22-26, and 28-31 under 35 U.S.C. S 103 as obvious over the combined teachings of DeVore, Erman, and Ramer (Final Act. 3-15); and 2. claims 4, 5, 9, 10, 14, and 15 under 35 U.S.C. S 103 as obvious over the combined teachings of DeVore, Erman, Ramer, and Cantrell (id. at 15-17).", + "III. ANALYSIS A. Obviousness Over DeVore, Erman, and Ramer As noted above, the Examiner rejects claims 1-3, 6-8, 11-13, 22-26, and 28-31 under 35 U.S.C. S 103 as obvious over the combined teachings of DeVore, Erman, and Ramer. Final Act. 3-15.", + "1. Independent Claims 1, 6, and 11 a. The Examiner 's Findings The Examiner finds that DeVore and Erman, in combination, teach or suggest the majority of the limitations of claim 1. Final Act. 3-7 (citing DeVore 11 11, 14, 17, 19, 22, 31, 38, 39, 46, 52, 67, 75, 78, 84, 91, Figs. 1, 5, 10; Erman 11 21, 44, 45, 176, 184).", + "Moreover, the Examiner finds that a person of ordinary skill in the relevant art would have had reason to combine the teachings of DeVore and Erman \"to modify the application recommendation methodology/system of DeV ore by including the automatic installation and analysis techniques of Erman because Erman discloses a way to automatically install an application taking into account the capabilities of the device, which enables easier use of a mobile device\" and, thereby, to achieve these limitations. Id. at 7 (citing DeVore 1 92).", + "The Examiner finds, however, that \"DeVore further lacks one or more or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. \"). Final Act. 7.", + "Nevertheless, the Examiner finds Ramer teaches or suggests these limitations of claim 1, not taught or suggested by DeVore or Erman. Id. at 7-9 (citing Ramer 11 128, 164, 779).", + "In particular, the Examiner finds that Ramer teaches or suggests, \"based on a determination whether a network operator associated with at least one of the one or more identified applications is the same as a provider providing a communication network service to the user device, generating a list \u00b7 \" that is, the disputed limitation of claim 1. Final Act. 7-8 (citing Ramer 11 164, 779); see Appeal Br. 12.", + "Thus, the Examiner finds that Ramer teaches or suggests that content provided to a user may be limited to content that is licensed or otherwise obtained from the wireless provider's business partners. Cf Spec. I 82 (quoted above).", + "Thus, the Examiner finds that Ramer teaches or suggests obtaining both walled garden and open network search results and comparing the search results and their sources to identify differing content. Final Act. 8-9; see Appeal Br. 12.", + "Finally, the Examiner finds that a person of ordinary skill in the relevant art would have had reason to combine the teachings of Ramer with those of DeVore and Erman \"because it would lead to improved content being delivered for a mobile application recommendation\" and, thereby, to achieve the methods of claim 1. Final Act. 9 (citing Ramer I 3; DeVore I 2).", + "The Examiner answers: Under [the broadest reasonable interpretation (BRI], [the] Examiner interprets this limitation as limiting the presented applications (or other mobile content) to applications (or other mobile content) which are of priority or financial value to the wireless provider (i.e.[.] if the provider is AT&T, then the apps displayed from a search are ones in which AT&T derives a benefit).", + "Under this interpretation, [the] Examiner finds that [Ramer], which was cited in the most recent office action, discloses this limitation. Ans. 4 (emphasis added).", + "Further, the Examiner finds Ramer discloses: The wireless provider 108 may also have access to a \"content walled garden\" database 132 containing information from the wireless provider's 108 business partners from which the wireless provider 108 derives addition advertising or profit sharing revenues, such as content relating to cell phone offers, content relating to other services provided by the wireless provider[.] Ramer I 38 (emphasis added); see Ans. 4-5.", + "Thus, the Examiner finds that Ramer teaches or suggests that the wireless provider may provide its proprietary content, e.g., \"content relating to other services provided by the wireless provider,\" \" such as applications, to the user. Ans. 4-5 (citing Ramer I 38).", + "The Examiner finds Ramer teaches or suggests the limitations of these claims (Final Act. 10-11 (citing Ramer I 164), and that a person of ordinary skill in the relevant art would have had reason to combine Ramer's teachings with those of DeVore and Erman for the same reasons found with respect to claim 1 (id. at 11 (citing Ramer I 3; DeVore I 2).", + "In particular, the Examiner finds Ramer discloses, \"[the walled garden may limit the scope of permitted content to a pre-defined content set that is determined by the wireless provider 108.\" Id. at 10-11 (quoting Ramer I 164, italics omitted).", + "The Examiner answers: As similar to the independent claims, [the] Examiner interprets this limitation as only presenting applications (or other mobile content) which are of priority or financial value to the wireless provider (i.e.[,] ifthe provider is AT&T, then the apps displayed from a search are ones in which AT&T derives a benefit) and excluding content which does not benefit the provider.", + "Again, [the] Examiner finds that [Ramer], which was cited in the most recent Office action, discloses this limitation. Ans. 5 (emphasis added).", + "Further, the Examiner finds Ramer discloses, \"[blecause of this additional revenue, the wireless provider 108, through its carrier business rules 130, may ensure that this advantageous content is given priority over search results that are equally relevant but do not have financial benefits for the wireless provider 108.\" Id. (quoting Ramer ' 134); see Ramer I 38 (quoted above, describing various wireless providers); see also Ramer I 164 (\"For example, a wireless provider 108 may license content from third parties and offer the provider's subscribers a bundled package of the licensed content, while restricting access to other content.\" (emphasis added)).", + "Thus, the Examiner finds that Ramer teaches or suggests that the wireless provider may provide its proprietary content, e.g., \"content relating to other services provided by the wireless provider,\" such as applications, to the user and content from unfavored providers may be restricted, e.g., excluded. See Ans. 5; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (Ut is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. \").", + "B. Obviousness Over DeVore, Erman, Ramer, and Cantrell As noted above, the Examiner rejects claims 4, 5, 9, 10, 14, and 15 under 35 U.S.C. S 103 as obvious over the combined teachings of De DeVore, Erman, Ramer, and Cantrell. Final Act. 15-17." + ], + "ptab_opinion": [ + "I. STATEMENT OF THE CASE Appellant's claimed methods, machine readable non-transitory and tangible media, and systems \"relate[] to methods, systems and programming for searching applications.", + "More particularly, the present disclosure is directed to methods, systems, and programming for providing mobile application recommendations.' Spec. I 2.", + "In an embodiment, the Specification discloses: Search and recommendation layer 922 of application search engine 904 receives search results from users in user layer 902.", + "For example, a user represented by user layer 902 may transmit an application search query to application search engine 904 to search for a particular type of application based on a keyword or search term.", + "This application search query is directed to search and recommendation layer 922 which analyzes the application search query in conjunction with information and data received from feeder 912.", + "Based on the analysis, search and recommendation layer 922 can generate an application search result list either listing all applicable applications or filtered base[d] upon the user's device. Spec. I 81.", + "Further, the Specification discloses: Search and recommendation layer 922 may also take into account information received from third party information provider 920.", + "For example, if third party information provider 920 is a sponsor or advertiser associated with a particular application, these applications may be ranked higher on an application search result list.", + "Furthermore, these applications may be flagged and provided as application recommendations.", + "Third party information provider 920 may also be a partner, which can request certain applications be excluded from search results based on characteristics of the user 's device.", + "For example, if a user is smartphone 910-2 is registered on the Sprint network and third party information provider 920 is a different network operator such as T-Mobile, third party information provider 920 can instruct search and recommendation layer to exclude from the search results certain applications which have been tagged as exclusive to T-Mobile customers, and thus a user of smartphone 910-2 would not see those applications on an application search result list.", + "If third party information provider 920 were an advertiser, the advertiser may specify that a particular advertisement be associated with a certain application such that the advertisement is provided for display at a user device whenever the corresponding application appears on an application search result list or appears as an application recommendation. Id. I 82 (emphasis added).", + "Thus, in this embodiment, the Specification discloses that the third party provider may be the same as or different from the network operator, and the search and recommendation layer may include or exclude the third party provider's information, e.g., application, from the search results list generated for the user.", + "As noted above, claims 1-15, 22-26, and 28-31 are pending.", + "Claims 1, 6, and 11 are independent. Appeal Br. 17 (claim 1), 18-19 (claim 6), 20-21 (claim 11) (Claims App.).", + "Claims 2-5, 22, 25, 26, 28, and 29 depend directly or indirectly from claim 1; claims 7-10, 23, and 30 depend directly or indirectly from claim 6; and claims 12-15, 24, and 31 depend directly or indirectly from claim 11. Id. at 17-23.", + "Claim 1, reproduced below with a disputed limitation emphasized, is representative.", + "1. A method implemented on at least one computing device, each computing device having at least one processor, storage, and a communication platform connected to a network for providing adaptive application searching, the method comprising: receiving, from a user on a user device, an application search request specifying one or more search items; obtaining, from a first database, first information associated with the user and the user's social network and/or personal contacts; obtaining, from a second database, second information associated with a plurality of applications that are recently trending determined based at least in part on the first information; analyzing the one or more search items, the first information, and the second information to identify one or more of the plurality of applications relevant to the application search request; based on a determination whether a network operator associated with at least one of the one or more identified applications is the same as a provider providing a communication network service to the user device, generating a list including the at least one of the one or more identified applications to be provided to the user as a response to the application search request, wherein the at least one of the one or more identified applications is displayed with additional content determined based on a criterion associated with a provider of the additional content and the communication network service used by the user device being satisfied; selecting one or more application recommendations based on the generated list, the first information, and the second information in accordance with inputs from the user for customizing recommendations; installing one or more of the identified applications automatically on the user device based on usage of applications installed on the user device and other operational parameters associated with the user device; and updating the first information associated with the user in the first database. Appeal Br. 17 (Claim App.) (emphasis added).", + "Each of independent claims 6 and 11 recites a limitation corresponding to the disputed limitation of claim 1. Id. at 19, 20.", + "II. REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name' Reference Issued/Published Filed Cantrell US 8,832,681 B1 Sept. 9, 2014 Aug. 29, 2008 Ramer US 2010/0312572 A1 Dec. 9, 2010 June 8, 2010 Erman US 2011/0307354 A1 Dec. 15, 2011 June 9, 2010 DeVore US 2012/0072283 A1 Mar. 22, 2012 Sept. 14, 2011", + "We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).", + "Appellant and the Examiner focus their contentions and findings, respectively, on independent claim 1 and dependent claim 3;4 we focus our analysis on those claims as well. See, e.g., Appeal Br. 14, 15.", + "Arguments not made are forfeited.