Ex Parte Milton

Patent Trial and Appeal Board

Sep 27, 2016

13936885 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/936,885 07 /08/2013
59582 7590 09/27/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Harold W. Milton JR.
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.
652320-00022 3642
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAILDATE DELIVERY MODE
09/27/2016 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 HAROLD W. MIL TON, JR.
Appeal2016-005995
Application 13/936,885
Technology Center 3600
Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
MICHAEL M. BARRY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 5, and 6, all the pending claims in
the present application. Claims 2-4 and 7-9 are canceled. See App. Br.,
Appendix A. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to preparing patent
applications for multiple patent owners in a network of independent patent
agents. See Abstract.
Appeal2016-005995
Application 13/936,885
Claim l is illustrative:
1. A method for preparing patent applications for multiple
customers in a network of independent patent agents using a
data processing center (20) having a center computer (10)
including a controller (12) and a computer readable storage
medium (14) comprising;
storing a contract patent agent database (36) on the
computer readable storage medium (14) of the center computer
(10) including a contract patent agent identification (38)
associated with each independent patent agent in the network of
independent patent agents,
receiving at the data processing center (20) from a
customer via the internet a request to prepare a patent
application covering an invention disclosure describing an
invention,
assigning the invention disclosure (24) received from the
customer an initial subject matter classification number
according to a patent office classification system (30) dividing
technology by numbers into classes and sub-classes of
technology and indicating the subject matter to be found in and
excluded from a class and sub-class,
generating a customer identification (26) to each
successive customer using the controller (12) disposed at the
data processing center (20),
storing by the controller (12) the customer identification
(26) and the initial subject matter classification number
assigned to the invention disclosure in a customer database (28)
stored on the computer readable storage medium (14),
selecting a contract patent agent from the contract patent
agent database to prepare a patent application for the customer,
receiving the completed patent application (34) at the
data processing center (20) from the selected contract patent
agent,
forwarding the completed patent application to the
customer,
2
Appeal2016-005995
Application 13/936,885
storing by the controller ll.lJ an agent subject matter
classification number ( 42) in the patent agent database and with
the contract patent agent identification (38) of the selected
patent agent which corresponds to the initial subject matter
classification number assigned to the invention disclosure
associated with the completed patent application,
conducting a subject matter clearance ( 44) prior to
selecting the contract patent agent,
said conducting a subject matter clearance (44) includes
electronically scanning and comparing using the controller (12)
the initial subject matter classification number assigned to the
invention disclosure and stored in the customer database (28)
with each agent subject matter classification number ( 42) stored
in the patent agent database of the computer readable memory
to identify a match between the initial subject matter
classification number and any one of the agent subject matter
classification numbers (42) for avoiding the same subject
matter from two different customers being assigned to the same
contract patent agent,
establishing a preparation contract (32) between the data
processing center (20) and the selected contract patent agent
which includes specific provisions ( 48) to require a specific
relationship of content between the sections of the completed
patent application (34),
electronically reviewing (50) the patent application
received from the selected contract patent agent by the
controller (12) to establish conformance to the specific
provisions ( 48) of the preparation contract ( 46),
said establishing the specific provisions ( 48) in the
preparation contract ( 46) includes establishing specific
provisions ( 48) to require that a CLAIMS section of the
completed patent application includes a broad claim reciting at
least one concluding limitation in a subparagraph after a coded
phrase "characterized by" with supporting limitations in
subparagraphs before the coded phrase "characterized by" and
successive claims dependent on the broad claim with each
dependent claim reciting at least one additional limitation and
3
Appeal2016-005995
Application 13/936,885
an independent picture claim contammg in subparagraphs all of
the same verbiage used in the broad and dependent claims and a
DETAILED DESCRIPTION OF THE ENABLING
EMBODIMENT of the completed patent application including
all of and only the same verbiage used in the subparagraphs of
the independent picture claim and a Description of the Prior Art
section of the completed patent application reciting only the
supporting limitations of the broad claim and a SUMMARY OF
THE INVENTION section of the completed patent application
reciting only the at least one concluding limitation of the broad
claim, and
said electronically reviewing (50) the completed patent
application (34) to establish conformance with the specific
provisions ( 48) of the preparation contract ( 46) includes:
electronically scanning and comparing by the controller
