Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1, 2, 6-9, 13-16 and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Germeraad et al. (US 2002/0035499), and further in view of Tran (US 2007/0208719).
Claims 3, 10, and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Germeraad in view of Tran, and further in view of Stobbs et al. (US 2004/0181427).
Claims 4, 5, 11, 12, 18, and 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Germeraad in view of Tran, and further in view of Lundberg et al. (US 2006/0026174).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 8, and 15 disclose “wherein modifications trigger automatic recalculation and redisplay of visual representations.” There is no discussion of this in the specification.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 6-9, 13-16 and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Germeraad et al. (US 2002/0035499), and further in view of Tran (US 2007/0208719).
With respect to claim 1, Germeraad teaches a system comprising:
configure a computer system with specialized data processing architecture that improves patent analysis efficiency by deploying interconnected data storage systems for patent portfolios and patents (Germeraad, pa 0101, The present invention provides patent-related tools and methodologies for the merger and acquisition process. This may be accomplished through an Intellectual Property Asset Management (IPAM) server … tools such as Excel spreadsheets, the IBM patent server, the USPTO public server, and Manning and Napier's search tools can all be used to perform some or most of the steps of the described methodology), each patent computationally linked to one or more patent portfolios (Germeraad, pa 0111, the present invention is described with reference to a patent portfolio);
receive a search query for target subject matter and processing the search query through the technical mapping framework to generate computationally filtered search results including one or more patent claims containing query terms and computationally determined synonyms (Germeraad, pa 0134, In FIG. 8, a flowchart 800 begins at step 802. In step 802, in an embodiment of the present invention a user performs a search on the group of all Company A's patents. … Here, the search performed is typically a boolean and/or natural language search on the assignee to produce a group of patents. & pa 0135, In step 804, the IPAM server takes the group of patents produced in step 802 and further divides it into subgroups);
…persistent data associations between the one or more patent claims and at least one patent concept (Germeraad, pa 0120, The topographic map 202 produced by Tool 1 (FIG. 3) shows the pattern of subjects of all of the patents produced in step 402 ( e.g., shows products, uses and/or technologies covered by Company A's patent portfolio). Labels on the topographic map 202 indicate the products, uses and/or technologies, and the contours indicate how many U.S. patents exist for each subgroup area.), wherein the persistent data associations are stored in specialized mapping data structures that enable rapid retrieval operations and include mapping objects with computational identifiers that link patent claims, patent concepts, and ontologies through relational database operations (Germeraad, pa 0136, In step 806, the IPAM server is used in conjunction with a technology classification 204 to create a graphical representation of similar technologies. The technology classification 204 produced by Tool 17 (FIG. 7) shows the diverse technologies (via U.S. Patent Classifications) that Company A's patents cover.);
execute automated visualization algorithms that process the persistent data associations to generate interactive visual representations displaying claim-concept relationships (Germeraad, pa 0108, the IPAM server may be used in conjunction with the tools and methodologies to aid in the merger and acquisition process. & pa 0110, The following describes each tool or method and how it may be combined with the IPAM server to aid in the merger and acquisition process. As each of these tools or methods are described below, an exemplary graphical presentation may be used.), wherein the automated visualization algorithms computationally generate at least one of: competitor landscape charts (Germeraad, Fig. 9 & pa 0140, The purpose of Tool 18 in the evaluate/analyze stage 104 is to identify the scope and magnitude of potential competitors and licensees of patents of the proposed merger. Tool 18 shows what markets are using, might be using, or interested in using Company A's patent portfolio.), product coverage charts (Germeraad, pa 0136, In step 806, the IPAM server is used in conjunction with a technology classification 204 to create a graphical representation of similar technologies. The technology classification 204 produced by Tool 17 (FIG. 7) shows the diverse technologies (via U.S. Patent Classifications) that Company A's patents cover.), freedom to operate charts (Germeraad, Fig. 15 & pa 0158, the purpose of Tool 8b is to show which companies were free-to-practice and which were not free -to-practice the art in question), claim valuation charts (Germeraad, Fig. 44 & pa 0237, Tool 23 highlights if the proposed merger will significantly broaden or deepen the patent portfolio. This can be a valuation point during the negotiation stage 108), validity charts, and white space analysis charts (Germeraad, Fig. 5 & pa 0126, The purpose of Tool 2 in the evaluate/analyze stage 104 and the negotiation stage 108 is to use the topographic map 202 to show dominance of Company B's portfolio and the distinguishing area of patent concentration. It also shows the "white space" between various technologies and uses that could be the basis of post-merger business development.).
Germeraad doesn't expressly discuss each patent computationally linked to one or more patent portfolios through relational data structures; automatically create persistent data associations between the one or more patent claims and at least one patent concept; and output the interactive visual representations to a display interface configured to enable real-time modification of the persistent data associations, wherein modifications trigger automatic recalculation and redisplay of visual representations to improve patent analysis workflow efficiency.
