Ex Parte Esque

Patent Trial and Appeal Board

Jul 31, 2017

11426197 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/426,197 06/23/2006 Cher Esque 3994563-128859 1519
23570 7590 08/02/2017
PORTER WRIGHT MORRIS & ARTHUR, LLP
INTELLECTUAL PROPERTY GROUP
41 SOUTH HIGH STREET
29TH FLOOR
COLUMBUS, OH 43215
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
ipdocket @ porterwright .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHER ESQUE
Appeal 2015-0082691
Application 11/426,1972
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4—19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision considers Appellant’s Appeal Brief (“Appeal Br.,” filed
May 6, 2015) and Reply Brief (“Reply Br.,” filed Sept. 17, 2015), as well as
the Examiner’s Non-Final Action (“Non-Final Act.,” mailed Oct. 7, 2014)
and Answer (“Ans.,” mailed July 17, 2015).
2 Appellant identifies Cher Esque as the real party in interest. Appeal Br. 3.
Appeal 2015-008269
Application 11/426,197
CLAIMED SUBJECT MATTER
Claims 1 and 19 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for internally organizing marketing tasks and
related data within a business entity, the system comprising:
a computer processor configured to execute a computer
program to direct the computer processor to generate a main
navigational window viewable on a computer display in
communication with the computer processor and having a
plurality of links;
wherein the computer program is operational when
executed by the computer processor upon activation of the
plurality of links to direct the computer processor to generate
additional windows viewable on the computer display;
wherein the plurality of links includes a marketed entities
link, an avenues link, a contacts link, and an events link;
wherein the marketed entities link opens a marketed
entities window having data fields for entering, saving, editing,
and viewing data relating to particular marketed entities;
wherein the avenues link opens an avenue window having
data fields for entering, saving, editing, and viewing data relating
to particular avenues of marketing used for marketing the
particular marketed entities;
wherein the contacts link opens a contact window having
data fields for entering, saving, editing, and viewing contact data
relating to a particular individual;
wherein the avenues window has a second contacts link
which opens the contact window;
wherein the events link opens an event window having
data fields for entering, saving, editing, and viewing data relating
to particular events used for marketing the particular marketed
entities;
wherein the contact window has a second events link
which opens the events window;
wherein the computer program is operational when
executed by the computer processor to direct the computer
processor to generate a button grouping on each of the marketed
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Application 11/426,197
entities window, the avenue window, the contact window, and
the event window which is laterally located near a right edge of
the associated window and vertically located near a middle of the
associated window; and
wherein the button grouping includes an add button which
provides a new record with clear data fields when activated, an
undo button which undoes a last action taken when activated, a
save button which saves any data entered into displayed data
fields when activated, a delete button which deletes data in
displayed data fields when activated, and a close button which
closes the associated window when activated.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Shiraishi et al. US 6,621,508 B1 Sept. 16,2003
(“Shiraishi”)
Graeme Bennett, Windows 98 Orientation Guide (July 2, 1998),
http://www.apachego.com/cdesigns/tips/windows98guide.htm, and
Anne Carter and Greg Robinson, Windows 95/98: Getting Started, in
Academic Technology & Networks at the University of North Carolina
dws07 (Lanis Wilson et al. eds., 1999) (collectively “Microsoft”).
REJECTIONS
Claims 1, 2, 4—19, 21, and 22 are rejected under 35 U.S.C. § 101 as
non-statutory subject matter.
Claims 1, 2, 4—19, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shiraishi and Microsoft.
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Application 11/426,197
ANALYSIS
Non-Statutory Subject Matter
In rejecting the claims under 35 U.S.C. § 101 for being directed to
non-statutory subject matter, the Examiner analyzes the claims using the
two-step framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012) and reiterated in Alice
Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014),
which considers, in the first step, whether a claim is directed to a patent-
ineligible concept, e.g., an abstract idea, and then, in a second step, whether
the claim, individually and as an ordered combination, recites an inventive
concept—an element or combination of elements sufficient to ensure the
claim amounts to significantly more than the abstract idea and transform the
nature of the claim into a patent-eligible concept. Specifically, the Examiner
finds the claims are directed to “customer relationship management via
database management,”3 which is a fundamental economic practice, a series
of mathematical formulations, and/or steps to organize human activity, and
therefore, an abstract idea. Non-Final Act. 5—6. The Examiner also finds
the claims do not recite limitations that amount to significantly more than
the abstract idea because the claim limitations are merely instructions to
implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions that are well-
understood, routine, and conventional. Id. at 6.
