Ex Parte Quinlan et al

Patent Trial and Appeal Board

Sep 19, 2016

12718784 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121718,784 03/05/2010
52128 7590 09/21/2016
LOUIS WU
P.O. BOX 10074
OAKLAND, CA 94610
FIRST NAMED INVENTOR
Marilyn C. Quinlan
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.
RSKRAD-0001 5606
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
info@wuiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARILYN C. QUINLAN, MARCIA H. KAWABATA, and
BRENDANP. QUINLAN
Appeal2014-005212
Application 12/718,7841
Technology Center 3600
Before JOSEPH A. FISCHETTI, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 "Inventors Marilyn Quinlan, Marcia H. Kawabata, and Brendan P.
Quinlan, are the real parties in interest." Appeal Br. 3.
Appeal2014-005212
Application 12/718, 7 84
ILLUSTRATIVE CLAIM
1. An electronic system for assisting members of an
intermediary membership to match a consumer request with
substantially current appetites of members of a supplier
membership to provide goods that may satisfy the consumer
request, comprising:
a compilation of electronic entries, each entry setting
forth a substantially current appetite of a different supplier
member, wherein
each entry has a unique identifier for its supplier
member,
each current appetite includes at least one
subappetite,
each subappetite is at least partially classifiable by
a first attribute selected from a first class of attributes and
by a second attribute selected from a second class of
attributes, and
the first and second classes of attributes share no
common attribute with each other;
an electronic entry-updating means for allowing each
supplier member to update its entry at will;
an electronic query means for allowing intermediary
members to input a consumer request as a query that comprise
[sic] first and second subqueries;
an electronic filtering means for determining whether any
entry from the compilation matches the query, wherein any
matching entry must include a subappetite having first and
second attributes that match the first and second subqueries,
respectively;
display means for displaying at least the unique identifier
of any matching entry determined by the electronic filtering
means; and
an electronic membership rights means for providing
different systemic rights for supplier members, intermediary
members, and consumers.
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REJECTIONS
I. Claims 1-20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 1-20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter that the Appellants regard as the
invention.
III. Claims 1-11 and 13-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Schoenberg (US 2007/0150372 Al, pub. June 28,
2007).
IV. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schoenberg and Bartel (US 2007 /0260526 Al, pub. Nov. 8, 2007).
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 9-21 and the Answer at pages 7-12, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
Rejections I and II
According to the Examiner, the Appellants' Specification does not
provide specific support for the means-plus-function limitations of claims
1-20 that would comply with 35 U.S.C. § 112, sixth paragraph, such that
these claims lack written description support, in violation of 35 U.S.C.
§ 112, first paragraph, and also do not comply with the definiteness
requirement of 35 U.S.C. § 112, second paragraph. Final Action 2-9;
Answer 3-7.
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In order to comply with 35 U.S.C. § 112, sixth paragraph, the written
description must disclose structure corresponding to a means-plus-function
claim limitation in such a manner that one skilled in the art will understand
what structure, material, or acts will perform the recited function. Atmel
Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir.
1999).
The means-plus-function limitations appear in independent claims 1,
19, and 20, which the Appellants argue together as a group. Appeal Br. 7-9.
However, the "electronic membership rights means" is present in
independent claim 1 only. The other means-plus-function limitations are
present in all three independent claims (1, 19, and 20). The Appellants do
not contend that the identified means-plus-function limitations present in
claims 1, 19, and 20 should be construed differently for different claims.
Claim 1 is selected for analysis herein. See 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants argue that paragraphs 39, 42, 67, 107-112, and 116 of
the Specification provide undifferentiated support for all of the means-plus-
function limitations. Appeal Br. 7-8. The Examiner correctly determines
(Answer 4--5) that these portions of the Specification do not provide
adequate support under 35 U.S.C. § 112, sixth paragraph, for any of the
claimed means-plus-function limitations.
