Ex Parte Furlong et alDownload PDFPatent Trial and Appeal BoardJan 15, 201610769117 (P.T.A.B. Jan. 15, 2016) Copy Citation 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 2 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 Appeal 2013-004495 Application 10/769,117 3 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. Appeal 2013-004495 Application 10/769,117 4 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. Appeal 2013-004495 Application 10/769,117 5 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 Appeal 2013-004495 Application 10/769,117 6 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. Appeal 2013-004495 Application 10/769,117 7 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 Appeal 2013-004495 Application 10/769,117 8 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 Copy with citationCopy as parenthetical citation