Ex Parte Lundberg et al

Patent Trial and Appeal Board

Feb 9, 2016

11401155 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111401, 155 04/10/2006 Steven W. Lundberg
68242 7590 02/11/2016
FIALA & WEA VER P.L.L.C.
C/O CPA GLOBAL
P.O. BOX 52050
MINNEAPOLIS, MN 55402
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.
1551.032US 1 4377
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/11/2016 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):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG, PRADEEP SINHA, and
ANDREW WILLIAM BERGSTROM
Appeal2013-007834 1
Application 11/401,1552
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMAN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 4--9, 11-15, and 17-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Nov. 26,
2012), and the Examiner's Answer ("Ans.," mailed Mar. 4, 2013).
2 Appellants identify FoundationIP, LLC, which is indirectly owned and
controlled by CPA Global Limited, as the real party in interest. Br. 2.
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CLAIMED fNVENTION
Appellants' claimed invention relates to "the processing and payment
of annuities[,] including annuities on patents." Spec. i-f 3.
Claims 1 and 15, reproduced below with added bracketed notations,
are representative of the subject matter on appeal:
1. A method comprising:
[(a)] receiving, on a client computer, notification of an
annuity payment due;
[ (b)] initiating a payment cycle on the client computer;
[ ( c)] extracting, by a processor, annuity data from an
internet-based patent- and trademark-application management
system;
[(c)] transmitting, by the processor, the extracted annuity
data to a server computer;
[(d)] verifying, by the processor, the extracted annuity
data against annuity data contained on the server computer;
[(e)] resolving, by the processor, a discrepancy between
the extracted annuity data and the annuity data contained on the
server computer;
[(±)]uploading a PDL to the client computer; and
[ (g)] sending extracted data and payment instructions to a
server computer.
15. A system comprising:
[(a)] a first computer configured to receive instructions
from [a] second computer, wherein the instructions are inputted
via a GUI;
[ (b)] a first software module operatively coupled to an
internet-based patent- and trademark-application management
system wherein the first software module extracts data from the
internet-based patent- and trademark-application management
system residing on the first computer;
[ ( c)] a second software module operatively coupled to the
internet-based patent- and trademark-application management
system that transmits the extracted data via an internet;
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[(d)] a third software module operatively coupled to the
internet-based patent- and trademark-application management
system that allows for uploading of a PDL;
[ ( e)] a fourth software module operatively coupled to the
internet-based patent- and trademark-application management
system that transmits the extracted data and payment instruction
data; and
[(f)] a fifth software module operatively coupled to the
internet-based patent- and trademark-application management
system that resolves data discrepancies.
REJECTIONS 3
Claims 1, 2, 4--9, 11-15, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Grainger (US 2002/0091542 Al, pub. July 11,
2002) and Throndson (US 2005/0038722 Al, pub. Feb. 17, 2005).
ANALYSIS
Independent claim 1 and dependent claims 2 and 4-7
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because the combination of
Grainger and Throndson does not disclose or suggest limitations ( d) and ( e ),
as recited in claim 1. Br. 13-18.
In rejecting claim 1, the Examiner concedes that Grainger does not
disclose limitations ( d) and ( e ), as recited in claim 1. Ans. 5. But the
Examiner relies on Throndson at paragraph 31 to cure the deficiency. Id. at
6.
3 The Examiner has withdrawn the rejection of claims 1, 2, and 4--7 under
35 U.S.C. § 103(a). Ans. 8.
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Throndson relates to tax return preparation and filing. Throndson, il 2.
A data verification module checks tax information that is input and/ or
downloaded into Throndson's data processing system. Id. i-f 23. The data
verification module determines if any of the information provided is
irrelevant and may notify the taxpayer that such information will be
discarded or ignored. Id. i-f 31. The data verification module may display
tax information to the user in an organized format to allow the taxpayer to
confirm and/or correct the information that has been provided. Id. i-f 31.
Although Throndson's data verification module determines whether
tax information input by the user is accurate, consistent, and complete, we
agree with Appellants (Br. 16-17) that it does not disclose or suggest
limitations ( d) and ( e ), as recited in claim 1. In the responsive remarks, the
Examiner further explains that "ensuring that the information is accurate,
consistent and not missing essential data [, as described by Throndson,] at
least suggests to [Jone of ordinary skill in the art that data is [sic] checked
against some internal control mechanisms, e.g., a template or algorithm
stored on a server." Ans. 10. But we fail to see, and the Examiner does not
explain, how receiving tax information input by a user and prompting the
user to verify that the information is complete, consistent, and accurate (e.g.,
via algorithmic rules), as disclosed by Throndson, discloses or suggests
verifying one set of annuity data (i.e., extracted data) against another set of
annuity data (i.e., data on the server) and resolving a discrepancy between
these two annuity data sets, as recited in claim 1. As such, the Examiner has
failed to provide the necessary factual basis to support an obviousness
determination, and, thus, failed to establish a prima facie case of
unpatentability.
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The Examiner's analysis is insufficient to show that claim 1 is
unpatentable in view of the cited references without further explanation.
Therefore, based on the present record, we cannot sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of independent claim 1, and claims 2 and
4--7, which depend therefrom.
Independent claim 8 and dependent claims 9 and 11-14
