Ex Parte Whitmyer

Board of Patent Appeals and Interferences

Jun 11, 2007

09725394 (B.P.A.I. Jun. 11, 2007)

The opinion in support of the decision being entered today was not written 1
for publication in and is not binding precedent of the Board. 2
3
UNITED STATES PATENT AND TRADEMARK OFFICE 4
___________ 5
6
BEFORE THE BOARD OF PATENT APPEALS 7
AND INTERFERENCES 8
___________ 9
10
Ex parte WESLEY W. WHITMYER, JR. 11
___________ 12
13
Appeal 2007-1305 14
Application 09/725,394 15
Technology Center 2100 16
___________ 17
18
Decided: June 11, 2007 19
___________ 20
21
Before STUART S. LEVY, LINDA E. HORNER, and ANTON W. FETTING, 22
Administrative Patent Judges. 23
FETTING, Administrative Patent Judge. 24
DECISION ON APPEAL 25
26
27
STATEMENT OF CASE 28
This appeal from the Examiner’s rejection of claims 1-10, the only claims 29
pending in this application, arises under 35 U.S.C. § 134. We have jurisdiction 30
over the appeal pursuant to 35 U.S.C. § 6 (2002). 31
32
We AFFIRM.33
Appeal 2007-1305
Application 09/725,394

2

The Appellant invented an Internet-based system for preparing the documents 1
used for performing due diligence, transfer, and recording transfer of intellectual 2
properties pursuant to an acquisition, divestiture, merger, IPO, change of name, or 3
the like (Specification 1). An understanding of the invention can be derived from a 4
reading of exemplary claim 1, which is reproduced below. 5
1. A system for automating the recordation of a property transfer 6
comprising: 7
an Internet server; 8
a communications link between said Internet server and the Internet; 9
at least one database containing a plurality of information records 10
accessible by said Internet server, each information record including 11
an intellectual property identification number; 12
at least one database containing a plurality of recordation forms 13
accessible by said Internet server; 14
software executing on said Internet server for receiving a transfer 15
request indicative of a transfer of rights to the property; and 16
software executing on said Internet server for querying said database 17
of information records to retrieve an information record corresponding 18
to a transfer request, for querying said database of recordation forms 19
to retrieve a recordation form corresponding to said transfer request, 20
and for combining the retrieved information record with the retrieved 21
recordation form to generate a document. 22
23
This appeal arises from the Examiner’s Final Rejection, mailed May 22, 2006. 24
The Appellant filed an Appeal Brief in support of the appeal on August 23, 2006, 25
and the Examiner mailed an Examiner’s Answer to the Appeal Brief on November 26
17, 2006. A Reply Brief was filed on December 21, 2006. 27
Appeal 2007-1305
Application 09/725,394

3

PRIOR ART 1
The prior art references of record relied upon by the Examiner in rejecting the 2
appealed claims are: 3
Schneider US 5,987,464 Nov. 16, 1999 4
Fucarile US 6,766,305 B1 Jul. 20, 2004 5
(filed Mar. 12, 1999) 6
7
REJECTION 8
Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as obvious over Schneider 9
and Fucarile. 10
ISSUES 11
The Examiner finds that Schneider discloses a system for automating the 12
recordation of a property transfer that shows an Internet server; a communications 13
link between said Internet server and the Internet; at least one database containing 14
a plurality of information records accessible by said Internet server, each 15
information record including an intellectual property identification number; and 16
software executing on said Internet server for receiving a transfer request 17
indicative of a transfer of rights to the property. 18
The Examiner finds that Schneider does not explicitly disclose software for 19
querying said database of information records to retrieve an information record that 20
corresponds to a transfer request. Similarly, the Examiner finds that Schneider 21
does not explicitly disclose software for querying a database of recordation forms 22
to retrieve a recordation form corresponding to a transfer request and for 23
combining the retrieved information record with the retrieved recordation form to 24
generate a document as claimed. 25
Appeal 2007-1305
Application 09/725,394