\"", + "Unless otherwise indicated, we adopt the Examiner's findings in the Final Office Action, as modified by the Answer, as our own and add any additional findings of fact for emphasis.", + "We address the rejections below.", + "For the reasons given below, we sustain the Examiner's obviousness rejection of these claims.", + "Ramer discloses: The walled garden 132 refers to subset of carrier business rules 130 that determine the type of access to wireless content that a user is permitted.", + "The walled garden may limit the scope of permitted content to a pre-defined content set that is determined by the wireless provider 108.", + "For example, a wireless provider 108 may license content from third parties and offer the provider's 's subscribers a bundled package of the licensed content, while restricting access to other content. Ramer I 164 (emphasis added).", + "Ramer further discloses: The wireless provider 108 may also have access to a \"content walled garden\" database 132 containing information from the wireless provider's 's 108 business partners from which the wireless provider 108 derives additional advertising or profit sharing revenues, such as . \u00b7 content relating to other services provided by the wireless provider . .. Id. I 38 (emphasis added); see Ans. 4-5 (citing Ramer I 38).", + "Ramer also discloses: In embodiments, a method may be used for providing walled garden search results and open network search results to a mobile communication facility 102 as a result of a search performed on the mobile communication facility 102.", + "The walled garden search results may be highlighted and listed prior to other content.", + "The walled garden search results may include provider content that is not included within an initial amount of content provided from the open network search results \u00b7 \u00b7 \u00b7\u00b7 Ramer I 779 (emphasis added).", + "As discussed below, Appellant does not persuade us the Examiner errs.", + "This contention is little more than a disagreement with the Examiner's findings.", + "Moreover, Ramer discloses: The wireless communication facility 104 may link directly to a wireless provider 108 such as a corporation or carrier providing the user's cellular phone service (e.g., Verizon, AT&T, Sprint, etc[.]) or other wireless communication service.", + "The wireless provider 108 may, in turn, have a number of proprietary databases from which it can obtain information that may be relevant to a user, such as to operate appropriately in response to a query entered by a user.", + "For example, the wireless provider 108 may have access to a database containing carrier business rules 130 describing the proper handling of 'user queries. Ramer I 38 (emphasis added); ef Spec. 82 (quoted above, discussing the third party information provider's s partnership with the network operator).", + "We agree with the Examiner.", + "Regarding the comparison of the network operator and the content providers, e.g., the wireless providers, the Examiner demonstrates that such a comparison is taught or suggested by Ramer. See supra Section III.A.1.a. .a. (discussing Ramer I 779).", + "As noted above, Appellant's other contentions amount to little more than disagreements with the Examiner's findings. SmithKline Beecham Corp. 17. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (\"[M]ere statements of disagreement . \u00b7 do not amount to a developed argument. \").", + "On this record, Appellant does not persuade us of Examiner error, and we sustain the rejection of independent claim 1, as well as of independent claims 6 and 11, which are not challenged separately from claim 1. Appeal Br. 14.", + "Further, we sustain the rejection of dependent claims 3, 7, 12, 22- 26, and 28-31, which is not challenged separately from the rejection to their base claims. See Genentech, Inc. V. Hospira, Inc., 946 F.3d 1333, 1340 (Fed. Cir. 2020).", + "2. Dependent Claims 3, 8, and 13 Claim 3 depends directly from claim 1 and recites that the method of claim 1 further comprises, \"based on a determination that a network operator associated with another one of the one or more identified applications is different from the provider providing the communication network service to the user device, excluding the another one of the one or more identified applications from the list.\" Appeal Br. 18 (Claims App.) (emphases added); see Spec. I 82 (\"For example, if a user's smartphone 910-2 is registered on the Sprint network and third party information provider 920 is a different network operator such as T-Mobile, third party information provider 920 can instruct search and recommendation layer to exclude from the search results certain applications which have been tagged as exclusive to T-Mobile customers, and thus a user of smartphone 910-2 would not see those applications on an application search result list.\" (emphases added)).", + "Claims 8 and 13 depend directly from claims 6 and 11, respectively, and recite corresponding limitations.", + "We agree with the Examiner.", + "As discussed above, however, we agree with the Examiner that Ramer teaches or suggests such a comparison. Ans. 5; see supra Section III.A.1. (discussing Ramer I 779).", + "On this record, Appellant does not persuade us of Examiner error, and we sustain the rejection of dependent claim 3, as well as of dependent claims 8 and 13, which are not challenged separately from claim 3. Appeal Br. 15.", + "Appellant does not persuade us of Examiner error by these unsupported assertions. See 37 C.F.R. S 41.37(c)(1)(iv) (2023) (\"A statement [that] merely points out what a claim recites will not be considered an argument for separate patentability of the claim. \"); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 201 1) (\"[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. \"); see also SmithKline Beecham, 439 F.3d at 1320 (quoted above).", + "Thus, Appellant relies solely on the contentions made with respect to the rejection of independent claims 1, 6, and 11 to overcome the rejection of these claims. Appeal Br. 16.", + "Because, in view of the analysis above, Appellant does not persuade us that the Examiner errs in rejecting independent claims 1, 6, and 11 and because Appellant does not substantively challenge the rejection of claims 4, 5, 9, 10, 14, and 15 separately from the rejection of their base claims, we sustain the rejection of claims 4, 5, 9, 10, 14, and 15. See Genentech, 946 F.3d at 1340." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023001486_03-20-2024.json b/opinion_split/Decision_2023001486_03-20-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..8686119ab4ebdeb2565927ba5ae1ce9870557109 --- /dev/null +++ b/opinion_split/Decision_2023001486_03-20-2024.json @@ -0,0 +1,113 @@ +{ + "appellant_arguments": [ + "Appellant argues that Brinkmann neither teaches nor suggests that the C-terminal first antigen-binding domain can be anything other than a single chain Fab, which is prohibited by claim 1. App. Br. 8.", + "Appellant acknowledges that, in Brinkmann, the binding domain at the C-terminus of an Fc domain is referred to as a **further antigen-binding site,\" \" and that the further antigen-binding site can be, *e.g., single chain Fv, a VH domain and/or a VL domain, Fab, or (Fab)2.\" Id. (quoting Brinkmann ' 179).", + "Appellant argues that all of the exemplary embodiments taught by Brinkmann include, at the C-terminus of its Fc domain, a single chain variety of an antigen-binding site, e.g., an scFv or scFab. App. Br. 9.", + "Appellant contends that Brinkmann does not teach or suggest choosing a conventional Fab over a single chain Fab simply by listing \"Fab\" within the general list of options for the C-terminus of an Fc domain. Id.", + "Nor, asserts Appellant, does Brinkmann provide a skilled artisan with motivation to arrive at such a construct, given that every exemplified construct in Brinkmann includes a scFv or scFab at this position. Id.", + "With respect to Hoogenboom, Appellant argues that Hoogenboom's teaching that some of the various possible cross-over modifications might be expected to improve the affinity and/or flexibility of certain Fab fragments fails to explain why a skilled artisan would be motivated to modify Brinkmann's trivalent, bispecific antibody by introducing a cross-over modification into only one of the binding domains, much less only the binding domain fused at the C-terminus of the Fc domain. App. Br. 10.", + "Appellant argues further that a person of ordinary skill in the art would not have had any reasonable expectation of success in combining the teachings of Brinkmann and Hoogenboom to arrive at the presently claimed invention. App. Br. 10.", + "Appellant argues that the trivalent, bispecific antibody of Brinkmann comprises an Fc domain joined to two antigen-binding domains at the N- terminus and one antigen-binding domain at the C-terminus. App. Br. 11.", + "Hoogenboom, Appellant contends, teaches four distinct cross-over modifications that could be introduced within a Fab. Id. (citing, e.g., Hoogenboom, Fig. 10).", + "However, Appellant argues, neither Brinkmann nor Hoogenboom provides any guidance as to which antigen-binding site(s) to modify. Id.", + "Appellant argues that introducing any of the modifications of Hoogenboom into any one or more of the three binding domains of the Brinkmann molecule results in 124 possible constructs?, of which, only three would apply to present claim 1. App. Br. 11.", + "Appellant notes that Brinkmann also teaches that the C-terminal antigen-binding domain can be a single chain Fv, single chain Fab, a VH domain and/or a VL domain, a conventional Fab, or a (Fab)2 (citing Brinkmann I 179).", + "Appellant asserts that screening the possible variations in each of the possible structural formats of the C-terminal antigen-binding domain would require generating and screening a panel of 624 different possible constructs\", based on the total possible combinations allowed for by Brinkmann and Hoogenboom. Id.", + "Appellant argues that determining whether any of these envisioned antibodies exhibit advantageous biological properties would require constructing, purifying, and assaying each of the 624 different possible constructs. Id.", + "Appellant contends that a person of ordinary skill in the art would appreciate that constructing, purifying, and assaying each of the 624 possible antibody constructs would not have been easily achieved, particularly in view of \"the high level of unpredictability inherent in the antibody arts,' \" as acknowledged by the Office. App. Br. 11 (citing Non-Final Office Action, March 8, 2021, at 4).", + "Appellant argues that this large panel of possible constructs exceeds the Federal Circuit's standard for a finite number of possibilities in the context of determining obviousness. Id. (citing Ortho- McNeil Pharm., Inc. V. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008); MPEP S 2143).", + "Appellant argues that the invention of claim 47 can be distinguished from Brinkmann and Hoogenboom because these references fail to teach a bispecific antigen-binding molecule including a single Fab that binds monovalently to a T cell surface receptor and two Fabs that bind bivalently to a tumor cell antigen, wherein the single Fab is attached to the C-terminus of an Fc domain and includes a crossover modification. App. Br. 12.", + "Appellant contends that neither Brinkmann nor Hoogenboom provides any motivation for selecting monovalency or bivalency between a T cell surface receptor and tumor cell antigen. Id.", + "Appellant notes that the Examiner acknowledges that *one of ordinary skill in the art would have been motivated to prepare the trivalent, bispecific antibody of Brinkmann et al. to comprise either: (a) one EGFR binding site and two IGF-1R binding sites; or (b) one IGF-1R binding site and two EGFR binding sites.\" Id. (citing Final Act. 14).", + "Appellant asserts that Schillaci does not remedy the deficiencies of Brinkmann and Hoogenboom, because it is silent with respect to a bispecific antigen-binding molecule including a single Fab that binds monovalently to a T cell surface receptor and two Fabs that bind bivalently to a tumor cell antigen, wherein the single Fab is attached to the C-terminus of an Fc domain and includes a crossover modification. App. Br. 12.", + "Appellant argues that the Examiner has not provided any reasoning for a skilled artisan to exclude single chain Fab fragments from the exemplary antibodies in Brinkmann, which all include either a scFv or a single-chain Fab at the C-terminal position(s). App. Br. 19.", + "Appellant asserts that Schillaci does not remedy the deficiencies of Brinkmann and Hoogenboom because it is entirely silent with respect to the selection of conventional Fabs versus single chain Fabs in bispecific antigen-binding molecules. Id." + ], + "examiner_findings": [ + "The Examiner finds Brinkmann teaches *new bispecific anti- EGFR/anti-IGF-1R antibodies, which show at least similar tumor growth inhibition compared with the combination of the parent monospecific antibodies.