Ex Parte Black et al

Patent Trial and Appeal Board

Feb 4, 2014

12396205 (P.T.A.B. Feb. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN C. BLACK and JOHN P. BOGGS
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Appeal 2011-009818
Application 12/396,205
Technology Center 3600
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009818
Application 12/396,205

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-5 and 18-20. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

THE CLAIMED INVENTION
Appellants’ claimed invention relates to “business methods and
systems for managing human resources and, more particularly, for
automating employee demographics reporting compliance with dynamic and
static human resources requirements” (Spec., para. [0008]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. In a client-server environment, a human resources
method for employee demographics reporting compliance, the
method comprising employing a server system, having a
processor and memory, to execute instructions stored in the
memory in order to cause the processor to perform the
following acts:
a) sending, to a client system, one or more employee
demographics reporting criteria;
b) receiving, from the client system, an indication that
one or more employee demographics reporting criteria are
satisfied;

1 Our decision will refer to Appellants’ Amended Appeal Brief (“App. Br.,”
filed February 1, 2011) and Reply Brief (“Reply Br.,” filed May 17, 2011),
and the Examiner’s Answer (“Ans.,” mailed March 18, 2011).
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c) automatically determining that a report coordinator is
not yet designated; and
d) sending, to the client system, an indication that a
report coordinator must be designated before an employee
demographics report can be generated.

THE REJECTIONS
The following rejections are before us for review:2
Claims 1-3 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Brodersen (US 2005/0091098 A1, pub. Apr. 28, 2005), VanLangen
(US 2008/0040135 A1, pub. Feb. 14, 2008), and Broadwell
(US 2006/0229957 A1, pub. Oct. 12, 2006).3
Claims 4, 5, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Neiditsch (US 2006/0080278 A1, pub. Apr. 13, 2006),
VanLangen, and Broadwell.

ANALYSIS
Claims 1-3
Appellants first argue that the rejection of claims 1-3 is improper
because the Examiner failed to demonstrate that all of the elements recited in
the claims are taught in the cited references and, thus, failed to establish a
prima facie case of obviousness (App. Br. 11-15). In fact, the Examiner
provided a detailed description of the findings and rationales that are the
bases for the rejection, including pinpoint citations for each claim limitation

