Ex Parte Vock

Board of Patent Appeals and Interferences

May 25, 2010

10304334 (B.P.A.I. May. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte CURTIS A. VOCK 8
___________ 9
10
Appeal 2009-009593 11
Application 10/304,334 12
Technology Center 3600 13
___________ 14
15
Decided: May 25, 2010 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. 19
FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
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Application 10/304,334

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STATEMENT OF THE CASE 1
Curtis A. Vock (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 1, 2, and 4-23, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a system that encourages the selling of patent 10
applications and ideas without the necessity of obtaining an actual patent 11
(Specification 1:16-17). 12
An understanding of the invention can be derived from a reading of 13
exemplary claims 1 and 15, which are reproduced below [bracketed matter 14
and some paragraphing added]. 15
1. A method for strengthening and commercializing intellectual 16
property, comprising the steps of: 17
[1] posting an idea comprising pending intellectual property 18
(IP) on-line; 19

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 5, 2008) and Reply Brief (“Reply Br.,” filed May 19,
2008), and the Examiner’s Answer (“Ans.,” mailed March 17, 2008), and
Final Rejection (“Final Rej.,” mailed March 5, 2007).
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[2] searching for one or both of companies and individuals 1
engaged in technology similar to the idea; and 2
[3] notifying one or both of the companies and individuals of 3
the pending IP through a network. 4
5
15. A system for strengthening and commercializing intellectual 6
property, comprising: 7
[1] a server for posting, on-line, a plurality of pending 8
intellectual property (IP), each pending IP including one or both 9
of an image and associated text; 10
[2] a network connected with the server for accessing the 11
pending IP publicly; the server receiving information from third 12
parties regarding the pending IP, the information including one 13
or both of prior art and terms for at least one of the pending IP. 14
15
THE REJECTIONS2 16
The Examiner relies upon the following prior art: 17
Thakur US 2002/0091543 Jul. 11, 2002
18
Claims 1, 2, and 4-23 stand rejected under 35 U.S.C. § 102(e) as 19
anticipated by Thakur. 20
21