\" Non-Final Act. 6 (quoting Brinkmann I 22).", + "The Examiner points to Figure 12 of Brinkmann, which depicts an exemplary tetravalent, bispecific, antibody comprising a full-length antibody binding to one of the antigens (EGFR or IGF-1R) and two single chain Fabs, each binding to the other of the two antigens. Id.", + "The Examiner finds that Brinkmann expressly teaches that: In one embodiment[.] said bispecific antibody is trivalent using, e.g., formats based on a full length antibody specifically binding to one of the two receptors EGFR or IGF-1R, to which only at one C-terminus of one heavy chain a scFab [single-chain Fab] fragment is fused which specifically binds to the other of the two receptors EGFR or IGF-1R. Non-Final Act. 7 (quoting Brinkmann I 197).", + "The Examiner notes that the described bispecific, trivalent antibody is not depicted in any illustration by Brinkmann. Id.", + "However, the Examiner reasons, the bispecific, trivalent antibody described would be similar to the bispecific, tetravalent antibody depicted in Figure 12, with the exception that one of the two single-chain Fab (\"scFab\") fragments linked to the heavy chain C-terminus would not be present. Id.", + "Furthermore, the Examiner finds, Brinkmann teaches that Antibodies of the present invention have two or more binding sites and are bispecific. Non-Final Act. 9 (quoting Brinkman I 179) (emphasis added).", + "That is, the antibodies may be bispecific even in cases where there are more than two binding sites (i.e. that the antibody is trivalent or multivalent).", + "Bispecific antibodies of the invention include, for example, multivalent single chain antibodies, diabodies and triabodies, as well as antibodies having the constant domain structure of full length antibodies to which further antigen-binding sites (e.g., single chain Fv, a VH domain and/or a VL domain, Fab, or (Fab)2) are linked via one or more peptide linkers.", + "The Examiner acknowledges that Brinkmann does not teach the limitation of claim 1 reciting a replacement in the first Fab fragment: selected from the group consisting of (i) a replacement of the variable light domain (VL) with the variable heavy domain (VH), (ii) a replacement of the constant light domain (CL) with the constant heavy domain 1 (CHI), and (iii) a replacement of the Fab light chain (VL-CL) with the Fab heavy chain (VH-CHI).", + "However, the Examiner finds, Hoogenboom teaches that new antibodies can be engineered by crossing-over domains or swapping elements within the Fab region of the antibody. Non-Final Act. 10 (citing Hoogenboom ' 101).", + "Specifically, the Examiner finds that Hoogenboom teaches: In its simplest format, the L chain and H chain Fd region are swapped. Id. (quoting Hoogenboom ' 101).", + "A VL-CL-hinge-CH2-CH3 chain is thus paired to a VH-CH1 domain.", + "In a second format, the constant region genes between H and L are swapped.", + "In another form, the CH1 is replaced by a CL.", + "In another form, the VH and VLs are swapped \u00b7\u00b7\u00b7 Antibodies in which the variable regions are swapped may be functionally non-equivalent and yield a more diverse, unnatural or different spectrum of antigen binding or biological activity \u00b7\u00b7 Besides the effects of the exchange of the heavy and light chain genes on affinity and/or specificity, the swapping may alter the antibody flexibility and impact the biologic al behavior.", + "The Examiner finds that this passage of Hoogenboom teaches each of replacements (i), (ii), and (iii) recited in claim 1. Id.", + "The Examiner concludes that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the references, because Brinkmann teaches all of the limitations of the claims on appeal, with the exception of limitation (c) reciting replacements (O-(ii), which is taught by Hoogenboom as a method for swapping elements of an antibody Fab fragment. Non-Final Act. 12.", + "The Examiner finds that a skilled artisan would have been motivated to modify Brinkmann's Fab fragment, with the replacements taught by Hoogenboom, because Hoogenboom teaches that such modifications may alter and improve the binding affinity or flexibility of the antibody. Id.", + "The Examiner finds that Brinkmann teaches multivalent, bispecific antibodies that bind EGFR and IGF-1R. Final Act. 14 (see Brinkmann Abstr.).", + "The Examiner relies upon Schillaci as teaching that IGF-1R is expressed by T cells, and as such, IGF-1R meets the limitation of a T cell surface receptor. Id. (see Schillaci, Abstr.).", + "The Examiner therefore reasons that the combined teachings of Brinkmann, Hoogenboom, and Schillaci meet the limitations of a bispecific antigen-binding molecule in which the molecule provides monovalent binding to a first antigen that is a T cell surface receptor and bivalent binding to a second antigen that is a tumor cell antigen. Id.", + "The Examiner relies upon Schillaci as teaching that IGF-1R are T cell receptor that is involved in T cell proliferation. See Schillaci, 160.", + "The Examiner finds, with respect to claim 48, that Brinkmann teaches antibodies having the constant domain structure of full-length antibodies linked to an additional Fab fragment. Final Act. 13.", + "The Examiner finds that a person of ordinary skill in the art would have understood that the term *Fab fragment\" encompasses both traditional Fab fragments and variant Fab fragments, such as single chain Fab fragments (e.g., an scFv). Id. (see, e.g., Brinkmann I 179).", + "The Examiner reasons that a skilled art would have also understood that the bispecific antigen-binding molecule taught by the combined teachings of Brinkmann and Hoogenboom may comprise either traditional Fab fragments or single chain Fab fragments, because both types of Fab fragments would yield functional bispecific antigen-binding molecules. Id." + ], + "ptab_opinion": [ + "Insofar as they are consistent with our analysis herein, we adopt the Examiner' s findings, reasoning, and conclusion that the claims on appeal are obvious over the cited prior art.", + "We address the arguments raised by Appellant below.", + "We consequently rely upon the Examiner's findings and conclusions filed in the Non-Final Office Action.", + "We review appealed rejections for reversible error based on the arguments and evidence Appellant provides for each issue Appellant identifies. 37 C.F.R. S 41.37(c)(1)(); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (\"it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections\")).", + "\"After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.\" In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).", + "We are persuaded that the Examiner has supported a prima facie conclusion that claims 1, 7, 9-11, 15, 26-31, 36, and 42-46 are obvious over the cited prior art, and that Appellant has failed to overcome the Examiner's conclusion of obviousness.", + "Appellant acknowledges that Brinkmann teaches a bispecific, trivalent antibody comprising an Fc domain joined to two antigen-binding domains at the N-terminus and one antigen-binding domain at the C-terminus. See App. Br. 11.", + "Appellant acknowledges that Brinkman also teaches that *[blispecific antibodies of the invention include \u00b7\u00b7\u00b7 antibodies having the constant domain structure of full length antibodies to which further antigen- binding sites (e.g., single chain Fv, a VH domain and/or a VL domain, Fab or (Fab)2)\" are linked via one or more peptide-linkers. See App. Br. 9 (quoting Brinkmann ' 179).", + "However, Appellant contends that, despite Brinkmann 's express teaching in paragraph [01 79], a person of skill in the art would not use a conventional, double-chained Fab at the C-terminus of the Fc domain, because all of the exemplary embodiments disclosed by Brinkmann use single-chain Fabs at this location.", + "We are not persuaded.", + "Brinkman expressly teaches an additional antigen-binding site linked to the C-terminus of the Fc domain, and that such an additional site can be, e.g., a *single chain Fv, a VH domain and/or a VL domain, Fab or (Fab): \" Brinkmann ' 179 (emphasis added).", + "Brinkman thus expressly teaches that a Fab (which conventionally has two linked chains\") can be substituted at this location.", + "We note here that the language 4 See Spec. 14 (\"A *Fab fragment* refers to a protein consisting of the VH and CH1 domain of the heavy chain (the 'Fab heavy chain*) and the VL and CL domain of the light chain (the Fab light chain*) of an immunoglobulin*). of paragraph [0179] of Brinkmann clearly differentiates between Fabs (which are generally understood to be double-chained) and single-chained Fvs, which are single-chained antigen-binding domains. Id.", + "We acknowledge Appellant's argument that the exemplary embodiments of Brinkmann uniformly disclose the use of a single chain Fab at the C-terminus of the Fc domain subunit (see, e.g., Brinkmann Fig. 12).", + "Nevertheless, our obviousness analysis is not confined to the exemplary embodiments; rather, we consider all of the teachings of a cited reference. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that, in an obviousness analysis, \"all disclosures of the prior art, including unpreferred embodiments, must be considered\" (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976))); see also In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (holding that \"a reference is not limited to the disclosure of specific working examples\").", + "Because Brinkmann expressly teaches that a Fab linked to the C- terminus of the Fc domain can be used as a further antigen-binding site, we are not persuaded by Appellant's arguments that the claims on appeal are not obvious over the cited prior art in this respect.", + "Appellant also argues that a person of ordinary skill in the art would not have had a reasonable expectation of success in combining the teachings of Brinkmann and Hoogenboom. See App. Br. 10.", + "We disagree.", + "Brinkmann teaches a trivalent, bispecific antibody, as recited in the claims. See Brinkmann I 179.", + "As we explained above, Brinkmann expressly teaches that the antigen-binding portion of the molecule that is bound to the C-terminus of the Fc domain subunit (Appellant's \"first Fab fragment*) can be a Fab, which is conventionally understood in the art to contain a heavy chain and a light chain paired together. Id.", + "Consequently, there are, in both this embodiment of Brinkmann and in the claimed antigen-binding molecule, three possible sites at which one of the three potential substitutions recited in claim 1 could be made, viz., the claimed second and third Fab fragments, which are bound to the N-termini of the Fc domain subunits, and the claimed first Fab fragment, which is bound to the C-terminus of one Fc domain subunit.", + "Hoogenboom is directed to \"a method for producing a composition comprising at least two different proteinaceous molecules comprising paired variable regions,\" e.g., a Fab. Hoogenboom I 5.", + "In particular, Hoogenboom teaches that its *methods according to the invention are typically preferred for the production of multiple (i.e., three or more) binding specificities in one system,\" \" (id. at I 14) including, e.g., the trivalent, bispecific antibody taught by Brinkmann comprising a single Fab bound to the C-terminus of the Fc domain subunit and two Fab units bound to the N-terminus of the Fc domain subunit. See Brinkmann I 179.", + "In consequence there are only three locations on this embodiment of Brinkmann where the recited substitution could be made.", + "Hoogenboom teaches further that \"the pairing of the variable and constant regions of an antibody can be further engineered as follows, by crossing-over domains, ~ i.e., the **replacements\" recited in claim 1: Antibodies are made by crossing-over or swapping or replacing elements within the Fab region of the antibody (or the antibody heavy chain Fd region and the antibody light chain region), and combining the appropriate elements to establish a binding site in the context of an immunoglobulin molecule. Hoogenboom I 101.", + "Hoogenboom expressly teaches the three replacements recited in claim 1: : In its simplest format, the L chain and H chain Fd region are swapped. Id.", + "A VL-CL-hinge-CH2-CH3 chain is thus paired to a VH-CH1 domain [i.e., recited combination iii].", + "In a second format, the constant region genes between H and L are swapped.", + "In another form, the CH1 is replaced by a CL [recited combination ii].", + "In another form, the VH and VLs are swapped [recited combination i].", + "In another form, one or more of the CDR regions between VH and VL are swapped. See also id., Fig. 10.", + "Hoogenboom teaches that making these replacements may result in desirable outcomes for the properties of the resulting antigen-binding molecule: Antibodies in