Ex Parte Coult

Patent Trial and Appeal Board

Mar 15, 2016

13275078 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/275,078 10/17/2011
2352 7590 03/15/2016
OSTROLENK FABER LLP
1180 A VENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
FIRST NAMED INVENTOR
John H. COULT
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.
P/5947-4 3205
EXAMINER
AHN, SANGWOO
ART UNIT PAPER NUMBER
2166
MAILDATE DELIVERY MODE
03/15/2016 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
Exparte JOHN H. COULT
Appeal2014-004254
Application 13/275,078
Technology Center 2100
Before MAHSHID D. SAADAT, TERRENCE W. McMILLIN, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for managing a digital patent mark, the method
compnsmg:
hosting, by a server, a website having an address
associated with a digital patent mark, the digital patent mark
being located on one or more products or on packaging of the
one or more products;
Appeal2014-004254
Application 13/275,078
producing, by the server, a mapped patent-product
database for the one or more products associated with the
digital patent mark;
providing, by the server, patent information to a requester
for a requested product associated with the digital patent mark
based on the mapped patent-product database via the website;
receiving, by the server, new patent information from one
or more patent data sources for the requested product associated
with the digital patent mark;
mapping, by the server, the new patent information to the
requested product associated with the digital patent mark for the
mapped patent-product database; and
automatically providing, by the server, the new patent
information to the requester over the network.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Grams am er
Cheng
Barney
Parsons
Cronin
Awadallah
US 2001/0016851 Al
US 2002/0055936 Al
US 6,556,992 B 1
US 6,871,214 B2
US 7, 117,19 8 B 1
US 7,127,414 Bl
REJECTIONS
Aug. 23, 2001
May 9, 2002
Apr. 29, 2003
Mar. 22, 2005
Oct. 3, 2006
Oct. 24, 2006
Claims 1, 2, 4, 5, 11, 12, 14, 15, and 21-28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Barney and Gramsamer.
Final Act. 10-17.
Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barney, Gramsamer, and Awadallah. Final Act. 17-18.
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Application 13/275,078
Claims 6, 7, 10, 16, 17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Barney, Gramsamer, and Cronin. Final
Act. 18-20.
Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barney, Gramsamer, Cronin, and Cheng. Final Act. 20.
Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barney, Gramsamer, Cronin, and Parsons. Final Act. 20-
21.
ANALYSIS
First Issue: Whether the Examiner erred in finding the combination of
Barney and Gramsamer teaches or suggests "a digital patent mark" as recited
in claims 1, 5, 11, and 15.
Appellant argues bar codes printed on the face of a patent, as taught
by Gramsamer, "do not appear on a product and therefore are not a 'digital
patent mark' as claimed." App. Br. 4. The Examiner relies on Barney as
teaching patent marking data (see e.g., Barney, col. 28, 11. 53-59) and
Gramsamer as teaching such data being digital (see e.g., Gramsamer i-f 7).
Final Act. 3--4; see also Ans. 2--4.
We agree that Appellant's first argument constitutes an individual
attack on the references, which is not persuasive to show nonobviousness.
Ans. 2 citing In re Keller, 642 F.2d 413, 426 (CCPA 1981) and In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds Barney
teaches patent marking data "which is the presence or absence of patent
notice on a corresponding commercial product" (Ans. 2, emphasis ours) and
Gramsamer teaches "patents are usually identified by a number and often by
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Application 13/275,078
a machine-readable bar code" (id., emphasis omitted). Thus, we are not
persuaded the Examiner erred in finding the combination of Barney and
Gramsamer teaches or suggests the claimed "digital patent mark" recited in
claims 1, 5, 11, and 15.
Second Issue: Whether the Examiner erred in finding the combination of
Barney and Gramsamer teaches or suggests the "providing," "receiving,"
"mapping," and "automatically providing" limitations recited in claim 1 and
commensurate limitations of claims 5, 11, and 15.
First, Appellant attempts to distinguish the "providing," "receiving,"
"mapping" limitations from Barney's teaching of" [a] llowing users to post to
a webpage[,] information they believe is relevant for a patent[]." App. Br. 4.
Second, Appellant argues Barney does not teach or suggest the
"automatically providing" limitation because "Barney fails to provide this
updating function in which 'new patent information' is mapped to the