2 The Examiner has withdrawn the previously asserted rejection of claims 1,
2, and 4-23 under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which the
Appellant regards as the invention (Ans. 2).
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ISSUES 1
The issue of whether the Examiner erred in rejecting claims 1, 2, and 4-2
23 stand rejected under 35 U.S.C. § 102(e) as anticipated by Thakur turns on 3
whether Thakur describes each of the limitations of claim 1 and whether the 4
Appellant presents a rationale that distinguishes the claimed invention from 5
the findings of the Examiner. 6
7
FACTS PERTINENT TO THE ISSUES 8
The following enumerated Findings of Fact (FF) are believed to be 9
supported by a preponderance of the evidence. 10
Facts Related to the Prior Art 11
Thakur 12
01. Thakur is directed to a method, system, and process for 13
acquiring, evaluating, patenting, and marketing innovative ideas, 14
disclosures, and novel concepts (Thakur ¶ 0002). 15
02. Thakur describes a system that collects and makes available 16
inputs in the form of ideas, concepts, design, method, processes, 17
and software (Thakur ¶ 0009). An intellectual property server is 18
implemented for submitting innovative ideas and a database 19
collects and stores the intellectual property ideas (Thakur ¶ 0026). 20
The collected inputs are sorted into technical areas and are made 21
available to potential users (Thakur ¶ 0009). 22
03. The collected inputs of ideas are evaluated by corporations or 23
other users of the system, where the evaluations can include prior 24
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art searching and patentability opinions, technical feasibility, and 1
commercial viability (Thakur ¶ 0010). A decision is generated to 2
determine whether to seek patent protection, refining the 3
invention, or declining it (Thakur ¶ 0011). The system classifies 4
the field of invention, performs a prior art search, determines 5
technical feasibility and commercial viability, performs a legal 6
evaluation, and then generates a recommendation of whether to 7
file a patent application (Thakur ¶’s 0047 – 0062). The system 8
reduces the cycle time from concept to market by facilitating 9
information flow between innovators and potential users (Thakur 10
¶ 0012). 11
04. Once an inventor attains rights to the IP, the inventor may 12
pursue an appropriate company whose interests overlap with the 13
invention, or seek funding from a company or other investor to 14
pursue the invention on their own and use the protected invention 15
to build a new product (Thakur ¶ 0006). A searched is conducted 16
for identifying potential companies that may be interested in 17
buying the rights of use for applied patents (Thakur ¶ 0032). A 18
database containing evaluated descriptions is made available to 19
potential users or customers (Thakur ¶ 0067). Customers can 20
review the inventions by category, or by searching for solutions to 21
problems they would like to solve (Thakur ¶ 0067). 22
Facts Related To The Level Of Skill In The Art 23
05. Neither the Examiner nor the Appellant has addressed the level 24
of ordinary skill in the pertinent art of intellectual property 25
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ecommerce systems. We will therefore consider the cited prior art 1
as representative of the level of ordinary skill in the art. See 2
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 3
(“[T]he absence of specific findings on the level of skill in the art 4
does not give rise to reversible error ‘where the prior art itself 5
reflects an appropriate level and a need for testimony is not 6
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 7
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 8
Facts Related To Secondary Considerations 9
06. There is no evidence on record of secondary considerations of 10
non-obviousness for our consideration. 11
PRINCIPLES OF LAW 12
Anticipation 13
"A claim is anticipated only if each and every element as set forth in the 14
claim is found, either expressly or inherently described, in a single prior art 15
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 16
631 (Fed. Cir. 1987). "When a claim covers several structures or 17
compositions, either generically or as alternatives, the claim is deemed 18
anticipated if any of the structures or compositions within the scope of the 19
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 20
Cir. 2001). "The identical invention must be shown in as complete detail as 21
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 22
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 23
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 24
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 25
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1
ANALYSIS 2
Claims 1, 2, and 4-23 rejected under 35 U.S.C. § 102(e) as anticipated 3
by Thakur 4
The Appellant first contends that (1) Thakur describes posting 5
innovation for review and evaluation, but fails to describe the posting of a 6
patent application, as required by claims 1 and 15 (App. Br. 8). The 7
Appellant subsequently agrees that Thakur describes adding patent 8
applications for review by authorized sources, but fails to describe on-line 9
access to the pending IP, not just a summary of the IP, for any party to 10
review (Reply Br. 4-5). 11
We disagree with the Appellant. Limitation [1] of claims 1 and 15 12
requires posting pending intellectual property on-line. As acknowledged by 13
the Appellant, Thakur describes posting patent applications for review (FF 14
03-04 and Reply Br. 4). The Appellant further argues that this posting by 15
Thakur is merely a summary of the IP and is only accessible by authorized 16
