Ex Parte Pugh et alDownload PDFPatent Trial and Appeal BoardApr 24, 201411057097 (P.T.A.B. Apr. 24, 2014) 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. 11/057,097 02/12/2005 Michael D. Pugh 11520.8 8898 7590 04/24/2014 KIRTON & McCONKIE Suite 1800 60 East South Temple Salt Lake City, UT 84111 EXAMINER CHUMPITAZ, BOB R ART UNIT PAPER NUMBER 3629 MAIL DATE DELIVERY MODE 04/24/2014 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 MICHAEL D. PUGH, DAVID W. COLLINS, and RICHARD S. DICK ____________ Appeal 2011-012572 Application 11/057,097 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MICHELLE R. OSINSKI, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012572 Application 11/057,097 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-7 and 9-24. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. BACKGROUND Appellants’ invention is directed to systems and methods for managing data in compliance with privacy, security, and/or retention standards in business industries. (Spec. 2). Claim 1 is illustrative: 1. A computer readable medium storing computer program code means utilized to implement, in a system that includes a computer device, a method for managing business data in compliance with privacy, security and retention standards, the method comprising: establishing on a computer readable medium archival business documentation in an electronic form that is associated with identifiable information that is dynamic and customizable; receiving a request for information located on the computer readable medium; determining whether the requested information is subject to a regulated requirement based on the content of the information that would preclude release of the information to the requestor, wherein the regulated requirement is a regulated archival time period, wherein expiration of the time period precludes release of the requested information to the requestor; electronically locating the requested information based on the associated identifiable information; and if the requested information is not subject to the requirement, releasing the requested information to the requestor. Appeal 2011-012572 Application 11/057,097 3 Appellants appeal the following rejections1: Claims 1-7, 9-13, and 19-24 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Claims 1-7 and 9-13 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Claims 1-7 and 9-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Stefik (US 5,715,403; iss. Feb. 3, 1998). ISSUES Did the Examiner err in rejecting claims 1-7, 9-13, and 19-24 under 35 U.S.C. § 101 because the claims are directed to an article of manufacture and not a method? Did the Examiner err in rejecting claims 1-7 and 9-13 under 35 U.S.C. § 112, second paragraph, because the claims are not indefinite because it is clear that the claims are directed to a medium and not a method? Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a) because Stefik does not disclose determining whether the requested information is subject to a regulated requirement that is an archival time period that precludes release? Did the Examiner err in rejecting claim 14 under 35 U.S.C. § 103(a) because Stefik does not disclose determining whether the requested information is subject to a regulated requirement that is a pre-established professional requirement? 1The Examiner has withdrawn the double patenting rejections of claims 1-7 and 9-24 over claims 1-13 of co-pending Application 10/799,921. Appeal 2011-012572 Application 11/057,097 4 Did the Examiner err in rejecting claim 19 under 35 U.S.C. § 103(a) because Stefik does not disclose determining whether the requested information is subject to a regulated requirement that is an established ethical requirement? FACTUAL FINDINGS We adopt the Examiner’s findings made in the rejection of claims 1 and 14 in regard to Stefik as our own. Ans. 7-8, 12-14. Additional findings of fact may appear in the Analysis that follows. ANALYSIS Patent eligible subject matter We are not persuaded of error on the part of the Examiner by Appellants’ argument that claim 1 is directed to a manufacture and not a method and therefore recite patent eligible subject matter. We note that regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim's language is crafted to literally invoke; we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying claim 1 is a method for managing business data not a manufacture in the form of a computer readable storage medium. See Cyber Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). In this regard, the Appellants have not met their burden to demonstrate that the underlying invention of claim 1 is a specific computer readable medium, rather than a method of controlling the release of information by determining whether the information is subject to a regulated requirement. Appeal 2011-012572 Application 11/057,097 5 We are also not persuaded of error on the part of the Examiner by the Appellants’ argument that the Examiner erroneously relied only on the machine-or-transformation test to analyze the claims, and because the claims are not directed to an abstract idea because the steps of the claims are implemented in a system that includes a computer device. The Appellants are correct that the machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible process under § 101. However, the Supreme Court explained that this test remains