However, as explained below, with regard to the individual means-
plus-function limitations, other disclosures identified by the Appellants
provide adequate support for these limitations. Therefore, the rejections of
claims 1-20 under 35 U.S.C. § 112, first paragraph (written description), and
35 U.S.C. § 112, second paragraph (definiteness), are not sustained.
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1. "electronic entry-updating means for allowing each
supplier member to update its entry at will"
The Appellants contend that the "electronic entry-updating means" is
supported by the Specification at paragraphs 23, 25, 49-59, and Figure 1
(steps 11-18). Appeal Br. 4, 8.
The Examiner (Answer 5) finds that paragraphs 49-59 refer to steps a
user might take to update material, but is silent as to specific structure that
might implement the recited means.
However, Figure 1 (steps 11-18) identifies a system with user access
to a "server" with searchable "fields of information" that "displays user's
appetite list comprising a plurality of subappetites" wherein "[t]he user may
edit or delete information and save changes." See Spec. i-fi-191-98
(describing steps 11-18), Fig. 1. A person of ordinary skill in the art would
understand the description in steps 11-18 as structure, material, or acts that
can perform the recited function of the "electronic entry-updating means."
2. "electronic query means for allowing intermediary
members to input a consumer request as a query that
comprise [sic] first and second subqueries"
The Appellants contend that the "electronic query means" is
supported by the Specification at paragraphs 23, 25, 60-63, and Figure 1
(steps 19-26). Appeal Br. 4, 8.
Paragraph 62 states:
Various known electronic query means may be adapted
for used in conjunction with the invention. For example, U.S.
Patent No. 5,978,798 to Pozbabski et al. describes methods for
accessing databases that comprise a plurality of entries
involving headwords. In addition, search engine technologies
may be adapted to analyze the contents of each entry to
determine how it should be indexed relative to a query.
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Spec. if 62.
According to the Examiner, the items in paragraph 62 may not be
relied upon as providing support for the limitation "because they are merely
examples"; therefore the "electronic query means" must be interpreted as
"broadly as would be known to one of ordinary skill in the art" and would
"include other examples beyond those provided by Appellant." Answer 6.
To the contrary, the scope of a means-plus-function term is limited to
the particular structures (and their statutory equivalents) that the
corresponding disclosure describes as performing the recited function, even
if a person of ordinary skill in the art would know that other structures could
be employed to perform the function. See Ergo Licensing, LLC v.
CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012). Thus,
exemplary embodiments provided in the Specification may constitute
disclosure compliant with 35 U.S.C. § 112, sixth paragraph, if a person
skilled in the art would understand such structure, material, or acts so
described to perform the recited function.
Here, a person skilled in the art would regard the disclosure of
"accessing databases that comprise a plurality of entries involving
headwords" (Spec. if 62) to describe structure sufficient to perform the
claimed function of the "electronic query means."
The Examiner did not address the disclosure relating to steps 19-26 of
Figure 1 (Spec. iii! 99-106), which describes query entries using a "drop
down menu and/or text field" (id. if 103), a "descriptive word (wildcard)"
(id. if 104), and selecting the desired SIC ("Standard Industry
Classification") code and TOI ("Type of Insurance") code (id. if 103). A
person of ordinary skill in the art would understand the description in steps
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19-26 as structure, material, or acts for performing the recited function of
the "electronic query means" limitation.
3. "electronic filtering means for determining whether any
entry from the compilation matches the query, wherein any
matching entry must include a subappetite having first and
second attributes that match the first and second
subqueries, respectively"
The Appellants contend that the "electronic filtering means" is
supported by the Specification at paragraphs 23, 25, 77-79, 103, and Figure
1 (steps 23-26). Appeal Br. 4, 8.
The Examiner considered only paragraphs 77-79 of the Specification,
finding them to lack structure for performing the recited function. Answer
6.
Although we agree with the Examiner's finding that paragraphs 77-79
do not identify structure, material, or acts for performing the recited
function, the Examiner did not address the disclosure relating to steps 23-26
of Figure 1. This disclosure (i-fi-f l 02-106) describes various database
searching/matching techniques involving defined fields, which a person of
ordinary skill in the art would regard as sufficient structure for performing
the recited function of the "electronic filtering means" limitation.
