Ex Parte Steen

Patent Trial and Appeal Board

Sep 4, 2013

11935150 (P.T.A.B. Sep. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GARNET HUGH STEEN
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Appeal 2011-008376
Application 11/935,150
Technology Center 3600
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Before: ANTON W. FETTING, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008376
Application 11/935,150

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-9 and 11-201.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a method and system for a credit
report reminding service (Spec., para. [0002]).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A computer-implemented method for reminding a
consumer to obtain a plurality of free credit reports from a
plurality of credit reporting bureaus, comprising:
receiving a request from the consumer, through a website
user interface, to provide reminders to obtain free credit reports
from the plurality of credit reporting bureaus;
querying the consumer, through the website user
interface, for identification information and past credit reporting
information;
storing the identification information and the past credit
reporting information into one or more credit report reminder
service databases;
determining, with a credit report reminder server and
using the past credit reporting information stored in the one or
more credit report reminder service databases, a first date on
which a reminder is to be sent to the consumer with respect to a
first credit reporting bureau of the plurality of credit reporting
bureaus; and
transmitting a first reminder message to the consumer on
the first date, via the credit report reminder server and across an
electronic communication network, to obtain a first free credit
report from the first credit reporting bureau.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sep. 27, 2010) and the Reply Brief (“Rep. Br.,” filed Feb. 14,
2011), and the Examiner’s Answer (“Ans.,” mailed Dec. 13, 2010).
Appeal 2011-008376
Application 11/935,150

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Claims 9 and 12 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 which Appellant regards as the invention.
Claims 1-4, 7-12, 15, 16, 19, and 20 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Guy (US 2005/0154664 Al; pub. Jul. 14,
2005), Neil J. Rubenking, MYTRUSTON, PC Magazine (Feb. 26, 2007)
(hereinafter Truston), and Sun, Get a Free Credit Report Every Four Months
(http://www.thesunsfinancialdiary.com/credit-reportlget -a-free-credit-
report-every-four-months/) (last visited Mar. 11, 2009) (hereinafter Sun).
Claims 5, 6, 13, 14, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Guy, Truston, Sun, Godley (US 2008/0040386
Al; pub. Feb. 14, 2008), and Flexo, Consumerism Commentary, 1-5 (Mar.
29, 2006) (hereinafter Flexo).
We AFFIRM.
ANALYSIS
Indefiniteness Rejection of Claims 9 and 12
We are not persuaded the Examiner erred in asserting that claims 9
and 12 are indefinite under 35 U.S.C. § 112, second paragraph (App. Br. 5-
8; Reply Br. 4-6). Appellant does not challenge the propriety of the
rejection. Instead, Appellant only requests entry of the Amendment After
Final filed January 14, 2010, which purportedly renders this rejection moot.
However, refusal by the examiner to enter an Amendment After Final relates
to a petitionable matter and not to an appealable matter. In re Schneider,
481 F.2d 1350, 1356-57 (CCPA 1973); In re Mindick, 371 F.2d 892, 894
(CCPA 1967). See also Manual of Patent Examining Procedure (MPEP) §§
1002.02(c), 1201 (8th Ed., Rev. 9, Aug. 2012). Thus, Appellant’s proper
Appeal 2011-008376
Application 11/935,150

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recourse was to file a petition under 37 C.F.R. §§ 1.127 and 1.181 to be
addressed by the Technology Center Director instead of by appeal to this
Board. Accordingly, as claims 9 and 12 are currently not amended in view
of the Amendment After Final filed January 14, 2010, and Appellant does
not substantively challenge the rejection of claims 9 and 12 in their current
form, we sustain this rejection.
Obviousness Rejection of Claims 1-4, 7-12, 15, 16, 19, and 20
We are not persuaded the Examiner erred in asserting that a
combination of Guy, Truston, and Sun renders obvious Claims 1-4, 7-12, 15,
16, 19, and 20 (App. Br. 6-7; Reply Br. 4). Appellant does not challenge the
merits of the references. Instead, Appellant filed a Declaration under 37
C.F.R. § 1.131 on July 2, 2009 to antedate the Truston reference. The
Examiner found the Declaration deficient, and issued a final rejection on
October 30, 2009. We agree with the Examiner’s analysis concerning this
Declaration on pages 5 and 6 of the final rejection. To remedy the deficient
Declaration, Appellant filed a Second Declaration under 37 C.F.R. § 1.131
on January 14, 2010. The Examiner refused entry of the Second Declaration
in an Advisory Action mailed February 4, 2010. Appellant now asks the
Board to enter the Second Declaration and review its merits in antedating the
Truston reference. We cannot. Entry of the Second Declaration after a final
rejection is a formal matter of sufficiency and propriety that is under the
Examiner’s purview. Concerning this, MPEP § 715.08 (8th Ed., Rev. 9,
Aug. 2012) reads as follows:
715.08 Passed Upon by Primary Examiner [R-6]
The question of sufficiency of affidavits or declarations
under 37 C.F.R. § 1.131 should be reviewed and decided by a
primary examiner.
Appeal 2011-008376
Application 11/935,150

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Review of questions of formal sufficiency and propriety
are by petition filed under 37 C.F.R. § 1.181. Such petitions are
answered by the Technology Center Directors (MPEP
§ 1002.02(c)).
Review on the merits of a 37 C.F.R. § 1.131 affidavit or
declaration is by appeal to the [Patent Trial and Appeal Board].
Accordingly, Appellant’s proper recourse was to file a petition under 37
C.F.R. § 1.181 to be addressed by the Technology Center Director. In the
absence of the Second Declaration, the rejection is unchallenged, and thus
we sustain this rejection.
Obviousness Rejection of Claims 5, 6, 13, 14, 17, and 18
Appellant does not challenge the rejection of claims 5, 6, 13, 14, 17,
and 18 as obvious over a combination of Guy, Truston, Sun, Godley, and
Flexo. Accordingly, we summarily sustain this rejection.
DECISION
The decision of the Examiner to reject claims 1-9 and 11-20 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)(1)(iv).
AFFIRMED

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