Ex Parte Morton et alDownload PDFPatent Trial and Appeal BoardSep 19, 201410942315 (P.T.A.B. Sep. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID L. MORTON, COREY A. YOUNG, and WILLIAM JAMES MARSDEN ____________ Appeal 2012-001493 Application 10/942,315 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and BART A. GERSTENBLITH, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1–23. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellants’ invention is directed to a method of viral marketing for email and internet based advertising (Spec. 2). Appeal 2012-001493 Application 10/942,315 2 Claim 1 is illustrative: 1. A marketing method comprising: providing a customer a product or service; a web service hosted on at least one computer providing a message to the customer asking them to refer the product or service to other persons known to the customer; the web service generating a message endorsing the product or service to be sent to the other persons; the web service automatically finding address information of the other persons known to the customer on the customer’s computer and automatically generating a contact list of the other persons known to the customer to whom the endorsement will be sent; allowing the customer to edit the contact list by adding or removing persons from the contact list; and sending the endorsement message to selected persons on behalf of the customer via the web service. The Examiner relies on the following prior art references as evidence of unpatentability: Costin US 2002/0049816 A1 Apr. 25, 2002 Silverstein US 7,496,527 B2 Feb. 24, 2009 Silverstein Specification for “Remote Purchasing System and Method” (Provisional App. No. 60/423,846; filed Nov. 5, 2002). Silverstein Drawings for “Remote Purchasing System and Method” (Provisional App. No. 60/423,846; filed Nov. 5, 2002). Appellants appeal the following rejection: Claims 1–23 under 35 U.S.C. § 103(a) as unpatentable over Costin and Silverstein. Appeal 2012-001493 Application 10/942,315 3 ISSUES Did the Examiner err in rejecting claim 1 because the Examiner relied on hindsight in making the rejection? Did the Examiner err in rejecting claim 1 because neither reference discloses a web service that automatically finds address information of the other persons known to the customer on the customer’s computer and automatically generates a contact list of the other persons known to the customer to whom the endorsement will be sent? FACTUAL FINDINGS We adopt the Examiner’s findings as our own. Ans. 5–7. ANALYSIS We are not persuaded of error on the part of the Examiner by Appellants’ argument that the Examiner relied on hindsight in making the rejection. Appellants argue that one of ordinary skill in the art at the time of the invention would not look to Costin, which relates to fundraising for charity, and Silverstein which relates to a method for electronic purchase of alcohol to teach viral marketing (App. Br. 9). Instead, we agree with and adopt the Examiner’s response to this argument found on pages 9–11 of the Answer. In this regard, Costin discloses a method whereby users are enabled to become individual fundraisers by sending emails to friends, which provides a link whereby the friend can get more information and make a secured contribution (para. 10). Silverstein also discloses a method for sending emails to friends by generating a friends list that can be easily manipulated (col. 36, ll. 14–29). The Examiner reasoned that a person of Appeal 2012-001493 Application 10/942,315 4 ordinary skill in the art would have been led to incorporate the Silverstein method of forming and manipulating the list of friends in the Costin method to achieve flexibility and rigor in generating a friends list (Ans. 10). In our view, this rationale of the Examiner provides the requisite rational underpinning for the rejection and, as such, the rejection is not based on hindsight. We are not persuaded of error on the part of the Examiner by Appellants’ argument that neither reference discloses a web service that automatically finds address information of the other persons known to the customer on the customer’s computer, and automatically generates a contact list of the other persons known to the customer to whom the endorsement will be sent. Appellants argue that Silverstein discloses that the user manually composes the list and that there is no disclosure in either reference of finding the address information automatically. We agree with the Examiner’s response to this argument found on page 11 of the Answer. In this regard, we note that Silverstein in fact does disclose automatically adding a friend (col. 35, ll. 24–32). In addition, Silverstein discloses that a user can find address information and generate a contact list by importing addresses from external address books (col. 35, ll. 56–61). Appellants may be correct that Silverstein does not explicitly disclose automatically generating a contact list, however, in our view, such would have been obvious from a reading of Silverstein, which discloses automatically adding a friend to an already generated contact list (Ans. 10–11). In any case, Silverstein certainly discloses manually generating a contact list and a claimed invention is not patentable if it merely automates a prior art process. Broadly providing an automatic way to replace a manual activity Appeal 2012-001493 Application 10/942,315 5 accomplishing the same result is not sufficient to distinguish an automated process over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA 1958). We note that Appellants have not directed our attention to any disclosure in the Specification of a new and unobvious way of automatically generating a contact list. In addition, the method claims do not exclude manual steps and many of the examples in the Specification require that a user click on a link in an email that then causes the software to generate the contact list by pulling the info together (see, e.g., Spec. paras. 39–42). Clicking a link that causes a program to automatically find the addresses and automatically generate a contact list is user input similar to the user input of Silverstein in which a user clicks a button to import addresses from an address book (Figure 30). In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We will also sustain the Examiner’s rejection of claims 2–5 and 7 because Appellants have not argued the separate patentability of these claims. We are not persuaded of error on the part of the Examiner by Appellants’ arguments that the prior art does not disclose automatically generating a contact list (1) by collecting information from customer’s email address book as recited in claim 6, (2) by scanning databases and/or contact lists as recited in claim 8, (3) from multiple databases as recited in claim 12, and (4) by scanning the customer’s computer as recited in claims 15 and 22. We agree with the Examiner that the disclosure in Silverstein of manually creating a friends list, automatically adding friends to the friends list, and importing addresses from external addresses is sufficient to render obvious the subject matter of these claims. In addition, as we said above, even if Appeal 2012-001493 Application 10/942,315 6 Silverstein did not disclose that the friends’ list is generated automatically, providing an automatic way to replace a manual activity accomplishing the same result is not sufficient to distinguish an automated process over the prior art. Therefore, we will sustain the rejection as it is directed to claims 6, 8, 12, 15, 21, and 22 and claims 9–11, 13, 14, 16–20 and 23 dependent thereon. DECISION The decision of the Examiner to reject claims 1–23 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) (2011). AFFIRMED hh Copy with citationCopy as parenthetical citation