Ex Parte TURCHIN

Patent Trials and Appeals Board

Jun 3, 2019

12620900 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/620,900 11/18/2009
62047 7590 06/05/2019
PA TENTS ON DEMAND, P.A.-General
4581 WESTON ROAD
SUITE 345
WESTON, FL 33331
FIRST NAMED INVENTOR
JASON TURCHIN
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.
TUR-9001 1464
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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):
docketing 1@patentsondemand.com
docketing2@patentsondemand.com
brian.buchheit@patentsondemand.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON TURCHIN
Appeal2018-001455 1
Application 12/620,9002
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, 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
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
May 22, 2017) and Reply Brief ("Reply Br.," filed November 22, 2017), and
the Examiner's Answer ("Ans.," mailed September 22, 2017) and Final
Office Action ("Final Act.," mailed January 5, 2017).
2 Appellant identifies the inventor, Jason Turchin, as the real party in
interest. App. Br. 3. We note that neither the pages of Appellant's Appeal
Brief nor those of Appellant's Reply Brief are numbered; we refer in each
instance to the title page as page 1, and treat the pages that follow as though
consecutively numbered.
Appeal2018-001455
Application 12/620,900
CLAIMED INVENTION
Appellant's disclosure "relates to the field of client-attorney
communication and, more particularly, to a method for client-attorney
communication through a legal communications management mobile
application" (Spec. ,r 1 ).
Claims 1, 10, and 16 are the independent claims on appeal. Claims 1
and 10, reproduced below with additional paragraphing included for clarity,
are illustrative of the claimed subject matter:
1. An automated system for providing legal matter
updates comprising:
one or more processors and one or more memories,
wherein at least one of the one or more memories stores program
instructions of a legal matter management application for
execution by at least one of the one of the one or more processors,
wherein one of the one or more memories stores program
instructions of a legal matter update service for execution by one
of the one or more processors;
the legal matter management application running on a
mobile device, comprising at least one of the processors and at
least one of the memories, configured to organize legal matter
data pertaining to a plurality of different legal proceeding, each
involving a user of the mobile device and at least one legal
counsel providing the user with legal advice per a corresponding
one of the legal proceedings, wherein the legal matter
management application interactively provides the user with firm
specific material from a set of different law firms, each handling
at least one of the different legal proceedings;
the legal matter update service application configured to
identify and convey legal matter update messages about the
different legal proceedings from a set of different legal business
computing systems to the legal matter management application,
wherein each of the different legal business computer
systems is a system that [sic] for corresponding ones of the
different law firms
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wherein each of the legal matter update messages
comprises at least one element of legal matter data per a
corresponding one of the different legal proceedings; and
a legal matter server having a data store configured to
mediate communications between the legal matter update service
application and the legal matter management application,
wherein, when the legal matter management application is
unavailable, the legal matter update messages are stored within
the data store for future conveyance.
10. A method comprising:
one or more processors, executing program instructions
stored in one or more memories, installing a legal matter
management application upon a persistent memory of a mobile
device of a user, wherein installation of the legal matter
management application includes agreed upon conditions by the
user, said agreed upon conditions indicates that the user
welcomes information received from a plurality oflegal counsels
that participate in a legal matter update service;
one or more processors, executing program instructions
stored in one or more memories, detecting of a predefined event
within a legal business computing system by a legal matter
update service, wherein said predefined event requires an
electronic communication to at least one designated legal client,
wherein the predefined event represents an attempt of one of the
legal counsels to solicit the user for new legal services;
one or more processors, executing program instructions
stored in one or more memories, automatically generating a legal
matter update message for the predefined event; and
one or more processors, executing program instructions
stored in one or more memories, conveying the legal matter
update message to a legal matter management application
running on the mobile device of the at least one designated legal
client, wherein the legal matter update message comprises a
solicitation sanctioned by state bar advertising rules due to the
agreed upon conditions for installing the legal matter
management application.
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REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. 3
Claims 1-9 and 17 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1-15 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
Claims 1-7 are rejected under 35 U.S.C. § I03(a) as unpatentable over
Mehmet (US 2005/0086179 Al, pub. Apr. 21, 2005) and Balsevich
(US 2006/0161680 Al, pub. July 20, 2006).
Claims 4 and 9 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Mehmet, Balsevich, and Official Notice.
Claims 7 and 8 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Mehmet, Balsevich, and Heston (US 2002/001974IA1, pub. Feb. 14,
2002).
Claims 10 and 13-15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Mehmet and Lang (US 2011/0055005 Al, pub. Mar. 3,
2011).
Claim 11 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Mehmet, Balsevich, and Lang.
3 In the Final Office Action, the Examiner stated that claims 16-20 "do not