Independent claim 8 includes language substantially similar to the
language of claim 1. Therefore, we do not sustain the Examiner's rejection
under 35 U.S.C. § 103(a) of independent claim 8, and claims 9 and 11-14,
which depend therefrom, for the same reasons set forth above with respect to
claim 1.
Independent claim 15 and dependent claims 65 and 68-71
Appellants argue that the Examiner failed to establish a prima facie
case of obviousness with respect to claim 15 for reasons similar to those
presented with respect to claim 1. Br. 21. However, independent claim 15
differs in scope from independent claim 1. And none of Appellants'
arguments presented with respect to independent claim 1 are persuasive of
Examiner error in the rejection of claim 15 under 35 U.S.C. § 103(a).
For example, Appellants argue that neither Grainger nor Throndson
discloses or suggests limitation ( d), as recited in claim 1. Br. 13-17.
Appellants' argument is not persuasive, at least because claim 15 does not
recite any similar language.
Appellants argue that Throndson, relied on by the Examiner, does not
disclose or suggest limitation ( e ), as recited in claim 1. Br. 17-19. In
particular, Appellants maintain that the type of data the claimed invention
resolves (i.e., annuity data) is "completely different" from the type of data
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Throndson's verification module resolves (i.e., tax data). Id. at 17.
Appellants further maintain that the claim recites resolving discrepancy
"based on the difference between extracted annuity data and server annuity
data" (Br. 18); whereas, Throndson resolves data based on a questionnaire
presented to a tax payer (id.). Finally, Appellants assert that the claim
recites resolving discrepancies between extracted data and server data
"automatically by a processor," not with a questionnaire seeking user input.
Id. Appellants' assertions are not persuasive, at least because none of the
language on which Appellants rely is recited in claim 15.
To the extent that Appellants maintain that the language "resolves
data discrepancies," i.e., limitation ( f), as recited in claim 15, should be
interpreted as resolving data discrepancies automatically, without user input,
we disagree. Claim 15 does not recite language that precludes a user from
providing input to resolve a discrepancy. We agree with the Examiner (Ans.
10) that Throndson's data verification module meets limitation (f), as recited
in claim 15, when interpreted by one of ordinary skill in light of Appellants'
Specification. See also Spec. i-f 78 ("In some embodiments ... a user is
asked to resolve this [data] discrepancy.").
We are not persuaded by Appellants' argument that one skilled in the
art would not be motivated to modify Grainger, because Grainger does not
teach or "even remotely suggest" resolving data discrepancies (Br. 19), and
"there is no need for improvement" (id. at 19-20). Indeed, to the extent that
Appellants maintain that an explicit suggestion is required, that argument is
foreclosed by KSRint'l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), in
which the Supreme Court rejected the rigid application of a "teaching,
suggestion, motivation" test for nonobviousness.
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We also are not persuaded by Appellants' argument that Grainger
teaches away from resolving data discrepancies because Grainger "merely
teaches generating and making annuity payments directly in response to an
alert issued." Br. 19. Appellants' argument is not persuasive because
Appellants do not point to any passage in Grainger that criticizes, discredits,
or otherwise discourages providing functionality for resolving data
discrepancies. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A
teaching away occurs when a reference discourages one skilled in the art
from following the claimed path, or when the reference would lead one
skilled in the art in a direction divergent from the path that was taken by the
applicant).
We are not persuaded by Appellants' argument that "one skilled in the
art of processing patent annuities would [neither be] versant in the art of
processing tax returns[, nor would] look for a solution in the field of
processing tax returns." Br. 20. We find that Throndson is analogous prior
art because it logically would have commended itself to a person skilled in
the art considering the substantially similar issues in resolving data
discrepancies that are addressed in Appellants' application. See In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004) (Even when prior art is not in the same
field of endeavor as the claimed invention, it is still analogous prior art if it
is "reasonably pertinent" to the particular problem with which the inventor is
involved.).
Appellants further charge that the Examiner's motivation is based on
hindsight gained from Appellants' invention, and that "there is no reason to
entirely change the nature of[] Grainger by employing techniques disclosed
in Throndson." Br. 20. In rejecting claim 15, the Examiner acknowledges
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that Grainger does not disclose resolving data discrepancies. Ans. 5, 7. But
the Examiner finds that Throndson discloses "[a] data verification module
[that] processes information for accuracy, consistency and completeness and
also resolves inconsistencies or inaccuracies." Id. at 6 (citation omitted).
The Examiner asserts that such systems "are numerous and well known" and
concludes that one of ordinary skill would have been motivated to modify
Grainger "with the method of Throndson to ensure annuity fees are properly
processed." Id. In the absence of specific, technical arguments as to why
the modification described by the Examiner is more than the predictable use
of prior art elements according to their established functions, we find
Appellants' arguments unpersuasive.
Therefore, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claim 15, and claims 17-20, which depend
therefrom.
DECISION
The Examiner's rejection of claims 1, 2, 4--9, and 11-14 under
35 U.S.C. § 103(a) is reversed.
The Examiner's rejection of claims 15 and 17-20 under 35 U.S.C.
§ 103(a) is atlirmed.
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).
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AFFIRMED-fN-P ART
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