which the variable regions are swapped may be functionally non-equivalent and yield a more diverse, unnatural or different spectrum of antigen binding or biological activity (the positioning of the heavy and light chain variable regions is expected to not always be completely equivalent). Hoogenboom I 101.", + "Besides effects of the exchange of the heavy and light chain genes on affinity and/or specificity, the swapping may alter the antibody flexibility and impact the biological behavior.", + "Hoogenboom would have thus provided motivation for the person of ordinary skill in the art to make such substitutions to Brinkmann's trivalent, bispecific antibody, viz., the possibility of achieving improved antigen binding or biological activity as well as improved flexibility and biological behavior of the antigen-binding molecule.", + "A systematic person of ordinary skill in the art would only have to make one of these changes to a single Fab fragment out of the three (i.e., the first Fab fragment) to be within the scope of the claims on appeal.", + "We acknowledge Appellant's s argument that there are a significant number of possible permutations one could pursue, and that a skilled artisan would potentially need to screen each of these permutations to determine whether any of them had improved properties.", + "Therefore, Appellant asserts, there would be no reasonable expectation of success in achieving an improved antibody. See App. Br. 11.", + "However, the claims on appeal are structural claims that impose no requirement of improved antigen affinity, binding, or other desirable properties.", + "We agree with the Examiner that a person of ordinary skill, being motivated to make one of Hoogenboom's replacements to Fab fragment one, would have had a reasonable expectation of success in making the claimed molecule.", + "Because no improved properties are required of the claimed antigen-binding molecules by the claims, the skilled artisan, being motivated to attempt combining the references, need only have a reasonable expectation of success in making the claimed antigen-binding molecule, such that it meets the structural requirements of the claim. See Intelligent Bio-Systems, Inc. V. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (holding that \"\"[The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention\").", + "These claims relate to engineered changes in the structure of the Fc domain subunits, and not replacements or substitutions in the Fabs as recited in claim 1.", + "Furthermore, Appellant makes no arguments with respect to these claims in its Appeal Brief, and we therefore do not consider this issue further. See 37 C.F.R. I 41.37(c)(1)(iv) (\"[A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal\").", + "We consequently conclude that the Examiner has established a prima facie case that claims 1, 7, 9-11, 15, 26-31, 36, and 42-46 are obvious over the combined cited prior art and that Appellant's arguments do not overcome the Examiner's conclusion of obviousness.", + "We are not persuaded by Appellant's arguments.", + "We have explained above how Brinkmann teaches a trivalent, bispecific antibody. Brinkmann I 179.", + "Brinkmann also teaches that it is directed to \"new bispecific anti- EGFR/anti-IGF-1R antibodies, which show at least similar tumor growth inhibition compared with the combination of the parent monospecific antibodies.\" ld. at I 22.", + "Brinkmann teaches that overexpression of EGFR has been reported in numerous human malignant conditions, including cancers of the bladder, brain, head and neck, pancreas, lung, breast, ovary, colon, prostate, and kidney, and thus can act as a tumor cell antigen. Id. at I 4.", + "Simple logic dictates that a trivalent, bispecific, anti-EGFR/anti-IGF- 1R antibody, as taught by Brinkmann, must either have two binding sites for EGFR and a single binding site for IGF-1R, or vice versa.", + "We conclude that a person of ordinary skill in the art, comprehending the teachings of Brinkmann, would be able to engineer either alternate type of trivalent, bispecific antibody, and would find either alternative equally obvious to make.", + "We are consequently not persuaded by Appellant's arguments.", + "We are not persuaded by Appellant's arguments for the same reasons we explained in Section IV .A.3 above.", + "Brinkmann expressly teaches: Antibodies of the present invention have two or more binding sites and are bispecific. Brinkmann I 179 (emphases added).", + "That is, the antibodies may be bispecific even in cases where there are more than two binding sites (i.e. that the antibody is trivalent or multivalent).... Bispecific antibodies of the invention include, for example, \u00b7\u00b7\u00b7 antibodies having the constant domain structure offull length antibodies to which further antigen-binding sites (e.g., single chain Fv, a VH domain and/or a VL domain, Fab, or (Fab)2) are linked via one or more peptide-linkers.", + "As Appellant acknowledges, Brinkmann teaches numerous exemplary embodiments in which the antigen binding-domains at the N-terminus of the Fc domain subunit are double-chained Fabs.", + "The language of paragraph [01 79] expressly contemplates that the antigen binding domain subunit at the C-terminus of the Fc domain subunit can be a Fab, which, as we have explained, is conventionally understood in the art to be double-chained.", + "We note here again that the language of paragraph [01 79] of Brinkmann clearly differentiates between Fabs (which are generally understood to be double- chained) and single-chained Fvs, which are single-chained antigen-binding domains.", + "We again acknowledge Appellant\". argument that none of the exemplary embodiments of Brinkmann demonstrate a double-chained Fab positioned at the C-terminus of the Fc domain subunit, but remind Appellant that the disclosures of Brinkmann are not confined to the exemplary embodiments alone. Biocraft, 874 F.2d at 807; Mills, 470 F.2d at 651.", + "We consequently affirm the Examiner's rejection of claim 48." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023001849_01-31-2024.json b/opinion_split/Decision_2023001849_01-31-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..480adc877bdde4edebf6a674b2aad67e8ad102f5 --- /dev/null +++ b/opinion_split/Decision_2023001849_01-31-2024.json @@ -0,0 +1,115 @@ +{ + "appellant_arguments": [ + "With respect to Appellant's arguments concerning illustrative independent claim 11, claim 11 recites \"when a second signature generator within a second computing device is identified as being the first version-type generator, using the determination to confirm a version match and then or when the second signature generator is identified as being a different version-type generator, then determining that the first signature is unusable within the second computing device.\" Emphasis added." + ], + "examiner_findings": [ + "The Examiner relies on the following references to reject the claims:", + "The Examiner maintains the following rejection:", + "Claims 1-20 stand rejected under 35 U.S.C. 5 103 as being unpatentable over Butt and Ma.", + "Butt I 18; see also Ans. 12 (\"Butt discloses signature or feature generation versions by implementing a learning machine configured to generate signatures of the identified objects and generate a signature of an object of interest and determining a confidence level: if the confidence level does not meet a confidence requirement, then causing the identifying and the dividing to be performed by the first learning machine; or if the confidence level meets the confidence requirement, then causing the identifying and the dividing to be performed by the second learning machine ([0025].\")" + ], + "ptab_opinion": [ + "Pursuant to 35 U.S.C. \uc6a9 134(a), Appellant' appeals from the Examiner's decision to reject claims 1-20. See Final Act. 1.", + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We REVERSE AND ENTER A NEW GROUND OF REJECTION.", + "The claims are directed to obtaining potential match results for a reference image across a plurality of system sites.", + "Claim 11, reproduced below, illustrates the claimed subject matter:", + "11. A method comprising: generating, within a first computing device, a first signature corresponding to a cropped object portion of a larger image, and the first signature being distinctive to a first version- type generator; determining that the cropped object portion being processed within the first computing device is a match result for a similar images search; transmitting the cropped object portion and the first signature from the first computing device to a server; making a determination, at the server, that the first signature was generated by a generator that is the first version- type generator; and when a second signature generator within a second computing device is identified as being the first version-type generator, using the determination to confirm a version match and then sending the first signature from the server to the second computing device, or when the second signature generator is identified as being a different version-type generator, then determining that the first signature is unusable within the second computing device. Appeal Br. 20 (Claims App.).", + "Name Reference Date Butt US 2018/0157939 A1 June 7, 2018 Ma US 2021/0027431 A1 Jan. 28, 2021", + "We have reviewed Appellant's arguments and agree that the Examiner has not met the burden of showing unpatentability beyond a preponderance of the evidence.", + "Appellant presents substantive arguments in the Appeal Brief (Appeal Br. 9-13), and the Examiner does not present clear responses to these arguments.", + "The Examiner essentially copies and pastes the rejection and the prior responses to arguments without specifically responding to Appellant's arguments made in the Appeal Brief.", + "We find this to be a failed attempt to develop a sufficient administrative record to support the Examiner' s factual findings and ultimate conclusion of obviousness of a lack of patentable subject matter.", + "We address independent claim 11 as the illustrative method claim and claim 1 recites a similar apparatus limitations.", + "Interpret With respect to illustrative claim 11 and Appellant's s arguments regarding confirming or not confirming a signature version match and determining that a signature is unusable within some computing device, the Examiner does not specifically and persuasively address Appellant's arguments. Appeal Br. 11-13; Ans. 11-13.", + "With regards to the Examiner's reliance upon Butt's \"confidence level,' we find the Butt reference identifies a confidence level as a threshold to differentiate between processing at a first neural network or a second neural network.", + "In Butt, the alternatives merely select between the first or the second learning machines to perform the identifying and dividing functions.", + "With regards to confirming the version match and sending the first signature to the second computing device, the Examiner repeats the same finding, as above, relying upon paragraph 25 of the Butt reference. Ans. 13.", + "We agree with Appellant that the Examiner has not adequately shown that the Butt reference teaches or suggests making a determination that the signature was made by \"making a determination, at the server, that the first signature was generated by a generator that is the first version-type generator.\" Appeal Br. 12.", + "We find the Examiner does not make sufficient factual findings to support the ultimate conclusion of obviousness that the Butt reference teaches or suggests a \"confidence level,\" but does not teach or suggest either of the \"when\" limitations recited in the language of illustrative independent claim 11.", + "Although independent claim 11 recites two \"when\" limitations, which may only require one of the two limitations to be taught or suggested in the prior art because of the presence of the alternative language, the Examiner has not shown that the Butt reference teaches or suggests either of the claimed alternatives. See Ans. 14-15.", + "\"The Patent Office has the initial duty of supplying the factual basis for its rejection.", + "It may not \u00b7 \u00b7 \u00b7 resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies\" in the cited references. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).", + "Where a prior art reference provides only *an invitation to scientists to explore a new technology that seems a promising field of experimentation, and \"gives only general guidance and is not at all specific as to the particular form of the claimed invention and how to achieve it,\" it *may make an approach 'obvious to try> but it does not make the invention obvious.