a “useful and important clue [or] investigative tool.” See Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). Appellants assert that the method of claim 1 includes a system that includes a computer device and thus even if the machine-or-transformation test is used, the claims on appeal satisfy this test. We do not agree. The recitation of a system that includes a computer device is found in the preamble to the claim. None of the recited steps in claim 1 refers to a specific machine by reciting structural limitations of any apparatus or to any specific operations that would cause a machine to be the mechanism to perform these steps. Consequently, the inclusion of a system that includes a computer device in claim 1 does not impose meaningful limits on the claim's scope; nor does such a system that includes a computer device “play a significant part in permitting the claimed method to be performed.” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Consequently, the inclusion of a system that includes a computer device is merely an insignificant extra-solution activity. In addition, as claim 1 is a Beauregard-type claim, the claim could be broadly construed to cover forms of non-transitory tangible media and Appeal 2011-012572 Application 11/057,097 6 transitory propagating signals per se, in view of the ordinary and customary meaning of computer readable medium. We conclude that, absent other factors weighing toward patent eligibility, the machine-or-transformation factor and other factors weighing against patent eligibility, the Examiner has sufficiently established a prima facie case of patent-ineligibility. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. We will also sustain this rejection as it is directed to claims 2-7, 9-13, and 19-24 because these claims stand or fall with claim 1 (Br. 7). Indefiniteness We will not sustain the Examiner’s rejection of claim 1 because we agree with the Appellants that claim 1 is not a hybrid claim. As we stated above, the underlying invention is a method. In addition, the preamble concludes by stating “the method comprising.” As such, we understand the claim to be a method claim and not a hybrid claim. We will not sustain this rejection as it is directed to claims 2-7 and 9-13 for the same reasons. Obviousness We are not persuaded of error on the part of the Examiner by the Appellants' argument that Stefik does not disclose determining whether the requested information is subject to a regulated requirement that is an archival time period that precludes release. Specifically, Appellants argue that Stefik does not teach a regulated requirement of an archival time period which precludes the initial release of the information. Appeal 2011-012572 Application 11/057,097 7 While it is true that Stefik does not disclose that a determination is made regarding whether the content is subject to a regulated requirement prior to the initial transfer of content to a first user, Stefik does disclose that a determination of the rights, which may include a time period, of the first user is made prior to any subsequent transfer of the content to a second user (col. 11, ll. 43-54). We note that claim 1 is not limited to a determination made prior to an initial transfer but rather is broad enough to cover a determination prior to transfers of information subsequent to the initial transfer. Therefore, we agree with the Examiner that Stefik discloses determining whether the requested information is subject to a regulated requirement prior to a release of the content. As such, we will sustain the Examiner’s rejection of claim 1. We will also sustain this rejection as it is directed to claims 2-7 and 9-13 because the Appellants have not argued the separate patentability of these claims. Appellants argue that the Examiner erred rejecting claims 14 and 19 under 35 U.S.C. § 103(a) because Stefik does not disclose determining whether the requested information is subject to a regulated requirement that is a pre-established professional requirement and/or an ethical requirement. The Examiner reasons that the disclosure in Stefik that the repository checks the usage rights is a disclosure of determining whether the requested information is subject to a regulated requirement that is a pre-established professional requirement and determining whether the requested information is subject to an ethical requirement. The Examiner has not explained how the disclosure of checking usage rights is a disclosure of determining whether the information is subject to a professional requirement and/or an ethical requirement. This is a core factual finding necessary in the Appeal 2011-012572 Application 11/057,097 8 determination of patentability, and the Examiner cannot simply reach conclusions based on his/her own understanding or experience. See In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001). As such, we will not sustain the rejection of the Examiner as it is directed to claims 14 and 19 and claims 15-18 and 20-24 dependent thereon. DECISION We affirm the Examiner’s § 101 rejection. We do not affirm the Examiner’s 112, second paragraph, rejection. We affirm the Examiner’s § 103(a) rejection of claims 1-7 and 9-13. We do not affirm the Examiner’s § 103(a) rejection of claims 14-24. 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-IN-PART hh Copy with citationCopy as parenthetical citation