3 The Examiner also refers to the concept of “customer relationship
management via database management” as “customer retention and
customer relationship management” (Non-Final Act. 5) and “database
management for customer relationship management” (Ans. 3). We see no
meaningful distinction among these terms.
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Appellant argues that the claims include detailed limitations that
distinguish the claims from the concept of “customer relationship
management via database management.” Appeal Br. 14—16. We agree.
In considering whether the claims are directed to a patent-ineligible
concept pursuant to the first step of the patent-eligibility analysis, our
reviewing court has instructed that “the claims are considered in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015) (emphasis added). Here, the claims
recite a main navigational window having a plurality of links, a marketed
entities link that opens a marketed entities window, an events link that opens
an events window, a contacts link that opens a contact window having a
second events link for opening the events window, an avenues link that
opens an avenues window having a second contacts link for opening the
contacts window, and a button grouping of specific buttons located in a
particular place on each of the windows, i.e., “laterally located near a right
edge of the associated window and vertically located near a middle of the
associated window.” As such, the character of the claims as a whole is
directed to a particular display or interface, not to “customer relationship
management via database management.” We thus find that the claims as a
whole “focus on a specific means or method that improves the relevant
technology” (in this case, a graphical user interface) and are not “directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016).
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Application 11/426,197
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 2, 4—19, 21, and 22 under 35 U.S.C. § 101.
Obviousness
In regard to independent claim 1, the Examiner finds Shiraishi
discloses the claimed invention, except for the button grouping and the
location of the button grouping. Non-Final Act. 7—15. The Examiner
further finds Microsoft teaches that a user can customize a toolbar and locate
it where it works best for the user. Id. at 15—16. According to the Examiner,
it would have been obvious to modify Shiraishi’s information processing
method by using a customizable toolbar identical in content and location on
each window, as set forth in Microsoft, to maximize the effectiveness of the
toolbar and the user actions. Id. at 16.
Appellant argues Microsoft fails to disclose a button grouping at the
claimed location, i.e., “laterally located near a right edge of the associated
window and vertically located near a middle of the associated window.”
Appeal Br. 22; Reply Br. 7. According to Appellant, Microsoft’s toolbar
can be moved to different edges of a display screen, but cannot be moved to
locations away from the edge of window, as claimed. Appeal Br. 22;
Reply Br. 7.
The Examiner responds that the term “near” is broad and that a
location against the edge is near the edge. Ans. 10. Appellant replies that
the ordinary and customary meaning of “near” is “at a short distance away
from a place” or “located a short distance away” and, therefore, does not
include “against something.” Reply Br. 8.
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During examination, claims are given their broadest reasonable
interpretation consistent with the specification. In re Amer. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Under
the broadest reasonable interpretation standard, claim terms generally are
given their ordinary and customary meaning, as understood by a person of
ordinary skill in the art, in the context of the specification. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the specification does
not assign or suggest a particular definition to a claim term, it is appropriate
to consult a general dictionary definition of the word for guidance in
determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
Here, Appellant puts forth two definitions for the term “near,” but
does not provide any support or citation for these definitions. Moreover, the
Specification does not provide an express definition for the term “near.”
We, therefore, consult a general dictionary and determine the term “near” is
generally understood to mean “at, to, or within a short distance, or no great
distance, from or of.” Dictionary.com, http://www.dictionary.com/
browse/near (last visited May 16, 2017). Giving the term “near” its broadest
reasonable interpretation consistent with the Specification, we are not
apprised of error in the Examiner’s finding that Microsoft’s toolbar locatable
at different edges of a display screen teaches a button grouping that is
“laterally located near a right edge of the associated window and vertically
located near a middle of the associated window,” as recited in independent
claim 1.
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Appellant also argues Microsoft teaches away from the claimed
invention by disclosing a moveable toolbar as opposed to a fixed position
button grouping and by disclosing a toolbar at an edge of the display screen
instead of a button grouping near an edge of the window. Appeal Br. 22;
Reply Br. 8—9. This argument does not apprise us of error because it not
commensurate with the scope of the claims. As set forth above, when giving
the term “near” its broadest reasonable interpretation, Microsoft teaches a
button grouping at the claimed location, and, therefore, does not teach away
from it. Furthermore, the claims do not recite a fixed position button
grouping, so this portion of Appellant’s argument is similarly outside the
scope of the claims.
