Ex Parte Mattern et alDownload PDFPatent Trial and Appeal BoardMay 31, 201712940530 (P.T.A.B. May. 31, 2017) Copy Citation 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. 12/940,530 11/05/2010 Jeremy Keith MATTERN 004-0014US 7699 73896 7590 05/31/2017 Adams and Reese LLP 1221 McKinney Street, Suite 4400 Houston, TX 77010 EXAMINER WILLIAMS, CLAYTON R ART UNIT PAPER NUMBER 2457 MAIL DATE DELIVERY MODE 05/31/2017 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 JEREMY KEITH MATTERN and RICHARD EZZEDDINE Appeal 2016-007846 Application 12/940,5301 Technology Center 2400 Before LARRY J. HUME, CATHERINE SHIANG, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—20, which constitute all claims pending in the application. Claim 21 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real parties in interest as Jeremy Keith Mattem and Richard Ezzeddine. App. Br. 3. Appeal 2016-007846 Application 12/940,530 STATEMENT OF THE CASE The Claimed Invention The claimed invention relates to “electronic citation [e.g., traffic ticket] issuance and citation adjudication,” and determining the applicable form of citation. Spec. Tflf 1—2. Claims 1 and 10 are independent. Claim 1 is illustrative of the invention and the subject matter of the appeal, and reads as follows (with the disputed limitations emphasized): 1. A method for generating one or more citation forms from a single workflow comprising: requesting by a processor determinative data related to an issuance of one or more citation forms from a plurality of citation forms within a workflow; receiving said determinative data; determining based on said determinative data said one or more citation forms to issue from said plurality of citation forms, each of said citation forms from a different and overlapping jurisdiction; and generating based on said determinative data, said one or more citation forms, wherein at least one of said citation forms comprise one or more citations or warnings. App. Br. 26 (Claims App.). The Rejections on Appeal Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Final Act. 2—3. Claims 1 and 10 are rejected under pre-AIA 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Final Act. 3^4. 2 Appeal 2016-007846 Application 12/940,530 Claims 1 and 10 are rejected under pre-AIA 35 U.S.C. § 112, second paragraph as being indefinite. Final Act. 4—5. Claims 1, 2, 4, 10, 12, and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zilberfayn et al. (US 2005/0198212 Al; Sept. 8, 2005) (“Zilberfayn”), Sai et al. (US 2004/0049476 Al; Mar. 11, 2004) (“Sai”), and Calkins et al. (US 2008/0228512 Al; Sept. 18, 2008) (“Calkins”). Final Act. 5-9. Claims 3, 5—9, and 13—17 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zilberfayn, Sai, Calkins, and Official Notice. Final Act. 9—12. Claims 11, 18, and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zilberfayn, Sai, Calkins, and Artzi et al. (US 2011/0016456 Al; Jan. 20, 2011). Final Act. 12—13. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments presented in this appeal. Arguments that Appellants could have made but did not make in the Briefs are deemed to be waived. See 37 C.F.R. § 41,37(c)(l)(iv). On the record before us, we are persuaded the Examiner erred in rejecting claims 1 and 10 under the written description requirement, but we are unpersuaded of error regarding the remaining rejections of claims 1 and 10, and the remaining rejections as to all other claims. Regarding the remaining rejections, we adopt as our own the findings and reasons set forth in the rejections from which the appeal is taken and in the Examiner’s Answer, and provide the following for highlighting and emphasis. 3 Appeal 2016-007846 Application 12/940,530 Rejection Under 35 U.S.C. §101 Appellants argue the Examiner erred in rejecting the claims as directed to an abstract idea. App. Br. 11—19; see Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Appellants further argue that the claims’ recitation of a “requesting by a processor determinative data” transforms the “alleged abstract idea into patentable subject matter.” App. Br. 19. We disagree. With regard to step one of the Alice analysis, we agree with the Examiner’s conclusion that the claims are directed to a “method of organizing human activity,” namely, a law enforcement officer selecting the proper citation form with which to issue a citation. Ans. 2; Final Act. 2. Appellants do not meaningfully contest the Examiner’s conclusion regarding step one. Appellants, rather, focus their argument on step two of Alice. In this second step, we must examine the elements of the claim to determine whether it contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application. A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].” Alice Corp., 134 S. Ct. at 2357 (Internal citations omitted). We acknowledge Appellants’ claims require the use of a processor