Ex Parte Firminger et al

Patent Trial and Appeal Board

Oct 9, 2015

12592541 (P.T.A.B. Oct. 9, 2015)

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.
12/592,541 11/25/2009 Shawn P. Firminger SE1-1017-US 1557
80118 7590 10/13/2015
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
BURGESS, JOSEPH D
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
10/13/2015 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
____________________

Ex parte SHAWN P. FIRMINGER, JASON GARMS,
RODERICK A. HYDE, EDWARD K.Y. JUNG,
CHRIS DEMETRIOS KARKANIAS, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, RICHARD T. LORD, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO JR.,
CLARENCE T. TEGREENE, KRISTIN M. TOLLE, and
LOWELL L. WOOD JR.
____________________

Appeal 2013-0014011
Application 12/592,5412
Technology Center 3600
____________________

Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
August 15, 2012), Reply Brief (“Reply Br.,” filed October 30, 2012), and
Supplemental Reply Brief (“Supp. Reply Br.,” filed October 30, 2012), and
the Examiner’s Answer (“Ans.,” mailed August 31, 2012) and Final Office
Action (“Final Act.,” mailed March 15, 2012).
2 Appellants identify Searete LLC as the real party in interest. App. Br. 5.
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STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 141–202. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellants’ claimed invention “relates to data capture and data
handling techniques” (Spec. 7).
Claim 141, reproduced below, is the sole independent claim, and is
representative of the subject matter on appeal:
141. A system comprising:
an accepter module configured to accept an indication of
at least one health-related status of an individual;
a determiner module configured to determine a plurality
of health service options for the individual at least partially
based on accepting the indication of at least one health-related
status of the individual, where the determiner module includes a
microprocessor; and
a solicitor module configured for soliciting advertising
for at least one selected health service option.

REJECTIONS3
Claims 141–145, 147–165, 167–171, 173–175, 178–186, 188, and
190–202 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kanai
(US 6,807,531 B1, iss. Oct. 19, 2004) and Eaton (US 2006/0136264 A1,
pub. June 22, 2006).

3 The provisional rejection of claims 141, 142, 147, 149, 150, 153, 157,
159–163, 169–176, 178–180, 185, 190, 193, 194, 198, and 201 on the
ground of non-statutory obviousness-type double patenting is moot in view
of the August 4, 2015 abandonment of Application Serial No. 12/592,439.
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Claims 146 and 189 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanai, Eaton, and Henley (US 2002/0065758 A1,
pub. May 30, 2002).
Claims 166 and 187 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanai, Eaton, and Boerger (US 2007/0271119 A1,
pub. Nov. 22, 2007).
Claims 172, 176, and 177 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanai, Eaton, and Thomas (US 2004/0015337 A1,
pub. Jan. 22, 2004).