(12) the Description of the Prior Art section of the completed
patent application with the supporting limitations recited before
the coded phrase "characterized by" in the broad claim of the
CLAIMS section of the completed patent application to identify
any differences therebetween,
electronically scanning and comparing by the controller
(12) the SUMMARY OF THE INVENTION section of the
completed patent application with the at least one concluding
limitation recited in a subparagraph after the coded phrase
"characterized by" in the broad claim of the CLAIMS section of
the completed patent application to identify any differences
there between,
electronically scanning and comparing by the controller
(12) the DETAILED DESCRIPTION OF THE ENABLING
EMBODIMENT of the completed patent application with the
independent picture claim in the CLAIMS section of the patent
application to identify any differences therebetween, and
electronically grading (52) the patent application
received from the selected contract patent agent using the
controller (12) based on (a) the differences identified between
the Description of the Prior Art section of the completed patent
application and the supporting limitations recited before the
4
Appeal2016-005995
Application 13/936,885
coded phrase "characterized by" in the broad claim of the
CLAIMS section of the completed patent application and (b)
the differences identified between SUMMARY OF THE
INVENTION section of the completed patent application and
the at least one concluding limitation recited in a subparagraph
after the coded phrase "characterized by" in the broad claim of
the CLAIMS section of the completed patent application and
( c) the differences identified between the DETAILED
DESCRIPTION OF THE ENABLING EMBODIMENT of the
completed patent application and the independent picture claim
in the CLAIMS section of the completed patent application.
Appellant appeals the following rejections:
RI. Claims 1, 5, and 6 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more (see
Final Act. 2-8);
R2. Claims 1, 5, and 6 are rejected under 35 U.S.C. l 12(a) or 35
U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement (see id. at 8-13 ); and
R3. Claims 1, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Grainger (US 2002/0059076 Al, May 16, 2002),
Cauchon (US 2002/0095378 Al, July 18, 2002), Allen (US 2007/0136321
Al, June 14, 2007), and Linda Haller, Patent Attorneys and Conflict of
Interest, 4 Journal of Intellectual Property Law & Practice 6, 407 (2009) (see
id. at 13-27).
5
Appeal2016-005995
Application 13/936,885
A1VALYSIS
Re} ection under § 101
Issue 1: Did the Examiner err in finding that the claims are merely
directed to an abstract idea?
Appellant contends:
The present claims, as a whole, are not directed to mere
preparation of patent applications, which undoubtedly is a
human activity that is a fundamental economic practice and has
long been prevalent in our system of commerce. The claimed
method is much more specific and includes steps not known in
"human activity"
(App. Br. 6)
... the claims are limited to a specific steps of preparing patent
applications . . . using a controller . . . and for electronically
scanning and comparing ...
(id. at 7).
To the extent that the Applicant recites the use of a general
purpose center computer including a controller and a computer
readabie storage medium in the claims, each claim iimitation
recites a center computer, controller and a computer readable
storage medium that has been specifically programmed to
perform the specific and novel steps of the present claims
(App. Br. 9-10).
The Examiner highlights that "[t]he [A ]ppellant is in agreement with
the [E]xaminer that the act of preparing a patent application is a human
activity that is also considered to be a fundamental economic practice" (Ans.
3). The Examiner further finds that Appellant "recites a central computer
with a controller and a computer readable storage medium [and] [t]his is not
anything more than a recitation to generic computing hardware and is not
6
Appeal2016-005995
Application 13/936,885
persuasive to show that the claims require a particular machine" (Ans. 7).
We agree with the Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int'!,
134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). Notwithstanding that a law of nature or
an abstract idea, by itself, is not patentable, the application of these concepts
may be eligible for patent protection. Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the
Court stated that "to transform an unpatentable law of nature into a patent-
eligible application of such a law, one must do more than simply state the
law of nature while adding the words 'apply it."' Mayo, 132 S. Ct. at 1294
(citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
7
Appeal2016-005995
Application 13/936,885
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at
1298, 1297). In other words, the second step is to "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) (quoting
Mayo, 132 S. Ct. at 1294).
We must first determine whether the claims at issue are directed to a
patent-ineligible concept. We conclude that they are: Claims 1, 5, and 6 are
directed to the abstract idea of preparing patent applications. Appellant
admits, and the Examiner agrees, that the concept of preparing patent
applications is a fundamental economic practice long prevalent in our
system of commerce (see App. Br. 6; Ans. 3). Thus, preparing patent
applications is an "abstract idea" beyond the scope of§ 101.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two. Method claims, which merely require generic
computer implementations, fail to transform that abstract idea into a patent-
eligible invention.
