Ex Parte Conn et al

Patent Trial and Appeal Board

Feb 26, 2016

13099678 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/099,678 05/03/2011
22045 7590 03/01/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
John Paul Conn
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.
DIHL 0101 PUSl 1356
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN PAUL CONN, THOMAS JOHN O'BRIEN,
GREGORY HUGH HODGKISS,
and PETER KINGSLEY LAKE-JOHNS
Appeal2013-008443
Application 13/099,678
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1--40. We affirm.
1 The Appellants list the inventors as the real parties in interest. (App. Br.
1 ).
Appeal2013-008443
Application 13/099,678
THE CLAIMED fNVENTION
Appellants' claims relate generally to "compensating data owners and
data backup service providers for the costs of restoring data after a loss of
data." (Spec. para. 2). Claim 1 is illustrative of the claimed subject matter:
1. A method for providing data insurance comprising:
storing, by a first processing device, data of a third entity
on a storage medium of the third entity;
creating an agreement between a first entity and a second
entity to provide data protection service to a third entity,
wherein the first entity arranges for a data protection service to
be provided by the second entity for the third entity's data
stored on a storage medium of the third entity;
creating an insurance agreement between the first entity
and the third entity, because the data of the third entity was
stored on the storage medium of the third entity, that authorizes
the third entity to use the data protection service provided by
the second entity for the third entity's data stored on the storage
medium of the third entity without the third entity being
charged for use of the data protection service of the second
entity;
storing, by a second processing device, an electronic
backup copy of the third entity's data, as required by the data
protection service agreement, on a storage medium of the
second entity such that the electronic backup copy of the third
entity's data stored on the storage medium of the second entity
is insured against loss according to the insurance agreement;
upon loss of data stored on the storage medium of the
third entity, providing the backup copy of data from the second
entity to the third entity in an attempt to restore the third entity's
data; and
providing compensation from the first entity to the
second entity for the data protection services.
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Appeal2013-008443
Application 13/099,678
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McCabe US 2002/0095317 Al July 18, 2002
Potter, Elliott, Don't neglect a windshield chip, Kennebec Journal, Augusta,
ME, Oct. 15, 1994, pg. 18 (hereinafter "Potter").
REJECTION
The following rejection is before us for review.
The Examiner rejected claims 1--40 under 35 U.S.C. § 103(a) as
unpatentable over McCabe and Potter.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification defines insurance, stating "'Insurance' is a financial
arrangement for redistributing the costs of unexpected losses according
to a contract in which an insurer agrees to compensate an insured for
those losses." (Spec. para. 21 ).
2. McCabe is directed to risk management, the protection of computer
data, and "Data Insurance." (McCabe, para. 2).
3. Potter is directed to repairs caused by perils covered by automobile
casualty insurance. (Potter, p. 1 ).
4. McCabe discloses a first, second, and third party involved in data
protection services that are insured by the first party, and provided by
the second party to the third party on behalf of the first party, stating
"services are to be provided pursuant to an agreement whose named
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Application 13/099,678
parties or intended beneficiaries include a technical services provider,
an insurer, and the insured entity, and whose terms require the technical
services provider to provide the insured entity with the services."
(McCabe, para. 24).
5. McCabe discloses insurance of provided services, stating service
providers are known to "guarantee their work and agree to pay for
subsequent damage if the treatment fails." (McCabe, para. 52).
6. McCabe discloses backup services provided by a second party, remote
to the third party, describing "environments in which insured
organizations or individuals 304 do not have the internal infrastructure
to provide their own remote protection or backup facilities." (McCabe,
para. 98).
ANALYSIS
Initially, we note that Appellants argue independent claims 1, 13, 23,
and 33 together as a group. (App. Br. 7). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claims 13, 23, and 33 standing or falling with claim 1. Appellants do not
provide a substantive argument as to the separate patentability of claims 2-
12, 14--22, 24--32, and 34--40 that depend from claims 1, 13, 23, and 33.
Thus, claims 2--40 stand or fall with claim 1. See 3 7 C.F .R.
§ 41.37(c)(l)(vii).
Appellants argue "Potter is not in the field of appellant's endeavor and
is not reasonably pertinent to the particular problem with which the
inventors were concerned." (Appeal Br. 4; see also Reply Br. 2, Appeal Br.
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Application 13/099,678
5 ("Potter article, however, is not applicable to McCabe.")). We are not
persuaded by Appellants' argument.
The determination of the scope and content of the prior art includes
determining whether prior art references are "analogous." Whether a
reference in the prior art is "analogous" is a fact question. In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810
F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)). 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. Id. (citing In re Deminski, 796
F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA
1979)). "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 re Clay, 966 F.2d at
659.
With this understanding, we note that Appellants' claims recite "data
protection service provided by the second entity," where the service "is
insured against loss according to the insurance agreement." We construe the
claims to mean that the insurance is a warranty or guarantee of the services
provided. The field of insurance, as defined by Appellants "is a financial
arrangement for redistributing the costs of unexpected losses according to a
contract in which an insurer agrees to compensate an insured for those
losses." (FF 1 ). The warranty of services is thus a form of insurance against
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Application 13/099,678
financial loss, typically included with the sale of services, either explicitly or
implied. McCabe's instrument is closely related, because McCabe addresses
"data insurance." (FF 2). Potter is directed to options for addressing losses
covered by an insurance policy. (FF 3). As such, both McCabe and Potter
are in the field of insurance, and address common problems with covered
losses facing the practitioner in that field, and is thus reasonably pertinent to
the problems faced by the ordinary artisan in the insurance field. Therefore,
McCabe and Potter are both analogous art, and appropriate for application to
the language of the claims.
Appellants next argue that "McCabe insures original data that has yet
to be backed up, and does not insure backup copies held by a data protection
service provider (second entity) as in claim 1." (Appeal Br. 5).
The Examiner finds that loss of the original copy and backup copy are
contemplated and included in the cost, and thus disclose the claim language.
(Answer 14).
We agree with the Examiner. We find that McCabe discloses data
protection services are provided by an "insurer" (first party), who delegates
or subcontracts the performance of services to a "technical services
provider" (second party), for data of an "insured entity" (third party).
(FF 4). McCabe also discloses it is well known for a first party to provide a
guarantee of services provided that will "pay for subsequent damage."
(FF 5)2. McCabe thus at least suggests a guarantee of services that
corresponds to the claimed insurance of the backup copy as claimed because
2 This disclosure in McCabe means that the disclosure of Potter is
cumulative.
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the guarantee by the first party to the customer is not released simply
because the first party uses an agent to effect the obligation.
Appellants finally argue that in at least one embodiment of McCabe,
"the electronic backup copy of the business 304's data is stored on a storage
medium of the third entity-not a second entity as claimed." (Reply Br. 2-3).
We are not persuaded by Appellants' argument, because McCabe
discloses the second party providing remote backup services to a
contracting/insured party, thus meeting the claim language. (FF 6).
For these reasons, we affirm the rejection of claims 1--40.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1--40 under 35 U.S.C.
§ 103(a).
DECISION
For the above reasons, the Examiner's rejection of claims 1--40 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).
AFFIRMED
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