\" Ex parte Obukowicz, 27 USPQ2d 1063, 1065 (BPAI 1993).", + "Claims 1 and 11 recite similar limitations which the Examiner has not adequately shown are rendered obvious by a preponderance of the evidence.", + "Pursuant to our authority under 37 C.F.R. \uc6a9 41.50(b), we enter a new ground of rejection for claims 1 and 11 under 35 U.S.C. \uc6a9 101 as directed to patent-ineligible subject matter.", + "We leave it to the Examiner to further evaluate the remainder of the claims and the subject matter disclosed therein.", + "An invention is patent eligible if it claims a *new and useful process, machine, manufacture, or composition of matter. \" 35 U.S.C. 9 101 (2018).", + "However, the U.S. Supreme Court has long interpreted 35 U.S.C. 5 101 to include implicit exceptions: \"`l]aws of nature, natural phenomena, and abstract ideas\" are not patentable. E.g., Alice Corp. V. CLS Bank Int 7, 573 U.S. 208, 216 (2014).", + "In determining whether a claim falls within an excluded category, we are guided by the Court's two-part framework, described in Mayo and Alice. Id. at 217-218 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).", + "In accordance with that framework, we first determine what concept the claim is \"directed to.\" See Alice, 573 U.S. at 219 (\"On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. \"); see also Bilski V. Kappos, 561 U.S. 593, 611 (2010) (\"Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk. \").", + "If the claim is *directed to\" an abstract idea, we turn to the second part of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an finventive concept' sufficient to *transform* the claimed abstract idea into a patent-eligible application. Alice, 573 U.S. at 221 (quotation marks omitted).", + "\"A claim that recites an abstract idea must include fadditional features' to ensure *that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]. *** Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).", + "\"[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.\" Id.", + "In 2019, the U.S. Patent and Trademark Office (\"USPTO\") published guidance on the application of 35 U.S.C. 9 101.", + "2,3 Under MPEP \uc6a9 2106, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (\"Step 2A, Prong One\"); and (2) additional elements that integrate the judicial exception into a practical application (\"Step 2A, Prong Two\"). MPEP $ 2106.04(a) and (d).", + "Only ifa claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application,\" do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional activity\" in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 6 MPEP $ 2106.05(d).", + "Appellant's independent claim 11 recites \"[a] method\" and independent claim 1 recites \"[an ajpparatus.\" Appeal Br. 18, 20.", + "Appellant's claims delineate steps (i.e., a process) for obtaining potential match results for a reference image across a plurality of system sites computing devices and a server (i.e., a machine).", + "Accordingly, Appellant's claims 11 and 1 fall within the process and machine categories of invention, respectively (USPTO Step 1).", + "Appellant's claim 11 recites **generating, within a first computing device, a first signature corresponding to a cropped object portion of a larger image, and the first signature being distinctive to a first version-type generator;\"", + "He, acquiring a cropped object portion of a larger image is not actually affirmatively recited as being part of the process recited in claim 11.", + "Independent claim 1 sets forth similar limitations but does not recite a version *type.**", + "In both claims and, in particular claim 11, the *cropped object portion of a larger image\" is already present.", + "To the extent the **cropped object portion of a larger image\" is part of the claimed method, the acquisition of the image data is an extra-solution activity and an abstract idea. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff 'd Bilski V. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that collecting information is an abstract idea); CyberSource Corp. V. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (holding that *purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk V. Benson. .\")", + "We determine that under the broadest reasonable interpretation of the claim limitation because the Specification does not set forth any specific methodology, the signature generation is with an algorithm for performing mathematical calculations, which is abstract. See In re Board of Trustees of Leland Stanford Junior Univ., 989 F.3d 1367, 1373-1374 (Fed. Cir. 2021) (Claims directed to a computer implemented method for haplotype phasing by using certain data and statistical tools to determine a haplotype phase (see id. at 1370) were determined to be \"directed to the abstract idea of mathematically calculating alleles' haplotype phase\" (see id. at 1373) and to be patent ineligible).", + "If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC 17. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (\"[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper. \").", + "We find that each of the remaining recited limitations of Appellant's claim 11 recites a mental process or extra-solution activity.", + "Claim 11 recites *determining that the cropped object portion being processed within the first computing device is a match result for a similar images search;\" *transmitting the cropped object portion and the first signature from the first computing device to a server,\" and \"making a determination, at the server, that the first signature was generated by a generator that is the first version- type generator.'", + "In other words, data (a first signature corresponding to a cropped object portion of a larger image) is determined to be a match to other similar data (\"a match result for a similar images search\").", + "The claim 11 limitations directed to the nature of the input data---i.e., the particulars of the **cropped object portion of a larger image,\" the \"similar images search, and the **generated by a generator that is the first version- type generator\". --are not recited as changing the data structurally or functionally.", + "Accordingly, the nature of the input data is not functionally related to the actual recited process (generic *method*).", + "Appellant's claim 11 recites within the generating step (*generating, within a first computing device, a first signature corresponding to a cropped object portion of a larger image\") (discussed supra), \"the first signature being distinctive to a first version-type generator,\" which involves a determination that the signature is of a first type, which is a mental process and a distinct abstract idea (supra).", + "Appellant's claim 11 also recites requesting data and making a determination of a match-- *determining that the cropped object portion being processed within the first computing device is a match result for a similar images search. \"", + "Claim 11 further recites transmitting data to a server-- \"transmitting the cropped object portion and the first signature from the first computing device to a server. ~", + "We find the transmitting the data to a server is extra-solution activity and the determining step is a mental process and a distinct abstract idea.", + "To the extent the generating step includes a mental process of determining that the signature is of a first type, this is also a distinct abstract idea.", + "In other words, making a determination that the signature was produced (generated) by a first version-type generator using mapped data, which is a mental process. See Spec. 11 9, 44..", + "Claim 11 further recites two conditional \"when\" limitations in the alternative.", + "Here, the second \"when\" a second signature generator is a different type, the signature is determined \"unusable.\"", + "Alternatively, the first \"when\" limitation recites \"when a second signature generator within a second computing device is identified as being the first version-type generator, using the determination to confirm a version match and then sending the first signature from the server to the second computing device.\"", + "\" Each involve determinations (identifications) that are mental processes.", + "Finally, claim 11 recites **confirm[ing] a version match and then or when the second signature generator is identified as being a different version-type generator, then determining that the first signature is unusable within the second computing device.\" \"", + "Confirming and sending the first signature or determining that the first signature is unusable within the second computing device, like inputting or receiving data (supra), is an extra- solution activity. See Elec. Power Grp., 830 F.3d at 1354 (*we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more \u00b7 \u00b7 , is abstract as an ancillary part of such collection and analysis. \").", + "The determination of the first signature being distinctive to a first version-type generator; determining that the cropped object portion being processed within the first computing device is a match result for a similar images search; and making a determination, at the server, that the first signature was generated by a generator that is the first version-type generator, as recited in claim 11, recite abstract mental processes that can be performed by the human mind or practicably with pen and paper. MPEP $ 2106.04(a)(2)(II); see also Elec. Power Grp., 830 F.3d at 1354 (`[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category. \").", + "The concept of generating a first signature corresponding to a cropped object portion of a larger image, under its broadest reasonable interpretation is a mathematical calculation \"that is applied and performed in a computing environment--i.e., an abstract idea. See MPEP a 2106.04(a)(2)(II).", + "We determine that each of the \"determining\" and \"generating\" steps could practicably be performed in the human mind or with pen and paper.", + "Claim 11, therefore, recites an abstract mental process.", + "As such, and consistent with the 2019 Guidance, independent claim 11 (as well as claim 1) recites abstract ideas. See MPEP 8 2106.04(a)(2)1)-(11).", + "For these reasons, we determine that claim 11 recites an abstract mental process.", + "We next determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.", + "Transmitting, inputting, or receiving data, as recited in claim 11, are extra-solution activities that fail to confer patent eligibility. See Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra- solution activity); Elec. Power Grp., 830 F.3d at 1353 (holding that collecting information is an abstract idea); CyberSource, 654 F.3d at 1372 (holding that obtaining information is a mental process); ChargePoint, Inc. V. SemaCONNECT, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019) (identifying communicating requests between servers over a network as an abstract idea); MPEP S 2106.05(g).", + "We use the term **additional elements\" for claim features, limitations, or steps that the claim recites beyond the identified judicial exception.", + "Claim 11 recites \"a first computing device, \" \"a second computing device,\" \" and \"server,\" and *version-type generator.\" ~", + "The first step recited in claim 11-- *generating*--- is extra-solution activity.", + "Alternatively, the first step may be considered to be a mathematical process acting on a \"portion of a larger image\" data to generate a mathematical result.", + "The \"first computing device, ~ *second computing device,\" and \"server\" are generic hardware elements used (see Spec. I 54 (*one or more generic or specialized processors (or Sprocessing devices\") such as microprocessors, digital signal processors, customized processors and field programmable gate arrays (FPGAs) and unique stored program instructions (including both software and firmware) that control the one or more processors to implement, in conjunction with certain non-processor circuits, some, most, or all of the functions of the method and/or apparatus described\"); see also 11 17-19, 24 (\"The video analytics engine 194 can, in some examples, be any suitable one of known commercially available software that carry out computer vision related functions (complementary to any video analytics performed in the security cameras) as understood by a person of skill in the art. \"); 36 (\"the processor 113 may be implemented by any suitable processing circuit having one or more circuit units, including a digital signal processor (DSP), graphics processing unit (GPU) embedded processor, a visual processing unit or a vison processing unit (both referred to herein as 'VPU'), etc., and any suitable combination thereof operating independently or in parallel, including possibly operating redundantly*).", + "Method claim 11 recites \"a server\" and the Specification discloses the server system 108, this could comprise a single physical machine or multiple physical machines.", + "It will be understood that the server system 108 need not be contained within a single chassis, nor necessarily will there be a single location for the server system 108.", + "As will be appreciated by those skilled in the art, at least some of the functionality of the server system 108 can be implemented within the computer terminal 104 rather than within the server system 108. Spec. I 18.", + "The Specification further discloses the data communication is generically disclosed. Spec. I 19 (\"Data connections between the computer terminal 104 and the server system 108 can be any number of known arrangements for accessing a data communications network, such as, for example, dial-up Serial Line Interface Protocol/Point-to-Point Protocol (SLIP/PPP), Integrated Services Digital Network (ISDN), dedicated lease line service, broadband (e.g. cable) access, Digital Subscriber Line (DSL), Asynchronous Transfer Mode (ATM), Frame Relay, or other known access techniques (for example, radio frequency (RF) links). In at least one example embodiment, the computer terminal I 04 and the server system 108 are within the same Local Area Network (LAN).