Appellant additionally argues Shiraishi fails to disclose the particular
types of windows recited in independent claim 1, i.e., marketed entities,
avenue, contact, and event, as well as the claimed interconnections for the
different windows. Appeal Br. 23. This argument does not apprise us of
error at least because the content of the various windows constitutes
nonfunctional descriptive material.
The Federal Circuit has long held that where a limitation claims
printed matter that is not functionally or structurally related to its physical
substrate, the printed matter may not be relied on to distinguish over the
prior art for purposes of patentability. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983). In applying the printed matter doctrine, the first step is to
determine whether the limitation is, in fact, directed to printed matter, i.e.,
whether the limitation claims the content of information. In re Distefano,
808 F.3d 845, 848 (Fed. Cir. 2015). If so, “one must then determine if the
matter is functionally or structurally related to the associated physical
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substrate, and only if the answer is ‘no’ is the printed matter owed no
patentable weight.” Id. at 851.
Independent claim 1 recites a “marketed entities window,” “an avenue
window,” “a contact window,” and “an event window,” and each of these
windows includes data fields for entering, saving, editing, and viewing
information relating to particular marketed entities, avenues of marketing
used for marketing the particular marketed entities, a particular individual,
i.e., a contact, and particular events used for marketing the particular
marketed entities, respectively. The windows are differentiated based on
their content, and the content of the windows is printed matter. The relevant
inquiry then is whether the recited types of content are functionally or
structurally related to the claimed system. We agree with the Examiner that
they are not because there is no evidence that the content of the windows
being marketed entities, avenues, contacts, and events, as opposed to some
other type of content, affects the structure or function of the claimed system.
Ans. 10. As such, the claimed content of the windows constitutes
nonfunctional descriptive material that may not be relied on to distinguish
over the prior art for purposes of patentability.
In addition, Appellant relies on a Declaration of Cher Esque
(“Esque Decl.,” filed June 23, 2014) as evidence of secondary considerations
relevant to the determination of obviousness. Appeal Br. 20. According to
Appellant, the Declaration shows the claimed location of the button
grouping increases the productivity for the vast majority of users. Id. at 20,
22.
We recognize that evidence of nonobviousness, such as the evidence
of secondary considerations presented by Appellant, must be considered in
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route to a determination of obviousness/nonobviousness under 35 U.S.C.
§103. Accordingly, we consider anew the issue of obviousness under
§103, carefully evaluating and weighing both the evidence relied upon by
the Examiner and the objective evidence of nonobviousness provided by
Appellant.
Here, the Examiner has considered Appellant’s evidence of secondary
considerations and has determined that the evidence is insufficient to
establish nonobviousness. Non-Final Act. 2—5; Ans. 7—9. Appellant does
not challenge the Examiner’s evaluation of the evidence of secondary
considerations, and, after considering the evidence of obviousness and
nonobviousness, we agree with the Examiner’s determination as to its
insufficiency. For example, the Declaration references a study with groups
of academic personnel to examine the form and placement of button
groupings. Esque Decl. 5—9. There is no evidence, however, that the
study involved a comparison of the claimed invention and the closest prior
art. See In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“When an
article is said to achieve unexpected (i.e. superior) results, those results must
logically be shown as superior compared to the results achieved with other
articles. . . . Moreover, an applicant relying on comparative tests to rebut a
prima facie case of obviousness must compare his claimed invention to the
closest prior art.”) (citations omitted). Without knowing which button
groupings were involved in the study, we cannot ascertain whether the
results of the study, i.e., “minimized mouse movement time for more than
90% of the right hand users” and “increas[ed] the productivity of the vast
majority of users” (Esque Decl. 1 8), were expected or unexpected.
Furthermore, the Declaration does not point to any data to support the results
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of the study, and as such, the evidence that merely states the conclusion of
the study has little probative value.
Considering the totality of the evidence, including evidence of
obviousness and nonobviousness, we are not apprised of error in the
Examiner’s determination that the combined teachings of Shiraishi and
Microsoft render obvious the claimed invention. We, therefore, sustain the
rejection of independent claim 1 under 35 U.S.C. § 103(a). Appellant makes
the same arguments for independent claim 19 (Appeal Br. 20—23;
Reply Br. 7—9), and Appellant does not present separate arguments for
dependent claims 2, 4—18, 21 and 22. Accordingly, we similarly sustain the
rejection of these claims.
DECISION
The Examiner’s decision to reject claims 1, 2, 4—19, 21, and 22 under
35 U.S.C. § 101 is reversed.
The Examiner’s decision to reject claims 1, 2, 4—19, 21, and 22 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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