Ex Parte Furlong et al

Patent Trial and Appeal Board

Jan 15, 2016

10769117 (P.T.A.B. Jan. 15, 2016)

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.
10/769,117 01/29/2004 Tarri E. Furlong OIC0142C1US 7173
60975 7590 01/15/2016
CAMPBELL STEPHENSON LLP
11401 CENTURY OAKS TERRACE
BLDG. H, SUITE 250
AUSTIN, TX 78758
EXAMINER
WU, RUTAO
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
01/15/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte TARRI E. FURLONG and SOU-YEN JEFFREY YEH
___________

Appeal 2013-004495
Application 10/769,117
Technology Center 3600
___________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Tarri E. Furlong and Sou-Yen Jeffrey Yeh (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 1–6 and 13–27, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a network-based system and method for sales
force management. Specification 1: Field of the Invention.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 18, 2012) and Reply Brief (“Reply Br.,” filed February 12,
2013), and the Examiner’s Answer (“Ans.,” mailed December 12, 2012),
and Final Rejection (“Final Rej.,” mailed October 18, 2011).
Appeal 2013-004495
Application 10/769,117

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An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method in a computing system comprising:
[1] receiving,
by a processor,
a selection of an activity item,
wherein the activity item is one of a plurality of activity
items,
each one of the plurality of activity items represents one
of a plurality of business related activities,
and
the plurality of business related activities comprise at
least a meeting, a demonstration, a presentation, and
correspondence;
[2] associating,
by the processor,
the activity item with a user
by adding the activity item to a list of activity items of
the user,
in response to the receiving the selection;
[3] receiving,
by the processor,
an identification of the activity item being expensable;
[4] in response to the identification,
automatically associating,
by the processor,
at least one expense item with the activity item,
wherein
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a plurality of expense items comprises the at least
one expense item,
and
each of the plurality of expense items comprise a
cost of the one business related activity
represented by the activity item;
[5] receiving,
by the processor,
an activation signal for generating an expense report for
the user;
and
[6] in response to the activation signal:
collecting,
by the processor,
two or more activity items from the list of activity
items of the user,
collecting,
by the processor,
associated expense items associated with the two
or more activity items,
creating,
by the processor,
the expense report,
wherein the expense report comprises the
associated expense items,
and
submitting,
by the processor,
the expense report to the user.
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The Examiner relies upon the following prior art:
DeLorme US 5,948,040 Sept. 7, 1999
Vance US 6,442,526 B1 Aug. 27, 2002
Claims 1–6 and 13–27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vance and DeLorme.
ISSUES
The issues of obviousness turn primarily on whether the art describes
plural business activities and some form of automation in data association.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Vance
01. Vance is directed to a travel and transportation information
system, and in particular to an integrated database system that
communicates with a credit card provider and a travel planner to
match travel plans to credit card receipts. Vance 1:13–17.
02. Vance fulfills a need for automatic matching of credit card
receipts to travel records to facilitate preparation of expense
reports by travelers. Vance 2:44–46.
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03. Vance describes a graphical user interface for trip planning. The
traveler clicks the New Trip icon and then enters the purpose of
the trip and charge center for the trip. The traveler selects
origination and destination and chooses a flight, hotel and car
rental. A record of the flight, hotel and car selected is made in the
Trip Activity Log and on the Calendar. Vance 11:41–12:5. This
is also done with slightly different interfaces for repeat travelers.
Vance 12:35–53.
04. Vance’s expense report interface autofills date, project and
purpose of the trip/expense parameters, and expense details that
were previously entered from trip receipts including air, hotel,
food, and car costs. Vance 12:54–13:24.
DeLorme
05. DeLorme is directed to permitting individuals to make travel
arrangements and to plan travel activities. DeLorme 1:29–31.
06. DeLorme describes travelling for a meeting. DeLorme 22:19–
37.
ANALYSIS
We are not persuaded by the Appellants’ argument that because
Vance’s user enters travel data, the association between travel activities and
costs is manual rather than automatic. App. Br. 10–11. The limitation at
