Ex Parte Cutler

Patent Trials and Appeals Board

Feb 28, 2019

13652462 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/652,462
54962 7590
Loren Donald Pearson
Pearson IP
333 SE 2nd A venue
Suite 2000
10/15/2012
03/04/2019
Miami, FL 33131-2185
FIRST NAMED INVENTOR
Glenn R. Cutler
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.
01561.0006 1667
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
Patent@PearsonIP.com
LDP@PearsonIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN R. CUTLER
Appeal2018-000013
Application 13/652,462
Technology Center 3600
Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR. and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-3, 6, 7 and 11-
21 under 35 U.S.C. § 134(a). Appeal Brief 12-14. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to "a system, a method, and a device for
scheduling, selecting, and delivering greeting cards and postcards."
Specification ,r 18.
Appeal2018-000013
Application 13/652,462
Illustrative Claim
1. A method for selecting and inscribing a greeting card, which comprises:
providing a greeting card database for describing a set of greeting cards, said
greeting card database having a greeting card record corresponding to a
greeting card in said set of greeting cards, a greeting card field describing an
attribute of each of said greeting cards, and a greeting card tuple related to
said greeting card record and said greeting card field and storing a greeting
card datum describing said greeting card;
providing a sender database for storing preferences of a set of senders, said
sender database having a sender record corresponding to a sender in said set
of senders, a first sender field describing a greeting card preference of each of
said senders, a second sender field describing a message preference of each of
said senders, a first sender tuple related to said sender record and said first
sender field and storing a first sender datum describing said greeting card
preference of said sender, a second sender tuple related to said sender record
and said second sender field and storing a second sender datum describing
said message preference of said sender;
determining by computer said greeting card from said set of greeting cards by
matching said greeting card datum of said greeting card and said greeting card
preference of said sender;
providing a message database for storing a set of messages, said message
database having a sender record related to said sender, a message field storing
a set of messages that can be printed on said greeting card, a message tuple
field being related to said sender record and said message field and storing a
message, a message attribute field storing an attribute of said message, and
message attribute tuple being related to said message, said message attribute
tuple storing a message attribute of said message;
determining by computer said message from said set of messages by matching
said message attribute with said message preference of said sender;
printing said message on said greeting card;
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Application 13/652,462
providing a calendar database for describing a set of dates, said calendar
database having a sender record related to said sender, and an event field
storing a set of dates, and a date tuple related to said record and said event
field, said date tuple storing a date; said date tuple being further related to said
greeting card; and
sending said greeting card to said recipient at a predetermined time before said
date without prompting from said sender.
Rejections on Appeal1
Claims 1-3, 6, 7 and 11-21 stand rejected under 35 U.S.C. §112(b) or
(for pre-AIA) 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor, a joint inventor, or (for pre-AIA) the applicant regards as the
invention. Final Action 3.
Claims 1-3, 6, 7 and 11-21 stand rejected under 35 U.S.C. §101
because the claimed invention is directed to nonstatutory subject matter.
Final Action 4--5.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed April 11, 2016), the Reply Brief (filed
September 28, 2017), the Final Action (mailed June 11, 2015) and the
Answer (mailed July 28, 2017) for the respective details.
35 U.S.C. § 112 rejection
The Examiner finds:
1 The Examiner's 35 U.S.C. § 103(a) rejections of claims 1-3, 6, 7 and 11-
21 were withdrawn in the Answer. Answer 2.
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Appeal2018-000013
Application 13/652,462
Line 25 of claim 1 recites, "determining by computer. .. "
it is unclear if the computer recited in line 25 of claim 1 is the
same computer as recited in line 16 of claim 1 or if it is a different
computer than the computer recited in line 16 of claim 1. Claims
2-3, 6, 7, and 11-21 do not remedy the deficiencies of claim 1,
and are thereby considered to be indefinite. Appropriate
correction is required.
For examination purposes the examiner will interpret line
25 of claim 1 to recite, "determining by computer. .. "
Appellant "requests remand of the application to resolve the Section
112 issues, if the Board reverses the other Section 101 rejections." Reply
Brief 2. Appellant fails to argue the merits of the 35 U.S.C. §112(b)
rejection of claims 1-3, 6, 7 and 11-21. Therefore, we sustain the
Examiner's 35 U.S.C. § 112(b) rejection of claims 1-3, 6, 7 and 11-21. See
Ex parte Frye, 94 USPQ2d 1072, 1075 (BP AI 2010) (precedential) ("If an
appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection - the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection. See, e.g.,
Hyattv. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may
treat arguments appellant failed to make for a given ground of rejection as
waived)").
35 U.S.C. §101 rejection
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101 because the claims are directed to an abstract idea of
organizing human activity, and do not include additional elements that are
sufficient to amount to significantly more than the abstract idea. Final
Action 4; see also Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 217
(2014) (Describing the two-step framework "for distinguishing patents that
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Application 13/652,462
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts.").
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Appellant argues the Examiner erred for various reasons. Appeal
Brief 12-14. We are persuaded the Examiner erred. Claim 1 recites a
"method for selecting and inscribing a greeting card," provides "a greeting
card database for describing a set of greeting cards," provides "a sender
database for storing preferences of a set of senders," provides "a database for
storing a set of messages" for printing on the card; etc. However as stated in
the Memorandum, only certain methods of organizing human activity are
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Application 13/652,462
considered abstract ideas. Accordingly, we find a method for selecting and
inscribing a greeting card is not an abstract idea when evaluated under the
Memorandum because the invention is inscribing and printing greeting cards
and therefore is not a fundamental economic practice, a mental process, a
commercial or legal interaction or managing personal behavior between
people. See Alice, 573 U.S. at 217 ("At the same time, we tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Subsequently, we do not sustain the Examiner's determination that
claims 1-3, 6, 7 and 11-21 are not patent eligible.
DECISION
The Examiner's 35 U.S.C. § 112(b) rejection of claims 1-3, 6, 7 and
11-21 is affirmed.
The Examiner's nonstatutory subject matter rejection of claims 1-3, 6,
7 and 11-21 is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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