Ex Parte Pomerance

Board of Patent Appeals and Interferences

Aug 31, 2006

09793687 (B.P.A.I. Aug. 31, 2006)

The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte BRENDA POMERANCE
_____________

Appeal No. 2006-1523
Application No. 09/793,687
Technology Center 3600
______________

ON BRIEF
_______________

Before CRAWFORD, NAPPI and FETTNG Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134(a) of the final rejection of
claims 1 through 6, 8, 9, 11 and 14 through 26, claims 7, 10, 12 and 13 have been
canceled. For the reasons stated infra we affirm in part the examiner’s rejection of these
claims.
Invention

The invention relates to an automated complaint resolution system. See page 3 of
appellant’s specification. Claim 1 is representative of the invention and reproduced
below:

Appeal No. 2006-1523
Application No. 09/793,687

1. A method for automated resolution of a complaint from a
complainer against a respondent, the complaint having a desired remedy,
comprising:
comparing, at a computer, the desired remedy with business rules
previously defined by the respondent to generate a comparison,
detecting, at the computer, lack of agreement between the
complainer and the respondent based on the comparison, and
at the computer, performing a procedure to enable the respondent to
create a first response for the complainer, and again performing the
procedure to enable the complainer to create a second response for the
respondent, wherein the procedure includes:
(a) providing at least two of historical information, advisory
information and contra-party current position information to a response
creator, the response creator being one of the complainer and respondent,
the contra-party being the other of the complainer and respondent,
(b) suggesting a solution to the response creator when the response
creator does not agree with a desired outcome identified in the contra-party
current position,
(c) receiving input from the response creator in response to the
suggested solution,
(d) preparing a draft response including at least predefined parameters
based on the received input,
(e) displaying the draft response to the response creator,
(f) receiving an approval of the draft response from the response creator,
and
(g) sending the approved draft response as the response from the response
creator to the contra-party.

References

The references relied upon by the examiner are:

Sloo 5,895,450 Apr. 20, 1999

Burchetta 6,330,551 Dec. 11, 2001
(Filed Aug. 06, 1998)

“Online Mediation Offered for Resolving E-Commerce Disputes”, Online Resolution,
March 23, 2000.

Joel B. Eisen, “Are we ready for mediation in cyberspace?”, Brigham Young University
Law Review, vol. 1998 n4, pp 1305-1358 (1998).

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Application No. 09/793,687

Rejections at Issue
Claims 1, through 6, 8, 9, 11 and 14 through 26 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. The examiner’s rejection is set forth on
pages 6 through 9 of the answer. Claims 1 through 3, 5, 6, 8, 9, 14 through 19 and 21
through 24 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over Burchetta
in view of Sloo. The examiner’s rejection is set forth on pages 9 through 14 of the
answer. Claims 4, 11 and 25 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Burchetta in view of Sloo, “Online Mediation Offered for Resolving
E-Commerce Disputes” and Eisen. The examiner’s rejection is set forth on pages 14
through 16 of the answer. Claims 20 and 26 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over Burchetta in view of “Online Mediation Offered for Resolving
E-Commerce Disputes” and Eisen. The examiner’s rejection is set forth on pages 16
through 18 of the answer. We note the final rejection also contained several rejections
based upon 35 U.S.C. § 112, however the examiner withdrew these rejections on appeal,
see page 4 of the answer. Throughout the opinion we make reference to the briefs, the
answer and the final Office action for the respective details thereof.

Opinion
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the examiner
as support for the rejections. We have, likewise, reviewed and taken into consideration,
in reaching our decision, appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments in rebuttal set forth in the
examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellant and the examiner, and for the
reasons stated infra we sustain the examiner’s rejection of claims 1 through 3, 5, 6, 8, 9,
14
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Application No. 09/793,687

through 19 and 21 through 24 under 35 U.S.C. § 103 (a). However, we will not
sustain the examiner’s rejection of claims 1, through 6, 8, 9, 11 and 14 through 26 under
35 U.S.C. § 101, nor will we sustain the examiner’s rejection of claims 4, 11, 20, 25 and
26 under 35 U.S.C. § 103.

Rejection of claims 1, through 6, 8, 9, 11 and 14 through 26
under 35 U.S.C. § 101.

