Ex Parte Lundberg

Patent Trial and Appeal Board

Oct 23, 2017

14010391 (P.T.A.B. Oct. 23, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/010,391 08/26/2013 Steven W. Lundberg 3431.002US5 8659
21186 7590 10/25/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG
Appeal 2017-004158
Application 14/010,391
Technology Center 3600
Before JOHN A. JEFFERY, JUSTIN BUSCH, and DANIEL N. FISHMAN,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s invention provides a patent monitoring tool. A user
identifies a patent for automated monitoring at a patent office, and selects
various monitors including “a no-assignment-filed monitor, an assignment-
Appeal 2017-004158
Application 14/010,391
changed monitor, and a patent-fee monitor.” See generally Abstract.
Claims 1 and 3 are illustrative:
1. A computer-implemented method comprising:
providing, via a website or other communication portal, a
patent monitoring tool including at least one interactive user
interface;
allowing a user to identify, via the interactive user
interface, a patent for automated monitoring at a patent office;
allowing a user to select, via the interactive user
interface, engagement of:
an automated patent-fee advisory monitor for the
identified patent, wherein the automated patent-fee
advisory monitor is automatically to check at the patent
office and report to the user if a patent fee is not paid,
and wherein the automated patent-fee advisory monitor is
to initiate a patent revival process in the event a patent
fee is not paid, and
an automated assignment advisory monitor for the
identified patent, wherein the automated assignment
advisory monitor is automatically to check at the patent
office and report to the user that no assignment is filed
against the patent at the patent office within a given time
frame, and wherein the automated assignment advisory
monitor is automatically to check at the patent office and
report to the user that an assignment change is recorded
against the patent at the patent office.
3. The computer-implemented method of claim 1, wherein
the automated assignment advisory monitor is further to
provide an ownership change metric that compares ownership
changes for a first set of patents in a class or subclass of the
identified patent to ownership changes for a second set of
patents in at least one other class or subclass.
2
Appeal 2017-004158
Application 14/010,391
RELATED APPEALS
Appellant did not identify any related appeals. See App. Br. 3.
However, there are at least thirty-one (31) related appeals, which are:
Anneal No. Annlication No.
2009-005709 10/128,141
2009-006404 10/874,486
2011-009966 11/061,383
2012-004166 11/061,312
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
2016-000319 13/309,080
2016-000912 13/309,060
2016-001687 11/888,632
2016-002121 13/309,200
2016-002680 13/310,279
2016-002792 12/605,030
2016-006797 13/310,368
2016-007186 13/573,803
2016-007415 13/464,598
2016-007623 13/408,877
2016-007787 13/310,322
2016-008030 13/253,936
2017-000280 13/408,917
2017-000386 11/098,761
2017-002337 14/010,376
Decided/Status
Decision mailed Mar. 23, 2010
Decision mailed Aug. 2, 2010
Decision mailed Jan. 31, 2014
Decision mailed Nov. 4, 2014
Decision mailed July 26, 2017
Decision mailed Sept. 23, 2016
Decision mailed June 1, 2016
Decision mailed May 27, 2016
Decision mailed Aug. 25, 2017
Decision mailed Jan. 19, 2017
Decision mailed Aug. 28, 2017
Decision mailed Aug. 30, 2017
Decision mailed Sept. 1, 2017
Decision mailed Aug. 30, 2017
Decision mailed July 28, 2017
Decision mailed July 31, 2017
Decision mailed Sept. 6, 2017
Decision mailed Sept. 20, 2017
Decision mailed Aug. 3, 2017
Decision mailed Sept. 12, 2017
Pending
Decision mailed Sept. 8, 2017
3
Appeal 2017-004158
Application 14/010,391
2017-003702 14/483,903 Decision mailed Sept. 25, 2017
2017-003815 14/094,542 Decision mailed Sept. 18, 2017
2017-004159 14/010,380 Decision mailed Sept. 27, 2017
2017-004188 14/010,400 Pending
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Decision mailed Sept. 27, 2017
2017-011247 13/253,811 Pending
2017-011549 14/608,520 Pending
2017-011552 14/628,941 Pending
THE REJECTIONS
The Examiner rejected claims 1—9 under 35U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2—3.1
The Examiner rejected claims 1—9 under 35 U.S.C. § 103(a) as
unpatentable over Grainger (US 2002/0091542 Al; July 11, 2002).
Final Act. 3—7.
