Ex Parte Cohen et al

Patent Trial and Appeal Board

Sep 19, 2012

11537491 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/537,491 09/29/2006 Peter D. Cohen 120137.536 1495
500 7590 09/20/2012
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
09/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PETER D. COHEN and CHRISTOPHER E. SMOAK
____________________

Appeal 2011-004922
Application 11/537,491
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-004922
Application 11/537,491

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 10-47. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellants’ invention relates to a computer-implemented method for
facilitating performance of tasks by task performer users, e.g., by
distributing information regarding tasks via users’ interactions with third-
party websites (Spec., para. [0001]).
Claim 10, reproduced below, is illustrative of the subject matter on
appeal:
10. A computer-implemented method for a task exchange
server to facilitate performance of tasks by task performers, the
method comprising:
receiving information at a task exchange server about
tasks submitted by task requesters as being available for
performance by human task performer users; and
facilitating performance of at least some of the submitted
tasks by distributing information about tasks via one or more
information services that are not provided by the task exchange
server, the facilitating being performed by one or more
programmed computing systems of the task exchange server
and including, for each of the one or more information services,

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 23, 2010) and Reply Brief (“Reply Br.,” filed
December 15, 2010) and the Examiner’s Answer (“Ans.,” mailed October
19, 2010).
Appeal 2011-004922
Application 11/537,491

3
receiving one or more requests that are each for task
information that is to be presented along with other information
to a task performer user interacting with the information
service, at least some of the other information to be presented
being provided by the information service; and
for each of at least one of the requests, determining one
or more available tasks, and providing information about the
determined tasks for presentation to a human task performer
user via the information service so that the human task
performer user is able to perform at least one of the determined
tasks.

THE REJECTIONS
The following rejections are before us for review:
Claims 10-28 and 30-47 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Don (US 2003/0120559 A1, pub. Jun. 26, 2003).
Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over
Don in view of Downs (US 6,112,243, iss. Aug. 29, 2000).
Claims 10-24 and 27-30 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office.). Additional facts
may appear in the Analysis below.
FF1. Don discloses a system and method of distributing public
relations and marketing content via the Internet. In accordance with the
Appeal 2011-004922
Application 11/537,491

4
method, information producers register their pertinent company information
with a central database server (the Universal Internet Registry) and receive a
unique identifier, which is encoded into news content submitted by the
information producer to the central database server and through commercial
wire services. Information consumers may submit search requests for news
content to the central server for processing. A statistical processor and
server report data back to the information producers regarding the number of
times they are selected for news content tracking and the number of times
each news content is accessed (Don, Abstract; paras. [0010] through [0013];
and Figs. 2 and 3).
FF2. “Information producers,” as disclosed in Don, are companies,
organizations and persons, e.g., public and private companies, non-profit
organizations, educational institutions, government agencies and individuals,
who want their news content provided to the public, doing so in various
forms including but not limited to press releases (Don, para. [0020]).
FF3. “Information consumers,” as disclosed in Don, communicate
directly and indirectly with the central database server via the Internet, and
are those persons, including companies, non-profit groups, competitors,
investors, industry analysts, venture capitalists, financial analysts as well as
marketing, sales, finance, engineering and administration professionals, who
want to receive news content (Don, para. [0021]).
Appeal 2011-004922
Application 11/537,491

5

ANALYSIS
Prior Art Rejections
Independent Claim 10 and dependent claims 11-28 and 30
We are persuaded of error on the part of the Examiner by Appellants’
argument that Don does not disclose, expressly or inherently, “receiving
information at a task exchange server about tasks submitted by task
requesters as being available for performance by human task performer
users,” as recited in claim 10 (App. Br. 13-16 and Reply Br. 4-11). Claim
10 recites that a task exchange server facilitates performance of available
tasks submitted by task requesters, by distributing information about the
submitted tasks to human task performer users via one or more information
services. Don, on the other hand, is generally related to news distribution,
and describes a centralized database server that distributes public relations
and other news content to users via the Internet (FF1).
Mapping the claimed invention to Don’s disclosure, the Examiner
maintains that Don’s information producers are “task requesters” who
submit “tasks,” i.e., press releases, product announcements, news alerts, and
other information, to the central database server, i.e., the claimed “task
exchange server,” which in turn distributes information to news media and
database services, i.e., the claimed “other information services” (Ans. 13-
14). However, the “information producers” that the Examiner compares to
the claimed “task requesters,” are companies, organizations and persons who
want their news content provided to the public (FF2). These information
producers submit news content to the centralized database server for release
to the public, not information regarding available tasks to be performed by
Appeal 2011-004922
Application 11/537,491