Appellant argues, on page 15 of the brief, that each of the independent claims
recites steps performed on a computer, an apparatus, thus the claims are drawn to
statutory subject matter. On pages 1 and 2 of the reply brief, appellant argues that the
examiner’s rejection is improperly based upon a “technological arts” standard.
The examiner’s rejection, on pages 6 through 9 of the answer, applies a
technological arts standard. Further, on pages 8 and 9 of the answer, the examiner finds
that the claims are drawn to subject matter which “produces a useful, concrete and
tangible result” nonetheless the examiner maintains the rejection as the claims are not
within the technological arts. On page 18 of the answer, the examiner states that the
claims recite the limitation “at a computer” not “on a computer” as such the claims are
broad and include the situation where a person sitting at a computer manually performs
the steps, thus the examiner considers the claims to not be within the technological arts.
We disagree with the examiner’s rationale. As stated in our recent precedential
decision in Ex parte Lungren, 76 USPQ2d 1385 (Bd. Pat. App. & Int. 2005), “there is
currently no judicially recognized separate ‘technological arts’ test to determine patent
eligible subject matter under §101” Lungren at 76 USPQ2d 1388. The appropriate
analysis for a rejection under §101 can be found in the Interim Guidelines for
Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz.
Patent and Trademark Off. (O.G.) 142, 152 (Nov. 22, 2005). Thus, as the examiner’s
basis for rejecting the claims under §101 is based upon a “technological arts” test which
is not judicially recognized, we will not sustain the examiner’s rejection of claims 1
through 6, 8, 9, 11 and 14 through 26 under 35 U.S.C. § 101.
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Rejection of claims 1 through 3, 5, 6, 8, 9, 14 through 19 and 21 through 24
under 35 U.S.C. § 103 (a) as being unpatentable over Burchetta in view of Sloo.

Rejection of claims 1 through 3, 5, 6, 8, 9, and 14 through 19.
Appellant’s arguments, on pages 15 through 17 of the brief, group claims 2, 3, 5,
6, 9 and 14 through 19 together with claim 1. Appellant argues on page 17 of the brief
that the combination of Burchetta and Sloo is “improper; Burchetta’s system already has
a procedure for computing a settlement account [ ]and there is nothing in Burchetta that
would motivate one of ordinary skill in the art to substitute a teaching from Sloo for
Burchetta’s carefully designed procedure.” Further, appellant argues:
Burchetta has a complete system for obtaining a settlement amount,
involving a computed procedure for arriving at an amount; this is imposing a
solution rather than suggesting a solution. Sloo is not really concerned with how
complaints are settled, but nevertheless provides an elaborate arbitration system
for deciding complaints. Arbitration does not suggest a solution as required by
claim 1, instead, arbitration imposes a solution. Accordingly, the references
themselves do not show or suggest the invention of claim 1. [Emphasis added]