We conclude that claims 1, 5, and 6, which merely require a generic
"network," "controller," and "computer-readable storage medium"
implementation, fail to transform that abstract idea into a patent-eligible
invention.
8
Appeal2016-005995
Application 13/936,885
Taking the claim elements separately, these generic computer network
elements are purely conventional. These claimed generic elements are well-
understood, routine, conventional elements previously known to the
industry. In short, the claims do no more than require generic computer
network elements to perform generic computer network functions via the
internet.
Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the elements
are considered separately. Viewed as a whole, Appellant's claims simply
recite the concept of storing, sending, and receiving particular data as
performed by a generic computer network. The claims do not, for example,
purport to improve the storage operation of the computer network itself, e.g.,
an inventive data structure is used. Nor do they effect an improvement in
any other technology or technical field, e.g., a computer program for
performing inventive functions is stored on the generic computer storage
media.
Instead, as noted by the Examiner (see Ans. 7-8), the claims at issue
amount to nothing significantly more than an instruction to apply the
abstract idea of storing, sending, and receiving particular abstract data using
some unspecified generic computer network elements. That is not enough to
transform an abstract idea into a patent-eligible invention.
None of the hardware recited by the claims offers a meaningful
limitation beyond generally linking the use of the data to a particular
technological environment, that is, implementation via computer networks.
Simply appending a conventional computer network, controller, or
computer-readable storage medium, specified in general terms, is not enough
9
Appeal2016-005995
Application 13/936,885
to transform an abstract idea into a patent-eligible invention. See Alice, 134
S. Ct. at 2357-60. These recitations are similar to the recitation of a
conventional "computer" discussed in Alice.
Therefore, we sustain the rejection of claims 1, 5, and 6 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Rejection under 35US.C.§l12(a) or§ 112 (pre-AJA), first paragraph
Issue 2: Did the Examiner err in finding that the claims fail to comply
with the written description requirement?
The Examiner finds "[t]he claim ... allows for the assigning of the
initial classification number to be performed by a person or the controller,
and in either case nothing is disclosed in the specification about how this is
being done . . . . This does not rise to reasonably conveying to one of skill in
the art that applicant was in possession of the genus as claimed" (Final Act.
10) (emphasis added).
In response, Appellant contends:
Rather, Applicant respectfully submits that once one of
ordinary skill in the art is informed or directed to the functions
that are intended to be performed by the system, one of ordinary
skill in the art would have at his disposal any number of well-
known computer programming processes and methods to
program these intended functions or results .... executed by
any number of operating systems and programs ....
(App. Br. 17). In other words, to show possession, Appellant relies upon
what one of ordinary skill in the art would have at their disposal, i.e.,
knowledge outside of the Specification. However, Appellant must rely upon
the disclosures in their application, not knowledge outside of Appellant's
Specification.
10
Appeal2016-005995
Application 13/936,885
Specifically, our reviewing court guides that the written descnpt10n
"must clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed." Ariad Pharm., Inc. Eli Lilly & Co., 598
F.3d 1336,1351 (Fed. Cir. 1020) (en bane) (citation and quotations omitted).
The test is whether the disclosure "conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. "[A ]ctual 'possession' or reduction to practice outside of the
specification is not enough. Rather, . . . it is the specification itself that
must demonstrate possession." Id. at 1352; see also PowerOasis, Inc. v. T-
Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008) (explaining that
§ 112, i-f 1 "requires that the written description actually or inherently
disclose the claim element"). "[I]t is not a question of whether one skilled in
the art might be able to construct the patentee's device from the teachings of
the disclosure. . . . Rather, it is a question whether the application
necessarily discloses that particular device . . . . A description which renders
obvious the invention for which an earlier filing date is sought is not
sufficient." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963))
(emphasis added).
Here, Appellant fails to direct our attention to any description in the
originally-filed Specification that demonstrates possession. As such, we find
Appellant's contentions are insufficient due to a lack of evidence in the
Specification. Therefore, on this record, we are not persuaded the Examiner
erred.
