Ex Parte DiStefano

Patent Trial and Appeal Board

Sep 14, 2016

10868312 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/868,312 06/15/2004 Thomas L. DiStefano III
55246 7590 09/22/2016
Cuenot, Forsythe & Kim
12161 KEN ADAMS WAY
SUITE 120
WELLINGTON, FL 33414
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.
8201-0002 4586
EXAMINER
TSUI, WILSON W
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
ptomail@iplawpro.com
tforsythe@iplawpro.com
kcuenot@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS L. DISTEFANO III
Appeal 2011-00144 7
Application 10/868,312
Technology Center 2100
Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.
DILLON, Administrative Patent Judge.
DECISION ON REMAND
In a second Decision on Request for Rehearing (mailed December 3,
2014), we maintained our new grounds of rejection entered in a first
Decision on Remand (mailed July 16, 2014) pursuant to 37 C.F.R.
§ 41.50(b) and rejecting claims 24-26 under 35 U.S.C. § 102(b) as
anticipated by D' Arlach (US 6,026,433; Feb. 15, 2000). 1 The United States
Court of Appeals for the Federal Circuit issued a decision vacating the new
1 All Board decisions are available from the following USPTO e-FOIA
webpage: httu://www.uspto.,gov/yatents-aQplicaticm-process/patent-trial-and-
aQpeal-board/decisions.
Appeal 2011-00144 7
Application 10/868,312
grounds of rejection and remanding this case back to the Board. See In re
Distefano, 808 F.3d 845 (Fed. Cir. 2015).2
According to the Court, our new grounds of rejection failed to satisfy
a first step for determining claimed information falls within the purview of
the printed matter doctrine; namely a first determination that the claimed
information is printed matter. Id. at 848-849. The Court explained "a
limitation is printed matter only if it claims the content of information" (id.
at 848) and "printed matter must be matter claimed for what it
communicates" (id. at 850). The Court further explained that, if and only if
the above first determination (i.e., "printed matter" determination) is
affirmative, then a second determination is made as to whether the claimed
information is functionally related to the claimed invention. Id. The Court
concluded our new grounds of rejection erred in the first determination
because:
2 A full history of this appeal, leading to the present Decision on Remand, is
collectively provided by the second Decision on Request for Rehearing and
the Court's presently applied decision. As stated by the Court, this is the
second remand. Distefano, 808 F.3d at 847. The first remand resulted from
our failure to issue a new grounds of rejection in accord with In re
Biederman, 733 F.3d 329 (2013), which was not decided until two months
after our first Decision on Request for Rehearing (mailed Aug. 20, 2013)
and clarified that an affirmance is improper if an Examiner's underpinning
determination for a rejection does not "survive" the Board's findings
(Biederman, 733 F.3d at 338); e.g., does not survive, as in this case, our
finding that the disputed claim limitation was harmlessly misconstrued by
the Examiner (because it constituted unpatentable subject matter under the
printed matter doctrine). This second remand resulted from our failure to
understand that the printed matter doctrine does not extend to data unless
claimed for communicated informational content thereof, which is not
instructed by what we perceived as the controlling case law, In re Lowry
(addressed infra 3).
2
Appeal 2011-00144 7
Application 10/868,312
Although the selected web assets can and likely do communicate
some information, the content of the information is not claimed.
And where the information came from, its "origin," is not part of
the informational content at all. Nothing in the claim calls for
origin identification to be inserted into the content of the web
asset. Therefore, the Board erred in finding that the origin of the
web assets constituted printed matter in the claims at issue and
erred in assigning the origin no patentable weight under the
printed matter doctrine in finding anticipation by D 'Arlach.
Distefano, 808 F.3d at 850-51.
As stated by the Court above, we did not complete the first
determination. We misunderstood In re Lowry, 32 F.3d 1579 (Fed. Cir.
1994), as instructing that "merely underlying data in a database" (id. at
1583) is "analogous to printed matter" (id. at 1582-84 (stated four times
therein)) and thus unpatentable unless functionally related to the claimed
invention (id. at 1584). Under the above misunderstanding, we did not
perceive a need to assess whether claim 24' s web assets are claimed for
communicated informational content thereof.
Per the Court's finding that claim 24's description of the web assets
does not satisfy the above requirement, we remand this patent application to
the Examining Corps for consideration consistent with the vacating of the
new grounds of rejection by the Court (supra) and our reversing of the
Examiner's rejection of claim 24 (and depending claims 25 and 26) in the
first Decision on Remand (mailed July 16, 2014). We remind the parties
that the first Decision on Remand reverses the rejection of claim 24 because:
The Examiner construes the asserted claim language-
"provided to the user interface from outside the user interface by
the user"-as requiring merely that web assets be provided to a
user interface as a result of the user, e.g., "by the user's request."
Ans. 15. We disagree with the Examiner. The claim language
3
Appeal 2011-00144 7
Application 10/868,312
at issue plainly states that the database's included web assets are
provided: to the user interface; from outside the user interface;
and by the user.
Decision at 8. We note the above holding presents no determination of
whether it would have been novel or obvious for a database, and particularly
one implemented in the manner recited by claim 24, to "include ... web
assets provided to the user interface from outside the user interface by the
user" (claim 24).
We further note, for the Examiner's consideration, Appellant's related
arguments to the Court and Board. In arguments to the Court, Appellant
contends claim 24's user-provided web assets are not "pre-existing elements
within the user interface[.]" Appellant's CAFC Brief 4 (submitted March
14, 2014). And, in arguments to the Board, Appellant contends claim 24's
user-provided web assets are "web assets (found within the database) that
have been uploaded by the user." Req. Reh'g. 13-14 (submitted July 30,
2013). Even assuming claim 24 requires user uploading of web assets to the
user interface, 3 it is unlikely that ordinarily skilled artisans were not using
graphical user interfaces to upload various software assets at the time of
invention.4 See e.g., US 6,963,910 Bl to Belknap et al., "Graphical User
Interface for Creating Assets" (filed March 3, 2000), col. 14, 11. 30-40.
However, being a review board, we leave the Examiner to determine the
appropriateness of further rejections.
3 Appellant acknowledges the asserted uploading is not explicitly recited.
Appellant's CAFC Brief, fn. 10.
4 The present application claims priority to U.S. App. No. 09/589,235 (now
US 6,771,291) filed June 7, 2000. Spec. 1.
4
Appeal 2011-00144 7
Application 10/868,312
ORDER
We remand the present application to the Examiner for consideration
consistent with the following history.
Our new grounds of rejection of claim 24, and depending claims 25
and 26, under 35 U.S.C. § 102(b) as anticipated by D'Arlach is vacated by
the Court's decision addressed herein (Distefano, 808 F.3d 845).
The Examiner's rejection of claim 22, and depending claim 23, under
35 U.S.C. § 102(b) as anticipated by Barber (US 5,930,777; July 27, 1999)
remains affirmed consistent with our first Decision on Remand (mailed July
16, 2014).
The Examiner's rejection of claim 24, and depending claims 25-28,
under 35 U.S.C. § 102(b) as anticipated by D' Arlach remains reversed
consistent with our first Decision on Remand. 5
REMANDED
5 As noted in the second Decision on Request for Rehearing (mailed
December 3, 2014), the rejection of dependent claims 25 and 26 is reversed
in view of their dependency from claim 24. Id. at fn. 2.
5