Ex Parte Strom et al

Patent Trial and Appeal Board

Nov 30, 2018

14775683 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/775,683 09/12/2015
115007 7590 12/04/2018
NK Patent Law
4917 Waters Edge Drive
Suite 275
Raleigh, NC 27606
FIRST NAMED INVENTOR
Kevin Jay Strom
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
395/8 UTIL 9628
EXAMINER
IQBAL, KHAWAR
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
12/04/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@nkpatentlaw.com
docket@nkpatentlaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN JAY STROM, MARK WILLIAM POPE,
MAURICE A MARTIN, CHRISTOPHER MICHAEL GRIGGS,
JAMES ILLIAD RINEER, and CRYSTAL MAJORS DAYE
Appeal2018-005230
Application 14/775,683
Technology Center 2600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 111-130, which constitute all the pending claims in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Research Triangle Institute as the real party in interest
(App. Br. 3).
Appeal2018-005230
Application 14/775,683
THE INVENTION
Appellants' claimed invention is directed to "processing call-for-
service data to facilitate queries and reports to enhance usefulness of call-
for-service data" (Abstract).
Independent claim 111, reproduced below, is representative of the
subject matter on appeal:
111. A computer-implemented method performable by a
computer system comprising:
receiving, at a computer system, data for a plurality of
emergency calls-for-service from an emergency response
facility, wherein individual data for an individual call-for-
service of the plurality of calls-for-service includes one or more
fields storing information relating to the call-for-service,
wherein the individual call-for-service data includes non-
structured data input by an operator at the emergency response
facility in response to receiving an emergency call-for-service;
based on the information stored within the one or more
fields of the individual data for the individual call-for-service,
automatically identifying one or more supplemental classifiers
by using natural language processing of the individual call-for-
service data; and
associating the one or more supplemental classifiers with
the individual data for the individual call-for-service when the
one or more supplemental classifiers match one or more
specified criteria.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Piett et al.
Bhogal et al.
US 2012/0256745 Al
US 2014/0192964 Al
2
Oct. 11, 2012
July 10, 2014
Appeal2018-005230
Application 14/775,683
REJECTION
The Examiner made the following rejection:
Claims 111-130 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Piett and Bhogal. Final Act. 5.
ISSUE
The pivotal issue is whether the Examiner erred in finding that Bhogal
qualifies as prior art.
ANALYSIS
Appellants argue that
the rejection under 35 U.S.C. § 103(a) relies in part on Bhogal.
Bhogal was filed as U.S. Patent Application Serial No.
13/734,440 on January 4, 2013. Appellant's claimed invention
is fully supported in U.S. Provisional Patent Application No.
61/785,217, filed on March 14, 2013, to which the current
application timely claims priority. As such, Bhogal's earliest
effective prior art date is January 4, 2013, and Appellant must
only show conception, reduction to practice, and diligence from
before January 4, 2013 until Appellant's filing date of March
14,2013
(App. Br. 7). Appellants contend that conception prior to January 4, 2013 is
established, inter alia, "from Appellant's draft U.S. Provisional Patent
Application dated January 2, 2013 (Exhibit FF)" (App. Br. 7) and "further
evidenced by an email dated January 2, 2013, in which the fifth draft of the
provisional application was emailed to the inventors (Exhibit EE)" (App. Br.
20).
We are not persuaded by Appellants. The Examiner finds that
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Appeal2018-005230
Application 14/775,683
[ t ]he affidavit filed on 03/17/2017 and 08/04/2017 under 3 7
CPR 1.131 has been considered but is ineffective to overcome
the Piett et al reference in view of the Bhogal reference,
because "Prior to Piett' s effective filing date of April 8, 2011"
and Bhogal filing date January 4, 2013, is just a statement
without facts to support such statement
and "[ t ]he evidence submitted is insufficient to establish a conception of the
invention prior to the effective date of the Piett et al and Bhogal references"
(Ans. 2, emphasis added). We note the Examiner appears to incorrectly
believe Appellants must swear behind both references, whereas Appellants
may overcome the obviousness rejection by successfully swearing behind
Bhogal alone. See In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015); see
also MPEP §§ 715, 2141.01.
However, here the record indicates that Appellants failed to file
Exhibits EE and FF for consideration by the Examiner. 2 Appellants have
thus failed to supply the factual basis necessary for the Examiner to consider
whether to withdraw the rejection, and have not persuaded us the
obviousness rejection is in error. Accordingly, we sustain the Examiner's
rejection of independent claim 111, as well as independent claims 125 and
130 commensurate in scope, and dependent claims 112-124 and 126-129
not separately argued. 3
2 Exhibits EE and FF were first mentioned in the Appeal Brief. According
to Office records, the filing of the Appeal Brief contained only 31 pages.
See EFS Acknowledgment Receipt dated Oct. 13, 2017. Appellants' Appeal
Brief as filed contains 31 pages and does not include Exhibits EE and FF.
3 Should there be further prosecution, evidence should be submitted to the
Examiner: "[T]he Board cannot be faulted for not reviewing evidence that
was not presented to it or to the Examiner. To the extent Appellants have
better proof of an earlier actual reduction to practice or conception date, the
4
Appeal2018-005230
Application 14/775,683
CONCLUSION
The Examiner did not err in finding that Bhogal qualifies as prior art.
DECISION
The Examiner's decision rejecting claims 111-130 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
proper remedy is to file a continuation application and present the evidence
to the Examiner in the first instance." In re Steed, 802 F.3d at 1320.
5