Ex Parte StollDownload PDFPatent Trial and Appeal BoardSep 21, 201512386487 (P.T.A.B. Sep. 21, 2015) 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. 12/386,487 04/17/2009 Frederick William Stoll JR. 384.8738USU 2191 7590 09/22/2015 Paul D. Greeley Ohlandt, Greeley, Ruggiero & Perle, L.L.P. 10th Floor One Landmark Square Stamford, CT 06901-2682 EXAMINER GOODBODY, JOAN T ART UNIT PAPER NUMBER CSDM MAIL DATE DELIVERY MODE 09/22/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte FREDERICK WILLIAM STOLL JR ___________ Appeal 2012–011448 Application 12/386,487 Technology Center 3600 ___________ Before ANTON W. FETTING, PHILIP J. HOFFMANN, and ROBERT L. KINDER, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Frederick William Stoll Jr (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 7, 8, 13, and 14, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a determination as to whether a report meets a certain level of quality, and more particularly, whether a credit report 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed April 24, 2012) and Reply Brief (“Reply Br.,” filed August 7, 2012), and the Examiner’s Answer (“Ans.,” mailed June 8, 2012), and Final Rejection (“Final Rej.,” mailed September 27, 2011). Appeal 2012-011448 Application 12/386,487 2 concerning a business entity meets a certain level of quality. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 7, which is reproduced below [bracketed matter and some paragraphing added]. 7. A system comprising: a processor; and a memory that contains instructions for controlling said processor to perform actions of: (a) receiving a request to provide a credit report about a business entity; (b) determining whether said business entity is a subsidiary of another business entity; and (c) issuing a warning if said business entity is a subsidiary of another business entity. The Examiner relies upon the following prior art: Pal US 2006/0064306 A1 Mar. 23, 2006 Kopp US 2007/0106577 A1 May 10, 2007 Dunn and Bradstreet Integrates Data in SPA’s R/3, Computergram International, Feb.9, 1999 (“Computergram”) Claims 7, 8, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Pal, and Computergram. Appeal 2012-011448 Application 12/386,487 3 ISSUES The issues of obviousness turn primarily on whether it was predictable to let a company report viewer know whether the company reported is a subsidiary. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Kopp 01. Kopp is directed to techniques for evaluating the accuracy of business intelligence data. Kopp para. 1. 02. Kopp forms a report; processes trust values, where each trust value characterizes the accuracy of an attribute of the report; combines trust values to provide an aggregate trust value associated with the report; and supplies a user with the report and the aggregate trust value. Kopp para. 8. 03. The trustworthiness of a report may be used to trigger various actions. For example, a user may be alerted to a report refresh operation only in the event that an acceptable trustworthiness level is reached. Alternately, a database administrator may be alerted when a refreshed report fails to achieve a specified data quality level. A database administrator may also use trustworthiness Appeal 2012-011448 Application 12/386,487 4 values to periodically remove untrustworthy reports from a repository. Kopp para. 43. Pal 04. Pal is directed to an on–line credit information collection and dissemination method on businesses and individuals. Pal paras. 1–2. 05. Pal describes an online Credit Information System in which Subscribers seek information on a subject business or individual. Pal paras. 17–23. Computergram 06. Computergram is directed to describing how the Dun and Bradstreet business database can be integrated in an enterprise system. Computergram 1. 07. Users can search data on subsidiary organizations from within the parent company’s records. Computergram 1. ANALYSIS Claim 1 recites 3 steps, viz. receiving a request about a business, determining whether the business is a subsidiary, and if so issuing a warning. The only other independent claim, claim 13, is similar. The claims do not recite or narrow a manner or implementation of the recited reception, determination, and issue, nor of how the request and warning are formed. Thus, the claim simply tests an input for some indication of a subsidiary company and if there is such an indication, outputting something. Whether Appeal 2012-011448 Application 12/386,487 5 the input relates to a report and the output is in some sense a warning are in the mind of the beholder and so are given no patentable weight. See King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010). (“The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.”) The Examiner found that Kopp described requesting a report and issuing an alert when report quality is deficient, and Pal described requesting a report about a company. The Examiner then found that Computergram showed that when looking at credit reports, one of ordinary skill would likely look at parent and subsidiary reports. So, as Kopp and Pal show the request for business reports and issuing some warning based on some criteria, Computergram showed it was predictable to flag the fact that a subsidiary was such, most likely by the use of the word “subsidiary” in a report. Ans. 5–6. FF 01–07. We are not persuaded by the Appellant’s argument that the Computergram article does not describe an operation where given a subsidiary, some further determination is made. App. Br. 12. This argument begs the question of how such a given is arrived at. There must be some determination of a subsidiary beforehand. In any event, Computergram is not added for bodily incorporation, but only to show it was predictable to determine whether a company was a parent or subsidiary for a credit report and indicate as such. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary Appeal 2012-011448 Application 12/386,487 6 reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). We are not persuaded by the Appellant’s argument that if a record for a company only lists subsidiaries of the company, then a search that yields that record will only provide a list of the subsidiaries of the company, and therefore, it is not true that if a user can search in one direction, they can search in the other. App. Br. 13. As answered with the prior argument, the issue is whether such searching was predictable, not whether Computergram could be physically incorporated. We are not persuaded by the Appellant’s argument that a modification of the system in Kopp to issue a warning about a business would require a change in the principle of operation of the system. App. Br. 15. The argument concerns how the warning is perceived, which again is in the mind of the beholder. The issue is whether it was predictable to issue some signal or notice if a company is a subsidiary. The viewer is free to perceive a meaning from that signal however he desires. To the extent Appellant is arguing that Kopp relies on different criteria to issue a warning, the Examiner relied on Kopp only to show that Kopp issued a warning based on quality. Appellant’s disclosure also makes the attribute of being a subsidiary a measure of quality in a credit report. Spec. paras. 2, 6, and 21. Appeal 2012-011448 Application 12/386,487 7 We are not persuaded by the Appellant’s argument that none of the references suggests that an entity being a subsidiary of another entity is a cause for alarm. App. Br. 16. This argument is not commensurate with the scope of the claim, which does not recite causing alarm. The use of the word “warning” does no more than indicate a signal or notice, which by its very nature warns of its existence. Any further mental perception behind that signal is in the mind of the beholder. CONCLUSIONS OF LAW The rejection of claims 7, 8, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Kopp, Pal, and Computergram is proper. DECISION The rejection of claims 7, 8, 13, and 14 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) (2011). AFFIRMED mp Copy with citationCopy as parenthetical citation