Ex Parte Lang

Patent Trial and Appeal Board

Sep 30, 2016

13033598 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/033,598
98804 7590
Reed Smith LLP
P.O. Box488
Pittsburgh, PA 15230
02/23/2011
10/04/2016
FIRST NAMED INVENTOR
Joanne Lang
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.
11-036-US 9211
EXAMINER
GLASSER, DARA J
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
ptoipinbox@reedsmith.com
mskaufman@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOANNE LANG
Appeal2015-001439
Application 13/033,598
Technology Center 2100
Before JAMES R. HUGHES, MONICA S. ULLAGADDI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 21--44. Claims 1-20 have been
canceled. (See App. Br. 2; Final Act. 1-2.)1 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 We refer to Appellant's Specification ("Spec.") filed Feb. 23, 2011
(claiming benefit of US 61/307,143, filed Feb. 23, 2010); Appeal Brief
("App. Br.") filed July 24, 2014; and Reply Brief ("Reply Br.") filed Nov.
11, 2014. We also refer to the Examiner's Answer ("Ans.") mailed Sept. 11,
2014, and Final Office Action (Final Rejection) ("Final Act.") mailed Dec.
5, 2013.
Appeal2015-001439
Application 13/033,598
Appellant's Invention
The invention at issue on appeal concerns apparatuses, computer
readable media, and methods for managing personal information on a
computing device by collecting personal information associated with a
family, detecting a status and a characteristic of a specific family member
based on the personal information, applying one or more predefined rules to
the detected status and characteristic of the specific family member to
determine a potential goal of the specific family member, as well as a new
category of personal information (different from previously collected
information) where the new category includes information that assists the
specific family member to achieve the goal. (Spec. i-fi-12, 19, 20, 28, and 38-
40; Abstract.)
Illustrative Claim
Independent claim 21, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
21. A method, implemented by one or more computing
devices, for managing personal information, the method
compnsmg:
at least one of the one or more computing devices
receiving personal information associated with a subscriber
family, the personal information being in at least one category;
at least one of the one or more computing devices causing
the personal information to be stored in a database in association
with an account of the subscriber family;
at least one of the one or more computing devices
detecting a status and a characteristic of a specific family
member based on the personal information;
at least one of the one or more computing devices applying
at least one predefined rule to the status and characteristic of the
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Application 13/033,598
spec?fic family member to determine a potential goal of the
specific family member and to determine a new category of
personal in.formation, the new category being different from the
at least one category and including in.formation for helping the
specific family member achieve the goal;
at least one of the one or more computing devices
presenting a suggestion to begin collection of the new category
of personal information and a suggestion of specific information
to be collected within the new category of personal information;
at least one of the one or more computing devices
receiving a request indicating a desire to collect the new category
of personal information; and
in response to the request, at least one of the one or more
computing devices receiving the specific information within the
new category of personal information.
Rejections on Appeal 2
1. The Examiner rejects claims 21-24, 26-32, 34--40, and 42--44
under 35 U.S.C. § 103(a) as being unpatentable over Royall, Jr. et al. (US
2003/0200112 Al; published Oct. 23, 2003) ("Royall") and Huff et al. (US
2008/0005168 A 1; published Jan. 3, 2008) ("Huff').
2. The Examiner rejects claims 25, 33, and 41 under 35 U.S.C.
§ 103(a) as being unpatentable over Royall, Huff, and Fallon (US
2002/0111946 Al; published Aug. 15, 2002) ("Fallon").
ISSUE
Based upon our review of the administrative record, Appellant's
contentions, and the Examiner's findings and conclusions, the dispositive
2 The Examiner has withdrawn the rejection of claims 21 and 3 6 under 3 5
U.S.C. § 112 (see Final Act. 2-3). Ans. 2. Accordingly, we do not address
Appellant's comments concerning the§ 112 rejections. App. Br, 2.
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Appeal2015-001439
Application 13/033,598
issue before us follows:
Does the Examiner err in concluding that the combination of Royall
and Huff would have collectively taught or suggested:
receiving personal information associated with a subscriber
family, the personal information being in at least one category;
detecting a status and a characteristic of a specific family
member based on the personal information; [and]
applying at least one predefined rule to the status and
characteristic of the specific family member to determine a
potential goal of the specific family member and to determine a
new category of personal information, the new category being
different from the at least one category and including information
for helping the specific family member achieve the goal
within the meaning of Appellant's claim 21 and the commensurate
limitations of claims 29 and 37?
ANALYSIS
Appellant contends that Royall and Huff do not teach the disputed
features of independent claim 21. App. Br. 4--11; Reply Br. 1-3.
Specifically, Appellant contends that claim 21 requires "utiliz[ing] basic
personal information (such as a birth date) to determine a potential goal
(apply to college), as well as new categories of personal information for
helping achieve the goal (awards earned, school activities participated in,
volunteer efforts, etc.)" (App. Br. 8), and Royall does not describe applying
rules to determine a potential (new) goal. See App. Br. 4--11; Reply Br. 1-3.
Rather, Royall "receives a clear indication from prospective students of their
stated goal to attend a particular college" (App. Br. 10) and with that
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Appeal2015-001439
Application 13/033,598
existing goal and information determines the veracity of the potential
applicant- "[t]he Examiner has confused an assessment of a candidate's
candor with the determination of a potential goal" (Reply Br. 3).
Appellant persuades us of error in the obviousness rejection of claim
21. Appellant's claim 21 requires evaluating family information to detect
status and characteristic information regarding a particular individual. The
status and characteristic information is then utilized to determine a new
potential goal of the individual and a new category of personal information
to be collected in furtherance of the new potential goal.
The Examiner asserts that Royall describes the features of
determining a goal and determining a new category of information (see Final
Act. 4---6; Ans. 3---6 (citing Royall i-fi-15, 6, 7, 12, 35, and 40)). The portions
of Royall cited by the Examiner, however, do not discuss determining a new
goal of an individual (applicant) as recited in Appellant's claim 21. At best,
Royall describes evaluating the veracity of an applicant's existing goal.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Royall and Huff teach the disputed limitations
of Appellant's claim 21. Independent claims 29 and 3 7 include limitations
of commensurate scope. Claims 22-24, 26-28, 30-32, 34--36, 38--40, and
42--44 depend on claims 21, 29, and 37, respectively. Accordingly, we
reverse the Examiner's obviousness rejections of claims 21-24, 26-32, 34--
40, and 42--44 over Royall and Huff.
The§ 103 Rejections of Claims 25, 33, and 41
With respect to the obviousness rejections of dependent claims 25, 33,
and 41, rejected as obvious over Royall and Huff as well as Fallon, we
reverse the Examiner's obviousness rejection for the same reasons set forth
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Appeal2015-001439
Application 13/033,598
with respect to claim 21 (supra). The Examiner improperly cites Royall as
teaching "applying at least one predefined rule to the status and
characteristic of the specific family member to determine a potential goal of
the specific family member" (claim 21). (See Final Act. 16-17.)
Accordingly, we reverse the Examiner's obviousness rejections of claims 25,
33, and 41.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 21-
44 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 21--44.
REVERSED
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