4. "display means for displaying at least the unique identifier
of any matching entry determined by the electronic
filtering means"
The Appellants contend that the "display means" is supported by the
Specification at paragraphs 23, 64, and Figure 1 (steps 6, 11-13, 19-21, and
26). Appeal Br. 4, 9. The identified "computer monitors, printers, portable
media players, [and] cellular phones" (Spec. i164) identifies structure
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capable of performing the recited function, thus satisfying 35 U.S.C. § 112,
sixth paragraph.
The Examiner states that such disclosure may not be relied upon
because the Specification "refers to these as being exemplary." Answer 6.
As explained above, their characterization as examples does not preclude
such structures from consideration for satisfying 35 U.S.C. § 112, sixth
paragraph.
5. "electronic membership rights means for providing
different systemic rights for supplier members,
intermediary members, and consumers"
The Appellants contend that the "electronic membership rights
means" is supported by the Specification at paragraphs 47, 65-70, and
Figure 1 (steps 2-10). Appeal Br. 4, 9.
According to the Examiner, some disclosed technologies might
identify users or their characteristics, but none of the identified disclosure is
unambiguously liriked to the "electronic membership rights means" (Answer
6-7).
Yet, the described technology, such as the "CAPTCHA" technology
for distinguishing humans from machines, could perform the recited
function, "when membership eligibility is limited to humans." Spec. i-f 69.
Furthermore, steps 2-10 of Figure 1 describe log-in and password
technologies that can also be used to "provid[ e] different systemic rights for
supplier members, intermediary members, and consumers," per the claim
limitation at issue. See Spec. i-fi-1 82-90 (describing Fig. 1, steps 2-10).
Therefore, the Specification describes structure, material, or acts that a
person skilled in the art would regard as performing the recited function of
the "electronic membership rights means."
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Rejections III and IV
As to the rejections based upon 35 U.S.C. § 103(a), the Appellants
argue claims 1-11 and 13-20 together (Appeal Br. 9-14) and do not set
forth any separate argument for claim 12 (id. at 14). Claim 1 is selected for
analysis herein. See 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants' arguments all concern the alleged failure of
Schoenberg to teach or suggest features of independent claim 1. As
explained below, the Appellants' arguments are not persuasive of error on
these grounds.
The Appellants argue that the claim term "intermediary," as used in
Schoenberg, does not describe a type of membership or input, where
"intermediary members" have a distinct set of rights relative to other
members. Appeal Br. 11. The Appellants argue Schoenberg teaches away
from the claimed approach by replacing the claimed "intermediar[ies]" with
a brokering system. Appeal Br. 11.
Yet, as the Examiner correctly explains, the role that the Appellants
ascribe to the claimed "intermediary members" is an intended use only,
which does not distinguish Schoenberg. See Answer 8.
Further, Schoenberg does not teach away from the claimed subject
matter, which would require the reference to "criticize, discredit, or
otherwise discourage" the claimed technique. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). As the Examiner explains, Schoenberg does not
criticize or discourage the allocation of differing rights to different classes of
members; to the contrary, Schoenberg implements such a regime. Answer
8-9 (citing Schoenberg i-fi-13, 11-12, 22, 26).
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The Appellants also contend that Schoenberg lacks the claimed
"appetite," which the Appellants construe to mean an entity's desire or
receptivity to engage in a certain type of transaction. Appeal Br. 12 (citing
Spec. i-f 34 ). The Appellants argue that the Final Office Action incorrectly
equates the claimed "appetite" with the offers or opportunities depicted in
Schoenberg. Id. (citing Schoenberg i-fi-13, 9-11).