THE § 101 REJECTION
The Examiner finds that the claims are directed to an abstract idea
because they merely involve administrative tasks associated with a patent,
namely tracking assignments and maintenance fee payments, which are said
to be methods of organizing human activity. Ans. 2—3. The Examiner adds
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 15, 2015 (“Final Act.”); (2) the Appeal Brief filed August 15,
2016 (“App. Br.”); (3) the Examiner’s Answer mailed November 9, 2016
(“Ans.”); and (4) the Reply Brief filed January 9, 2017 (“Reply Br.”).
4
Appeal 2017-004158
Application 14/010,391
that tracking patent maintenance fee due dates and reviving lapsed patents
are also fundamental economic activities and, therefore, constitute an
abstract idea. Ans. 3.
According to the Examiner, the recited use of a generic computer to
perform the recited steps does not add significantly more to the abstract idea.
Ans. 2—A. The Examiner further finds a computer is not necessary for
carrying out the invention, and in any event, the claims contain no more than
routine and generic computer components without any meaningful
limitations. Id. Given these findings, the Examiner concludes the claims are
ineligible under § 101. Final Act. 2—3; Ans. 2—5.
Appellant argues that the Examiner fails to meet the basic
requirements for establishing a prima facie case of subject matter
ineligibility under § 101. App. Br. 8—10; Reply Br. 2—A. According to
Appellant, the Examiner fails to establish that: (1) the claims are directed to
an abstract idea (App. Br. 8—9); and (2) the additional elements of the claims
do not amount to significantly more than an abstract idea (App. Br. 9-10;
Reply Br. 2—4). Appellant further contends the claims improve a user
interface of a patent monitoring tool by allowing a user to select engagement
of two patent monitors, and thus, the combination of elements as a whole
amounts to significantly more than an abstract idea. App. Br. 10.
ISSUES
I. Has the Examiner met the basic requirements for establishing a
prima facie case of subject matter ineligibility under § 101?
II. Has the Examiner erred in rejecting claim 1 as directed to
ineligible subject matter under § 101?
5
Appeal 2017-004158
Application 14/010,391
ANALYSIS
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 71—73 (2012), the Supreme Court established an analytical
framework under § 101 to distinguish patents that claim patent-ineligible
laws of nature, natural phenomena, and abstract ideas—or add too little to
such underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. To determine whether claims are
patent eligible under § 101, we apply the Supreme Court’s two-step test
articulated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014).
Prima Facie Case
Appellant’s contention that the Examiner has failed to make a prima
facie case of unpatentability is unavailing. See App. Br. 8—10; Reply Br.
2—A. Appellant’s argument effectively asks this panel to transform the (1)
July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015); and (2) Recent Subject Matter Eligibility Decisions,
Memorandum, (Nov. 2, 2016) into a requirement that the Examiner must
rely on case law precedent. See App. Br. 8, 10; Reply Br. 3, n. 7. We
decline to do so.
As the Federal Circuit has clarified,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
6
Appeal 2017-004158
Application 14/010,391
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Here, we find the Examiner’s rejection satisfies the initial burden of
production by identifying that the claims are directed to a fundamental
economic practice and a method of organizing human activity (step one of
the Alice analysis) and that the remainder of the claims do not include
significantly more than the abstract idea because the generically-recited
computer elements are well-understood, routine, and conventional, and
therefore do not add meaningful limitations to the abstract idea (step two of
the Alice analysis). See Final Act. 2—3; Ans. 2—5. Accordingly, the
Examiner has set forth the statutory basis for the rejection, namely 35 U.S.C.
§101, concluded that the claimed invention is directed to a judicial
exception to § 101, namely an abstract idea, and explained the rejection in
sufficient detail to permit Appellant to respond meaningfully. Thus, we find
that the Examiner set forth a prima facie case of ineligibility.
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). The ‘“directed to’
inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
7
Appeal 2017-004158
Application 14/010,391
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
According to the Specification, “for each patent that is allowed,
maintenance fees must be paid at a variety of intervals to keep the patent in
force.” Spec. 15. Appellant’s invention proposes a “patent guard tool”
{id., Title) “for protecting] ownership of a patent and keep a patent in force”
{id. 1170).
“An idea of itself is not patentable.” Diamond v. Diehr, 450 U.S. 175,
185 (1981) (citation omitted); see also Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (“[MJental processes, and abstract intellectual concepts are not
patentable.”). It is well settled that if a method can be performed by human
thought alone, or by a human using pen and paper, it is merely an abstract
idea and not patent-eligible under § 101. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
Appellant argues the claims rejected under § 101 as a group.
