Ex Parte Black et alDownload PDFPatent Trial and Appeal BoardFeb 4, 201412396205 (P.T.A.B. Feb. 4, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEVEN C. BLACK and JOHN P. BOGGS ____________________ Appeal 2011-009818 Application 12/396,205 Technology Center 3600 ____________________ 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 2 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). Appeal 2011-009818 Application 12/396,205 3 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). Appeal 2011-009818 Application 12/396,205 4 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 Appeal 2011-009818 Application 12/396,205 5 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 Appeal 2011-009818 Application 12/396,205 6 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.” Appeal 2011-009818 Application 12/396,205 7 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 8 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 Copy with citationCopy as parenthetical citation