Ex Parte Marhoefer

Patent Trial and Appeal Board

Feb 28, 2017

13506870 (P.T.A.B. Feb. 28, 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.
JOE2 9059
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
13/506,870 05/22/2012
7590
L. Joseph Maroefer
Suite 603
11776 Stratford House
Reston, VA 20190
L. Joseph Marhoefer
03/01/2017 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 L. JOSEPH MARHOEFER
Appeal 2015-001086
Application 13/506,870
Technology Center 3600
Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
PRIOR DECISION
The Patent Trial and Appeal Board issued a Decision on April 30,
2015 (hereinafter “Decision”), affirming the rejection of claims 10, 13, and
14 under 35U.S.C. § 101 as directed to non-statutory subject matter;
reversing the rejection of claims 10, 13, and 14 under 35 U.S.C. § 102(b) as
anticipated by Percy (US 2007/0162412 Al, published July 12, 2007); and
entering a new ground of rejection of claims 10, 13, and 14 under 35 U.S.C.
112, second paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b)
Appeal 2015-001086
Application 13/506,870
FURTHER PROSECUTION BEFORE EXAMINER
In response to the Decision, L. Joseph Marhoefer (Appellant) elected
to prosecute further before the Examiner in accordance with 37 C.F.R.
§ 41.50(b). During this prosecution, claim 10 was amended to read:1
10. A system to access, from a mobile device, a URL address
comprised of a first set of alpha-numeric characters stored in a
database on a server accessed via a URL address, comprising in
combination;
an application stored on said mobile device that connects
the mobile device via the internet to said database at said URL
address and, in response to a second set of alpha-numeric
characters inputted by a person on said mobile device, generates
a string of code characters that are coupled to said database, said
second set of alpha-numeric characters consisting of fewer
characters than the first set of alpha-numeric characters;
said data base comprised of at least two independently
addressable blocks, each block having a respectively different
address, and each block comprised of a plurality of address
locations at which said data is stored;
an address decoder and data access program stored on said
server at said URL address, said program decoding said string of
characters and using at least one character to address one of said
blocks and using at least one other character to address URL data
stored in one of said plurality of address locations in that block;
a database management program stored on said server at
said URL address;
an input/output data management application stored on a
first terminal connected via the internet to said server for adding
and deleting data via said database management program in one
of said blocks;
an input/output data management application stored on a
second terminal connected via the internet to said server for
adding and deleting data via said database management program
in another one of said blocks.
1 See Amendments filed on June 26, 2015, and September 14, 2015.
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Appeal 2015-001086
Application 13/506,870
The Final Office Action dated July 9, 2015, indicates the amendment
to claim 10 presented in the June 26, 2015, Amendment overcomes the
rejection of claims 10, 13, and 14 under 35 U.S.C. 112, second paragraph.
See Final Act. 3 (dated July 9, 2015). However, the Final Office Action also
indicates claim 10 is objected to because of a formality. Id. The proposed
amendment to claim 10 presented in the September 14, 2015, Amendment
addresses this objection. The subsequent Advisory Action dated October 2,
2015, indicates that this proposed amendment overcomes the objection and
will be entered. See Adv. Act. 3. The Advisory Action also indicates that
the proposed amendment does not overcome the rejection of claims 10, 13,
and 14 under 35 U.S.C. § 101, as directed to non-statutory subject matter.
Id.
ANALYSIS
Appellant’s amendments to claim 10 made during further prosecution
before the Examiner did not result in overcoming the affirmed rejection of
claims 10, 13, and 14 under 35 U.S.C. § 101 as being drawn to patent
ineligible subject matter. The amendments appear to have been made to
address unclear claim language (i.e., “said inputs consisting of fewer
characters”), as discussed in the new ground of rejection of claims 10, 13,
and 14 under 35 U.S.C. § 112, second paragraph. Decision 8—9.
We evaluate whether the amendments to claim 10 impact our analysis
in the Decision with regard to the affirmance of the Examiner’s rejection of
claims 10, 13, and 14 under 35 U.S.C. § 101.2 We note, however, that the
2 Manual of Patent Examining Procedure (MPEP) § 1214.01(1) states: “If
the Board’s decision in which the rejection under 37 CFR 41.50(b) was
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Appeal 2015-001086
Application 13/506,870
amendments to claim 10 do not address the analysis set forth in the Decision
for this rejection, which applies the two-part framework set forth in Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014). For example,
regarding Appellant’s apparent contention “that the claims are not directed
to an abstract idea because ‘two or more independently managed databases’
can be accessed by a user ‘with a short code at the same URL address,”’ the
Decision explains that this “characterization of what the claims are directed
to is not commensurate with the actual claim language” for the reasons
discussed therein. Decision 4—5. As to the second step of the Alice analysis,
the Decision makes clear that Appellant does not explain why certain claim
elements are “transformational elements,” or “what exactly is transformed
by these elements,” such that these “transformational elements” are
sufficient to establish the patent eligibility of the claimed invention. Id. at
5—6. As a further example, we note that the claim amendments do not
appear to address any one of the Board’s analyses with regard to why the
made includes an affirmance of the [EJxaminer’s rejection, the basis of the
affirmed rejection is not open to further prosecution. If the [AJppellant
elects to proceed before the [EJxaminer with regard to the new rejection, the
Board’s affirmance of the [EJxaminer’s rejection will be treated as nonfinal
for purposes of seeking judicial review, and no request for reconsideration
of the affirmance need be filed at that time. Prosecution before the
[EJxaminer of the 37 CFR 41.50(b) rejection can incidentally result in
overcoming the affirmed rejection even though the affirmed rejection is not
open to further prosecution. ... If the application does not become allowed
or abandoned as discussed above, once prosecution of the claims which were
rejected under 37 CFR 41.50(b) is terminated before the [EJxaminer, the
application file must be returned to the Board so that a decision making the
original affirmance final can be entered.).'” (Emphasis added).
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Appeal 2015-001086
Application 13/506,870
claims do not recite limitations that ensure they are directed to “significantly
more” than the abstract idea itself. Id.
For at least the above reasons, Appellant’s amendments to claim 10 Jo
not impact our analysis in the Decision with regard to the affirmance of the
Examiner’s rejection of claims 10, 13, and 14 under 35 U.S.C. § 101.
Consequently, we affirm the rejection.
DECISION
We affirm the rejection of claims 10, 13 and 14 under 35 U.S.C. § 101
as directed to non-statutory subject matter.
This decision contains no new ground of rejection. Therefore, the
decision is final for purposes of requesting rehearing or judicial review.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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