4

The Examiner resolves this deficiency by finding that Fucarile shows: software 1
for querying said database of information records to retrieve an information record 2
corresponding to a transfer request; for querying said database of recordation forms 3
to retrieve a recordation form corresponding to said transfer request, and for 4
combining the retrieved information record with the retrieved recordation form to 5
generate a document. 6
The Examiner contends that each of these references suggests the other 7
because they can be adapted to hold license records (recordation form) and receive 8
and store access information such as the number of accesses and user information, 9
and the license server can then generate usage reports that can be used to determine 10
licensing requirements. Therefore, the Examiner concludes that it would have 11
been obvious to a person of ordinary skill to combine the teachings of Fucarile 12
with the teachings of Schneider to reach the claimed subject matter. (Answer 3-5). 13
The Appellant contends that 14
• Neither Schneider nor Fucarile teach, disclose, or suggest software executing 15
on the Internet server for querying the database of information records to 16
retrieve an information record corresponding to a transfer request, for 17
querying the database of recordation forms to retrieve a recordation form 18
corresponding to the transfer request, and for combining the retrieved 19
information record with the retrieved recordation form to generate a transfer 20
document (Br. 7-10); 21
• Neither Schneider nor Fucarile teach, disclose or suggest software executing 22
on said Internet server for receiving a transfer request indicative of a transfer 23
of rights to the property (Br. 10-11); 24
Appeal 2007-1305
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5

• Neither Schneider nor Fucarile teach, disclose, or suggest software executing 1
on the Internet server for generating a property transfer request form 2
indicative of a transfer of rights to the property as required by claim 3 3
(Br. 12); and 4
• There is no motivation to combine Schneider and Fucarile (Br. 12-14). 5
Thus, the issue pertinent to this appeal is whether the rejection of claims 1-10 6
under 35 U.S.C. § 103(a) as obvious over Schneider and Fucarile is proper. In 7
particular, the issue turns on whether Schneider and Fucarile show the contended 8
claim elements, whether it would have been obvious to a person of ordinary skill to 9
apply those elements, and whether such a person of ordinary skill would have 10
combined Schneider and Fucarile to achieve the claimed invention. 11
12
FACTS PERTINENT TO THE ISSUES 13
The following Findings of Fact (FF), supported by a preponderance of 14
evidence, are pertinent to the above issues. 15
Claim Construction 16
01. Commercial transactions are collectively referred to as transfers 17
(Specification 1). The Specification states that whenever a commercial 18
transaction is discussed, it is referred to as a transfer, but it does not state 19
that whenever a transfer is discussed it necessarily means a commercial 20
transaction. 21
02. Therefore a transfer request is a request for a transfer of rights to 22
property. 23
Appeal 2007-1305
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03. The Specification does not provide a lexicographic definition for 1
generate, record, recordation, or form. 2
04. The ordinary and usual meaning of generate is to bring in to being1. 3
05. The ordinary and usual meaning of a record, as a noun, is an account, as 4
of information, set down, esp. in writing as a way of preserving 5
knowledge1. 6
06. The ordinary and usual meaning of a recordation is the process of 7
recording. Record, as a verb, means to set down for preservation in 8
writing or other permanent form1. Thus, recordation is the process of 9
setting down for preservation in writing or other permanent form. 10
07. Therefore, the ordinary and usual meaning of a recordation form is a 11
form for recordation, i.e., it is an account, as of information, set down, in 12
writing or other permanent form, as a way of preserving knowledge. 13
Schneider 14
08. Schneider describes a system that updates data files, particularly patent 15
data files, for changes in status such as newly issued and prematurely 16
expired patents (Schneider, col. 4, ll. 54-61). 17
09. As found by the Examiner, Schneider shows an Internet server; a 18
communications link between said Internet server and the Internet; and 19
at least one database containing a plurality of information records 20
accessible by the Internet server, where each information record includes 21
an intellectual property identification number (Schneider, Fig. 8: 302 & 22

1 Webster’s II New Riverside University Dictionary, 1994
Appeal 2007-1305
Application 09/725,394

7

144, and Fig. 11: 350). The presence of these elements within Schneider 1
is not challenged by the Appellant. 2
10. Schneider shows searching for patents that have expired prematurely 3
(Schneider, col. 16, ll. 6-9). 4
11. A patent grants rights to the patent owner to exclude others from 5
making, using, offering to sell, or selling the patented invention. 6
35 U.S.C. § 271. Therefore, an expiration of a patent transfers the rights 7
to practice the claimed subject matter to the public. 8
Fucarile 9
12. Fucarile describes a system that licenses the content and the access to a 10
software component or plug-in running on a client computer (Fucarile, 11
col. 3, ll. 2-18). 12
13. Fucarile describes a licensing system in which the license for licensed 13
content is embedded within the content (Fucarile, Fig. 2:201 & 203). 14
14. Fucarile’s license distinguishes between commercial and non-15
commercial use (Fucarile, col. 5, ll. 23-31). 16
15. This license is encoded within a license form (Fucarille, Fig. 3; col. 7, 17
l. 6 - col. 8, l. 36). 18
16. A user obtains information from Fucarile’s system by sending a request 19
for content to a server, and the server returns the content including the 20
embedded license form. A plug-in program on the user’s computer 21
scans the content for the license prior to interpreting the content, and 22
passes the license form on to a license server for license validation. The 23
plug-in program only continues with the interpretation of the content if 24
Appeal 2007-1305
Application 09/725,394

