10521580 (P.T.A.B. Sep. 19, 2012)

Ex Parte Fujisawa et al

Patent Trial and Appeal BoardSep 19, 2012

10521580 (P.T.A.B. Sep. 19, 2012)

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. 10/521,580 01/18/2005 Tomonori Fujisawa IPA-005 4028 32628 7590 09/19/2012 KANESAKA BERNER AND PARTNERS LLP 1700 DIAGONAL RD SUITE 310 ALEXANDRIA, VA 22314-2848 EXAMINER RECEK, JASON D ART UNIT PAPER NUMBER 2442 MAIL DATE DELIVERY MODE 09/19/2012 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 TOMONORI FUJISAWA and SHOUJI SATOU ____________ Appeal 2010-006227 Application 10/521,580 Technology Center 2400 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and THOMAS L. GIANNETTI, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 5 and 9. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-006227 Application 10/521,580 2 STATEMENT OF THE CASE The disclosed invention relates generally to an informing system (Spec. 1). Claims 5 and 9 are on appeal. Claim 5 is representative and reads as follows: 5. A informing system comprising: a service server for relaying communications from an informing person to informed persons, terminal devices owned by said informing person and said informed persons connected to each other via a computer network, and means for transmitting to said informed persons informing E- mails each including a URL (Universal Resource Locator) for linking a matter to the informing person, said URL having a document described with a www-compatible language and including a response column corresponding to an access of said informed matter, wherein said service server comprises means for detecting data concerning said response column transmitted by each of the terminal devices owned by said informed persons, and means for transmitting a result of detection as a reporting E-mail to the terminal device owned by said informing person, and said reporting E-mail includes a plurality of choices for re- informing methods to the informed persons, said plurality of choices comprising placing a call to a first telephone number of informed persons having not responded, and placing a call to a second telephone number of said informed persons having not responded. Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Orime (JP 2002-183365, December 14, 2000) and Felman (US Patent Publication No. 2002/0152265 A1; October 17, 2002). Appeal 2010-006227 Application 10/521,580 3 Issue Did the Examiner err in rejecting claims 5 and 9? Finding of Fact (FF) Orime discloses that “the prospective participant of whom participation is expected receives e-mail” (¶ [0031]), “determines participation, nonparticipation, etc.” (¶ [0032]), after which an “e-mail [containing response information] will be transmitted to a manager and it will determine . . . whether perform certain gatherings beforehand” (¶ [0033]). Principles of Law The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Appeal 2010-006227 Application 10/521,580 4 Analysis Claim 5 recites a reporting e-mail that includes a plurality of choices including placing a call to a first telephone number or a second telephone number of a person not having responded (to a previously sent e-mail). Appellants argue that the combination of Orime and Felman fails to disclose or suggest “a system whereby the system places a call” (App. Br. 6) and “nowhere suggests the actual act of placing a call, as recited in claim 5” (Id. at 7). Appellants also argue that the combination of Orime and Felman fails to disclose or suggest “the ability to automatically place a call based upon the received contact information” (Id. at 8). However, contrary to Appellants’ assertion, claim 5 does not recite “the actual act of placing a call” or “the ability to automatically place a call based upon the received contact information.” Instead, as stated above, claim 5 merely recites choices (in an e-mail) that include placing a call to a first or second telephone number. The Examiner presents reasons with supporting factual underpinnings as to why it would have been obvious to one of ordinary skill in the art to have combined the Orime and Felman references (Ans. 5). Appellants disagree with the Examiner’s rationale (App. Br. 8 and Ans. 5) because, according to Appellants, “neither [Orime nor Felman] suggests the desirability of combining such teachings” (App. Br. 8). However, KSR makes clear that the Examiner need not establish a reason to combine references based on “any rigid mandatory formulas” (see KSR, 550 U.S. at Appeal 2010-006227 Application 10/521,580 5 419) and that “[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it” (id. at 421). Appellants fail to point to specific reasons or to identify which specific statements by the Examiner lack a clear articulation and are therefore unpersuasive. We therefore are not persuaded by Appellants’ argument. Regarding claim 9, Appellants argue that Felman fails to “disclose, teach, or suggest transmitting a reporting e-mail to the informer” (App. Br. 9). However, the Examiner relies on Orime for this disclosure. For example, Orime discloses an “informed person” (i.e., a prospective participant”) receiving and responding to an e-mail from an “informing person” (i.e., a “manager”) and the “informing person” (i.e., the “manager”) receiving an e-mail containing information on the response(s) of the “informed” persons (FF). Appellants have not adequately demonstrated a meaningful difference between Orime and the disputed feature of claim 9. Since the Examiner’s rejection is based on the combination of Orime and Felman rather than the Felman reference by itself, we are not persuaded by Appellants’ argument. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Conclusion of Law The Examiner did not err in rejecting claims 5 and 9 under 35 U.S.C. § 103(a). Appeal 2010-006227 Application 10/521,580 6 SUMMARY We affirm the Examiner’s rejection of claims 5 and 9. 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. § 1.136(a)(1)(iv). AFFIRMED rvb