The examiner responds, on pages 19 through 27 of the answer, asserting that the
motivation can be found in Sloo’s teaching of providing the highest satisfaction levels to
the parties when settling the claims. Further, on pages 20 through 26 of the answer, the
examiner equates the teachings of Burchetta and Sloo with the invention as claimed in
claim 1.
We concur with the examiner’s rationale as set forth on pages 20 through 26 of
the answer. “The motivation, suggestion or teaching may come explicitly from
statements in the prior art, the knowledge of one of ordinary skill in the art, or, in some
cases the nature of the problem to be solved.” In re Huston 308 F.3d 1267, 1278, 64
USPQ2d 1801, 1810 (Fed. Cir. 2002, citing In re Kotzab 217 F.3d 1365, 1370, 55 USPQ
1313, 1317 (Fed. Cir. 2000)). When considering the motivation in the obviousness
analysis “the problem examined is not the specific problem solved by the invention but
the general problem that confronted the inventor before the invention was made.” In re
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Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). The examiner’s
rationale shows that the nature of the problem to be solved by Sloo provides the
motivation to combine the reference. Further, we note that Sloo’s explicit statements
regarding the use of a negotiation system also provide motivation to combine the
references as asserted by the examiner.
Sloo teaches a system for complaint resolution, which contains several options,
one of which is “Negotiate the Complaint.” See Sloo, column 7, line 42. Sloo teaches
that the negotiations result in a settlement of either a monetary value or contract
condition. See column 7, line 66 through column 8, line 5. Sloo however provides few
details of how the negotiations are to be conducted. We consider this teaching of a
negotiation option to provide suggestion to use Sloo’s system with a negotiation to
settlement system such as Burchetta. Thus, in addition to the reasons stated by the
examiner, we find that Sloo provides explicit motivation to be combined with a system
such as Burchetta’s. Accordingly, we find ample evidence of record to support the
examiner’s finding of motivation to combine Sloo and Burchetta.
With regard to appellant’s arguments directed to Burchetta and Sloo’s systems
not providing suggestions to the users, we concur with the examiner’s analysis provided
on pages 24 through 26 of the answer. We further note that in addition to the “imposed”
solution referred to in appellant’s arguments, we find that both Sloo and Burchetta
provide suggestions to the user. Sloo teaches, in column 15, lines 34 through 36, “[t]he
complaint handling apparatus could recommend best actions.” We consider a
recommendation to be a suggestion, and as such we find that Sloo teaches that the system
provides suggestions to the user. Burchetta teaches that data from previous settlements
may be tabulated and provided to the user as guidance in making demands or offers. See
column 5, lines 51 through 65. We consider guidance to be a suggestion and as such
Burchetta provides suggestions to the user.
On pages 2 and 3 of the reply brief, appellant argues that neither Burchetta nor
Sloo teach the claimed feature of “at least two of historical information, advisory
information and contra-party current position information.”
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We are not persuaded by appellant’s arguments. Burchetta teaches a system
where parties to a dispute enter their offers to settle the dispute, the offers are not
disclosed to the other party. See column 1, lines 55 through 67. The offers from each
party are compared to each other using pre-established conditions. See column 2, lines
18 through 40. The users can enter three offers, see column 4, lines 48 through 51. After
each round the parties are notified of the result of the comparison. See column 9, lines 49
through 52. We consider the notification of the user that their offer was not accepted to
be an indication of contra-party current position (an indication an offer is not accepted
along with the knowledge of the amount of the refused offer, provides information
concerning the contra-parties position). Further, as stated supra, the system also provides
information related to prior settlements available to the users, i.e. historical information.
Thus, we find that Burchetta teaches “at least two of historical information, advisory
information and contra-party current position information.”
For the forgoing reasons, appellant has not persuaded us of error in the
examiner’s rejection of claim 1. Accordingly, we sustain the examiner’s rejection of
claim 1 and the claims appellant grouped with claim 1, claims 2, 3, 5, 6, 9 and 14 through
19.

Rejection of claim 21
On pages 18 and 19 of the brief, appellant presents a separate argument directed
to the rejection of claim 21. Appellant argues on page 18 of the brief:
Burchetta's system does not generate a complaint remedy offer as required
by claim 21. Instead, under pre-established condition, Burchetta's system
computes a settlement amount that is not one of the numbers entered by the users
(column 4, lines 54-67). The parties cannot disagree with Burchetta's computed
settlement amount, so it is not an offer.

Further, appellant argues that Sloo does not teach this limitation.
We are not persuaded by appellant’s argument. We note that Burchetta compares
each party’s offer with the counter party’s offer of the same number, i.e. each party’s first
offer is compared, if there is no match, each party’s second offer is compared. See
Column 4, lines 48 through 52. The parties can enter all of the offers at once or over
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time. See Column 7, lines 29 through 35. If as discussed supra there is no match for the
given round the system moves to the next round and the parties are notified. In the
situation where the first party enters all three offers at once and the second party enters
the offers at the beginning of each round, the first party’s offers, will be stored in the
computer, at the beginning of the second or third round, the computer will be generating
an offer from the first party’s previously entered data, to the second party on behalf of the
first party. Thus, we find that Burchetta does generate a complaint remedy offer as
required by claim 21 and we sustain the examiner’s rejection of claim 21.

Rejection of claims 22 through 24.
Appellant’s arguments, on pages 19 and 20 of the brief, group claims 22 through
24. Appellant states that Sloo teaches a “Request a Judge/Jury” option and that the
monitoring of compliance teaching is directed to monitoring compliance with the
judgments entered by the “Request a Judge/Jury” option. Appellant argues that a
judgment is not an agreement that is voluntarily entered into and as such Sloo does not
teach the limitation of “monitoring, at the computer, compliance by at least one of the
complainer and the respondent with terms of the agreement.”
While we concur with the appellant that Sloo teaches a “Request a Judge/Jury”
option we do not find that one skilled in the art would consider Sloo’s monitoring
compliance as limited to just judgments from the judge and jury. Sloo states, in column
11, lines 45 through 53:
For example assume that a dispute was resolved using any of the previous
routines described above, a judgment was rendered that required the subject to
reimburse the complainant for damaged merchandise, and the subject failed to
comply with the judgment. (emphasis added)

However, Sloo identifies one of the routines as “Negotiate the Complaint” as discussed
supra. We consider that one skilled in the art would recognize that Sloo in referring to
monitoring compliance with a “judgment” also includes monitoring compliance with a
negotiated settlement from the “Negotiate the Complaint” routine. Thus, we find that
Sloo does teach the limitation of “monitoring, at the computer, compliance by at least one
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of the complainer and the respondent with terms of the agreement.” As appellant has not
convinced us of error in the examiner’s rejection of claim 22 and the claims grouped
therewith, we sustain the examiner’s rejection of claims 22 through 24.