8

the user is authorized. (Fucarile, col. 6, l. 38 – col. 7, l. 5; col. 8, l. 37 – 1
col. 9, l. 22). 2
17. Because the data in Fucarile is sent from a server to a separate user’s 3
computer, the data is disintegrated on the server for transmission as a bit 4
stream over the network and integrated back into a record on the user’s 5
computer, thus, the data, including the information record and the 6
embedded license form, are brought into being, i.e., generated, and 7
combined. 8
9
PRINCIPLES OF LAW 10
Claim Construction 11
We begin with the language of the claims. The general rule is that terms in 12
the claim are to be given their ordinary and accustomed meaning. Johnson 13
Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989, 50 USPQ2d 1607, 1610 14
(Fed. Cir. 1999). In the USPTO, claims are construed giving their broadest 15
reasonable interpretation. 16
[T]he Board is required to use a different standard for construing 17
claims than that used by district courts. We have held that it is error 18
for the Board to “appl[y] the mode of claim interpretation that is used 19
by courts in litigation, when interpreting the claims of issued patents 20
in connection with determinations of infringement and validity.” In re 21
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320[, 1322] (Fed. Cir. 1989); 22
accord In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023 (Fed. 23
Cir. 1997) (“It would be inconsistent with the role assigned to the 24
PTO in issuing a patent to require it to interpret claims in the same 25
manner as judges who, post-issuance, operate under the assumption 26
the patent is valid.”). Instead, as we explained above, the PTO is 27
obligated to give claims their broadest reasonable interpretation 28
during examination. 29
Appeal 2007-1305
Application 09/725,394

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In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 1
(Fed. Cir. 2004). 2
3
Obviousness 4
In order to determine whether a prima facie case of obviousness has been 5
established, we considered the three factors set forth in Graham v. John Deere Co., 6
383 U.S. 1, 17-18, 148 USPQ 459, 466-67 (1966), viz., (1) the scope and content of 7
the prior art; (2) the differences between the prior art and the claims at issue; and 8
(3) the level of ordinary skill in the art. We also considered the requirement, as 9
recently re-stated in In re Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006), 10
for a showing of a “teaching, suggestion, or motivation” to modify or combine the 11
prior art teaching. As to this test, the court explained, 12
The “motivation-suggestion-teaching” test asks not merely what the 13
references disclose, but whether a person of ordinary skill in the art, 14
possessed with the understandings and knowledge reflected in the 15
prior art, and motivated by the general problem facing the inventor, 16
would have been led to make the combination recited in the claims…. 17
From this it may be determined whether the overall disclosures, 18
teachings, and suggestions of the prior art, and the level of skill in the 19
art – i.e., the understandings and knowledge of persons having 20
ordinary skill in the art at the time of the invention – support the legal 21
conclusion of obviousness. 22
23
Kahn, 441 F.3d at 988, 78 USPQ2d at 1337 (internal citations omitted). It is not 24
just the explicit teachings of the art itself, but also the understandings and 25
knowledge of persons having ordinary skill in the art, that play a role in applying 26
the motivation-suggestion-teaching test. 27
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Application 09/725,394