users (Reply Br. 4-5). However, these limitations are not found in the claim 17
language. Limitation [1] only requires posting the pending intellectual 18
property and does not require the material to be anything more than a 19
summary. Furthermore, there is nothing in the claim language that 20
specifically requires access to the pending intellectual property to be 21
available to any party for review. Additionally, Thakur does describe that 22
descriptions of the inventions, not just summaries, are made available to any 23
potential user or customer (FF 04). Since the Appellant is arguing 24
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limitations not found in the claim language, this argument is not found 1
persuasive. 2
The Appellant also contends that (2) Thakur fails to describe searching 3
for companies or individuals engaged in technology similar to the idea, as 4
required by limitation [2] of claim 1 (App. Br. 8 and Reply Br. 4-5). We 5
disagree with the Appellant. Limitation [2] of claim 1 only requires 6
searching for either a company or an individual engaged in technology 7
similar to the pending intellectual property. Thakur describes generating 8
market interest in patent pending ideas and further allows inventors to search 9
for companies whose technology overlaps their inventions (FF 04). A 10
company that has overlapping technology with a pending idea is engaged in 11
technology that is similar to the pending idea. Thakur even further describes 12
that potential users or customers have the ability to search through a pending 13
intellectual property database to find inventions that solve any problem a 14
user may need solved (FF 04). A problem that a company or an individual 15
wants to solve requires that company or individual to be involved in 16
technology that is at least tangential to the pending idea. As such, Thakur 17
explicitly describes the feature of searching for a company or individual 18
engaged in similar technology. 19
The Appellant further contends that (3) Thakur fails to describe 20
notification as recited in claim 1 (App. Br. 8 and Reply Br. 6). We disagree 21
with the Appellant. Limitation [3] of claim 1 requires notifying an 22
individual or company of the pending IP through a network. The Examiner 23
found that the term notify only requires that information be given or notice 24
given and therefore allowing a user to access to a database of information is 25
the same as providing notification to that user (Ans. 4 and 14-15). As such, 26
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the Examiner found that Thakur describes allowing an individual to access a 1
database of pending intellectual property (FF 04) and thereby notifies the 2
individual of pending intellectual property (Ans. 4 and 14-15). The 3
Appellant only argues that the terms notify or inform are entirely absent 4
from Thakur (Reply Br. 5) and fails to provide any further rationale that 5
refutes the Examiner’s finding that Thakur functionally describes a 6
notification step. Since the Appellant’s argument is merely a conclusory 7
statement and fails to provide any distinguishing rationale, it is not found to 8
be persuasive. 9
The Appellant additionally contends that (4) Thakur fails to describe 10
applying for a patent application on the idea in the context of posting the 11
patent application, as required by claim 2 (App. Br. 8); automatically 12
notifying the companies and individuals through the Internet, as required by 13
claims 4 and 20 (App. Br. 8-9 and Reply Br. 6); emailing as required by 14
claims 5 and 21 (App. Br. 9 and Reply Br. 6); using a network to collect 15
terms for a license or purchase of IP and automatically accepting terms in 16
on-line negotiations, as required by claims 11-14 (App. Br. 9 and Reply Br. 17
7); a server automatically submitting a prior art statement to the patent 18
office, as required by claim 16 (App. Br. 9 and Reply Br. 7); a server that 19
automatically agrees to or denies terms to buy or license pending IP, as 20
required by claim 17 (App. Br. 9 and Reply Br. 7); a server that deletes 21
pending IP in the event that the terms are net met, as required by claim 18 22
(App. Br. 9 and Reply Br. 7); and a server that deletes pending IP in the 23
event that prior art is found which anticipates the pending IP, as required by 24
claim 19 (App. Br. 9 and Reply Br. 7). We disagree with the Appellant. 25
The Examiner found that Thakur describes a server that receives inputs that 26
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comprise ideas that are evaluated, including performing prior art searches, in 1
order to determine whether a patent application should be filed and if the 2
input specifications are not met then the idea is discarded (Ans. 5-8). The 3
Examiner also found that users can access the server through the Internet to 4
view descriptions and images of the idea and also uses the latest in 5
communication technologies (Ans. 5-8). The Appellant again fails to 6
provide any rationale that distinguishes the claimed invention from the prior 7
art. As such, the Appellant’s conclusory arguments of patentability are not 8
found persuasive. 9
10
CONCLUSIONS OF LAW 11
The Examiner did not err in rejecting claims 1, 2, and 4-23 under 35 12
U.S.C. § 102(e) as anticipated by Thakur. 13
14
DECISION 15
To summarize, our decision is as follows. 16
• The rejection, of claims 1, 2, and 4-23 under 35 U.S.C. § 102(e) as 17
anticipated by Thakur, is sustained. 18
19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 21
22
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AFFIRMED 1
2
3
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mev 5
Address 6
CURTIS A. VOCK 7
LATHROP & GAGE L.C., SUITE 300 8
4845 PEAR EAST CIRCLE 9
BOULDER, CO 80301 10