ANALYSIS
Obviousness
Independent claim 141
Appellants variously argue that the rejection of independent claim 141
should be reversed because the Examiner has failed to establish a prima
facie case of unpatentability (App. Br. 46–74). More particularly,
Appellants argue that a prima case of unpatentability has not been
established because the USPTO-cited technical material fails to recite
several express terms of independent claim 141, and the USPTO has not
explained how it reached the mappings of the claim onto the cited prior art
under a broadest reasonable interpretation consistent with Appellants’
Specification (id. at 46–49). Appellants assert that although the USPTO
characterizes Kanai as disclosing certain limitations of independent
claim 141, the Office fails to support its characterization with “objectively
verifiable evidence” (id. at 55), and Appellants have “shown by direct
quotations” that independent claim 141 and Kanai are “very different on
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their faces” (id. at 56). Appellants maintain that Appellants’ application is
the only “objectively verifiable USPTO-cited document of record that shows
or suggests what the USPTO purports the references to disclose” (id. at 57–
58), and “that the USPTO is interpreting Kanai through the lens of
Appellant’s [sic] application, which is impermissible hindsight use” (id.
at 58).
Appellants also charge that the USPTO is improperly relying on
personal knowledge and/or is taking official notice of one or more factors to
reach the factual conclusion of what the cited technical material discloses,
and that the USPTO should be required to provide an affidavit or declaration
setting forth objectively verifiable evidence in support of the USPTO’s
assertions regarding what the cited technical material discloses and/or should
be interpreted to teach (id.). Appellants make similar arguments with
respect to Eaton (id. at 58–65).
Appellants’ arguments are unpersuasive. The Federal Circuit has held
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, “all that is required of the office to meet
its prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132.” Id. at 1363.
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Here, the Examiner notified Appellants that claim 141 is rejected
under 35 U.S.C. § 103(a) as obvious over the combination of Kanai and
Eaton, and the Examiner cited specific portions of the references, by column
and line (Kanai) and paragraph (Eaton) numbers, that are the bases for the
rejection (Final Act. 4–5). The cited portions of the references, and the
accompanying explanations provided by the Examiner, collectively
constitute the “objectively verifiable evidence,” which Appellants allege is
lacking.
Moreover, and contrary to Appellants’ suggestion that identity of
terminology is required, the Examiner does not contend, nor is the Examiner
required to demonstrate, that the identical text of rejected claim 141 appears
in the cited references. The test of whether a reference teaches a claim
limitation is not whether the exact language is present. Instead, the relevant
inquiry is whether the limitation is taught or suggested by the prior art when
the claim is given its broadest reasonable interpretation in light of the
Specification. Cf. In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)
(interpretation of references “is not an ‘ipsissimis verbis” test” (citing Akzo
N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.
1986))); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360,
1369 (Fed. Cir. 1991) (“[A] . . . reference . . . need not duplicate word for
word what is in the claims.”).
We find that the Examiner’s rejection satisfies the notice requirement
of § 132, and, therefore, establishes a prima facie case of obviousness.
Cf. Jung, 637 F.3d at 1363 (“[T]he examiner’s discussion of the theory of
invalidity . . . the prior art basis for the rejection . . . and the identification of
where each limitation of the rejected claims is shown in the prior art
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reference by specific column and line number was more than sufficient to
meet this burden.”). Therefore, the burden shifts to Appellants to rebut the
Examiner’s prima facie case by distinctly and specifically pointing out the
supposed errors in the Examiner’s action, as well as the specific distinctions
believed to render the claims patentable over the applied references.
See 37 C.F.R. § 41.37(c)(vii) (2011) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).
Appellants have failed to carry their burden. Rather than distinctly
pointing out the Examiner’s supposed errors, Appellants have made mere
general allegations that the claims define a patentable invention because the
Examiner has failed to establish a prima facie case of unpatentability,
without specifically articulating what gaps exist between the cited references
and the claims. For example, although Appellants charge the Examiner with
improper reliance on hindsight, personal knowledge, or improper reliance on
official notice, Appellants do not provide persuasive arguments or evidence
to support that charge. Appellants’ objection to the Examiner’s technical
explanation of how the claim is obvious in view of the prior art, and their
demand for “an affidavit or declaration setting forth objectively verifiable
evidence in support of the USPTO’s currently unsupported assertions
regarding what the cited technical material ‘discloses’ and/or should be
interpreted to ‘disclose’” (see, e.g., App. Br. 58), also lack technical
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explanation of what the error is. Appellants also do not specifically identify
(except by quoting the entirety of the claim) the several “express terms” of
claim 141 that the “USPTO-cited technical material” allegedly fails to recite.
Appellants’ further argument that the Examiner has provided
conclusory statements only, and has failed to provide articulated reasoning
with some rational underpinning to support the obviousness conclusion
(App. Br. 65–67 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)))
also begs the question of whether any differences exist, and fails to address
the Examiner’s stated rationale for combining the references.
Appellants’ contentions that combining the references, as the
Examiner proposes, would change the principle of operation of one or both
of Kanai and Eaton, would render the technologies of Kanai and/or Eaton
unfit for their intended purposes, and would require substantial
reconstruction and redesign of the elements of Kanai (App. Br. 67–74)
similarly fail at least because they appear based on bodily incorporation,
which is not the test for obviousness. See In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.”); In
re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Viewed as a whole, Appellants’ arguments amount to a recitation of
the claim language, and a quotation of the Examiner’s statement of the
rejection followed by a quotation of each of the cited portions of the prior art
references, from which Appellants summarily conclude that the quoted
language of the references does not meet the quoted claim language. Other
than seeking direct quotations of identical terminology, Appellants have not
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identified error in the Examiner’s interpretations of the cited references or
the claim language.
Appellants may well disagree with how the Examiner interpreted and
applied the references, but Appellants offer no substantive arguments to
rebut the specific underlying factual findings made by the Examiner in
support of the ultimate legal conclusion of obviousness. And we decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”).
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See Jung, 637 F.3d. at 1365 (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner's rejections,” citing Ex Parte Frye, 94 USPQ2d 1072
(BPAI 2010) (precedential) (“The panel then reviews the obviousness
rejection for error based upon the issues identified by appellant, and in light
of the arguments and evidence produced thereon.”)). Therefore, we sustain
the Examiner’s rejection of claim 141 under 35 U.S.C. § 103(a).
For the same reasons, we also sustain the Examiner’s rejections of
dependent claims 142–146, 148, 150–164, and 166–202, which are not
argued separately except based on their dependence on claim 141 (App.
Br. 74).
Dependent claims 147, 149, and 165
Appellants argue that dependent claims 147, 149, and 165 are
independently patentable (App. Br. 74–82). Yet Appellants’ arguments
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amount to a recitation of the claim language followed by a quotation of the
cited portions of Kanai and/or Eaton, from which Appellants summarily
conclude that a prima facie case of unpatentability has not been made. Other
than seeking direct quotations of identical terminology, Appellants have not
identified error in the Examiner’s interpretations of cited references or the
claim language.
Based on the record and arguments before us, we are not persuaded
that the Examiner erred in rejecting claims 147, 149, and 165 under
35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s rejection.

DECISION
The Examiner’s rejections of claims 141–202 under 35 U.S.C.
§ 103(a) are 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)(1)(iv).

AFFIRMED

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