Accordingly, we sustain the rejection of claims 1, 5, and 6 under
35 U.S.C. § 112(a) or§ 112 (pre-AIA), first paragraph.
11
Appeal2016-005995
Application 13/936,885
Rejections under 103 (a)
Issue 3: Did the Examiner err in finding that the combined cited art
teaches or suggests the contested steps recited in claim 1?
Appellant contends that "there is no teaching to specifically recite the
content and relationship of the sections of a patent application as taught by
Allen et al and then to electronically check those relationships" (App. Br.
21 ). Appellant further contends that "neither Grainger nor Cauchon disclose
a data base of patent agents let alone the selection of a patent agent from a
data base having subject matter classification numbers assigned and stored
to previous patent applications" (App. Br. 23).
In response, The Examiner finds that the arguments are "seen as an
argument against Grainger individually when the rejection is based on a
combination of references" (Ans. 12) and "a general allegation that is
addressing Allen alone and is not addressing the rejection of record that is
based on a combination of references" (id. at 13). The Examiner further
finds that "the mere automation of a manually executed activity is obvious"
(id.) and "Appellant's arguments is little more than a general allegation or
statement of disagreement with the examiner, which is not persuasive" (id. at
16). We agree with the Examiner.
Again, we refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
As pointed out by the Examiner supra, and we agree, Appellant's
arguments do not take into account what the collective teachings of the prior
art would have suggested to one of ordinary skill in the art and is therefore
ineffective to rebut the Examiner's prima facie case of obviousness. See In
12
Appeal2016-005995
Application 13/936,885
re Keller, 642 F.2d 413, 425 (CCPA 198l)("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.") (citations omitted). This
reasoning is applicable here because Appellant's arguments fail to address
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.
For example, Grainger discloses "facilitating the preparation of
intellectual property documents" (i133) and "circulation of draft patent
applications to inventors and managers for review and comment" (i-f 148).
Allen discloses a method of preparing a patent application by running a
software macro (see Abstract), and Cauchon discloses automated
documented services, receiving user information over an electronic
communication link, and the provision of legal advice to a user (i-f 15).
Furthermore, as highlighted by the Examiner, and we agree, a claimed
invention is not patentable if it merely automates a prior art process (see
Ans. 13). Broadly providing an automatic way to replace a manual activity
accomplishing the same result is not sufficient to distinguish an automated
process over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA 1958). An
improved product in the art is obvious if that "product [is] not [one] of
innovation but of ordinary skill and common sense." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). Similarly, it is obvious for one of
ordinary skill in the art to combine an old electromechanical device with
modem electronic circuitry in order to "update it using modem electronic
13
Appeal2016-005995
Application 13/936,885
components in order to gain the commonly understood benefits of such
adaptation, such as decreased size, increased reliability, simplified operation,
and reduced cost." Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007). Such a "combination is thus the adaptation of
an old idea or invention ... using newer technology that is commonly
available and understood in the art .... " Id. In any case, Allen discloses a
method of preparing a patent application by running a software macro (see
Abstract).
A.dditionally, as noted supra by the Examiner~ and we agree~
Appellant makes general allegations that the proposed combination does not
teach the claim language (see App. Br. 21---23). Appellant is reminded that a
general allegation that the claims define a patentable invention vvithout
specifically pointing out how the language of the claims patentably
distinguishes them from the reforences does not constitute a persuasive
response. Here, Appellant merely argues that neither reference teaches or
suggests the above-noted limitations without providing any meaningful
analvsis that exvlabzs' 1'vhv the Examiner en-ed. A statement \vhich merelv
~ L 4,- ~
points out what a claim recites will not be considered an argument for
separate patentability of the claim. See 37 C.F.R. § 41.37(c)(l)(vii). \Ve
also note that arguments which Appellant cou1d have made but chose not to
1nake in the Briefs have not been considered and are deemed to be waived.
Therefore) Appellant's arguments are unpersuasive.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellant does not argue separate patentability for dependent claims 5 and 6
(see App. Br. 24). We, therefore, also sustain the Examiner's rejection of
claims 5 and 6.
14
Appeal2016-005995
Application 13/936,885
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection RI.
We affirm the Examiner's 35 U.S.C. 112(a) or 35 U.S.C. § 112 (pre-
ATA), first paragraph, rejection R2.
We affirm the Examiner's§ 103(a) rejection R3.
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).
AFFIRMED
15