See App. Br. 8—10; Reply Br. 2-4. We, therefore, select independent claim
1 as the representative claim for this group, and claims 2—9 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Here, applying Alice step one, we
agree with the Examiner {see Ans. 4) that claim 1 as a whole, and in light of
the Specification discussed above, is directed to an abstract idea, namely
mental steps and a human using pen and paper. That is, a human can
mentally (or use pen and paper to do so) (1) identify a patent for monitoring
at a patent office; and (2) select engagement of various monitors for the
identified patent. Further, a human can orally request (or use pen and paper)
to inspect the patent’s file history at the United States Patent and Trademark
8
Appeal 2017-004158
Application 14/010,391
Office (USPTO)2 and (1) self-report if a patent fee is not paid; and (2) self­
initiate a patent revival process by petition under 37 C.F.R. § 1,3783.
Further, upon checking at the USPTO, the human can self-report that no
assignment is filed against the patent within a given time frame or that an
assignment change is recorded.4
That claim 1 adds a “computer-implemented method,” “at least one
interactive user interface,” and “a website or other communication portal”
does not change our conclusion. Mental processes remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. See CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk.”);
see also Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266,
1279 (Fed. Cir. 2012) (“Using a computer to accelerate an ineligible mental
process does not make that process patent-eligible.”).
Therefore, claim 1 is directed to an abstract idea under the first step of
the analysis.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
2 See MPEP § 104(IV); see also 37 C.F.R. §§ 1.11-1.14.
3 See MPEP § 2590.
4 See MPEP § 301.01; see also 37 C.F.R. §§ 1.12.
9
Appeal 2017-004158
Application 14/010,391
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 78). The Supreme Court describes the second step of this
analysis as “a search for an inventive concept—i.e., an element or
combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself.” Id. (brackets in original) (internal quotations omitted).
That claim 1 is directed to “[a] computer-implemented method” does
not change our conclusion. Despite this computer implementation, the
claimed invention does not improve the computer’s functionality or
efficiency, or otherwise change the way the computer functions. Cf. Enfish,
822 F.3d at 1335. Nor does specifically improving a user interface by
allowing a user to select engagement of two monitors via the user interface,
as argued by Appellant. See App. Br. 10. Rather, claim 1 recites nothing
more than using an intended generic computer to perform the method of
claim 1. But merely reciting an intended generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention. See Alice,
134 S. Ct. at 2358. In other words, merely reciting an abstract idea while
adding the words “apply it with a computer” does not render an abstract idea
non-abstract: there must be more. See id. at 2358.
Appellant nominally argues the Examiner fails to discuss the claims
as an ordered combination, as Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) suggests is
necessary for a proper analysis under step two of the Alice/Mayo test. Reply
Br. 2—3. Appellant further argues Bascom holds than an inventive concept is
found in an arrangement of elements known in the art, in general, and not
just for arrangements involving a filter action. Id. at 3. We disagree. First,
10
Appeal 2017-004158
Application 14/010,391
Bascom did not hold that merely having an arrangement of elements known
in the art was sufficient to satisfy the second step of Alice. Instead, Bascom
held that “an inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces.” Bascom, 827
F.3d at 1349—50. Second, the record here shows that the claimed
arrangement is entirely conventional. For the reasons discussed below,
claim 1 recites well-known and conventional business practices involving a
patent attorney providing competent representation of a patentee. Appellant
does not explain persuasively how the recited ordered combination of these
elements amounts to an inventive concept that converts an abstract idea into
patent-eligible subject matter.
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Accordingly, we are not persuaded the Examiner erred in rejecting claim 1,
and claims 2—9 not argued separately with particularity, as being directed to
ineligible subject matter under 35 U.S.C. § 101.
THE OBVIOUSNESS REJECTION
The Examiner finds that Grainger’s method for paying intellectual
property (IP) annuity and maintenance fees teaches every recited element of
claim 1, including, upon automatically checking a user’s identified patent at
a patent office, reporting to the user that (1) a patent fee is not paid; or (2)(a)
no assignment is filed against the patent within a given time frame or (b) an
assignment change is recorded. Final Act. 4—6. In particular, the Examiner
finds Grainger’s system interfaces with the USPTO’s Patent Application
11
Appeal 2017-004158
Application 14/010,391
Information Retrieval (PAIR) system. Ans. 6. According to the Examiner, a
person of ordinary skill in the art knows that (1) maintenance fees must be
paid at regular intervals for the duration of a patent until its expiration; and
(2) the patent may be revived by paying fees and filing the necessary forms.
