Ex Parte Oda et al

Patent Trial and Appeal Board

Jul 29, 2016

13463372 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/463,372 05/03/2012
49845 7590 08/02/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Lisa Oda
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.
2043.483US2 1072
EXAMINER
COUPE, ANITA YVONNE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
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 LISA ODA,
SHILPA CHEN,
DON MICHAEL BERRY II, and
ANANT D. UTTARWAR
Appeal2014-005745
Application 13/463,372 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lisa Oda, et al. (Appellants) seek our review under 35 U.S.C. § 134 of
the final rejection of claims 1-27. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify eBay Inc. as the real party in interest. App. Br. 2.
Appeal2014-005745
Application 13/463,372
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computerized method for marketing program development, the
method comprising:
providing a user interface over a computer network;
receiving a marketing program proposal from the user interface;
facilitating a strategic review of the marketing program
proposal; and
receiving a marketing program including a proposal for a
project that is based on the marketing program.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lubrecht
Divine
US 2006/0161884 Al
US 2007 /0033093 Al
July 20, 2006
Feb. 8,2007
"Official Notice is taken that it could be argued that each deliverable
involves creativity and as such is a creative deliverable, but it is old
and well known in the marketing arts to produce creative deliverables
such as pamphlets, displays and product brochures of future products
for the benefit of gauging customer enthusiasm for a potential product
and further for increasing customer interest in new or existing
products" (hereinafter Official Notice). Final Act. 6.
The following rejections are before us for review:
1. Claims 1-9, 13-21, 26, and 27 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Divine.
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2. Claims 10 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Divine and Lubrecht.
3. Claims 11, 12, and 23-25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Divine and Official Notice.
ISSUES
Did the Examiner err in rejecting claims 1-9, 13-21, 26, and 27 under
35 U.S.C. § 102(e) as being anticipated by Divine?
Did the Examiner err in rejecting claims 10 and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Divine and Lubrecht?
Did the Examiner err in rejecting claims 11, 12, and 23-25 under 35
U.S.C. § 103(a) as being unpatentable over Divine and Official Notice?
FINDINGS OF FACT
\X/e rely on the Examiner's factual findings stated in the i~\'.l.ns\~1er.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-9, 13-21, 26, and 27 under 35 USC§ 102(e) as
being anticipated by Divine.
The Appellants argued these claims as a group. See App. Br. 7-13.
We select claim 1 as the representative claim for this group, and the
remaining claims 2-9, 13-21, 2 6, and 2 7 stand or fall with claim 1. 3 7
C.F.R. § 41.37(c)(l)(iv).
The Appellants challenge the rejection for two reasons. According to
the Appellants, Divine describes neither (a) a "marketing program" (App.
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Br. 9--10) nor (b) "a proposal for a project that is based on the marketing
program" (App. Br. 10), as claimed. Thus, according to the Appellants,
since these claim limitations are not described in Divine, Divine fails to
anticipate the claimed subject matter. We disagree.
Claim 1 is directed to a computerized method. The computerized
method involves two elements: a user interface and a computer network,
both of which are notoriously well known. See Specification, paras. 56-57.
The computerized method of claim 1 asks nothing more of the two elements
than what they have been known to perform; that is, the claimed method
calls for "providing a user interface over a computer network" and that the
user interface receive information. That Divine's process necessarily
includes these elements and their known functions is not disputed. The rest
of the claim - that is, the "facilitating" and "receiving" steps - are
unconnected to the two elements, or even a computer for that matter, and
broadly-speaking could be performed in the human mind.
The first argument regarding a "marketing program" implicates the
user interface element of the claimed "computerized method." In that
regard, the claim calls for "receiving a marketing program proposal from the
user interface." In the context of the claim, the "marketing program" is a
type of information received from the user interface. That all interfaces
display information - including that which Divine employs - cannot be
disputed. One can receive information from any interface that displays it.
The question here is whether the particular type of received information
claimed- i.e., "marketing program" - functionally affects the interface so
that the interface is not the same as that which Divine covers or whether it is
simply another type of information that differs from information commonly
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received from interfaces, as in Divine, only in terms of its content. We find
in favor of the latter.
There is insufficient evidence that "marketing program" functionally
affects an interface. The evidence of known interfaces displaying
information would appear to weigh heavily to the contrary. Accordingly, it
is reasonable to characterize "marketing program" as printed matter. Given
that printed matter is not given patentable weight, the argued-over
"marketing program" as a distinction between the Appellants' computerized
method and that which Divine describes is not patentably consequential. It
amounts to nonfunctional descriptive material. "Thus non-functional
descriptive material, being useful and intelligible only to the human mind, is
given no patentable weight." Ex parte Graf, Appeal 2012-003941, 2013 WL
3873066, at *4 (PTAB July 23, 2013) (non-precedential), aff'd, In re Graf,
585 Fed. Appx. 1012 (Fed. Cir. 2014) (non-precedential). Cf In re
DiStefano, No. 2015-1453 (Fed. Cir. 2015). As explained in Jn re ){iao, 462
Fed. Appx. 947, 950-52 (Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight . . . . On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation---consistent with our
precedents-when it concluded that any given position label's
function ... is a distinction "discemable only to the human
mind." Board Decision at 6; see In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (describing printed matter as "useful and
intelligible only to the human mind") (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)).
"The rationale behind this line of cases is preventing the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
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unrelated limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010).
For the foregoing reasons, the first argument is unpersuasive as to
error in the rejection.
The second argument - that Divine does not describe the claim
limitation "a proposal for a project that is based on the marketing program"
- is also not persuasive. It is unpersuasive for the same reasons that the
first argument is unpersuasive, and more so. The second argument
implicates the last two steps in claim 1. As we have pointed out, the
"facilitating" and "receiving" steps are unconnected to the two claim
elements "network" and "interface" of the "computerized method." They
are not even required to be performed via a computer. Thus, they add to the
claimed subject matter nothing more than steps which could be performed in
the human mind. Thus the Appellants are arguing a distinction "'useful and
intelligible only to the human mind"' (Loivry, 32 F.3d at 1583 (citation
omitted)), a distinction that carries no patentable weight. As already noted,
"[ t ]he rationale behind this line of cases is preventing the indefinite
patenting of known products by the simple inclusion of novel, yet
functionally unrelated limitations." King Pharms., Inc., 616 F.3d at 1279.
For the foregoing reasons, the second argument is unpersuasive as to
error in the rejection.
There being no other arguments, the rejection is sustained.
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The rejection of claims 10 and 22 under 35 US.C. § 103(a) as being
unpatentable over Divine and Lubrecht.
The rejection of claims 11, 12, and 23-25 under 35 US.C. § 103(a) as being
unpatentable over Divine and Official Notice.
The arguments challenging these rejections are the same as those
challenging the rejection of claim 1. See, e.g., "Lubrecht, being directed
only to managing IT capacity, does not disclose a program marketing
proposal or a marketing program, or a project based on a marketing
program, and therefore cannot cure the defect of Divine." App. Br. 14.
Having already found those arguments unpersuasive, the rejections are
sustained.
CONCLUSIONS
The rejection of claims 1-9, 13-21, 26, and 27 under 35 U.S.C.
§ 102( e) as being anticipated by Divine is affirmed.
The rejection of claims 10 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Divine and Lubrecht is affirmed.
The rejection of claims 11, 12, and 23-25 under 35 U.S.C. § 103(a) as
being unpatentable over Divine and Official Notice is affirmed.
DECISION
The decision of the Examiner to reject claims 1-27 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.
§ 1.136(a)(l )(iv).
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AFFIRMED
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