David Owens

Patent Trials and Appeals Board

Apr 28, 2021

2020001255 (P.T.A.B. Apr. 28, 2021)

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.
15/258,376 09/07/2016 David S. Owens 305452-00002-1 7113
3705 7590 04/28/2021
ECKERT SEAMANS CHERIN & MELLOTT LLC
U.S. Steel Tower
600 Grant Street, 44th Floor
Pittsburgh, PA 15219
EXAMINER
SPRATT, BEAU D
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
04/28/2021 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID S. OWENS
Appeal 2020-001255
Application 15/258,376
Technology Center 2100
Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
MIRIAM L. QUINN, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 111, 1316, and 1820. See Final
Act. 1.2 Claims 12 and 17 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies David S. Owen as the sole party in-interest.
Appeal Br. 1.
2 We refer here to the Final Action issued Feb. 20, 2019. When referring to
the Appeal Brief (“Appeal Br.”) we refer to the brief filed on July 18, 2019.
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CLAIMED SUBJECT MATTER
The claims are directed to a computer implemented method of
monitoring a user’s on-line activities. Spec. 1:1013. The Specification
describes that systems and methods have been developed to provide control
of on-line accounts in the event of a death or other forms of incapacitation of
a user. Id. at 1:2224. Those prior art systems perform an investigation to
determine if the user is able to provide a response, but they require “the user
to identify a specific date or range of dates, when the investigation will
occur, e.g., May 1May 6 which, for example, may be each day the user is
on vacation.” Id. at 1:2528. The Specification describes an investigation
module structured to investigate a user and to determine if the user has
engaged in an on-line activity within a selected period of time. Id. at
11:13. “In an exemplary embodiment, the investigation module [] is
structured to perform a passive investigation.” Id. at 11:78.
Claim 15 is representative of the claimed subject matter and is
reproduced below:
15. A system for personal monitoring, the system
comprising:
a non-transitory computer-readable storage medium
storing a number of modules including:
an investigation module structured to investigate a
user and to determine if the user has engaged in an on-
line activity within an investigation period;
a response module structured to perform a number
of selected scripted actions;
wherein said investigation module is structured to
perform a passive investigation;
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said response module includes a verification module;
said verification module structured to contact said user;
and
said verification module structured to contact a proxy.
Appeal Br. 2526 (Claim App’x).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Copley US 2008/0311880 A1 Dec. 18, 2008
Dunn US 2012/0102114 A1 Apr. 26, 2012
Salamat US 2013/0144960 A1 June 6, 2013
Arnold US 2014/0122627 A1 May 1, 2014
REJECTIONS
Claims 15 and 16 are rejected under 35 U.S.C. § 102 (a)(1) as being
unpatentable over Salamat. Final Act. 57.
Claims 15, 7, 8, 10, 11, 13, 14, 18, and 19 are rejected under 35
U.S.C. § 103 as being unpatentable over Salamat and Arnold. Id. at 715.
Claims 6 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Salamat, Arnold, and Copley. Id. at 1518.
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over
Salamat and Dunn. Id. at 1820.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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Our opinion focuses on the Examiner’s rejection of claims 1, 15, 16, and 20
because Appellant’s arguments focus on those claims. Appeal Br. 920.3
Appellant does not argue separately independent claim 19. Id. Therefore,
we analyze the rejections of all the pending claims based on the argument
and evidence presented for claims 1, 15, 16, and 20. See 37 C.F.R.
§ 41.37(c)(1)(iv). For the reasons that follow, we determine that Appellant
has not persuaded us that the Examiner erred.
Passive Investigation
Claims 1, 15, and 20 recite a computer-implemented “passive
investigation.” Claim 15, the representative claim, recites “wherein said
investigation module is structured to perform a passive investigation.” The
Specification states that “as used herein, a ‘passive investigation’ is an
investigation initiated by the investigation module 50 without a specific
direction from the user.” Spec. 11:810. The Examiner points to Salamat as
teaching the recited passive investigation. Final Act. 6 (citing ¶ 84
disclosing monitoring whether the user enters a website).
Salamat discloses a method for announcing the death event of a user
in the communication network. Salamat ¶ 26. A user registers in the
communication network and provides a list of trustees who are authorized to
notify the network of the death of the user by selecting a death
announcement button. Id. Salamat describes also monitoring the user’s

