Ex Parte Edmeades et al

Patent Trial and Appeal Board

Jun 10, 2016

13407077 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/407,077 02/28/2012
46320 7590 06/14/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Jason C. Edmeades
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.
RSW920100113US2
(644DIV)
CONFIRMATION NO.
5590
EXAMINER
RAZA, MUHAMMAD A
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON C. EDMEADES, PETER J. JOHNSON, DAVID LOCKE,
CLARE J. OWENS, and FENGLIAN XU
Appeal2014-004807
Application 13/407 ,077
Technology Center 2400
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and TERRENCE
W. MCMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2014-004807
Application 13/407,077
Appellants' Request for Rehearing (filed iviay 25, 2016) ("Request")
contends that we erred in our Decision on Appeal mailed March 25, 2016
("Decision"), in which we affirmed the Examiner's decision rejecting claims
1-7.
DISCUSSION
Appellants have not provided persuasive evidence or argument that
claim 1 recites anything more than an unpatentable abstract idea. Rather,
Appellants request reconsideration in light of the new guidance provided by
a recent Office memorandum to Examiners, and a recent decision, Enfish
LLC v. Microsoft Corp., Appeal No. 2015-1244 (Fed. Cir. 2016). Request 5.
Both the Office memorandum and the ruling in Enfish are consistent with
our Decision that the Supreme Court precedents hold that an abstract idea of
a mental process is unpatentable. Our Decision found the determining and
correlating steps recited in claim 1 are for the abstract idea of a mental
process, and the additional limitations of receiving a request and prompting
the user are insignificant data gathering and post-solution activity steps.
Decision 4--5. Appellants have not shown error in our finding.
Claim 1 recites "correlating the characteristic of the user to at least
one user ID option that differs from the requested user ID." Appellants
contend the claimed "user ID option," when read in light of paragraph 15 of
Appellants' Specification, excludes a set of privileges or anything analogous
to a set of privileges. Request 8. However, the Decision interpreted the
claimed "user ID option" in light of paragraph 17 of Appellants'
Specification, which discloses offering different user ID options to different
users based upon their respective job roles. Decision 6. For example,
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Appeal2014-004807
Application 13/407,077
paragraph l 7 discloses an administrator requesting a normal ID may be
offered the option of an administrator ID, while a non-administrator would
not be offered this option. Therefore, Appellants' contention that the scope
of "user ID option" recited in claim 1 excludes a set of privileges associated
with a job role is inconsistent with paragraph 17 of Appellants'
Specification.
DECISION
Appellants' Request for Rehearing is granted to the extent that the
Decision was reconsidered, but is denied with respect to making any
changes thereto.
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. §
41.50(±).
DENIED
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