Ex Parte Frank et al

Patent Trial and Appeal Board

Jul 22, 2014

11395088 (P.T.A.B. Jul. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/395,088 03/31/2006 Scott M. Frank 060021/60027.5192US01 2334
82866 7590 07/23/2014
AT&T Legal Department - H&C
Attn: Patent Docketing
One AT&T Way
Room 2A-207
Bedminster, NJ 07921
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
07/23/2014 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 SCOTT M. FRANK, ROBERT A. KOCH,
and JEFFREY R. KUESTER
____________

Appeal 2011-012720
Application 11/395,088
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and HYUN J. JUNG,
Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3–5, 8–13, and 16–25 which are all the claims pending
in the application.1 We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 The Appellants have indicated that claims 2, 6, 7, 14, 15, and 26–29 have
been cancelled (Ans. 5).
Appeal 2011-012720
Application 11/395,088

2

THE INVENTION
The Appellants’ claimed invention is directed to methods and systems
for processing electronic communications (Spec., ¶4). Claim 1, reproduced
below, is representative of the subject matter on appeal.

1. A system for processing electronic communications to facilitate
automated management of an intellectual property asset, the system
comprising:
at least one memory having stored thereon program code; and
at least one processor that is programmed by at least the
program code to
select a user associated with the intellectual property asset for
performing a task of a plurality of tasks associated with a process for
managing the intellectual property asset,
provide a request to the user for performing the task, the request
comprising reward information associated with performing the task,
in response to receiving an acceptance to the request from the
user, provide first representations of the plurality of tasks to the user,
wherein the plurality of tasks comprises identifying any known
potential infringers of the intellectual property asset, researching
sources of information identifying potential infringers of the
intellectual property asset, comparing the intellectual property asset
with the known potential infringers and the potential infringers
identified, and assisting in providing an offer for licensing the
intellectual property asset,
provide second representations of a plurality of stages to the
user, wherein each of the plurality of tasks is associated with the
plurality of stages,
receive an indication that a stage of the plurality of stages of the
task of the plurality of tasks has been completed by the user selected
for performing the task,
responsive to receiving the determine whether completion of
the stage of the task by the user satisfies at least one condition for
providing a reward to the user in exchange for completing the stage of
the task, and
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Application 11/395,088

3

provide instructions for disbursement of the reward to the user
upon determining that the user satisfies the at least one condition for
providing the reward.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 3, 5, 8, 10–13, 16, 17, 19–22, 24, and 25 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Kochikar (US 2006/0277091
A1, pub. Dec. 7, 2006), Vilcauskas, Jr. (US 2001/0041989 A1, pub. Nov.
15, 2001), and Malackowski (US 2007/0226094 A1, pub. Sep. 27, 2007).
2. Claims 4, 9, 18, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kochikar, Vilcauskas, Malackowski, and Pantaleo (US
2005/0021384 A1, pub. Jan. 27, 2005).

FINDINGS OF FACT
We find that the findings of fact in the Analysis section below are
supported at least by a preponderance of the evidence.2

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the prior art fails to disclose the two claim limitations requiring the system to
“provide first representations of the plurality of tasks to the user” and
“provide second representations of a plurality of stages to the user” (App.
Br. 15, 16 (emphasis omitted)).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/395,088

4

In contrast, the Examiner has determined that cited claim limitations
are found in Kochikar at Fig. 3 (Ans. 4, 5).
We agree with the Appellants. The argued claim limitations for the
system to “provide first representations of the plurality of tasks to the user”
and “provide second representations of a plurality of stages to the user” is
not disclosed by Kochikar at Fig. 3 (App. Br. 15, 16) . Kochikar at Fig. 3
discloses a publication system of a knowledge asset (¶54). Kochikar at Fig.
3 also discloses notifying a Reviewer if the asset needs to be reviewed, but
this would be only a “single task” not a plurality of tasks as claimed.
Regardless, Kochikar at Fig. 3 fails to further disclose “provid[ing] second
representations of a plurality of stages to the user” as the claim requires
(App. Br. 16). Further, we see no articulated reasoning with rational
underpinnings for the cited combination in the rejection of record.
For these reasons the rejection of claim 1 and its dependent claims is
not sustained. The remaining claims contain at least one similar claim
limitation to those two identified above and the rejection of these claims is
not sustained for the same reasons given above.

Appeal 2011-012720
Application 11/395,088

5

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 1, 3–5, 8–13, and 16–25 is
reversed.

REVERSED

rvb