3 Appellant filed a Supplemental Appeal Brief on November 13, 2019. We
do not address that brief other than to acknowledge Appellant’s withdrawal
of arguments relating to the rejection of claim 20 set forth in the original
Appeal Brief. As stated by Appellant, the “supplemental Appeal Brief
removes the argument with regard to Claim 20 and substitutes a reference to
a prior argument relating to Claims 1 and 15.” Supplemental Appeal Br. 1.
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activity within the communication network for a designated period of time.
Id. ¶ 40. For instance, the Salamat user “may request the communication
network to monitor his/her designated timed non-entry into the
communication network.” Id. ¶ 84. If the user does not enter or activate a
website during the designated time, the website sends “an enquiry to the user
to find out about his/her status.” Id.
Appellant argues that Salamat’s monitoring is not a “passive
investigation” as the term is described in the Specification. Appeal Br.
1114 (arguing that the Specification gives the term an express and special
meaning). More specifically, Appellant argues that the Examiner has not
given effect to Appellant’s definition of the term as an “investigation
initiated by the investigation module [] without a specific direction from the
user” because the user in Salamat specifies “when an investigation is to
occur.” Id. at 12. Appellant points out that in Salamat’s disclosure, “the
user specifies settings in the communication network 110 for a pre-death
period and an after-death period,” and “the user may request the
communication network to monitor his/her designated timed non-entry into
the communication network (402).” Id. (referring to Salamat ¶¶ 77, 84).
Appellant’s arguments are not persuasive because they are not
consistent with the scope of the invention as described in the Specification.
Appellant may have defined a “passive investigation” as excluding “a
specific direction from the user.” Spec. 11:810. But the Specification
describes the administration module as allowing the user to identify a
selected period of time between investigations and the method of
verification. Id. at 9:1517. The Specification also states that “‘passive
investigation’ occurs a selected time period after the most recent
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investigation resulting in a positive response.” Id. at 11:1012 (emphasis
added). The initial “passive investigation” occurs a “selected time period
after the user 30 first activates their account.” Id. at 11:1314 (emphasis
added). Another embodiment further shows the extent to which the user
may select a specific day as the selected time period by stating, “In an
alternative embodiment, the passive investigation occurs at a selected date,
e.g., the first of each month.” Id. at 11:2324 (emphasis added). More
importantly, the Specification, in a particular embodiment, identifies two
time selections of the user that constitute the “specific direction” excluded
from a “passive investigation”: “specific investigation time” or “limited
period.” Id. at 11:2427 (stating that in a “passive investigation,” the “user
30 does not schedule a specific investigation time or identify a limited period
in which the investigation occurs, e.g., every day between May 1 and May 5,
or every day when the user 30 is on vacation.”). Therefore, the Specification
clearly allows for a variety of user direction because the user selects time
periods and a specific day during which the “passive investigation” would
occur, while providing examples where the user does not provide other,
more specific direction, such as selecting a specific investigation time or a
limited period of time.
Furthermore, as the Examiner points out, the Specification prefaces
the discussion of the “passive investigation” that excludes a specific user
direction as an “exemplary embodiment.” Ans. 1920. Therefore,
Appellant’s arguments that attempt to exclude any user direction from
setting the time periods for the investigation to occur are not consistent with
the description of user selected time periods and days during which a
“passive investigation” would occur.
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Appellant argues that the word “specific” in the proffered definition of
“passive investigation” means “precise or exact.” Reply Br. 2. Appellant
states that “those of ordinary skill in the art would understand that a ‘specific
direction from the user’ in relation to a computer program means that the
user enters an instruction either by typing the instruction in a field or
selecting an option from a pull-down menu or similar construct.” Id. at 23.
We find two problems with Appellant’s arguments. First, these
arguments are presented belatedly in the Reply Brief because they address
the Examiner’s concern, of which Appellant was made aware in the
Advisory Action dated April 30, 2019, that the word “specific” does not
address how much direction is allowed to be performed in scheduling the
passive investigation. See Advisory Action, 2 (stating “Applicant has
provided some indication of the definition of the phrase related to what a
‘passive investigation’ is but does not specifically define how scheduling is
performed, or what is ‘specific direction’ vs unspecific direction.”).
Second, the dictionary definition, at best, comports with the described
examples in the Specification that some direction is allowed, while other,
more specific direction is not, such as selecting a specific investigation time
or a limited period of time. But the proffered definition does not support
what Appellant argues, without any factual or evidentiary support, that a
person of ordinary skill in the art would understand that “specific direction
from the user” is as broad as any instruction that the user enters by typing in
a field or selecting a pull-down menu option. This is factually unsupported
attorney argument. “Argument in the brief does not take the place of
evidence in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965)
(citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).
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We find that the Examiner did not err in finding that Salamat discloses
the “passive investigation.” There is no dispute that Salamat discloses the
investigation, the question is whether the investigation is “passive” or
“without a specific direction from the user.” The Examiner finds that the
Salamat user designates a period of time during which Salamat will monitor
the user’s activity. Ans. 20. Salamat’s investigation occurs at a later time
without any specificity of particular time or limiting the period of time
during which such an investigation would occur. See id. (stating that
Salamat discloses user settings for monitoring at a later time including an
embodiment that does not limit itself to specific times but rather pre-death
settings in general). The Examiner finds, and we agree, that Salamat’s user
is not necessarily scheduling a time for an investigation. Id. Nor does
Salamat begin an investigation at any time that the user may select. Id.
Rather, the Examiner finds, and we agree, that Salamat begins an
investigation only if the user has not entered a website after a designated
period of time expires. Id. Thus, Salamat performs a “passive
investigation” even though the user may enter settings for a pre-death period
(Salamat ¶ 77) or may designate a time period during which the system
monitors entry or non-entry into the system (id. ¶ 84). Again, consistent
with the Specification’s investigation occurring during user-selected time
periods, so too Salamat may user-selected time periods during which an
investigation occurs.
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Accordingly, we are not persuaded by Appellant’s arguments that the
Examiner erred in finding that Salamat discloses the “passive investigation,”
recited in claims 1, 15, and 20.4
Non-Contact with User and Proxies
Claim 16 depends from claim 15 and further recites: “if said
verification module does not contact said user, said response module is
structured to perform a number of primary scripted actions; and if said
verification module does not contact said proxy, said response module is
structured to perform a number of secondary scripted actions.” In essence,
this claim specifies that upon non-contact with the user, the verification
module is configured to execute a script, while upon non-contact with a
proxy, the module would execute another script.
Appellant presents two arguments regarding claim 16. First,
Appellant argues the claim requires that if contacting both the user and the
proxy fails, “the system performs primary scripted actions and secondary
scripted actions.” Appeal Br. 14–15. Because the Examiner stated in the
Final Office Action that, for claim 20, Salamat does not teach performing
secondary script actions if there is non-contact with the proxy, Appellant
argues that Salamat cannot disclose performing the secondary script actions
recited in claim 16. Id. at 1415. Second, Appellant argues that in the event
of non-contact with both a user and a proxy, Salamat discloses that “the
communication network will disregard the death news announcement of the