requested product, this requested product being one for which patent
information was provided to a requester, and that then this 'new patent
information' is provided automatically to the requester." Id. at 4--5.
The Examiner cites portions of columns 28 through 30 and finds
Barney teaches
a patent marking is associated with each commercial product
and patent marking data may be collected and stored in [a]
database ... users would be allowed to post additional
information they believe is pertinent to a particular patent or
group of patents, forming user-updated information ... [and] the
added information would be stored in association with each
particular patent to which it is relevant ... Barney [also]
discusses sending an updated report to a user either periodically
or contemporaneously with the updated information ... [as well
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Application 13/275,078
as] automatically generating requested reports on a periodic
basis and/or on an event-triggered basis.
Ans. 3--4 (emphasis omitted). We agree with the Examiner's findings
and conclusions and adopt them as our own. Appellant's first
argument is not persuasive because it is not commensurate in scope
with the claims. See In re Self671F.2d1344, 1348 (CCPA 1982).
The recitations of "patent information" and "new patent information"
in claims 1, 5, 11, and 15 do not exclude information posted by a user,
as taught by Barney. See App. Br. 4.
Appellant's second argument is not persuasive to rebut the
Examiner's findings as it does not to take into account the entirety of
Barney's teachings. Barney states "from the user's 45 perspective each
patent would, in effect, have its own bulletin board or note pad associated
with it, upon which users may post relevant information. Other information
could also be displayed, such as ... commercial product information."
Barney, col. 29, 11. 45-51. Barney further states "users would be allowed to
request automatic updates and patent ratings according to certain user-
defined parameters." Id. at col. 29, 11. 3-5. In light of the cited teachings in
Barney, Appellant does not present sufficient evidence that mapping new
patent information to the requested product and automatically providing the
new patent information to the requester would have been "uniquely
challenging or difficult for one of ordinary skill in the art" nor that it
"represented an unobvious step over the prior art." See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citations
omitted).
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For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Barney and Gramsamer teaches or suggests the
limitations recited in claim 1, as well as commensurate limitations of claims
5, 11, and 15, nor are we persuaded the Examiner erred in rejecting claims
2--4, 6-9, 12-14, 16-19, and 21-28, which are not separately argued. 1
Therefore, we sustain the rejection of claims 1-9, 11-19, and 21-28 under
35 U.S.C. § 103(a).
Third Issue: Whether the Examiner erred in finding the combination of
Barney and Gramsamer teaches or suggests that "automatically providing
the new patent information to the requester comprises sending an email from
the server to the requester," as recited in claim 10 and a commensurate
limitation of claim 20.
Appellant argues "[t]he passage cited by the Examiner, Barney, col.
29, lines 35-45, does not disclose or suggest providing the new patent
information to the requester by 'sending an e-mail from the server to the
requester,' as required by claim 10." App. Br. 6. The Examiner finds
"Barney discloses sending the information by an e-mail message in at least
column 30 lines 20 - 21, where Barney discloses that the requested reports
would be automatically generated and e-mailed on a periodic or event-
triggered basis." Ans. 5 (emphasis omitted). Appellant does not
persuasively rebut the Examiner's findings.
1 Claims 3, 6-9, 13, and 16-19 are variously rejected over Barney,
Gramsamer, Awadallah, Cronin, Cheng, and Parsons. As these claims are
not separately argued, we reach the same decision with respect to these
claims as with respect to independent claims 1, 5, 11, and 15, from which
they depend.
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For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Barney, Gramsamer, and Cronin teaches or
suggests the limitation recited in claim 10 and the commensurate limitation
of claim 20. Therefore, we sustain the rejection of claims 10 and 20 under
35 U.S.C. § 103(a).
DECISION
The Examiner's decision to reject claims 1-28 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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