Ex Parte Ingber

Patent Trial and Appeal Board

Mar 9, 2016

12416078 (P.T.A.B. Mar. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/416,078 03/31/2009
43850 7590 03/11/2016
MORGAN, LEWIS & BOCKIUS LLP (SF)
One Market, Spear Street Tower, Suite 2800
San Francisco, CA 94105
FIRST NAMED INVENTOR
Lori Barer Ingber
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
011674-5001-US 3744
EXAMINER
SHANKER, TIJLIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/11/2016 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):
sfipdocketing@morganlewis.com
dmixon@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORI BARER INGBER
Appeal2013-009315 1
Application 12/416,0782
Technology Center 3600
Before MICHAEL W. KIM, MICHAEL C. ASTORINO,
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-14, 18-35, 37, and 38. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
January 30, 2013) and Reply Brief ("Reply Br.," filed July 16, 2013), and
the Examiner's Answer ("Ans.," mailed May 24, 2013) and Final Office
Action ("Final Act.," mailed October 26, 2011).
2 Appellant identifies Parent Match, a division of Temba, LLC, as the real
party in interest. App. Br. 3.
Appeal2013-009315
Application 12/416,078
CLAIMED fNVENTION
Appellant's claimed invention "relates to improved computer systems
and methods for facilitating adoption" (Spec. 1, 11. 4--5).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer based processing method for
organizing, maintaining and processing a data store on a tangible
computer readable media, the data store for use by a first class of
adoption participants or a second class of adoption participants
that are each associated with an agency that has been granted an
access privilege to the data store, the computer based processing
method comprising:
(A) initiating an electronic query of the data store on
behalf of a first member of the first class of adoption participants
or a second member of the second class of adoption participants
upon verification that an agency that represents said first member
or an agency that represents said second member has an access
privilege to the data store, wherein
(i) when the electronic query is on behalf of the first
member, the electronic quePJ includes a first plurality of
request parameters that collectively define a first plurality
of characteristics of a qualifying family that may adopt an
unborn or newly born child from the first member;
(ii) when the electronic query is on behalf of the
second member, the electronic query includes a second
plurality of request parameters that collectively define a
second plurality of characteristics of (i) a qualifying
unborn child or newly born child that may be adopted by
the second member and (ii) optionally a birth parent of the
unborn child or newly born child;
(iii) the data store comprises or has access to a
plurality of records, wherein each respective record in the
plurality of records is either associated with (i) a member
of the first class of adoption participants or (ii) a member
of the second class of adoption participants; and
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Application 12/416,078
(iv) the plurality of records comprises a first set of
records from a first adoption agency and a second set of
records from a second adoption agency;
(B) searching the data store with the electronic query using
a computer, thereby obtaining a search result comprising one or
more records in the plurality of records that match the electronic
query, wherein
when the electronic query is on behalf of the first
member, each record in the search result is of a member in
the second class of adoption participants, and
when the electronic query is on behalf of the second
member, each record in the search result is of a member in
the first class of adoption participants; and
(C) optionally, outputting the search result to a display, a
tangible computer readable data storage product, a computer, or
a tangible random access memory, wherein
said first member and said second member do not
have an access privilege to the data store.
REJECTION
Claims 1-14; 18-35; 37; and 38 are rejected under 35 U.S.C. § 103(a)
as unpatentable over MacDaniel (US 2009/0070126 Al, pub. Mar. 12,
2009), Springett (US 2007 /0265965 Al, pub. Nov. 15, 2007), Appellant's
Admitted Prior Art (hereinafter "AAP A"), and webpage retrieved from
internet archive, Way Back Machine, www.AdoptionExchange.com
(hereinafter "Document l ").
ANALYSIS
Independent claim 1 and dependent claims 2-14 and 18-35
Appellant argues that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a), inter alia, because the combination ofMacDaniel,
Springett, AAP A, and Document 1 does not disclose or suggest that a first
class of adoption participants and a second class of adoption participants are
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Appeal2013-009315
Application 12/416,078
"each associated with an agency that has been granted an access privilege to
the data store" and initiates a query of the data store on behalf of a first
member of the first class of adoption participants or a second member of the
second class of adoption participants, where "said first member and said
second member do not have an access privilege to the data store," as called
for in claim 1 (App. Br. 14, 17-18). More particularly, Appellant asserts
that MacDaniel, on which the Examiner relies, does not disclose or suggest
an agency associated with a first and second class of participants, but instead
discloses an approach to employee services where agencies and recruiters
are replaced by online services with the first class of participants (e.g.,
employers) and the second class of participants (e.g., job seekers) accessing
the system themselves via the Internet (id. at 14).
MacDaniel is directed to a system and method for bringing together
employers and job seekers (MacDaniel i-f 42), and discloses that both
employers and job seekers are able to remotely access the system "via the
internet and a local terminal as known in the modem computer arts" (id.).
The MacDaniel system, as shown in Figure 1, comprises a job seeker
interface 12, an employer interface 14, and a remote system 16 (id. i-f 44).
MacDaniel discloses that remote system 16 is preferably maintained by a
service provider, and "provides storage for a multiplicity of databases"
comprising job seeker and employer information (id.). Remote system 16
also provides software interaction between job seeker interface 12 and
employer interface 14, "allowing ... a job seeker to access the database for
employer information, and ... an employer to access the database for job
seeker information" (id.).
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Application 12/416,078
The Examiner takes the position that remote system 16, as disclosed
in MacDaniel, is an "agency," as called for in claim 1, which searches the
system databases "on behalf' of members of the first, e.g., employers, and a
second, e.g., job seekers, classes of participants (Ans. 3 (citing MacDaniel
i-fi-1 44, 56, 62, 66, and 71) ). Yet, rather than making use of an agency,
MacDaniel explicitly discloses that employers and job seekers access the
data store directly- a result that runs afoul of claim 1, which expressly
recites that "said first member and said second member do not have an
access privilege to the data store."
The Examiner cites paragraph 56 of MacDaniel as support for the
proposition that remote system 16 acts as an agency to initiate a data store
query on behalf of the first and second participants. Yet, that paragraph
describes that an employer "after logging into the system" inputs "specific
keywords that match the type of job seeker" he or she wants for an available
job. Thus, rather than the remote system querying the system on behalf of
the employer, MacDaniel discloses, in paragraph 56, that the employer
accesses the system and performs the query for him or herself. We fail to
see how the ability to perform a query of a data store can be considered
anything other than access to the data store itself. Indeed, as Appellant
points out, the Examiner's interpretation "would require that the remote
server- acting as an agent on behalf of the first/second member- send an
electronic query over the Internet or wide area network to itself- acting as
the tangible computer readable media hosting the data store" (Reply Br. 8).
For the reasons set forth above, we are persuaded that the Examiner
erred in rejecting claim 1 as obvious over the combination of MacDaniel,
Springett, AAP A, and Document 1. Therefore, we do not sustain the
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Examiner's rejection of claim 1 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of claims 2-14 and
18-35, each of which depends, directly or indirectly, from claim 1. Cf In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious").
Independent claims 37 and 38
Independent claims 3 7 and 3 8 include language substantially similar
to the language of claim 1. Therefore, we do not sustain the Examiner's
rejection of claims 37 and 38 under 35 U.S.C. § 103(a) for the same reasons
set forth above with respect to claim 1.
DECISION
The Examiner's rejection of claims 1-14, 18-35, 37, and 38 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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