According to the Examiner, the Final Office Action employed the
broadest reasonable construction of "appetite," without importing limitations
from the Specification. Answer 10. As used in claim 1 and the
Specification, an "appetite" refers to the type of transaction that an entity is
available to perform. See, e.g., Spec. i-f 72 ("[A Jn appetite, in insurance
industry parlance, sets forth the kind of business an insurance carrier
wants.") In claim 1, an "appetite" must be represented in a form that can be
used in the claimed system, such that the "appetite" (specifically, the
"attribute[ s ]" of corresponding "subappetite[ s ]") may be "match[ ed]" with a
"query." As represented in such a form- e.g., as an item in a database
field (see Spec. i-fi-1 93-106) - the manifest "appetite" is not distinguishable
from the vendor opportunities described in Schoenberg.
The Appellants contend that the rejection of claim 1 is erroneous
because the Final Office Action confuses the claim terms "unique identifier"
and "attribute," by stating that the "unique identifier" could be a verbal
description of a product. Appeal Br. 9, 12, 13-14. Further, the Appellants
argue that such a verbal description might be insufficient to identify the
associated entry (where all matching entries may be described using the
same verbal description) and, thus, would not be "unique." Id. at 13-14.
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The claimed "unique identifier" identifies the associated entry and
respective member. See Appeal Br. 15, 17-18, Claims App., claim 1 ("each
entry has a unique identifier for its supplier member"), claim 19 ("each entry
is identified by a unique identifier"), claim 20 ("each entry has a unique
identifier for its member").
We agree with the Examiner that the use of the claimed "unique
identifier" would be obvious in view of Schoenberg's disclosure of database
fields providing information about a product opportunity that would match
consumer characteristics (see Final Action 14, 17; Answer 10-11), because
of the understanding that a person of ordinary skill in the art would possess
regarding the operation of database systems, such as those described in
Schoenberg, which match items in corresponding data fields (see
Schoenberg i-fi-f 14, 25).
Further, the Appellants' argument (Appeal Br. 13-14) that a verbal
description might not be sufficiently "unique" to be a "unique identifier" is
not supported by evidence and, in any event, is at odds with the
Specification's characterization that "[i]n some instances, the unique
identifier includes contact information for its supplier member" (Spec. i1 53).
The Appellants (Appeal Br. 12-13) argue that the Final Office Action
fails to demonstrate that Schoenberg teaches the claimed "intermediary
members" and "supplier members," which the Final Office action maps,
respectively, to Schoenberg's examples of Blue Cross and a pharmaceutical
company seeking subjects for a clinical trial (Final Action 10-15 (citing
Schoenberg i-fi-18-10, 13, 14, 25)). The Appellants contend that Blue Cross
"is a well-known insurance underwriter, not an insurance broker," and thus
should be categorized as a "supplier," not as an "intermediary." Appeal Br.
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12. According to the Appellants, pharmaceutical companies "routinely pay
[clinical trial] subjects ... not the other way around." Id. at 13.
Yet, as the Examiner correctly finds, Schoenberg identifies healthcare
management and delivery entities, such as Blue Cross, as users of the
disclosed intermediary system. Answer 12 (citing Schoenberg i-f 10). Such
entities function as the claimed "intermediary members" by endorsing
products or services provided by "supplier members" to "customers" who
use the products (e.g., glucometers) or services (e.g., a pharmaceutical
company looking for eligible members for a clinical trial). Id. (citing
Schoenberg i-fi-1 14, 17).
The Appellants' argument that that pharmaceutical companies pay
clinical trial subjects and thus may not constitute the claimed "member[ s] of
a supplier membership" (Appeal Br. 13) is not supported by evidence.
Moreover, this argument is not commensurate with the scope of the claims,
which include no recitation about any entities making payments to anyone.
See In re Self, 671F.2d1344, 1348 (CCPA 1982).
In view of the foregoing, the Appellants' arguments regarding the
§ 103 rejections of claims 1-20 are not persuasive of error, such that the
rejections should be sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 112, first paragraph.
We REVERSE the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 112, second paragraph.
We AFFIRM the Examiner's decision rejecting claims 1-20 under 35
U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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