Ex Parte Holt

Patent Trial and Appeal Board

Sep 19, 2016

13153572 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/153,572 06/06/2011
24256 7590 09/19/2016
DINSMORE & SHOHL LLP
255 East Fifth Street, Suite 1900
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Christopher L. Holt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
31547-361ILEN008112 9337
EXAMINER
ALLEN,BRITTANYN
ART UNIT PAPER NUMBER
2169
MAILDATE DELIVERY MODE
09/19/2016 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 CHRISTOPHER L. HOLT
Appeal2015-006895
Application 13/153,572
Technology Center 2100
Before ERIC B. CHEN, JEREMY J. CURCURI, and
GREGG I. ANDERSON, Administrative Patent Judges.
ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... , .. 1 .. ,....,-TTr'1.r-"\ l\-1,....Al/'\.r'" , .. T"""1 • -, Appeuams appear unaer j) u.~.L. s U4~aJ rrom tne bxammer s
rejection of claims 1-12.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellants appeal under rule 37 C.F.R. §41.31, based on the Examiner re-
opening prosecution with a Non-Final Office Action filed April 22, 2014,
which action is final for purposes of appeal ("Final Act.," mailed
April 22, 2014). Further, in this Opinion, we refer to the Appeal Brief
("App. Br.," filed January 22, 2015), the Reply Brief ("Reply Br.," filed July
13, 2015), the Examiner's Answer ("Ans.," mailed May 13, 2015), and the
Specification ("Spec.," filed June 6, 2011, and amended October 19, 2011).
2 The Final Action rejected claims 1-12. Final Act. 1. The Appeal Brief
references appeal of claims 1-12 but argues only claims 1-5. See App.
Br. 4, 16.
Appeal2015-006895
Application 13/153,572
l. STATEMENT OF THE CASE
A. The Invention
Appellants' invention relates to a "patent Examiner information
accessing system [that] is disclosed for accessing patent Examiner
information from a Patent and Trademark Office, or other, database." Spec.
,-r 8. "A search system is provided so that a user can search information
aggregated by the Examiner information accessing system." Id.
Independent claim 1, reproduced below, is illustrative:
1. A computer-implemented method, performed by a
computer with a computer processor, the method comprising:
receiving a patent examiner name, identifying a single
named patent examiner that makes patentability decisions, input
through a user interface display generated by the computer
processor;
searching, with the computer processor, a patent
examiner data store for examiner statistics indicative of
decision timing and decision outcome of the patentability
decisions, and calculated from decision events in a plurality of
different patent applications worked on by the single named
patent examiner; and
automatically displaying the examiner statistics to show
decision outcome tendencies and decision timing tendencies,
using the computer processor, for the single named patent
examiner in making the patentability decisions.
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Application 13/153,572
B. The Rejections3
Claims 1 and 8 are rejected under 35 U.S.C. § 103(a)4 as being
unpatentable over Jacobs (US 7,756,738; issued Jul. 13, 2010). Final Act. 3.
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jacobs and further in view of Parker et al.
(US 2004/0059628; published Mar. 25, 2004). Id.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Jacobs, Parker and Carr et al. (US 2007 /0050238; published
Mar. 1, 2007). Id.
Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Jacobs, Parker, and Lulis (US 2004/0012588; published Jan. 22, 2004).
Id.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jacobs and McCartney et al. (US 2002/0178276;
published Nov. 28, 2002). Id.
Claims 9-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jacobs and Grainger (US 2002/0093528; published
Jul. 18, 2002).
3 Claim 8 is objected to for lacking antecedent basis for "the statistics" but is
interpreted by the Examiner as "the examiner statistics." Final Act. 4.
Claim 1 is "provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 21 of
copending Application No. 11/891,101." Id.
4 The application was filed prior to the effective date of the Leahy-Smith
America Invents Act, March 16, 2013. Pub. L. No. 112-29, 125 Stat. 284,
296--07 (2011). Accordingly, pre-AIA § 103(a) governs patentability.
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Appeal2015-006895
Application 13/153,572
C. Issues
Only those arguments actually made by Appellants in the Briefs have
been considered in this Decision. Arguments that Appellants did not make
in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv)(2012).
Appellant's arguments present the following issue:
Whether or not Jacobs teaches or suggests "patent examiner data store
for examiner statistics indicative of decision timing and decision outcome of
the patentability decisions, and calculated from decision events in a plurality
of different patent applications worked on by the single named patent
examiner [the "decision limitation"]," as recited in claim 1. App. Br. 9-10.
II. ANALYSIS
The Examiner finds that the determining limitation is taught by
Jacobs' disclosure of rating an employee or patent examiner based on the
time they are supposed to work and activities performed, searching a
database to find projects specified by employee, and a monthly report
including points. Final Act. 6-7 (citing Jacobs, 11:20-40, 9:45--49, 10:1-
20). Appellant contests the finding that the decision limitation is disclosed
by Jacobs. App. Br. 9-10.
In the Answer, the Examiner asserts that Jacobs teaches a database for
storing several tables from which tables a monthly report of point totals is
generated. Ans. 3 (citing Jacobs, 6:27-34). The Examiner contends the
report provides an overview of the performance of all employees for the
month. Id. (citing Jacobs, 11 :20-22). The Examiner finds that the points
awarded are used to determine bonuses and to evaluate performance. Id.
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Appeal2015-006895
Application 13/153,572
(citing Jacobs, 11 :24--27). Thus, "the scores for each employee indicative of
decision timing and decision outcome." Id. at 3--4 (citing Jacobs 9:52---64).
In its Reply, Appellant argues the cited portions of Jacobs "merely
teach a project based point system in which reports showing the number of
points accumulated by each employee are generated." Reply Br. 4.
Appellant contends the report breaks down points into: (1) points earned by
the employee; (2) a minimum number of points required; and (3) the
difference between (1) and (2). Id. at 4--5. Appellant argues "[t]he total
points accumulated by employees in a given time period are clearly not
indicative of decision timing and decision outcome of the patentability
decisions, as would be required to satisfy the limitations of claim 1." Id. at
5.
We agree with Appellant that the point totals are not "indicative" of
"decision timing and decision outcome." The point totals of Jacobs are
arguably indicative of a "decision outcome," i.e., the "decision" evaluating
an employee's performance. That is not the "patentability decision" claim 1
requires. The Examiner has not shown that the claimed "patentability
decision" is broad enough in scope to include a decision on performance of
the claimed "patent examiner."
Even assuming Jacobs discloses the "decision outcome," there is no
suggestion in Jacobs that the "decision timing" is related to the generated
report or the point totals. The mere fact that the reports are generated on
some schedule, i.e., monthly, does not provide any "indication" as to when
the "decision" will occur. Further, there is nothing in the data collected by
Jacobs that shows or suggests the timing of any decision based on that data
generated in the report. This is in contrast to claim 1 which recites that the
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Appeal2015-006895
Application 13/153,572
"patent examiner data store" includes "statistics indicative of decision
timing."
We do not sustain the rejection of claim 1. Furthermore, we do not
sustain the rejection of dependent claims 2-11 under 35 U.S.C. § 103(a)
because all of the dependent claims depend directly or indirectly from
claim 1.
We need not decide the provisional double patenting rejection because
the copending Application No. 11/891,101 has not yet been patented.
III. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jacobs.
We restate the Examiner's grounds for finding Jacobs discloses the
first step of claim 1. The first step of claim 1 recites:
receiving a patent examiner name, identifying a single named
patent examiner that makes patentability decisions, input
through a user interface display generated by the computer
processor.
The Examiner found the first step was disclosed by Jacobs. Final Act. 6.
Specifically, the Examiner found "users may perform searches, for example,
by finding all projects performed by a specified employee." Final Act. 6
(citing Jacobs 9:45--49).
As discussed above, the second step of claim 1 is:
patent examiner data store for examiner statistics indicative of
decision timing and decision outcome of the patentability
decisions, and calculated from decision events in a plurality of
different patent applications worked on by the single named
patent examiner.
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Appeal2015-006895
Application 13/153,572
The third step of claim 1 recites:
automatically displaying the examiner statistics to show
decision outcome tendencies and decision timing tendencies,
using the computer processor, for the single named patent
examiner in making the patentability decisions.
The recited "decision timing" and "decision outcome" of the second
and third method steps is descriptive of what is contained in the "data store"
and "automatically display[ed]" respectively. Both steps would be
performed regardless of what is stored or displayed. Thus, this descriptive
material will not distinguish the claimed invention from the prior art in terms
ofpatentability. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); In
re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); see also Ex parte Nehls,
88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing non-
functional descriptive material).
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
independent claim 1 as unpatentable over Jacobs under 35 U.S.C. § 103(a).
Because the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination, we have not reviewed dependent
claims 2-12 and to the extent necessary to determine whether Jacobs, alone
or in combination with Parker, Carr, Lulis, McCartney, or Grainger renders
any of these claims obvious. We leave it to the Examiner to determine the
appropriateness of any further rejections of dependent claims 2-12 under 35
U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
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Appeal2015-006895
Application 13/153,572
37 C.F.R. § 41.50(b) provides that a "new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
III. DECISION
The Examiner's decision rejecting claims 1-12 is reversed.
A new ground of rejection has been entered under 37 C.F.R.
§ 41.50(b) for claim 1 as rejected under 35 U.S.C. § 103(a) as unpatentable
over Jacobs.
REVERSED
37 C.F.R. § 41.50(b)
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