Rejection of claims 4, 11, and 25 under 35 U.S.C. § 103 (a) as being
unpatentable over Burchetta in view of Sloo, “Online Mediation Offered for
resolving E-Commerce Disputes” and Eisen.

Appellant’s arguments, on pages 20 through 22 of the brief, group claims 4, 11
and 25 together. Appellant argues, on page 20 of the brief, that Burchetta teaches away
from being modified to make use of emotional information. Appellant states that
Burchetta teaches an advantage of the system is that it avoids direct communication
between the parties and “[w]astful personality conflict[s], fruitless and unnecessary
disagreements, posturing and positioning cannot occur.” Further, on page 21 of the brief
appellant argues, “Online Mediation Offered for resolving E-Commerce Disputes” and
Eisen both discuss mediation where there is a human mediator who receives the
emotional information and performs the emotional management.
We concur with the appellant. Our reviewing court has said “[A] reference may
be said to teach away when a person of ordinary skill, upon reading the reference, would
be discouraged from following the path set out in the reference, or would be lead in a
direction divergent from the path that was taken by the applicant. The degree of teaching
away will of course depend upon the particular facts; in general, a reference will teach
away if it suggests that the line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d
551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994) (citing United States V. Adams, 383
U.S. 39, 52, 148 USPQ 478, 484 (1966)). However, a reference that “teaches away”
does not per se preclude a prima facie case of obviousness, but rather the “teaching
away” of the reference is a factor to be considered in determining unobviousness. Id 27
F.3d at 552, 31 USPQ 2d at 1132. We find, as appellant asserts that one of the stated
purposes of Burchetta is to deal exclusively with the bottom line, and prevent personality
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conflicts, unnecessary disagreements, posturing and positioning. See column 5, lines 1
through 8. Claim 4 recites: “receiving emotional detail information.” Claims 11 and 25
contain similar limitations. We consider this to be information relating to the feelings of
the user and not information directed to the contents of the offer. See for example
appellant’s specification on page 14, lines 22 through 30. We consider this to be at odds
with Burchetta’s teaching of dealing exclusively with the bottom line and avoiding the
emotional aspects of negotiating. Further, we do not find that the disclosures of Sloo,
“Online Mediation Offered for resolving E-Commerce Disputes” and Eisen present
sufficient suggestion that Burchetta’s system should be modified in the face of the
teaching away. Accordingly, we will not sustain the examiner’s rejection of claims 4, 11,
and 25.

Rejection of claims 20 and 26 under 35 U.S.C. § 103 (a) as being
unpatentable over Burchetta in view of “Online Mediation Offered for resolving E-
Commerce Disputes” and Eisen.
Claim 20 recites the limitation “receiving, at a computer, emotional detail
information from the complainer,” claim 26 is dependent upon claim 20. As discussed
supra, with respect to claim 4, we find that Burchetta provides strong suggestion away
from using such information and that we do not find that “Online Mediation Offered for
resolving E-Commerce Disputes” and Eisen present sufficient suggestion that
Burchetta’s system should be modified in the face of the teaching away. Accordingly,
we will not sustain the examiner’s rejection of claims 20 and 26 for the reasons stated
supra with respect to claim 26.
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Conclusion
In summary, we sustain the examiner’s rejection of claims 1 through 3, 5, 6, 8, 9,
14 through 19 and 21 through 24 under 35 U.S.C. § 103 (a). However, we will not
sustain the examiner’s rejection of claims 1, through 6, 8, 9, 11 and 14 through 26 stand
rejected under 35 U.S.C. § 101, nor will we sustain the examiner’s rejection of claims 4,
11, 20, 25 and 26 under 35 U.S.C. § 103. The decision of the examiner is affirmed-in-
part.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

REN/vsh
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BRENDA POMERANCE
LAW OFFICE OF BRENDA POMERANCE
260 WEST 52 STREET SUITE 27B
NEW YORK NY 10019

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