Ex Parte Morton et al

Patent Trial and Appeal Board

Sep 19, 2014

10942315 (P.T.A.B. Sep. 19, 2014)

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).
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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.
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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
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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
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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
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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

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