issue is “automatically associating at least one expense item with the activity
item.” No implementation for such automation is recited or narrowed, and
no degree of automation is recited either. Thus, even were Vance to do no
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more than automatically record an association after a user matched an
expense item with an activity item, this creation of an association by the
computer following the user’s input would be within the scope of the claim.
Vance does more, however, in automatically filling out an expense report by
autofilling the expense details from receipts in each of the report’s activity
sections. Beyond that, it is generally predictable to automate a known
manual process providing one of ordinary skill knew how to do so, and
database technology is too old for that to be an issue. See Leapfrog Ent.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (concluding
that a toy updated with modern electronics was obvious because “[a]pplying
modern electronics to older mechanical devices has been commonplace in
recent years,” and Leapfrog did not present evidence that the modifications
were uniquely challenging or difficult for one of ordinary skill in the art or
that inclusion represented an unobvious step over the prior art).
We are not persuaded by the Appellants’ argument that DeLorme fails to
describe plural business related activities. App. Br. 12–13. The limitation at
issue is “the activity item is one of a plurality of activity items.” Vance
describes plural activities such as renting a car or catching a flight. The
Examiner applied DeLorme to show that it was also known that activities
could include attending a meeting. The claim does not require that any of
the activities actually reported on be among the set of a meeting, a
demonstration, a presentation, and correspondence. The claim only requires
that these be among the types of activities that might be selected from. As
no selection implementation is recited, having these types of activities in the
mind of the preparer would be within the scope of the claim.
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We are not persuaded by the Appellants’ argument that Vance fails to
describe creating an expense report with expenses associated with two
activities. App. Br. 13–15. Vance explicitly creates expense reports
automatically and autofills the content. Vance describes plural activities
such as catching a flight, renting a car, and eating for such reports.
As to separately argued claim 2, we are not persuaded by the Appellants’
argument that the art fails to describe associating one or more expense types
with an activity type, based on receiving a selection indicating an expense
type is associated with an activity type. App. Br. 15–16. The manner of
association is not recited nor is any implementation recited. Recording
expenses in a payables ledger based on a chart of accounts tied to expenses
and activities as occurs as a matter of course is therefore within the scope, as
the association is created in the accounting entry. Such payables recording
is described by Vance.
Further, the association itself occurs as a matter of course because of the
selection. The particular labels attached to the codes that are associated are
discernable only in the mind of the beholder, and such labels are afforded no
patentable weight. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010). (“If we were to adopt Ngai’s position, anyone could
continue patenting a product indefinitely provided that they add a new
instruction sheet to the product.”).
As to separately argued claim 27, we are not persuaded by the
Appellants’ argument that Vance’s expense form fields are not in any way
equivalent to the claimed plurality of expense types and are also not
equivalent to the claimed plurality of activity types. App. Br. 16–17. The
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particular chart of accounts encompassing expense and activity codes is
neither recited nor narrowed. Vance describes several activities each having
different activity components, such as a hotel with activities such as room
rental, meals, room charges, and expenses associated with them, such as
taxable and non-taxable travel costs. Whether there is overlap between the
codes is not pertinent as again, no chart of accounts is recited.
As to separately argued claim 15, we are not persuaded by the
Appellants’ argument that Vance fails to describe pre-determined mapping.
App. Br. 17–18. Again, Vance autofills expenses which would not be
possible absent such a mapping. Appellants appear to again try to
distinguish the claim by the labels they attach to the data; such labels are not
deserving of patentable weight.
CONCLUSIONS OF LAW
The rejection of claims 1–6 and 13–27 under 35 U.S.C. § 103(a) as
unpatentable over Vance and DeLorme is proper.
DECISION
The rejection of claims 1–6 and 13–27 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED