Ex Parte Koretz et al

Patent Trial and Appeal Board

Aug 22, 2018

11584640 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/584,640
11951 7590
LeClairRyan
70 Linden Oaks
Suite 210
FILING DATE
10/23/2006
08/24/2018
Rochester, NY 14625
FIRST NAMED INVENTOR
David A. Koretz
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.
29606.0130 5539
EXAMINER
LE,MICHAEL
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
08/24/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTOinboxroc@leclairryan.com
kelly.badum@leclairryan.com
phoebe.jones@leclairryan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. KORETZ, ROB CHAMBERLIN,
JAMES SIMPSON, and STEPHEN WONG
Appeal 2018-003117
Application 11/584,640 1
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1, 2, 4, 5, 7, 14, 15, 17, 18, 20, 57---60, and 62.
Appellants have canceled claims 3, 6, 8-13, 16, 19, 21-56, 61, and 63---67.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Adventive, Inc. App.
Br. 1.
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Application 11/584,640
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate to "to data storage
methods and processes, and more particularly, to a system and method for
storing user-specific information in a centralized database and intelligently
reducing data entry." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal ( emphases added to contested limitations):
1. A method for completing a transaction implemented by
one or more application provider apparatuses, the method
compnsmg:
receiving a list of one or more input fields required to
complete a transaction associated with a service from a service
provider system;
automatically comparing, without user input and prior to
receiving any user-specific information via the one or more
input fields, the list of one or more input fields required to
complete the transaction to an eXtensible Markup Language
(XML) master field list to identify one or more of the input
fields not previously included in the XML master field list as
associated with one or more other transactions;
updating, without user input, and prior to receiving any
user-specific information via the one or more input fields, the
XML master field list to include the one or more input fields
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
July 21, 2017); Examiner's Answer ("Ans.," mailed Nov. 3, 2017); Non-
Final Office Action ("Non-Final Act.," mailed Dec. 22, 2016); and the
original Specification ("Spec.," filed Oct. 23, 2006). We note Appellants did
not file a Reply Brief to respond to the Examiner's factual findings and legal
conclusions in the Answer.
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Application 11/584,640
identified as not previously included in the XML master field
list based on the comparing;
mapping, without user input, and prior to receiving any
user-specific information via the one or more input fields, the
one or more input fields of the list of input fields from the XML
master field list to the transaction;
receiving a request from the service provider system for
user-specific information, the request including a transaction
type;
querying the XML master field list and a centralized
database for first, second, and third items of the requested user-
specific information;
providing the service provider system with the first item
of user-specific information for a first input field, wherein the
first item is automatically retrieved from the centralized
database and populated in the first input field without receiving
any information regarding any input fields from the service
provider system subsequent to receiving the request;
receiving the second item of user-specific information via
a second input field, wherein the second item of the requested
user specific information is not contained in the centralized
database;
providing two or more options of user-specific
information stored in the centralized database as corresponding
to a third input field to a user computing device, receiving a
selection of one of the two or more options from the user
computing device, and providing the service provider system
with the selected one of the two or more options; and
storing the second item of user-specific information in
the centralized database as associated with the user and the
second input field.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Sidles
Hind et al. ("Hind")
US 2002/0062342 Al May 23, 2002
US 2003/0135507 Al July 17, 2003
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Application 11/584,640
Rejection on Appeal
Claims 1, 2, 4, 5, 7, 14, 15, 17, 18, 20, 57---60, and 62 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Sidles and Hind. Non-Final Act. 3.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 8-13), we decide the
appeal of the rejection of claims 1, 2, 4, 5, 14, 15, 17, 18, and 57---60 on the
basis of claim 1. We decide the appeal of separately argued dependent
claims 7, 20 and 62, on the basis of claim 7. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1, 7,
14, 20, 57, and 62 and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellants' arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 11/584,640
However, we highlight and address specific findings and arguments for
emphasis as follows.
1. § 103(a) Rejection of Claims 1, 2, 4, 5, 14, 15, 17, 18, and 57---60
Issue 1
Appellants argue (App. Br. 8-11) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Sidles
and Hind is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "automatically comparing, without user input and prior to
receiving any user-specific information via the one or more input fields, the
list of one or more input fields required to complete the transaction to an
eXtensible Markup Language (XML) master field list to identify one or
more of the input fields not previously included in the XML master field list
as associated with one or more other transactions," and "mapping, without
user input, and prior to receiving any user-specific information via the one or
more input fields, the one or more input fields of the list of input fields from
the XML master field list to the transaction," as recited in claim 1?
Analysis
Appellants contend:
Sidles does not disclose or suggest any comparison of
information fields for a transaction with the rules in the
dictionary database to identify information fields not previously
included in the dictionary database, let alone associated with
another transaction. While one form in Sidles may have an
information field added subsequent to a last periodic check,
Sidles makes no mention or suggestion of any comparison of
the added information field to the dictionary database to
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Application 11/584,640
determine whether the added information field may have
already been included in the dictionary database. Hind also does
not disclose or suggest the above identified claim limitations.
App. Br. 9.
The Examiner finds Sidles's dictionary database teaches "the master
field list" because Sidles's dictionary comprises rules and forms associations.
Ans. 5, citing Sidles, Fig. 10. We agree with the Examiner's finding because
each rule in Sidles's dictionary includes a name of an input field, its size, and
an identifier used to map user specific information to the field from Sidles's
wallet database. Ans. 5, Sidles ,r 62. The Examiner further finds Sidles's
form association associating the rules with particular forms teaches "one or
more input fields ... associated with transactions" as recited in claim 1.
Ans. 5.
The Examiner finds Sidles's preloading the dictionary database with
information derived from numerous forms on the Internet and periodically
checking for changes and updating it accordingly teaches or at least suggests
the disputed limitation "automatically comparing without user input ... the
list of one or more input fields required to complete the transaction ... to
identify one or more of the input fields not previously included in the XML
master field list as associated with one or more other transactions," as recited
in claim 1. Id. We agree with the Examiner's findings because Sidles's
comparing input fields with the dictionary database list of field names to
determine if the input field exists and adding new rules to the dictionary
database if not found teaches or at least suggests the disputed limitation.
Ans. 5---6, Sidles ,r,r 40, 79--80.
Appellants further argue Sidles does not teach or suggest "mapping
particular fields to any particular form or transaction." App. Br. 10.
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Appellants specifically argue Sidles's dictionary database "merely stores
rules and not any master field list." Id.
We are not persuaded by Appellants' arguments. Under the broadest
reasonable interpretation, 4 we agree with the Examiner's finding that Sidles's
adding a previously non-existent rule in the dictionary database and
associating this rule to an appropriate form teaches or at least suggests the
disputed "mapping" limitation. Ans. 7, Sidles, Fig. 10, ,r,r 40, 64, 80, 112.
We again note Appellants did not file a Reply Brief to respond to the
Examiner's additional findings, clarifications, and legal conclusions in the
Answer. Arguments not made are waived.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 4, 5, 14, 15, 17, 18, and 57---60, which fall therewith. See Claim
Grouping, supra.
4 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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2. § 103(a) Rejection of Claims 7, 20 and 62
Issue 2
Appellants contend the cited references do not teach or suggest
dependent claim 7's limitation "storing the master field list in the centralized
database" or the commensurate limitation in claims 20 and 62. App. Br. 11.
Appellants specifically argue the Examiner maps Sidles's wallet
database to the disputed "centralized database," and Sidles's dictionary
database to the "master field list." App. Br. 12. Appellants argue Sidles's
wallet and dictionary databases are separate systems, not within each other,
whereas the claimed limitations recite storing a master field in a centralized
database. App. Br. 12-13.
We agree with the Examiner's clarification that, under a broad but
reasonable interpretation, Sidles's database can be any database and does not
need to be a separate system. Ans. 8, Sidles ,r 66. The Examiner further
finds Rind's storing metadata in a central database also teaches or at least
suggests the disputed limitation "storing the master field list in the
centralized database" as recited in claim 7. Ans. 8-9, citing Hind ,r,r 22, 35,
49, 50, and 60.
Appellants, having not filed a Reply Brief, do not respond to the
Examiner's additional findings and clarifications in the Answer. Arguments
not made are waived.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 7, and grouped claims
20 and 62, which fall therewith.
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CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1, 2, 4, 5, 7, 14, 15, 17, 18, 20, 57---60, and 62 under 35 U.S.C.
§ 103(a) over the cited prior art combination of record, and we sustain the
rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, 7, 14,
15, 17, 18, 20, 57---60, and 62.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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