Ex Parte Rae et alDownload PDFPatent Trial and Appeal BoardDec 23, 201613341066 (P.T.A.B. Dec. 23, 2016) 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. 13/341,066 12/30/2011 Robert L. Rae SEC-P001CP4D1 2410 74243 7590 Fogarty, L.L.C. P.O. Box 703695 Dallas, TX 75370-3695 12/28/2016 EXAMINER LAEKEMARIAM, YOSEF K ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 12/28/2016 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@fogartyip.com docket @ fogarty ip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT L. RAE, JOHN J. VIOLA, and RICHARD FALCONE Appeal 2015-001732 Application 13/341,066 Technology Center 2600 Before ERIC S. FRAHM, LARRY J. HUME, and JOHN D. HAMANN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-001732 Application 13/341,066 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 43—45, 47, 50—56, 58, 61, 63, 69, 71, 84—90, 93—105, and 107-110. Claims 1^12, 46, 48, 49, 57, 59, 60, 62, 64—68, 70, 72-83, 91, 92, 106, and 111—132 have been canceled. System claim 43 and method claim 84 are the only independent claims presented on appeal, and relate to management of information and management and transaction functionality with respect to the operation of a controlled environment facility (e.g., a prison). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Examiner has rejected: (i) claims 43, 44, 52, 53, 56, 58, 61, 63, 69, 71, 84, 85, 87, 90, 93, 95, 96, 98—105, and 107—109 under 35 U.S.C. § 102(e) as being anticipated by Gainsboro (US 2001/0036821 Al; published Nov. 1, 2001) (Final Act. 2—7; Ans. 2—8); (ii) claims 47, 50, 51, 54, 55, 86, 88, 89, 97, and 110 under 35 U.S.C. § 103(a) as being unpatentable over Gainsboro and Elliott (US 2004/0022237 Al; published Feb. 5, 2004) (Final Act. 8—10; Ans. 8—10); and (iii) claims 45 and 94 under 35 U.S.C. § 103(a) as being unpatentable over Gainsboro and Nguyen (US 5,861,810; issued Jan. 19, 1999) (Final Act. 10-11; Ans. 10-11). We have reviewed Appellants’ arguments in the Briefs (App. Br. 4-40; Reply Br. 2—7), the Examiner’s rejection (Final Act. 2—11; Ans. 2—11), and the Examiner’s response (Ans. 11—15) to Appellants’ arguments. 2 Appeal 2015-001732 Application 13/341,066 Based on Appellants’ arguments (App. Br. 5—9, 16—18; Reply Br. 2—5), we conclude the Examiner erred in applying Gainsboro as an anticipating reference for Appellants’ claims 43 and 84. Specifically, we agree with Appellants (App. Br. 5—7) that Gainsboro is not directed to a system that manages information concerning facility operations regarding a controlled environment facility, as recited in independent claim 43 and similarly recited in remaining independent claim 84. As described in Appellants’ Specification (Spec. 125), the “controlled environment information management system 110 is adapted to include intelligence/management functionality 111 and transaction/commerce functionality 112. Preferably, intelligence/management functionality 111 provides for collection, storage, and movement of information for managing various operational aspects of the controlled environment facility, including the management of personnel, residents, vendors, and resources.” In this light, we cannot agree with the Examiner that Gainsboro’s disclosure of managing wireless telephone activity within a facility falls within the scope of the recited management of the “operation of the controlled environment facility” (claims 43 and 84), and “management aspects of said controlled environment facility” (claim 43). Although Gainsboro’s call management may be considered a “communication aspect of said controlled environment facility” (claim 43), the “management aspect” as recited in claim 43 cannot encompass Gainsboro’s call management. Further, Appellants’ Specification (Spec. 125) describes the “[transaction/commerce functionality 112 preferably provides for the instigation and completion of various transactions, including requesting and providing goods and services, determining credit worthiness, verifying 3 Appeal 2015-001732 Application 13/341,066 account balance and status, and providing for payment.” In this light, we cannot agree with the Examiner (Final Act. 3) that Gainsboro’s disclosure of managing wireless telephone activity within a facility, even including accepting collect calls, falls within the scope of the recited “transaction functionality” which provides the functions described in paragraph 25 of the Specification in claim 84. Because the Examiner does not respond to Appellants’ arguments presented in the Appeal Brief (App. Br. 16—18) regarding claim 84 (see generally Ans. 11—15), we are constrained by the record before us to conclude Gainsboro does not anticipate the subject matter of claim 84. In summary, Gainsboro fails to anticipate the system and method for managing information with respect to a controlled environment facility, including providing management and transaction functionality, as recited in independent claims 43 and 84. Therefore, we do not sustain the Examiner’s anticipation rejection of independent claims 43 and 84, as well as dependent claims 44, 52, 53, 56, 68, 61, 63, 69, 71, 85, 87, 90, 93, 95, 96, 98-105, and 107—109 depending respectively therefrom. For similar reasons, and (i) because claims 45, 47, 50, 51, 54, 55, 86, 88, 89, 94, 97, and 110 each ultimately depend from respective ones of independent claims 43 and 84 and include similar limitations; and (ii) the Examiner’s obviousness rejections are based on the Examiner’s erroneous anticipation findings with regard to Gainsboro discussed supra, we likewise do not sustain the Examiner’s remaining two obviousness rejections of the remaining dependent claims over the various combinations relying on Gainsboro as the primary reference. 4 Appeal 2015-001732 Application 13/341,066 CONCLUSION Appellants have persuaded us of error in the Examiner’s decision to reject claims 43—45, 47, 50-56, 58, 61, 63, 69, 71, 84—90, 93—105, and 107-110. DECISION We reverse the decision of the Examiner to reject claims 43—45, 47, 50-56, 58, 61, 63, 69, 71, 8A-90, 93-105, and 107-110. REVERSED 5 Copy with citationCopy as parenthetical citation