Tran teaches at least one processor; and memory comprising instructions that, when executed by the at least one processor (Tran, pa 0028), cause the at least one processor to perform operations to:
configure a computer system with specialized data processing architecture that improves patent analysis efficiency by deploying interconnected data storage systems for patent portfolios and patents (Tran, pa 0028, The computer 100 has a storage device 104 coupled to a processor 106 by a bus or busses 108. The storage device 104 has a document data 13 and one or more links 115 that provides additional information on the document data. & pa 0091, In FIG. 5, one or more Technology Developers such as Start-Ups, R&D Labs, Companies, Universities, and Inventors 510 communicate with a server 524. Additionally, Patent Law Firms 512, Licensing Executive Firms 514, IP Service Providers 516, Licensors or Licensees 518, Databases (such as Lexis Nexis or Westlaw) 520, and Patent Offices 522 communicate with the server 524. The server 524 receives requests from one or more clients, and searches its internal databases and/or resources from the patent offices 522, IP providers 516, public/private databases 520 and any other information available to respond to the requests.), each patent computationally linked to one or more patent portfolios through relational data structures (Tran, pa 0057, To create a new docket or patent portfolio, the user will enter a title and description. After the portfolio is created, the user will populate the portfolio by either entering specific known patent numbers, or by issuing a patent search.)
automatically create persistent data associations between the one or more patent claims and at least one patent concept (Tran, pa 0057, When the UI receives the search results, it will display them to the user as part of a named search result and allow each of the patents in that search result to be individual reviewed and examined. The user will modify the search result set by annotating patents, rating, or deleting patents from the result set. When the user is satisfied with the modification of the search result, the updated result set is stored locally and is available for further access.)
execute automated visualization algorithms that process the persistent data associations to generate interactive visual representations displaying claim-concept relationships (Tran, pa 0070, The Result Set display will provide several options including sorting by attribute, display by rank, etc. & pa 0078, 3D Modelling-The system will support the display of a set of patents as nodes in a 3-D model. This will allow the user to group and arrange the patents as part of the overall investigation.); and
output the interactive visual representations to a display interface configured to enable real-time modification of the persistent data associations (Tran, pa 0111, the patent mapping can also be a virtual 3D environment where the user is placed in a virtual environment to enable the user to manipulate and explore IP relationships.), wherein modifications trigger automatic recalculation and redisplay of visual representations to improve patent analysis workflow efficiency (Examiner note: virtual 3D environments were known to have automatic recalculation and redisplay).
It would have been obvious at the effective filing date of the invention to a person having ordinary skill in the art to which said subject matter pertains to have modified Germeraad with the teachings of Tran because in enhances interpretation and determine the value of a patent (Tran, pa 0012).
With respect to claim 2, Germeraad in view of Tran teaches the system of claim 1, wherein the hierarchically organized patent concepts include computationally distinct technology categories and scope concepts, the computationally distinct technology categories comprising relational data indicating subject matter associations, and the scope concepts comprising limitation data that defines claim boundaries for automated analysis (Germeraad, pa 0265, FIG. 53 illustrates the features grouping 238 used in the due diligence stage 106 and the negotiation stage 108 as Tool 31, entitled "Features Grouping." The purpose of Tool 31 highlights which other products and services are using the company's patents… the features grouping 238 produces a map that can be viewed feature-by-feature and show competitive alternatives and how many products have properties closest to those claimed by the company's patents.).
With respect to claim 6, Germeraad in view of Tran teaches the system of claim 1, the instructions to execute the automated visualization algorithms further comprising instructions to computationally generate at least one of: competitor landscape charts (Germeraad, Fig. 9 & pa 0140, The purpose of Tool 18 in the evaluate/analyze stage 104 is to identify the scope and magnitude of potential competitors and licensees of patents of the proposed merger. Tool 18 shows what markets are using, might be using, or interested in using Company A's patent portfolio.), product coverage charts (Germeraad, pa 0136, In step 806, the IPAM server is used in conjunction with a technology classification 204 to create a graphical representation of similar technologies. The technology classification 204 produced by Tool 17 (FIG. 7) shows the diverse technologies (via U.S. Patent Classifications) that Company A's patents cover.), freedom to operate charts (Germeraad, Fig. 15 & pa 0158, the purpose of Tool 8b is to show which companies were free-to-practice and which were not free -to-practice the art in question), claim valuation charts (Germeraad, Fig. 44 & pa 0237, Tool 23 highlights if the proposed merger will significantly broaden or deepen the patent portfolio. This can be a valuation point during the negotiation stage 108), validity charts, and white space analysis charts (Germeraad, Fig. 5 & pa 0126, The purpose of Tool 2 in the evaluate/analyze stage 104 and the negotiation stage 108 is to use the topographic map 202 to show dominance of Company B's portfolio and the distinguishing area of patent concentration. It also shows the "white space" between various technologies and uses that could be the basis of post-merger business development.), each chart type requiring distinct algorithmic processing of the claim- concept relationships (Germeraad, pa 0110, each tool or method … may be combined with the IPAM server to aid in the merger and acquisition process. As each of these tools or methods are described below, an exemplary graphical presentation may be used.),.