\")", + "The Specification further discloses the server generically as containing various software modules including a video analytics module which may be FIG. 2, the server system 108 includes several software components (besides the query manager module 164 already described) for carrying out other functions of the server system 108.", + "For example, the server system 108 includes a media server module 168.", + "The media server module 168 handles client requests related to storage and retrieval of security video taken by camera devices 1031-103 in the security system site 12.", + "The server system 108 also includes a video analytics engine 194.", + "The video analytics engine 194 can, in some examples, be any suitable one of known commercially available software that carry out computer vision related functions (complementary to any video analytics performed in the security cameras) as understood by a person of skill in the art.", + "Also, those skilled in the art will appreciate that, in some instances, the video analytics engine may be programmed with a detection classifier that evaluates a received video stream (for example, an image or part of an image of the video stream captured by one of camera devices 1031-103 which are described in more detail later herein) to determine if an instance of an object of interest that is defined in the detection classifier is detected or not from the evaluated video stream. Spec. I 24 (emphasis added).", + "The Specification also discloses: The server system 108 also includes a number of other software components 176.", + "These other software components will vary depending on the requirements of the server system 108 within the overall system.", + "As one example, the other software components 176 might include special test and debugging software, or software to facilitate version updating of modules within the server system 1 08. Spec. I 25.", + "Accordingly, The additional elements of \"first computing device, \" *second computing device,\" ~ and \"server*: (1) do not improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for generic computing elements); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP 46 2106.05(a)-(c), (e)-(h).", + "As a result, the claim's recited additional elements do not integrate the abstract mental processes into a practical application. See MPEP 5 2106.05(a)-(c), (e).", + "Because the abstract idea is not integrated into a practical application, we determine that the claims are directed to the judicial exceptions of mental processes.", + "If the claims are directed to a patent-ineligible concept, as we determined above, we proceed to the *inventive concept\" step. See MPEP $ 2106.05(d).", + "For Step 2B, we identify \"whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluat[e] those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)).\" ld. $ 2106.05(d)(11).", + "Those \"additional features\" must be more than \"well- understood, routine, conventional activity. \" MPEP 5 2106.05(d); see also Mayo, 566 U.S. at 79.", + "We determine that the additional elements do not \"transform the nature of the claim2 into a patent-eligible application.\" Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).", + "In other words, claim 11 does not contain an inventive concept beyond the judicial exceptions.", + "Moreover, the additional elements are well-understood, routine, and conventional. See Spec. 11 24, 25 above and ' 33 (\"the embedded camera may be a camera found on any one of a laptop, tablet, drone device, smartphone, video game console or controller\"); I 36 (\"processor 113 may be implemented by any suitable processing circuit having one or more circuit units. \")", + "The written description adequately supports that the additional elements recited in claim 11 are conventional and perform well-understood, routine, and conventional activities. See MPEP S 2106.07(a)(II)(A) (explaining that a specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term) or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 5 112(a).).", + "Thus, we find no element or combination of elements recited in Appellant's claim 11 that provides any *inventive concept\" or adds anything *significantly more\" to transform the abstract concept into a patent-eligible application.", + "Because claim 11 is directed to a patent-ineligible abstract concept and does not add a specific limitation beyond the judicial exception that is not *well-understood, routine, [and] conventional,\" we reject independent claim 11 under 35 U.S.C. $ 101.", + "We reject independent claims 1 and 11 for the same reasons.", + "We leave it to the Examiner to determine the patent eligibility of dependent claims 2-10 and 12-20 under 35 U.S.C. 9 101 based on the reasoning set forth above." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023002728_10-30-2024.json b/opinion_split/Decision_2023002728_10-30-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..a618901d9887e1af58582ab30cf8056d747097bb --- /dev/null +++ b/opinion_split/Decision_2023002728_10-30-2024.json @@ -0,0 +1,77 @@ +{ + "appellant_arguments": [ + "THE INVENTION Appellant states its invention relates \"to methods and systems for splitting a transaction payment between multiple payment cards while simultaneously availing of instalment repayment facilities in respect of the transaction amount that is paid through at least one of said multiple payment cards.\" Spec. I 1.", + "Appellant groups claims 1-12 as a group. (Appeal Br. 9).", + "Appellant addresses variously the device elements of claim 1 namely, a processor implemented split payment server, a computing device, a network interface server, split payment server, a split payment switch, a payment network interface server and a terminal device, along with each device's attendant functionalities as recited in the claim (Appeal Br. 9-10) arguing, \"`[]hese claimed features are not recited at a high-level of generality, are not pre-emptive, and amount to more than mere instructions to apply a judicial exception (e.g., organizing human activity) on a computer, generically, as a tool.\" \" ld. at 10.", + "Appellant argues, the claims provide an inventive concept through an unconventional and non-generic arrangement of elements that is *significantly more' than any abstract idea.", + "Specifically, the claims on appeal, when viewed as an ordered combination, provide a specific, detailed approach that overcomes shortcomings previously experienced by payors, payees, issuer institutions, and payment networks in connection with *installment repayment plans offered by issuer institutions associated with the payment card accounts being used for the split payment transaction.\" (See, for example, Written Specification at [0011]). (Appeal Br. 10).", + "Appellant argues, Appellant's claimed invention includes a combination of features, including a specially configured *split payment server, which provide technological solutions in the art, including to eliminate a need for terminal devices, such as point-of-sale devices operating at multitudes of retail and other operations, from having to identify and communicate with devices associated with issuers.", + "The claimed invention provides a technological solution for providing specific authentication information for respective ones of accounts in split payment authorization requests, which go beyond commercial or legal interactivity, and organizing human activity, as concluded by the Office. (Appeal Br. 11).", + "Appellant also seeks to analogize claim 1 to the claims in Core Wireless Licensing S.A.R.L. V. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). (Appeal Br. 13).", + "Appellant argues that \"the claimed invention provides technological advancements in complex transactions, including by 'routing, through a split payment switch, to each of the plurality computing devices respectively associated with each the respective issuers of the payment card accounts, payment instructions received from the payment network interface serve. .. (Appeal Br. 13.)", + "Appellant argues, \"\"[t]he Examiner offered no reasoning that is sufficient to tie the claimed invention to an abstract idea, except to say that these cases are examples of forganizing human activity. .. (Appeal Br. 14).", + "**Appellant asserts that this is insufficient to meet the standard set forth in the MPEP and USPTO Guidance.\" Id." + ], + "examiner_findings": [ + "Claims 1-12 are rejected under 35 U.S.C. $ 101 as directed to an abstract idea without significantly more.", + "The Examiner found: processing a split payment across multiple payment accounts 0 are concepts that are in the enumerating [sic] grouping of Abstract ideas related to Certain methods of Organizing Human Activity specifically commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).", + "\u00b7\u00b7\u00b7 The additional components in the above limitations (a-k) are no more than generally linking the use of the judicial exception to a particular technological for field of use. (Final Act. 5).", + "Concerning this step, the Examiner found the following: \"These additional elements and additional computing components amount to no more than generic computing components that do not contribute anything significant or meaningful to the claim other than, in combination, suggesting a technological environment in which to implement or apply the abstract idea.\" Final Act. 6.", + "The Examiner has met these requirements by finding: [Claim 1 recites] a split payment across multiple payment accounts which are concepts that are in the enumerating grouping of Abstract ideas related to Certain methods of Organizing Human Activity specifically commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).' (Final Act. 5).", + "\u00b7\u00b7 The additional components in the above limitations (a-k) are no more than generally linking the use of the judicial exception to a particular technological for field of use. Id.", + "\u00b7\u00b7\u00b7 These additional elements and additional computing components amount to no more than generic computing components that do not contribute anything significant or meaningful to the claim other than, in combination, suggesting a technological environment in which to implement or apply the abstract idea. ld. at 6." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. 5 6(b).", + "We adopt the Examiner's findings as set forth on pages 2-10 in the Final Office Action and on pages 3-6 in the Examiner's Answer.", + "We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.", + "4 35 U.S.C. 101 REJECTION We affirm the rejection of claims 1-12 under 35 U.S.C. $ 101.", + "We select independent claim 1 as the representative claim for this group, and because Appellant does not advance specific arguments to the dependent claims, all the remaining claims of this group stand or fall with claim 15. See 37 C.F.R. $ 41.37(c)(1)(iv) (2020).", + "In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Alice, 573 U.S. at 217-18 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).", + "In accordance with that framework, we first determine what concept the claim is *directed to.\" See id. at 219 (*On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. \"); see also Bilski V. Kappos, 561 U.S. 593, 611 (2010) (\"Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk. \").", + "If the claim is *directed to\" an abstract idea, we turn to the second step of the Alice and Mayo framework, where \"we must examine the elements of the claim to determine whether it contains an *inventive concept' sufficient to *transform' the claimed abstract idea into a patent- eligible application.\" Alice, 573 U.S. at 221 (quotation marks omitted).", + "Under the 2019 Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (\"Step 2A, Prong One\"); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (\"MPEP\") 9 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 07.2022 (Feb. 2023))) (\"Step 2A, Prong Two\").