4 As already stated, Appellant does not argue independent claim 19, which,
in any event, does not recite the “passive investigation.” Accordingly, the
arguments presented for claims 1, 15, and 20 do not persuade us of error of
the claim 19 rejection.
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user.” Id. at 16. In other words, Appellant contends that Salamat does not
perform any of the recited primary or secondary scripted actions if there is
non-contact, as required. Id. According to Appellant, “[i]n the event of a
non-responsive user and trustee (proxy), the Salamat system does nothing.”
Id. at 18. We are not persuaded by Appellant’s arguments.
The Examiner finds, and we agree, that Salamat is structured to
perform primary scripted actions, if there is no contact with the user, and
structured to perform secondary scripted actions, if there is no contact with
the proxy. For instance, as to the non-contact with the user, the Examiner
finds that Salamat is structured to send enquiries to the user’s trustees to
investigate the user’s non-responsiveness. Ans. 21 (citing Salamat ¶ 84).
Thus, Salamat discloses a verification module structured to perform a
number of primary scripted actions if there is no contact with said user
because Salamat performs enquiries to the trustees after the user does not
respond.
The Examiner also finds, and we agree, that Salamat is structured to
ignore a death announcement as false news, if there is no contact with the
user and the trustees. Id. (citing Salamat ¶ 30). Additionally, the Examiner
points out that after it determines the announcement was false news (read
here, there was no contact with any of the proxies), Salamat will deny
permissions to the announcers for a specific period of time, or permanently.
Id. (citing Salamat ¶ 32); see also Salamat ¶ 83 (denying permission to the
announcers for a specific period of time). Thus, Salamat discloses a
verification module structured to perform a number of secondary scripted
actions if there is no contact with the trustees.
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Appellant contends that denying permissions in Salamat is an action
performed as a result of a response by a proxy (false report of a death), but
“not the lack of response by a proxy.” Reply Br. 67. We do not agree with
Appellant’s contention. The scripted actions post-false report of denying
permission to the false announcer and setting time periods for further input
by the trustees are performed after receiving no response from the trustees to
verify the false report. Salamat ¶¶ 30 (“ignoring the announcement of user’s
death based on not receiving any responses from the member trustees after
several inquiries”), 79 (“If no response is received from the user who has
been announced dead, the communication network will await responses
from the member trustees for the sent inquiries for a designated period of
time”), 83 (“If no responses are received to the communication network
from the user and also member trustees during a designated period of time
and after dispatch of several inquiries, the communication network will
disregard the death news announcement of the user. (222). The death news
of the user is not confirmed and the announcers have the possibility of
announcing the death news after a specific period of time (224).”).
Consequently, we are not persuaded by Appellant’s argument that the
Examiner erred in finding that Salamat discloses the limitations recited in
claim 16.
CONCLUSION
Appellant has not persuaded us that the Examiner erred in finding that
Salamat discloses the “passive investigation,” recited in independent claims
1, 15, and 20, and the limitations recited in claim 16. Therefore, the
Examiner’s rejections are sustained.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 16 102 Salamat 15, 16
15, 7, 8,
10, 11, 13,
14, 18, 19
103 Salamat, Arnold 15, 7, 8,
10, 11, 13,
14, 18, 19

6, 9 103 Salamat, Arnold,
Copley
6, 9
20 103 Salamat, Dunn 20
Overall
Outcome
111,
1316,
1820

TIME PERIOD FOR RESPONSE
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