With respect to claim 7, Germeraad in view of Tran teaches the system of claim 1, the instructions to process the search query further comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to execute semantic analysis algorithms that retrieve patent claims containing query terms and computationally determined synonyms, improving search accuracy over conventional text matching (Germeraad, pa 0259, The search performed is typically a boolean and/or natural language search on a primary class. Examiner note: natural language search includes both search terms and the meaning of the terms such as synonyms).
With respect to claims 9, 13-16, and 20, the limitations are essentially the same as claims 1, 2, and 6-8, and are rejected for the same reasons.
Claims 3, 10, and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Germeraad in view of Tran, and further in view of Stobbs et al. (US 2004/0181427).
With respect to claim 3, Germeraad in view of Tran teaches the system of claim 2, as discussed above.
Stobbs teaches wherein hierarchical organization of the hierarchically organized patent concepts includes parent-child data relationships that enable automated inheritance processing, wherein creating an association with a parent concept automatically triggers computational propagation to child concepts through the specialized mapping data structures (Stobbs, pa 0123, An inheritance principle exists between a parent and child category in that cluster numbers, factor values, and patent counts of a child category are automatically inherited for a parent category. For example, parent category B may have children categories B.1 and B.2. Child category B.1 has five patents with a particular factor breakdown and child category B.2 has seven patents with a particular factor breakdown. Parent category B would include the twelve patents with the cluster numbers and factor values of its children as well as any patents, cluster numbers, and factor values which parent category B itself has.).
It would have been obvious at the effective filing date of the invention to a person having ordinary skill in the art to which said subject matter pertains to have modified Germeraad in view of Tran with the teachings of Stobbs because a parent-child relationship shares common information.
With respect to claim 10 and 17, the limitations are essentially the same as claim 3, and are rejected for the same reasons.
Claims 4, 5, 11, 12, 18, and 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Germeraad in view of Tran, and further in view of Lundberg et al. (US 2006/0026174).
With respect to claim 4, Germeraad in view of Tran teaches the system of claim 1, as discussed above.
Lundberg teaches the memory further comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to maintain ontology data structures that organize the hierarchically organized patent concepts, and wherein creating the persistent data associations includes generating mapping objects with computational identifiers that link patent claims, patent concepts, and ontologies through relational database operations (Lundberg, pa 0020, at least the independent claims of each patent within the identified patent pool will be mapped. In some embodiments, the mapping includes assigning a patent claim to a concept class, such as a genus & pa 0041, Associating the patent claim to a class Includes assigning a class designation to the claim. Depending on the claim, this assignment might include assigning a class that is a genus of the claim. & pa 0044, maintaining a database of mapped patent claims, each claim including an element mapped to a patent class).
It would have been obvious at the effective filing date of the invention to a person having ordinary skill in the art to which said subject matter pertains to have modified Germeraad with the teachings of Lundberg because it retains knowledge gained through the analysis of data (Lundberg, pa 0016-0018).
With respect to claim 5, Germeraad in view of Tran teaches the system of claim 1, the memory further comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to execute exclusion-based mining algorithms that process concept absence data to computationally filter patent claims and generate refined result sets, wherein a patent set is defined by exclusion mining comprising patents that have not been mapped to a certain concept (Lundberg, pa 0024, Once a concept is marked "definitely not in claim", the screening software rules out all claims including the ruled out concept are identified. Any concepts that appear only in the ruled out claims are then marked "removed from consideration." & pa 0046, The method includes generating a list of first definitional elements contained in the universe of patent claims and eliminating irrelevant first definitional elements).
It would have been obvious at the effective filing date of the invention to a person having ordinary skill in the art to which said subject matter pertains to have modified Germeraad with the teachings of Lundberg because it speeds screening of the pool of concepts to be mapped (Lundberg, pa 0024).
With respect to claims 11, 12, 18, and 19, the limitations are essentially the same as 4 and 5, and are rejected for the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY N ALLEN whose telephone number is (571)270-3566. The examiner can normally be reached M-F 9 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sherief Badawi can be reached at 571-272-9782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRITTANY N ALLEN/ Primary Examiner, Art Unit 2169
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