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The Federal Circuit has repeatedly recognized that to establish a prima facie 1
case of obviousness, the references being combined do not need to explicitly 2
suggest combining their teachings. See e.g., Kahn, 441 F.3d at 987-88, 78 3
USPQ2d at 1336 (“the teaching, motivation, or suggestion may be implicit from 4
the prior art as a whole, rather than expressly stated in the references”); and In re 5
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the 6
purpose of combining references, those references need not explicitly suggest 7
combining teachings”). The court recently noted, 8
An explicit teaching that identifies and selects elements from different 9
sources and states that they should be combined in the same way as in 10
the invention at issue, is rarely found in the prior art. As precedent 11
illustrates, many factors are relevant to the motivation-to-combine 12
aspect of the obviousness inquiry, such as the field of the specific 13
invention, the subject matter of the references, the extent to which 14
they are in the same or related fields of technology, the nature of the 15
advance made by the applicant, and the maturity and congestion of the field. 16
17
In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006). 18
19
The Supreme Court has recently provided guidelines for determining 20
obviousness based on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 21
1727, 82 USPQ2d 1385 (2007). The Court stated that “[a] combination of familiar 22
elements according to known methods is likely to be obvious when it does no more 23
than yield predictable results. Id. at 1731, 82 USPQ2d at 1396. “When a work is 24
available in one field of endeavor, design incentives and other market forces can 25
prompt variations of it, either in the same field or a different one. If a person of 26
ordinary skill can implement a predictable variation, §103 likely bars its 27
patentability.” Id. For the same reason, “if a technique has been used to improve 28
one device, and a person of ordinary skill in the art would recognize that it would 29
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improve similar devices in the same way, using the technique is obvious unless its 1
actual application is beyond that person’s skill.” Id. “Under the correct analysis, 2
any need or problem known in the field of endeavor at the time of invention and 3
addressed by the patent can provide a reason for combining the elements in the 4
manner claimed.” Id. at 1732, 82 USPQ2d at 1397. 5
Obviousness and Nonfunctional Descriptive Material 6
Nonfunctional descriptive material cannot render nonobvious an invention that 7
would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 8
1862, 1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 9
401, 404 (Fed. Cir. 1983) (when descriptive material is not functionally related to 10
the substrate, the descriptive material will not distinguish the invention from the 11
prior art in terms of patentability). 12
13
ANALYSIS 14
Claims 1-10 rejected under 35 U.S.C. § 103(a) as obvious over Schneider and 15
Fucarile. 16
The Appellant argues claims 1, 2, and 4-10 as a group. Accordingly, we select 17
claim 1 as representative of the group. We address the Appellant’s arguments 18
regarding claim 3 separately below. 19
Initially, we note that although the Appellant has disclosed a way to automate 20
the recording of patent assignments, the Appellant has chosen to draft the claims, 21
and claim 1 in particular, far more broadly. As noted above, during patent 22
prosecution, claims are construed as broadly as is reasonable. Hence, the claimed 23
transfer of property reads on any such transfer, not merely recorded assignments. 24
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The claimed forms read on any formatted carrier of data, not just assignment 1
forms. 2
Fucarile describes retrieving content after requesting that content (FF16). 3
Fucarile’s system embeds licensing forms within the content (FF13), so Fucarile 4
queries for the license form along with the content. Both the content and the 5
license are returned to the user (FF16), thus both are retrieved from Fucarile’s 6
database server. 7
A request for information as part of Fucarile’s commercial transaction (FF14) 8
is a request to transfer the data, and is thus a transfer request. Fucarile reassembles 9
the license and data within the plug-in program after it has been transmitted from 10
the database server, thus combining the license form and content. 11
As a result of the above operations, Fucarile’s software queries the database of 12
information records to retrieve an information record corresponding to a transfer 13
request, queries the database of recordation forms to retrieve a recordation form 14
corresponding to the transfer request, and combines the retrieved information 15
record with the retrieved recordation form to generate a transfer document (FF17). 16
As to claim requirement that the nature of the content, i.e., the transfer request, 17
is indicative of a transfer of intellectual property rights, this claim limitation relates 18
the content of the form, e.g., it is textual material, bearing no functional 19
relationship to its underlying media, or the remainder of the claimed subject 20
matter, and nonfunctional descriptive material cannot render nonobvious an 21
invention that would have otherwise been obvious. Further, we note that 22
Schneider’s content includes data indicative of a transfer of rights to the property 23
in any event (FF11). Thus, Schneider shows software receiving a transfer request 24
indicative of a transfer of rights to the property. 25
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Since Schneider’s system contains content that users wish to retrieve, 1
Schneider’s content is exemplary of the type of content that Fucarile’s licensing 2
system might control. Thus it would have been obvious to a person of ordinary 3
skill in the art to have applied Schneider’s content to Fucarile’s licensing system to 4
result in the subject matter of claim 1. 5
6
Claim 3 Argued Separately 7
As to the issue of generation of a transfer document in claim 3, again, Fucarile 8
reassembles the license and data within the plug-in program after it has been 9
transmitted from the database server, thus combining the license form and content 10
(FF17). 11
12
CONCLUSIONS OF LAW 13
From the above facts and analysis, we conclude that the combination of 14
Schneider and Fucarile suggests the claimed subject matter, and that it would have 15
been obvious to a person of ordinary skill to apply those elements to achieve the 16
claimed invention. Therefore, the Examiner’s rejection of claims 1-10 under 35 17
U.S.C. § 103(a) as obvious over Schneider and Fucarile is sustained. 18
Appeal 2007-1305
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DECISION 1
To summarize, our decision is as follows: 2
• The rejection of claims 1-10 under 35 U.S.C. § 103(a) as obvious over 3
Schneider and Fucarile is sustained. 4
No time period for taking any subsequent action in connection with this appeal 5
may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). 6
AFFIRMED 7
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hh 13
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ST. ONGE STEWARD JOHNSTON & REENS, LLC 15
986 BEDFORD STREET 16
STAMFORD, CT 06905-5619 17