Ex Parte Grim et al

Patent Trial and Appeal Board

Aug 29, 2013

11082489 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte CLIFTON GRIM III, CHRISTOPHER I. SCHMIDT, 7
and JOHN D. WILSON 8
___________ 9
10
Appeal 2011-007543 11
Application 11/082,489 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and 17
THOMAS F. SMEGAL, Administrative Patent Judges. 18
SMEGAL, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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STATEMENT OF THE CASE1 1
Clifton Grim III, Christopher I. Schmidt and John D. Wilson 2
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 3
1-14 and 32-44, the only claims pending in the application on appeal. We 4
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
SUMMARY OF DECISION 6
We REVERSE 7
THE INVENTION 8
Appellants invented a system for controlling the access of advertisers to 9
a potential consumer’s personal data (Specification 1:ll. 15-19). 10
An understanding of the invention can be derived from a reading of 11
exemplary claims 1 and 12, which are reproduced below. 12
1. A secure information repository system, comprising: 13
an information vault comprising data storage securely 14
storing information associated with an account holder; 15
a deposit system securely depositing information by the 16
account holder into the data storage, wherein the deposit system 17
prompts the account holder to identify a security level of the 18
information, the security level is one of private, shareable, and 19
commercial, and the account holder identifies the security level 20
using a string of data in a field of descriptive information about 21
the information; 22

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 4, 2010) and Reply Brief (“Reply Br.,” filed March 21,
2011), and the Examiner’s Answer (“Ans.,” mailed January 26, 2011).
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an information access system accessing the information 1
stored in the data storage; and 2
an advertising system that each of: 3
registers an advertiser with the information vault and 4
creates an advertising account in the information vault for the 5
advertiser; 6
registers advertisements into the data storage; and 7
delivers the advertisements to subscribers of the 8
advertising system, 9
wherein the information vault is a trusted third party and 10
allows the account holder to control and manage access and 11
dissemination of the stored information of the account holder 12
and allows the account holder to receive compensation for the 13
use of the stored information by the advertiser accessing the 14
information vault, and 15
wherein, only information approved by the account 16
holder is made available to the advertiser. 17
18
12. A system for providing a protected information 19
repository, comprising: 20
an information vault comprising data storage for securely 21
storing information associated with an account holder; and 22
a system that: 23
securely creates an advertiser account in the 24
information vault and registers an advertiser with the 25
information vault; 26
securely deposits advertising information in the 27
information vault; 28
accesses the advertising information provided by 29
the information vault; and 30
charges or credits fees for transactional activity 31
involving the advertising information, 32
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wherein the information vault is a trusted third party and 1
allows the account holder to control and manage access and 2
dissemination of stored information of the account holder by 3
honoring a contract that contains information identifying the 4
account holder and a second party and defines an agreement 5
between the account holder and the second party and allows the 6
account holder to receive compensation for the use of the stored 7
information by the advertiser accessing the information vault, 8
and 9
wherein, only information approved by the account 10
holder is made available to the advertiser. 11
The Examiner relies upon the following prior art: 12
Ginter US 5,892,900 Apr. 6, 1999 13
Carroll US 6,105,131 Aug. 15, 2000 14
Patel US 6,438,690 B1 Aug. 20, 2002 15
Coleman US 2003/0033199 A1 Feb. 13, 2003 16
Satomi US 6,631,397 B1 Oct. 7, 2003 17
REJECTIONS ON APPEAL 18
Claims 1-10 and 35-38 stand rejected under 35 U.S.C. § 103(a) as 19
unpatentable over Coleman in view of Satomi. 20
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable 21
over Coleman in view of Satomi and Patel. 22
Claims 12-14, 32-34 and 39-44 stand rejected under 35 U.S.C. § 103(a) 23
as being unpatentable over Coleman and Satomi in view of Carroll and 24