2 The rejection of claims 1-5 and 8-20 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. See Ans. 20.
3 The Examiner also took Official Notice that certain claim elements in
claims 1-3 and in claims 4, 5, and 18-20 are “well-known” (see Ans. 5, 8,
and 10-12).
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and the rationale for modifying the cited references, as set forth on pages 4-8
and 13-16 of the Answer.
Appellants argue that rather than discharging the burden imposed on
the Examiner to establish a prima facie case, the Examiner inappropriately
attempted to shift the burden to Appellants to show that there is no
correlation between the cited references and the claim elements (App.
Br. 12-15). However, in order to make a prima facie case, an examiner is
not required to make an on-the-record claim construction of every term in
every rejected claim or to explain every possible difference between the
prior art and the claimed invention. In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011). Instead, the patent statute, 35 U.S.C. § 132, only requires that
“an applicant at least be informed of the broad statutory basis for the
rejection of his claims, so that he may determine what the issues are on
which he can or should produce evidence.” Jung, 637 F.3d at 1363.
Here, the Examiner set forth the basis for the rejection of claims 1-3 in
sufficient detail to allow Appellants to respond. Therefore, the burden
properly shifted to Appellants to rebut the prima facie case.
See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
The only substantive arguments presented by Appellants regarding
differences between the claim elements and the cited references are based on
features that the Examiner determined constitute non-functional descriptive
material. Specifically, Appellants argue that the Examiner “improperly
dismissed the claim elements ‘employee demographics reporting criteria,’
‘employee demographics report,’ ‘report coordinator,’ and ‘. . . before an
employee demographics report can be generated’ of claims 1-3” as non-
functional descriptive material (App. Br. 15). However, we agree with the
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Examiner that “employee demographics reporting,” “employee
demographics,” and “report coordinator” are mere labels used to describe the
type of criteria, the type of report, and the title of the person responsible for
generating the report – none of which alters how the claimed method is
performed (see Ans. 6-7 and 20-23). In other words, the claimed method
would be performed in the same way whether the criteria, for example, were
“employee demographics reporting criteria” or some other type of criteria.
As such, these labels constitute non-functional descriptive material that may
not be relied on for patentability. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). See also Ex parte Nehls, 88 USPQ2d 1883, 188790
(BPAI 2008) (precedential) (discussing non-functional descriptive material).
The phrase “before an employee demographics report can be
generated” is similarly merely descriptive, i.e., it does not alter the way the
claimed method is performed, and, therefore, is properly characterized as
non-functional descriptive material.
Finally, we are not persuaded that the Examiner’s reliance on Official
Notice is improper (App. Br. 15-18). Appellants argue that the Examiner
should be required to provide an affidavit in support of the finding of
Official Notice. Yet we can find no indication in this record that Appellants
have come forth with any information or argument that, on its face, casts
reasonable doubt regarding the justification of the Official Notice. See In re
Boon, 439 F.2d 724, 728 (CCPA 1971) (an applicant has the right to
challenge the official notice and demand production of evidence in support
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thereof, provided such challenge is accompanied by adequate information or
argument that, on its face, creates a reasonable doubt regarding the
circumstances justifying the official notice). Appellants have, thus, failed to
adequately traverse the Examiner’s taking of Official Notice, so as to require
the Examiner to produce documentary evidence in support of the Examiner’s
finding. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (where an
applicant for a patent has failed to challenge a fact officially noticed by the
Examiner, and it is clear that the applicant has been amply apprised of such
finding so as to have the opportunity to make such challenge, the Examiner's
finding shall be considered conclusive); In re Chevenard, 139 F.2d 711, 713
(CCPA 1943) (if an applicant does not seasonably traverse the taking of
official notice, then the object of the official notice is taken to be admitted
prior art).
Pointing to the Manual of Patent Examining Procedure (“MPEP”)
§ 2144.03(A),4 Appellants argue that they had no duty to come forward with
any challenge before being entitled to an Examiner affidavit because the
Examiner failed to properly take official notice in the first instance (App.
Br. 16-18). However, we are not persuaded that the matters to which
Official Notice were taken, e.g., notifying users of missing items
(see Ans. 5) and sending notifications of completed tasks (see Ans. 8), are
matters to which official notice cannot properly be taken, in accordance with
MPEP § 2144.03, without documentary evidence.

4 MPEP § 2144.03(A) states that “Official notice unsupported by
documentary evidence should only be taken by the examiner where the facts
asserted to be well-known, or to be common knowledge in the art are
capable of instant and unquestionable demonstration as being well-known.”
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In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1-3 under 35 U.S.C. § 103(a).
Claims 4, 5, and 18-20
Appellants’ arguments with respect to claims 4, 5, and 18-20 are
substantially identical to Appellants’ arguments with respect to claims 1-3,
and are similarly unpersuasive.
As with claims 1-3, the Examiner provided a detailed description of
the findings and rationales that are the bases for the rejections of claims 4, 5,
and 18-20, as set forth on pages 9-13 of the Answer.
We also are not persuaded, for the reasons set forth above with respect
to claims 1-3, that the Examiner “improperly dismissed the claim elements
‘employee demographics reporting criteria,’ ‘employee demographics
report,’ ‘report coordinator,’ and ‘. . . before an employee demographics
report can be generated’ of claims 4, 5, and 18-20” as non-functional
descriptive material (App. Br. 20-21) or that the Examiner’s taking of
Official Notice was improper (App. Br. 21-22).
Therefore, we will sustain the Examiner’s rejection of claims 4, 5, and
18-20 under 35 U.S.C. § 103(a).

Appeal 2011-009818
Application 12/396,205

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DECISION
The Examiner’s rejections of claims 1-5 and 18-20 under 35 U.S.C.
§ 103 are 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)(1)(iv).

AFFIRMED

mls