\" (Guidance, 84 Fed. Reg. at 52-55).", + "Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not *well-understood, routine, conventional\" in the field (see MPEP S 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Guidance, 84 Fed. Reg. at 52-56).", + "In so doing, as indicated above, we apply a \"directed to\" two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim **appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\" (Guidance, 84 Fed. Reg. at 53, see also MPEP 56 2106.04-2106.05).", + "We agree with the Examiner's is findings here because all this intrinsic evidence shows that claim 1 recites a way of **splitting a transaction payment between multiple payment cards\" (Spec 11), which is a fundamental economic principle/practice which is one of certain methods of organizing human activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52.", + "Also, the claimed steps shown in italics above mimic human thought processes of selecting certain information over others, i.e., evaluation, and creating, perhaps with paper and pencil, graphic data interpretation perceptible only in the human mind. See In re TLI Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC V. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).", + "Thus, under the first prong, claim 15 also recites the patent-ineligible judicial exception of a mental process.", + "Turning to the second prong of the *directed to\" test, claim 1 only generically requires a \"processor, **payment network interface server, \" *terminal device, \" *database, \"computing devices,\" and *split payment server.\"", + "These components are described in the Specification at a high level of generality. See Spec. generally, 19 49, 50 and Fig. 1-3.", + "We fail to see how this generic recitation of the most basic computer components and/or of a system of such components so integrates the judicial exception as to *impose[]] a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.\" Guidance, 84 Fed. Reg. at 53.", + "Thus, we find that claim 1 recites the judicial exceptions of a mental process and a certain method of organizing human activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52.", + "That claim 1 does not preempt all forms of the abstraction or may be limited to splitting a transaction payment, does not make it any less abstract. See OIP Techs., Inc. V. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (\"And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract. \").", + "Turning to the second step of the Alice analysis, because we find that claim 1 is directed to an abstract idea/judicial exception, the claims must include an *inventive concept\" in order to be patent eligible, i.e., there must be an element or combination of elements sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73).", + "We agree with the Examiner.", + "They do not.", + "Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional.", + "Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval---one of the most basic functions of a computer.", + "All of these computer functions are well-understood, routine, conventional activities previously known to the industry. See Elec. Power, 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (\"Absent a possible narrower construction of the terms *processing, 'receiving,' and 'storing,' . \u00b7 those functions can be achieved by any general purpose computer without special programming\").", + "In short, each step does no more than require a generic computer to perform generic computer functions.", + "Claim 1 does not, for example, purport to improve the functioning of the computer itself.", + "In addition, claim 1 does not effect an improvement in any other technology or technical field.", + "The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios (see, e.g., Spec. \" 49, 50 and Fig. 1-3).", + "Thus, claim 1 amounts to nothing significantly more than instructions to apply the abstract idea using some unspecified, generic computer.", + "Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.", + "Considered as an ordered combination, the computer components of claim 1 add nothing that is not already present when the steps are considered separately.", + "The sequence of data reception-analysis (receive, process, determine, obtain, transmit, route, receive, transmit, receive) and storing is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. V. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC 17. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. V. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract).", + "The ordering of the steps is, therefore, ordinary and conventional.", + "We have reviewed all the arguments Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. $ 101. (Appeal Br. 9-17).", + "We find that our analysis above substantially covers the substance of all the arguments, which have been made.", + "But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of the same.", + "We disagree with Appellant because contrary to Appellant's assertions, these device elements are in fact only generically recited and the recitation of generic computer limitations does not, and cannot, make an otherwise ineligible claim patent-eligible. See DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).", + "We disagree with Appellant.", + "The asserted improvement of remedying *shortcomings previously experienced by payors, payees, issuer institutions, and payment networks in connection with *installment repayment plans offered by issuer institutions associated with the payment card accounts being used for the split payment transaction\" \" (id.), concerns a financial transaction which is an abstract idea. See Guidance, 84 Fed. Reg. at 52.", + "We disagree with Appellant.", + "We are not persuaded by Appellant's argument that \"combination of features, including a specially configured *split payment server,' [] provide technological solutions in the art, including to eliminate a need for terminal devices, such as point-of-sale devices\" (id.), because claim 1 does not recite any improvement in how the split payment server is specially configured to effect this result.", + "No technological improvements in operations are recited.", + "Furthermore, the generic way in which the split payment server is claimed results in its being no more than abstract conceptual advice to use known technology for its intended purpose. See In re TLI Communications, 823 F.3d at 612-613. (Using a generic telephone for its intended purpose was a well-established \"basic concept\" sufficient to fall under Alice step 1.)", + "Thus, the use of a generically claimed split payment server is itself an abstract idea.", + "We disagree with Appellant because in Core Wireless, the claims were directed to improved functionality in a user interface. Core Wireless, 880 F.3d at 1362.", + "In contrast, as discussed above, nothing about the generically claimed split payment switch as recited in claim 1 describes how to achieve the results in a non-abstract way.", + "Likewise, we cannot see the similarities asserted by Appellant (Appeal Br. 15-16) between the claims on appeal here and those adjudicated in DDR Holdings. Appeal Br. 16-17.", + "We fail to see the asserted similarity between the Internet hyperlink protocol of DDR and, for example, the split payment switch as recited in claim 1, the former *instantly transportling a user] away from a host's website after 'clicking* on an advertisement and activating a hyperlink,\" and the latter simply routing information without claiming how, to a plurality of computing devices. Id. at 1257.", + "We are unpersuaded of error on the part of the Examiner because the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. 9 132 by notifying the applicant of the reasons for the rejection, \"together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.\" See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original).", + "Thus, all that is required of the Office is that it sets forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of $ 132. Id.; see also Chester V. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (\"Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. \")." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2023003409_08-27-2024.json b/opinion_split/Decision_2023003409_08-27-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..d758a3f4736e6deda04adfb462e0743e4a0669f3 --- /dev/null +++ b/opinion_split/Decision_2023003409_08-27-2024.json @@ -0,0 +1,40 @@ +{ + "appellant_arguments": [ + "Appellant argues that the Examiner has made a myriad of errors as to the 35 U.S.C. & 101 rejection of claim 1, including: (a) claim 1 is not abstract as certain methods of organizing human activities, and/or mental processes; (b) claim 1 cannot be practically performed in the human mind, at least because it requires a processor accessing computer memory indicative of application usage; (c) claim 1 is directed to a special purpose machine rather than simply being features implemented by a processor; (d) claim 1 improves performance and increases efficiency of the recited particular machine; (e) claim 1 solves the problem of monitoring fulfillment; (f) claim 1 solves the problem of monitoring dispatch of specialists; (g) claim 1 practically deactivates a timer based on location information from a GPS device; (h) claim 1 recites significantly more as evidenced by lack of rejections under 35 U.S.C. 102 and 103; and (i) the Office provides insufficient evidence of the common use of the recited elements (individually or in combination). See Appeal Br. 19-33; Reply Br. 2-13." + ], + "examiner_findings": [ + "The Examiner rejects claims 1, 3, 5-7, 9, 11-14, 16, and 18-23 under 35 U.S.C. & 101 \"because the claimed invention is directed to an abstract idea [one of the judicial exceptions] without significantly more\" (Final Act. 7), that is, the claimed invention is directed to patent-ineligible subject matter, without significantly more. See Final Act. 7-20.", + "Applying the Alice/Mayo framework, using the above initiate, receive, activate, receive, identify, identify, send, and deactivate limitations A-H of claim 1 to illustrate (Final Act. 8-11), the Examiner determines that claim 1 recites an abstract idea:", + "The limitations regarding [initiate, receive, activate, receive, identify, identify, send, and deactivate] under the broadest reasonable interpretation, may be interpreted to include a human reasonably using a human mind through human observation and using pen and paper to [initiate, receive, activate, receive, identify, identify, send, and deactivate]; therefore, the claims are directed to a mental process.", + "Further, [initiate, receive, activate, receive, identify, identify, send, and deactivate] under the broadest reasonable interpretation, is managing, organizing, scheduling, human dispatch specialists' dispatch responsibilities and to fulfill the dispatch request of human dispatch requester, which is managing personal behavior or relationships or interactions between people (i.e. human dispatch requester, human dispatch specialists), thus the claims are directed to certain methods of organizing human activity.", + "Accordingly, the claims are directed to a mental process and certain methods of organizing human activities, and thus, the claims are directed to an abstract idea under the first prong of Step 2A. Final Act. 8-11.", + "Further applying the Alice/Mayo framework, the Examiner determines claim 1 is directed to an abstract idea that is not integrated into a practical application under the second prong of Step 2A.", + "According to the Examiner, the claims recite the additional elements beyond the recited abstract idea identified under Step 2A, Prong 1, such as: Claim 1, 7, 14: server, comprising: at least one processor; a communication interface communicatively coupled to the at least one processor; and memory storing computer-readable instructions that, when executed by the at least one processor, cause the dispatch management server, a dispatch requester computing device associated with a user, accessing, via the communication interface, a GPS device of the dispatch vehicle, a computing device associated with the dispatch vehicle, computing devices associated with dispatch vehicles, database, a computing device associated with the available dispatch specialist, and pursuant to the broadest reasonable interpretation, as an ordered combination, each of the additional elements are computing elements recited at high level of generality implementing the abstract idea, and thus, are no more than applying the abstract idea with generic computer components.", + "Further, these additional elements generally link the abstract idea to a technical environment, namely the environment of a computer.", + "Additionally, with respect to the elements, \u00b7 \u00b7 \u00b7 receiving, from[], receive threshold values[], send to a \u00b7 \u00b7 \u00b7 available dispatch specialist, a notification[], these elements do not add a meaningful limitations to integrate the abstract idea into a practical application because they are extra-solution activity, pre and post solution activity . i.e. data gathering - \u00b7 \u00b7 \u00b7 receiving, from[], receive threshold values[], data output \u00b7 send to a \u00b7 \u00b7 available dispatch specialist, a notification[.] Final Act. 11-12 (Appellant's emphasis omitted, Panel formatting added).", + "Applying the Alice/Mayo framework, the Examiner determines claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception.", + "The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception under Step 2B.", + "As noted above, the aforementioned additional elements beyond the recited abstract idea are not sufficient to amount to significantly more than the recited abstract idea because, as an order combination, the additional elements are no more than mere instructions to implement the idea using generic computer components (i.e. apply it).", + "Additionally, as an order combination, the additional elements append the recited abstract idea to well-understood, routine, and conventional activities in the field as individually evinced by the applicant's own disclosure in at least, [quotations from the Specification's paragraphs 18-34 and 61-67], as required by [the Office's] Berkheimer Memo.", + "Furthermore, as an ordered combination, these elements amount to generic computer components receiving or transmitting data over a network, performing repetitive calculations, electronic record keeping. and storing and retrieving information in memory. which, as held by the courts, are well-understood, routine, and conventional. See MPEP 2106.05(d).", + "and Looking at these limitations as an ordered combination adds nothing additional that is sufficient to amount to significantly more than the recited abstract idea because they simply provide instructions to use a generic arrangement of generic computer components to **apply* the recited abstract idea, perform insignificant extra-solution activity, and generally link the abstract idea to a technical environment.", + "Thus, the elements of the claims, considered both individually and as an ordered combination, are not sufficient to ensure that the claim[.] as a whole[.] amounts to significantly more than the abstract idea itself. Final Act. 12-20 (emphasis omitted)." + ], + "ptab_opinion": [ + "We have jurisdiction under 35 U.S.C. & 6(b).", + "We AFFIRM.", + "We select claim 1 as representative for this 8 101 rejection.", + "Except for our ultimate decision, we do not further discuss the merits of the & 101 rejection of claims 3, 5-7, 9, 11-14, 16, and 18-23 herein.", + "We have reviewed the Examiner's rejection in light of Appellant's arguments (Appeal Brief and Reply Brief) that the Examiner has erred.", + "We are not persuaded by Appellant's arguments and disagree with Appellant's conclusions.", + "Except as noted below, we concur with the conclusions reached by the Examiner, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken; and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief.", + "We highlight the following points.", + "Again, we are not persuaded by Appellant's arguments and we adopt the Examiner's reasoning as our own.", + "We conclude the Examiner correctly determines that claim 1 recites an abstract idea, and we agree with the Examiner that claim 1 is directed to an abstract idea in the form of certain methods of organizing human activities and a mental process.", + "Consistent with the Examiner's determinations, we conclude that claim 1 does not integrate the judicial exception into a practical application.", + "We determine claim 1 does not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; or (v) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See MPEP 66 2106.05(a)-(c), (e)-(h).", + "We agree with the Examiner that claim 1 is directed to a judicial exception (i.e., an abstract idea), and does not integrate the judicial exception into a practical application.", + "Consistent with the Examiner's determinations, we determine those additional elements of claim 1, beyond the abstract idea, do not recite: (vi) a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application. See MPEP \u25cf 2106.05(d).", + "In summary, while claim 1 may recite intricate data processing with numerous data gathering points, the Examiner correctly determines that claim 1 is still directed to a human interaction that a human can reasonably perform using a human mind through human observation and using pen and paper with the mere addition of a well-understood, routine, and conventional processor and database." + ] +} \ No newline at end of file diff --git a/opinion_split/Decision_2024001127_07-24-2024.json b/opinion_split/Decision_2024001127_07-24-2024.json new file mode 100644 index 0000000000000000000000000000000000000000..e09daffcd194b02d87184ad7f870e3d000eaabc4 --- /dev/null +++ b/opinion_split/Decision_2024001127_07-24-2024.json @@ -0,0 +1,51 @@ +{ + "appellant_arguments": [ + "Appellant asserts that Meier does not disclose issuing a first set of memory operations and a second set of memory operations to a cache of the memory system, wherein the second set of memory operations is issued prior to completion of processing the first set of memory operations. Appeal Br. 8-16; Reply Br. 4-7.", + "More particularly, Appellant argues Meier describes instructions (i.e., memory operations) at the front-end of the instruction pipeline are tagged with a color (i.e., a speculative color) and those instructions are only allowed to proceed from the core interface unit to L2 cache if the speculative color matches the architectural color. Appeal Br. 10-11, 13-16; Reply Br. 5-7.", + "That is, Appellant argues Meier does not describe issuing memory operations to a cache that are younger than a fence prior to completion of the operations that are older than the fence in the cache. Appeal Br. 11-13, Reply Br. 7.", + "Moreover, Appellant asserts that Meier's discussion in paragraph 40--describing alternative embodiments wherein the barrier operation may not be launched from the load/store unit to the core interface unit until all older memory operations are complete in the load/store unit--indicates that barrier operations from the load/store unit to the core interface unit are not permitted until all older memory operations are complete. Appeal Br. 13-16.", + "In addition, Appellant argues Meier also fails to disclose issuing its barriers to a cache. Appeal Br. 16-17; Reply Br. 7-8.", + "More particularly, Appellant asserts it is unclear what Meier means when describing barrier operations making their way through the higher-level caches to lower-level caches. Appeal Br. 16-17 (citing Meier I 31).", + "Appellant argues Meier is silent regarding whether the processor waits or does not wait before issuing a memory operation to a memory system. Appeal Br. 17-18; Reply Br. 8.", + "Appellant asserts that the Examiner finds Ben-Kiki teaches branching into parallel workloads and merging the parallel workloads, but argues that Ben-Kiki's parallel workloads are not the same thing as the recited memory system phases. Appeal Br. 18-19.", + "In addition, Appellant argues in the Reply Brief that Ben-Kiki, in combination with Meier, \"cannot teach a fence primitive that is transmitted to both of two subsequent memory system phases.\" Reply Br. 8-9.", + "Appellant asserts that Ben-Kiki fails to teach the recited branch reconvergence point. Appeal Br. 19; Reply Br. 9.", + "More particularly, Appellant argues that Ben-Kiki's joining of parallel workloads does not teach a branch reconvergence point because the recited branch reconvergence point relates to memory phases and not workloads. Appeal Br. 19." + ], + "examiner_findings": [ + "Claims 1-9, 12-21, and 24-31 stand rejected under 35 U.S.C. $ 102(a)(1) as being anticipated by Meier et al. (US 2014/0089589 A1; Mar. 27, 2014) (\"Meier\"). Final Act. 2-6.", + "Claims 10, 11, 22, and 23 stand rejected under 35 U.S.C. 5 103 as being unpatentable over Meier and Ben-Kiki et al. (US 2016/0283245 A1; Sept. 29, 2016) (\"Ben-Kiki\"). Final Act. 6-7.", + "In rejecting claim 1, inter alia, the Examiner finds Meier discloses performing the recited memory operations. See Final Act. 2-3.", + "As the Examiner explains, Meier is relied on to teach sending a barrier operation to both of two subsequent memory phases and Ben-Kiki is relied on for the limited teaching of a branch point. Ans. 11; see also In re Keller, 642 F.2d 413, 426 (CCPA 1981) (explaining that non-obviousness cannot be established by attacking references individually where the ground of unpatentability is based upon the teachings of a combination of references).", + "The Examiner relies on the combined teachings of Meier and Ben-Kiki. See Final Act. 7; Ans. 12.", + "Specifically, the Examiner relies on Meier to teach the memory phases and relies on Ben-Kiki for the limited teaching of branching and reconverging. See Final Act. 7 (citing Meier 11 29, 31; Ben-Kiki 11 30, 62).", + "The Examiner explains that the ordinarily skilled artisan would have been motivated to combine Ben-Kiki's teachings with Meier *in order to improve performance by increasing parallel execution.\" Final Act. 7." + ], + "ptab_opinion": [ + "We begin our analysis with a brief review of Meier.", + "Based on our review of Meier (see supra), we are not persuaded of Examiner error.", + "As an initial matter, we note that the Examiner provides a comprehensive response to Appellant's arguments.", + "Consistent with our discussion herein, we agree with the Examiner' s findings and conclusions.", + "Contrary to Appellant's assertions, Meier describes operations from the load/store unit are issued to L1 cache, which may be conveyed to the core interface unit. See Meier I 8.", + "Thus, we disagree with Appellant that Meier fails to describe issuing store, load, and barrier operations to a cache (i.e., L1 cache) of the memory system.", + "Further, as the Examiner explains (see, e.g., Ans. 5-6), Meier describes issuing a second set of operations prior to completion of a first set of operations (and subsequent to a barrier operation).", + "Accordingly, we find Meier describes issuing a first and second set of memory operations to a cache of the memory system, wherein the second set of operations is issued prior to completion of the first set of memory operations.", + "Further we find Meier issuing a fence primitive (i.e., barrier operation) to a cache of the memory system, the fence primitive indicating a program order of memory operation execution.", + "Further, to the extent Appellant argues that Meier describes the barrier operation *may not be launched\" from the load/store unit to the core interface unit until all older memory operations are complete in the load/store unit indicates that that barrier operations from the load/store unit to the core interface unit are not permitted until all older memory operations are complete (see Appeal Br. 13-16), we disagree.", + "As such, Appellant's arguments are unavailing.", + "For the reasons discussed supra, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's rejection of independent claim 1.", + "For similar reasons, we also sustain the Examiner's s rejection of independent claims 13 and 25, which recite similar limitations and were not argued separately with particularity. See Appeal Br. 9-17; see also 37 C.F.R. $ 41.37(c)(1)().", + "In addition, we sustain the Examiner's rejection of claims 2, 4-9, 12, 14, 16-21, 24, 26, and 28-31, which depend directly or indirectly therefrom and were not separately argued. See Appeal Br. 9-17; see also 37 C.F.R. $ 41.37(c)(1)(iv).", + "Appellant's general assertion does not apprise us of error.", + "Moreover, Meier does not describe waiting for an indication that any of a first set of memory operations (i.e., those that were issued prior to a barrier operation) completed prior to issuing a second set of memory operations (i.e., subsequent to the barrier operation) because, as the Examiner explains, the out-of-order execution described in Meier *indicates that the processor does not wait for completion of older instructions before issuing younger operations.\" See Ans. 11.", + "For the reasons discussed supra, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's rejection of claims 3, 15, and 27.", + "Appellant's arguments are not persuasive of error because the Examiner relies on Meier (i.e., not Ben-Kiki) to teach the recited memory phases. Final Act. 6 (citing Meier I 29); see also Nat'l Steel Car, Ltd. V. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1336-37 (Fed. Cir. 2004) (rejecting argument directed at the wrong reference).", + "For the reasons discussed supra, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's rejection of claims 10 and 22.", + "Similar to Appellant's arguments regarding claims 10 and 22, Appellant's arguments are not responsive to the rejection as articulated by the Examiner. Keller, 642 F.2d at 426.", + "For the reasons discussed supra, we are unpersuaded of Examiner error.", + "Accordingly, we sustain the Examiner's rejection of claims 11 and 23." + ] +} \ No newline at end of file