Ginter. 25
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FINDINGS OF FACT 1
We find that the findings of fact, which appear in the Analysis below, 2
are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 3
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 4
evidentiary standard for proceedings before the Office). 5
ANALYSIS 6
The rejection of claims 1-10 and 35-38 under 35 U.S.C. § 103(a) as 7
unpatentable over Coleman and Satomi. 8
Claims 1-10, 36 and 38 9
Appellant argued claims 1-10, 36 and 38 as a group (App. Br. 13). We 10
select claim 1 as the representative claim for this group and the remaining 11
claims stand or fall with claim 1. 37 C.F.R. § 41.37 (c) (1) (vii) (2011). 12
“Section 103 forbids issuance of a patent when ‘the differences between 13
the subject matter sought to be patented and the prior art are such that the 14
subject matter as a whole would have been obvious at the time the invention 15
was made to a person having ordinary skill in the art to which said subject 16
matter pertains.’” KSR Int’l Co. Teleflex, Inc., 550 U.S. 398, 406 (2007). 17
The question before us is often whether sufficient difference exists between 18
the prior art and Appellants’ claims to render the claims nonobvious. 19
We are persuaded by Appellants’ arguments that the Examiner failed to 20
establish a prima facie showing of obviousness in rejecting claims 1-10, 36 21
and 38 over Coleman and Satomi. In particular, we agree that neither 22
Coleman nor Satomi, alone or in combination, disclose or suggest wherein 23
the deposit system prompts the account holder to identify a security level of 24
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the information, the security level is one of private, shareable, and 1
commercial, and the account holder identifies the security level using a 2
string of data in a field of descriptive information about the information, as 3
recited in claim 1” (emphasis original) (App. Br. 7). 4
The Examiner contends that “in Coleman’s teaching [0053], a potential 5
purchaser must be a registered user in order to sign up for a deal”; that “[i]n 6
the registration process, a potential purchaser may have to provide certain 7
required information in order to register with the system proprietor or sign 8
up for the deal” and that “different levels of information 411, 413, 415 may 9
be provided by the potential purchaser if desired”, Coleman “reads on the 10
claim feature ‘prompts the account holder to identify a security level of the 11
information’” (Ans. 21). We disagree. 12
We find that Coleman discloses a system to assist advertisers in selling 13
goods and services by “delivering targeted commercial messages to potential 14
purchasers.” (Para. [0002]). Furthermore, at paragraph [0024], Coleman 15
confirms that “advertisers can selectively advertise to those potential 16
purchasers who fit certain profiles that indicate that the potential purchasers 17
may be interested in the specific good or service” (emphasis added). 18
The Examiner relies on paragraph [0053] for teaching that account 19
holders identify a security level of information to be provided. Coleman 20
discloses at paragraph [0053] that: “Aside from this required information 21
409, different levels of information 411, 413, 415, may be provided by the 22
potential purchaser, if desired.” As such Coleman allows a user to decide 23
what information the user desires to provide not the security level of the 24
information to be provided. 25
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We agree with Appellants that “the user in Coleman has no control over 1
the security level of the information because the system is affirmatively 2
stating the information with its associated invasiveness level that is required 3
to register with the system or sign up for a deal. Therefore, there would be 4
no reason for the system to prompt the user to enter a security level since the 5
system already tells the user what level of information is being requested” 6
(Reply Br. 2). For these reasons, we reverse the Examiner’s rejection of 7
claims 1-10, 36 and 38 under 35 U.S.C. § 103(a) as being unpatentable over 8
Coleman and Satomi. 9
Claim 35 10
While Appellants separately argue the rejection of claim 35, it depends 11
from claim 1. We reverse the rejection of claim 1 above and thus will not 12
sustain the rejection of claim 35 over the cited prior art. Cf. In re Fritch, 972 13
F. 2d 1260, 1266 (Fed. Cir. 1992) (“Dependent claims are nonobvious if the 14
independent claims from which they depend are nonobvious”). 15
Claim 37 16
The Examiner also rejected independent Claim 37 under 35 U.S.C. 17