6
human task performer users. As such, they are not “task requesters,” as
recited in claim 10.
The Examiner analogizes Don’s information consumers to the claimed
“task performer users,” who the Examiner maintains perform searches for
content and respond to the content by performing task options contained in
the products or services, e.g., request additional information, navigate to a
product purchasing site (Ans. 13-14). But Don’s “information consumers”
are those persons who want to receive news content (FF3). These persons
receive news content submitted by the “information producers,” not
information regarding available tasks that they may perform, and are not
“task performers” or “task performer users,” as recited in claim 10.
We find that Don does not disclose “receiving information at a task
exchange server about tasks submitted by task requesters as being available
for performance by human task performer users.” Therefore, we will not
sustain the Examiner’s rejection of independent claim 10 or dependent
claims 11-28 and 30 as anticipated by Don.

Dependent Claim 29
Claim 29 depends indirectly from claim 10. The Examiner has not
established, on this record, that Downs overcomes the deficiency of Don.
Therefore, we also will not sustain the Examiner’s rejection of claim 29
under § 103.

Independent Claims 31and 41 and dependent claims 32-38, 40 and 42-47
Independent claims 31and 41 include language substantially similar to
claim 10. Therefore, we will reverse the Examiner’s rejection of
Appeal 2011-004922
Application 11/537,491

7
independent claims 31and 41 and dependent claims 32-38, 40 and 42-47 as
anticipated by Don for the same reasons as set forth above with respect to
claim 10.

Dependent Claim 39
Appellants have presented no arguments with respect to dependent
claim 39. Therefore, the Examiner’s rejection of claim 39 under 35 U.S.C.
§ 102 is summarily affirmed.2

Non-Statutory Subject Matter
Appellants argue that the rejection of independent claim 10 and
dependent claims 11-24 and 27-30 under 35 U.S.C. § 101 is improper
because claim 10 recites a process that is tied to a particular machine, i.e.,
one or more programmed computing systems (App. Br. 21 and Reply Br. 13-
14). In contrast, referencing the machine-or-transformation test, the
Examiner maintains that the rejection is proper because “the claimed use of
the ‘one or more programmed computing systems’ is limited to ‘facilitating
performance of at least some submitted tasks’ and facilitating (e.g.,
accepting inputs, displaying, etc.) may be ‘extra-solution’ activity” (Ans.
16).
We agree with Appellants that the recited programming computer
systems recited in claim 10 are not limited to “facilitating performance of at
least some submitted tasks” (App. Br. 21-22 and Reply Br. 13-14). Instead,
claim 10 recites that the programmed computing systems perform additional

2 Appellants have stated, “[t]he rejection of claim 39 is not being appealed”
(App. Br. 4).
Appeal 2011-004922
Application 11/537,491

8
operations, including “determining one or more available tasks” and
“providing information about the determined tasks for presentation to a
human task performer user via the information service” – operations that are
more than “extra-solution” activity, as the Examiner has conceded (Ans. 16,
“These very well may be more than ‘extra-solution’ activity”). These
operations explicitly require the use of “one or more programmed computing
systems” and, therefore, tie claim 10 to a particular machine, i.e., a computer
specifically programmed to perform the step of “facilitating performance of
at least some submitted tasks,” including “determining one or more available
tasks” and “providing information about the determined tasks for
presentation to a human task performer user via the information service.”
The Supreme Court has made clear that the machine-or-
transformation test is not dispositive of the § 101 inquiry. See Bilski v.
Kappos, 130 S. Ct. 3218, 3227 (2010). However, we find no factors in the
record that would weigh against patent eligibility. For example, claim 10
does not recite purely mental steps, i.e., steps that can be performed in the
human mind. The claim also does not merely describe an abstract idea or
concept; instead, it recites process steps performed using a programmed
computer system, and these steps are not insignificant extra-solution activity.
We conclude that claim 10 is directed to patent-eligible subject
matter. Therefore, we will not sustain the Examiner’s rejection of
independent claim 10 and dependent claims 11-24 and 27-30 under 35
U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 10-28, 30-38 and 40-47 under 35
U.S.C. § 102 is reversed.
Appeal 2011-004922
Application 11/537,491

9
The Examiner’s rejection of claim 29 under 35 U.S.C. § 103(a) is
reversed.
The Examiner’s rejection of claim 39 under 35 U.S.C. § 102 is
affirmed.
The Examiner’s rejection of claims 10-24 and 27-30 under 35 U.S.C.
§ 101 is reversed.

AFFIRMED-IN-PART

mls