Id. at 5—6. Further, according to the Examiner, it would have been obvious
for a person of ordinary skill in the art to obtain assignment change
information from the PAIR system. Id. at 6.
Appellant asserts Grainger’s storage structures may include
assignment papers, but argues the Examiner’s attempt to use common
knowledge to demonstrate the missing elements of the claim is ineffective.
App. Br. 13—14. Appellant further argues the Examiner failed to articulate
why knowing how to initiate revival of an expired patent suggests initiating
revival of the expired patent. Id. at 15. Appellant further argues the
Examiner provides no reasoned rationale explaining how and why a person
of ordinary skill in the art would modify Grainger, and thus, fails to provide
adequate support to establish a prima facie case of obviousness for claim 1.
Id. at 16.
ISSUES
I. Under § 103, has the Examiner erred by finding that Grainger would
have taught or suggested:
(1) upon automatically checking a user’s identified patent at a patent
office, (a) reporting to the user a patent fee is not paid and initiating a patent
revival process, (b) reporting to the user no assignment is filed against the
patent within a given time frame, and (c) reporting to the userr an
assignment change is recorded, as recited in claim 1; and
12
Appeal 2017-004158
Application 14/010,391
(2) providing an ownership change metric that compares ownership
changes for a first set of patents to a second set of patents, as recited in claim
3?
II. Is the Examiner’s proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion?
ANALYSIS
Claims 1, 2, 4, 5, 7, and 8
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, we begin by
construing the phrase “allowing a user to select. . . engagement of: an
automated patent-fee advisory monitor . . . and an automated assignment
advisory monitor,” as recited in claim 1. App. Br. 20 (Claims App’x)
(emphasis added). The term “allow” is defined as “[t]o let do or happen;
permit.” The American Heritage Dictionary of the English Language
50 (3rd ed. 1992). In light of this plain meaning, the claim, therefore,
requires the capability to permit the user to select engagement of the two
separate monitors regardless of whether the user actually performs this
selection.
On this record, we see no error in the Examiner’s obviousness
rejection of claim 1 as being unpatentable over Grainger. Grainger generally
relates to managing intellectual property (IP). Grainger 14. Grainger’s
database stores information including “assignment papers and other forms
and papers filed in or generated by a patent office, etc.” Id. 126. Grainger’s
13
Appeal 2017-004158
Application 14/010,391
electronic mailroom communicates with patent offices and enters the
information into the database. Id. 127. Grainger’s electronic mailroom
tracks and updates the information for patent applications by interfacing
with the USPTO’s PAIR system. Id. 128.
It is well settled that a person of ordinary creativity is a “hypothetical
person who is presumed to know the relevant prior art.” In re GPAC,
57 F.3d 1573, 1579 (Fed. Cir. 1995). “Factors that maybe considered in
determining level of ordinary skill in the art include: ... (2) type of
problems encountered in the art; (3) [and] prior art solutions to those
problems.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed.
Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc.,
707 F.3d 1376, 1381—82 (Fed. Cir. 1983)). Appellant does not persuasively
rebut the Examiner’s specific findings that a person of ordinary skill in the
art, at the time the invention was made, “is a patent attorney or agent or even
a clerk at a law firm tasked with filing documents with [the] government.”
Ans. 7. We agree with the Examiner’s findings and adopt them as our own.
A claim can be obvious even where all of the claimed features
are not found in specific prior art references, where “there is a
showing of a suggestion or motivation to modify the teachings
of [the prior art] to the claimed invention.” SIBIA Neurosciences,
Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir.
2000) (concluding that patent would have been obvious in light
of teachings in prior art which provided motivation and
suggestion to modify existing techniques to arrive at method in
question).
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307 (Fed. Cir. 2006).
The Examiner finds that a patent attorney’s daily job includes regularly
tracking a client’s patent application information using the USPTO’s PAIR
14
Appeal 2017-004158
Application 14/010,391
system. Ans. 7. The Examiner further finds that because Grainger’s system
interfaces with the PAIR system, it would have been obvious for one of
ordinary skill in the art (i.e., a patent attorney) to periodically query
Grainger’s database for assignee and maintenance fee information to report
to a client any changes to the client’s patent as claimed. Ans. 6—7.