§103(a) as being unpatentable over Coleman and Satomi. We found 18
Appellant’s’ argument persuasive as to error in the rejection of Claim 1. In 19
that claim 37 also is limited to ‘wherein the deposit system prompts the 20
account holder to identify a security level of the information’, we will not 21
sustain the rejection of claim 37. 22
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over 23
Coleman, Satomi and Patel. 24
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This rejection is directed to claim 11, which depends from claim 1. We 1
reverse the rejection of claim 1 above, and thus we will not sustain the 2
rejection of claim 11 over the cited prior art. Cf. In re Fritch, 972 F. 2d 3
1260, 1266 (Fed. Cir. 1992) (“Dependent claims are nonobvious if the 4
independent claims from which they depend are nonobvious”). 5
The rejection of claims 12-14, 32-34 and 39-44 under 35 U.S.C. 6
§ 103(a) as being unpatentable over Coleman and Satomi in view of Carroll 7
and Ginter. 8
Claims 12-14 and 32-34 9
Appellants argue claims 12-14 and 32-34 as a group (App. Br. 13). We 10
select claim 12 as the representative claim for this group and the remaining 11
claims stand or fall with claim 12. 37 C.F.R. § 41.37 (c) (1) (vii) (2011). 12
We are persuaded by Appellants’ arguments that the Examiner failed to 13
establish a prima facie showing of obviousness in rejecting claims 12-14 and 14
32-34 over the combination over Coleman and Satomi in view of Carroll and 15
Ginter. Appellants contend that “none of the identified references, including 16
Coleman, Satomi, Carroll and Ginter, discloses or suggests honoring a 17
contract that contains information identifying the account holder and a 18
second party and defines an agreement between the account holder and the 19
second party”, as recited by claim 12 (emphasis original) (App. Br. 18). 20
We find that Coleman discloses in paragraph [0049] a system proprietor 21
that may operate an electronic file 11 “controlling the flow of information 22
between potential purchasers and sellers of goods or services”. Coleman 23
further explains at paragraph [0049] that 24
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“Potential purchasers and sellers of goods or services may then 1
interact with the electronic file 11 to form deals or exchange 2
information. The system proprietor may ultimately control the flow 3
of information between potential purchasers and sellers, and the 4
system proprietor may have contractual arrangements with the 5
potential purchasers and/or sellers for purposes of maintaining the 6
privacy of information” (emphasis added). 7
To support the rejection, the Examiners relies on excerpts from Coleman 8
such as “profile information will be provided to advertisers only at the 9
request of a registered user [0059]” and “in [0089] ‘sellers may be 10
contractually bound to use the information only for a particular deal and to 11
destroy it afterward’, ‘exchange of payment from the potential purchaser to 12
the seller and delivery by the seller’" (Ans. 24-25). We find that such 13
excerpts from Coleman, when read in proper context, do not teach or suggest 14
an agreement between the account holder and the second party, but merely 15
further confirm that agreements described in paragraph [0049] of Coleman 16
are between the system proprietor and either the potential purchaser or the 17
potential seller. 18
Accordingly we reverse the Examiner’s rejection of claims 12-14 and 19
32-34 under 35 U.S.C. § 103(a) as being unpatentable over Coleman and 20
Satomi in view of Carroll and Ginter. 21
Claim 39-44 22
While Appellants separately argue the rejection of claims 39-44 over the 23
combination of Coleman and Satomi in view of Carroll and Ginter, claims 24
39-44 depend either directly or indirectly from claim 12. We reverse the 25
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rejection of claim 12 above, and thus we will not sustain the rejection of 1
claims 39-44 over the cited prior art. Cf. In re Fritch, 972 F. 2d 1260, 1266 2
(Fed. Cir. 1992) (“Dependent claims are nonobvious if the independent 3
claims from which they depend are nonobvious”). 4
DECISION 5
The decision of the Examiner to reject claims 1-10 and 35-38 over 6
Coleman in view of Satomi is reversed. 7
The decision of the Examiner to reject claim 11 over Coleman in view of 8
Satomi and Patel is reversed. 9
The decision of the Examiner to reject claims 12-14, 32-34 and 39-44 10
over Coleman and Satomi in view of Carroll and Ginter is reversed. 11
12
REVERSED 13
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mp 16