Ex Parte Hickey et al

Patent Trial and Appeal Board

Apr 28, 2014

10003471 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW W. HICKEY,
JAMES H. WOLFSTON, and
RAYMOND L. PRICE
__________

Appeal 2014-003646
Application 10/003,471
Technology Center 3600
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/003,471
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STATEMENT OF THE CASE
Matthew W. Hickey, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 19-40. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 19, reproduced below, is illustrative of the subject matter on
appeal.
19. A method of attracting visitors to a college-related web site,
comprising:
executing web server software on a server to provide a form on
the web site for display on a client computer for use in nominating a
college student or prospective college student for potential receipt of a
scholarship;
receiving by the server the completed form nominating a
college student or prospective college;
executing web server software on a server to provide a form on
the web site for display on a client computer through which a nominee

1 Our decision will make reference to the Appellants’ Appeal Brief
(“App. Br.,” filed Oct. 29, 2013) and Reply Brief (“Reply Br.,” filed Jan. 15,
2014), and the Examiner’s Answer (“Answer,” mailed Nov. 15, 2013).

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or a member of the general public can cast a vote for one or more
nominees;
receiving by the server the completed form casting the vote for
the one or more nominees;
at the end of a given period, determining from the vote cast a
scholarship winner or scholarship winners from among the nominees
according to the number of votes cast by the general public for those
winners; and
posting an announcement of the winner on the web site.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Ireland

US 7,062,462 B1 Jun. 13, 2006
The following rejection is before us for review:
1. Claims 19-40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ireland.

ISSUE
Whether, in the light of all the evidence, claims 19-40 would have
been obvious under 35 U.S.C. § 103(a) over Ireland?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

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ANALYSIS
After careful review of the record, we reverse the rejection because,
under the present circumstances, the position put forward by the Examiner is
insufficient to support a legal conclusion of obviousness.
The Examiner never fully addresses the Appellants’ Declaration of
Lloyd Thacker filed under 37 C.F.R. § 1.132 on May 2, 2012. On this
matter, we agree with the Appellants. See Reply Br. 2-3.
Nowhere in the Final Rejection or Answer is the Declaration fully
addressed. It would appear therefore that the Examiner has dismissed the
Declaration as evidence that can be persuasive of nonobviousness. But since
we are dealing with a rejection under 35 U.S.C. § 103, dismissing the
Declaration is not appropriate. See MPEP § 716.01 (a) (“Affidavits or
declarations, when timely presented, containing evidence of criticality or
unexpected results, commercial success, long-felt but unsolved needs, failure
of others, skepticism of experts, etc., must be considered by the examiner in
determining the issue of obviousness of claims for patentability under 35
U.S.C. 103.”)
As the court stated in Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1549 (Fed. Cir. 1983):
It is inappropriate and injudicious to disregard any admissible
evidence in any judicial proceeding. Hence all relevant
evidence on the obviousness issue must be considered before a
conclusion is reached. Stratoflex, Inc. v. Aeroquip Corp., 713
F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983).
Evidence under 37 C.F.R. § 1.132 must be considered and, as mandated by
the court in In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) and In re
Rinehart, 531 F.2d 1048, 1052 (CCPA 1976), the prima facie case must be
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considered anew in view of this evidence. After clarifying the prima facie
case, the examiner should have reweighed the entire merits of the prima
facie case in light of the Declaration. See In re Hedges, 783 F.2d 1038, 1039
(Fed. Cir. 1986). Since that was not done, we are compelled to reverse the
rejection.

DECISION
The decision of the Examiner to reject claims 19-40 is reversed.

REVERSED

mls