We agree. “A practitioner shall provide competent representation to a
client. Competent representation requires the legal, scientific, and technical
knowledge, skill, thoroughness and preparation reasonably necessary for the
representation.” 37 C.F.R. § 11.101. A patent attorney providing competent
representation to a client knows that “[i]t is the responsibility of the patentee
to ensure that the maintenance fees are paid to prevent expiration of the
patent.” MPEP § 2575. To this end, the patent attorney providing
competent representation to a client regularly checks the PAIR system and,
if a patent fee is not paid, (1) reports to a client, and (2) initiates a patent
revival process by petitioning under 37 C.F.R. § 1.378 to reinstate the patent
due to delayed payment of the patent’s maintenance fee. See MPEP § 2590.
Similarly, the patent attorney providing competent representation regularly
checks the PAIR system and reports to a client that (1) no assignment is filed
against the patent within a given time; and (2) an assignment change is
recorded against the patent at the USPTO.
Appellant does not rebut the Examiner’s proffered rationale, which
takes into account the level of ordinary skill in the art (i.e., a patent attorney
as discussed above), the inferences the ordinarily skilled artisan would be
expected to draw when reading Grainger, and common sense. The Examiner
has rightly taken into account such inferences and knowledge within the art
in the determination of obviousness. See KSR Int’l Co. v. Teleflex, Inc.,
15
Appeal 2017-004158
Application 14/010,391
550 U.S. 398, 418 (2007). Thus, we find unavailing Appellant’s contention
the Examiner provides no reasoned rationale explaining how and why a
person of ordinary skill in the art would modify Grainger. See App. Br. 16.
Therefore, on this record, we find that the Examiner’s proposed modification
is supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
Accordingly, for the reasons discussed above, Appellant’s contention
that the Examiner failed to make a prima facie case of obviousness under
§ 103 is unavailing. See App. Br. 11—16. The Examiner satisfies 35 U.S.C.
§ 132 by setting forth (1) the statutory basis of the rejection (i.e., 35 U.S.C.
§ 103) of claim 1; and (2) the references relied upon (i.e., Grainger) in a
sufficiently articulate and informative manner as to meet the notice
requirement of 35 U.S.C. § 132. See In re Jung, 637 F.3d at 1362. By
satisfying the requisite burden of production to justify the rejection of
claim 1 under § 132, the Examiner established a prima facie case.
Therefore, we are not persuaded of error in the Examiner’s rejection
of claim 1, and claims 2, 4, 5, 7, and 8 not argued separately with
particularity.
Claims 3, 6, and 9
We do not sustain the Examiner’s rejection of claim 3, which recites
providing an ownership change metric that compares ownership changes for
a first set of patents in a class or subclass of the identified patent to
16
Appeal 2017-004158
Application 14/010,391
ownership changes for a second set of patents in at least one other class or
subclass.
In the Final Rejection, the Examiner finds Grainger discloses the
recited ownership change metric that compares ownership changes for the
first and second set of patents. Final Act. 7 (citing Grainger || 26, 39, 50).
Appellant asserts Grainger’s storage structures include assignment papers,
but argues Grainger lacks the recited elements of claim 3. App. Br. 17. In
response, the Examiner finds that “since every patent is classified based on
the art it describes, therefore, comparing ownership across classes is no
different from obtaining ownership of patents in each class from the patent
database.” Ans. 8.
“Every nonprovisional application . . . must be classified” by the
USPTO. MPEP § 903.08(b). Grainger tracks and updates status
information for a selected patent application using the USPTO’s PAIR
system, including the selected patent application’s class and subclass.
Grainger 128. Grainger further displays a web page including information
for the selected patent application. Id. 144. Because Grainger displays
information for the selected patent application, in that sense, then, Grainger
at least suggests displaying multiple web pages, each web page including a
separate selected patent application’s classification for comparison.
However, the Examiner has not shown that an ownership change metric
compares ownership changes for each web page including a patent
application’s classification.
Therefore, we are persuaded that the Examiner erred in rejecting
(1) claim 3; and (2) claims 6 and 9 which recite commensurate limitations.
17
Appeal 2017-004158
Application 14/010,391
CONCLUSION
The Examiner did not err in rejecting claims 1—9 under § 101.
The Examiner did not err in rejecting claims 1, 2, 4, 5, 7, and 8 under
§103, but erred in rejecting claims 3, 6, and 9 under § 103.
DECISION
The Examiner’s decision in rejecting claims 1—9 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
18