and data storage, as Appellants argue. App. Br. 14. The claims, however, use these elements only for their standard purposes of processing and storing data, and such “use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent- eligible subject matter.” FairWarningIP, LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLC, v. Hotels.com, 4 Appeal 2016-007846 Application 12/940,530 L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)); Ans. 3. Similarly, the recitation of “citation forms” and “workflow” do not “tie the claim to a “computing environment beyond merely reciting a generic processor” and do “not amount to significantly more than the above-identified abstract ideas.” Ans. 3. Accordingly, we sustain the rejection of claims 1—20 as directed to ineligible subject matter. Rejections Under 35 U.S.C. § 112 The Examiner finds claims 1 and 10 are indefinite because the element “each of said citation forms” lacks antecedent basis. Final Act. 5. Appellants concede the Examiner has not erred in this rejection. App. Br. 20—21. Accordingly, we find no error in the indefmiteness rejection. Appellants, however, argue the Examiner erred in finding the element “from a[n] overlapping jurisdiction” unsupported in the Specification and therefore that claims 1 and 10 fail to comply with the written description requirement. App. Br. 19-20. We are persuaded by Appellants’ argument. As Appellants assert, paragraph 2 of the Specification describes a scenario in which a motorist stopped by an officer may be subject to a “non military” or “military” citation, namely, an “Armed Forces Traffic Ticket” or a citation used by “a United States District Court.” App. Br. 19 (citing Spec. 12). One of ordinary skill in the art would understand that scenario to describe an “overlap” in jurisdictions. Accordingly, we sustain the rejection of claims 1 and 10 as indefinite under pre-AIA 35 U.S.C. § 112, second paragraph, but we do not sustain the rejection of the same claims under pre-AIA 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 5 Appeal 2016-007846 Application 12/940,530 Rejections Under 35 U.S.C. §103 Appellants argue the Examiner erred in finding the prior art teaches or suggests a “plurality of citation forms” as recited in claim l.2 App. Br. 23; Reply Br. 5. Specifically, Appellants argue the Examiner erred in finding Sai teaches this element. Id. Sai, according to Appellants, only teaches a “ticket template” or “ticket form,” and “a ticket template or ticket form is not a citation form.” Reply Br. 5 (quotations omitted). We disagree. As the Examiner finds, Ans. 5, Sai teaches an electronic system that stores various ticket templates for a police officer and, based on information related to the citation (including the officer’s jurisdiction, driver’s license and registration number) “[t]he appropriate ticket form for the traffic violation is opened up on the . . . display.” Sai 136. We discern no error in the Examiner’s finding that one of ordinary skill in the art would understand this teaching in Sai to include a “plurality of citation forms” as recited in Appellants’ claim 1. See, e.g., Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (obviousness “may include recourse to logic, judgment, and common sense available to the person of ordinary skill”). Appellants further argue that the Examiner’s combination of Zilberfayn with Sai and Calkins was improper because Zilberfayn is not analogous art. App. Br. 21—22. Appellants contend Zilberfayn is directed to legal pleadings in a court proceeding, whereas Appellants’ claims (and the other references) are directed to citation forms used by law enforcement. App. Br. 21. We are not persuaded of error. 2 Appellants argue claims 1, 2, 4, 10, 12, and 20 as a group, and we choose claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv). 6 Appeal 2016-007846 Application 12/940,530 As the Examiner finds, both Zilberfayn and Appellants’ inventions are directed to the generation of proper “legal form[s].” Ans. 4—5. Zilberfayn, accordingly, is from the same field of endeavor as Appellants’ invention and it is reasonably pertinent to the problem solved in Appellants’ invention. Accordingly, we discern no error in the Examiner’s finding. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (prior art reference is analogous if it is one which, because of the matter with which it deals, “logically would have commended itself to an inventor’s attention in considering his [or her invention as a whole]”). Accordingly, we sustain the rejection of claims 1, 2, 4, 10, 12, and 20 as obvious over Zilberfayn, Sai, and Calkins. We also sustain the remaining obviousness rejections, which Appellants did not argue separately. DECISION We affirm the Examiner’s rejections of claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED 7 Copy with citationCopy as parenthetical citation