appear to fall into an allowable statutory class of invention." Final Act. 3.
The Examiner, however, acknowledges, in the Answer, that "this was an
inadvertent mistake" and that "[c]laims 1-20 are considered to fall into
allowable statutory classes of invention (step 1 of the eligibility analysis)."
Accordingly, we treat this basis of rejection as withdrawn.
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Claim 12 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Mehmet, Lang, and Heston.
Claims 16, 19, and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Mehmet and Heston.
Claim 17 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Mehmet, Heston, and Brown et al. (US 2003/0131059 Al, pub. July 10,
2003).
Claim 18 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Mehmet, Heston, and Balsevich.
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
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of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78). This is "a search for an 'inventive concept' - i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. at 217-18 ( alteration in original).
After Appellant's briefs were filed in this appeal, and the Examiner's
Answer mailed, the USPTO published revised guidance for use by USPTO
personnel in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the "2019 Revised Guidance"). That
guidance revised the USP TO' s examination procedure with respect to the
first step of the Mayo/Alice framework by (1) providing groupings of subject
matter that are considered an abstract idea; and (2) clarifying that a claim is
not "directed to" a judicial exception if the judicial exception is integrated
into a practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.
Independent Claims 1 and 16 and Dependent Claims 2-9 and 17-20
Appellant argues claims 1-9 and 16-20 as a group (App. Br. 34--36).
We select independent claim 1 as representative. Claims 2-9 and 16-20
stand or fall with claim 1. See 37 C.F.R. §4I.37(c)(l)(iv).
We are not persuaded, as an initial matter, by Appellant's argument
that the Examiner failed to perform a proper analysis of patent-eligibility
(App. Br. 35-36). Appellant argues that the§ 101 rejection cannot be
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sustained because the rejection does not include sufficient evidence to
support the Examiner's determination that the claims are directed to an
abstract idea; therefore, according to Appellant, the Examiner has failed to
establish a prima facie case of patent-ineligibility (id. at 35).
Appellant's argument is not persuasive at least because we are aware
of no controlling precedent that requires an examiner to identify specific
references to support a determination that a claim is directed to an abstract
idea. Evidence may be helpful, e.g., where facts are in dispute, but it is not
always needed. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is also possible, as numerous
cases have recognized, that a § 101 analysis may sometimes be undertaken
without resolving fact issues."). Appellant's bare assertion that evidence is
needed here, without any supporting reasoning as to why, is insufficient to
require the Examiner to provide evidentiary support. 4
The Federal Circuit, moreover, has observed repeatedly that "the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court has, thus, held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection,
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application." See In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus,
4 We note that Appellant has put forward no rebuttal evidence showing the
claims are not directed to an abstract idea.
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what is required of the Office is that it sets forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims in accordance with the Mayo/Alice two-step
framework, and consistently with the USPTO guidance in effect at the time
the Final Office Action was mailed. The Examiner, thus, notified Appellant
that the claims are directed to "[t]he concept of providing legal matter
updates," which the Examiner concluded is similar to other concepts that
the courts have held abstract (Final Act. 3-5; see also Ans. 6, 12). More
specifically, the Examiner determined that claim 1 is directed to "providing
legal matter updates by organizing data, identifying and conveying legal
messages, with storage of the legal matter updates in a data store" (id. at 3),
and that "[t]his type of managing relationships between attorneys and their
clients falls under the umbrella of being a method of organizing human
activities" (id. at 4 ). 5 The Examiner also determined that "[ f]or claim 1, the
additional elements are the recitation to one or more processor[ s] and one or
more memories, the use of applications ( which are software per se ), a mobile
device, a computing system, a legal matter server, and the step of mediating
5 The Examiner also reasoned that "[t]he field of attorney client
communication is a field that deals with the managing of the relationships
between an attorney and a client, as well as ... satisfying ... a legal
obligation in terms of informing the client of a court order or decision,
which is required of the attorney" (Final Act. 4).
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communications" (id. at 8). The Examiner, in our view, set forth the
statutory basis of the rejection in a sufficiently articulate and informative
manner as to meet the notice requirement of 35 U.S.C. § 132. And we find
that, in doing so, the Examiner established a prima facie case of patent-
ineligibility. See July 2015 Update, p. 6 (setting forth a general notice
requirement to establish a prima facie rejection under 35 U.S.C. § 101); May
4, 2016 Memorandum to the Patent Examining Corps on "Formulating a
Subject Matter Eligibility Rejection and Evaluating the Applicant's
Response to a Subject Matter Eligibility Rejection," p. 2 (available at
https://www.uspto.gov/sites/default/ files/ documents/ ieg-may-2016-
memo.pdf) ("[T]he rejection ... must provide an explanation ... which [is]
sufficiently clear and specific to provide applicant sufficient notice of the
reasons for ineligibility and enable the applicant to effectively respond.")
( emphasis added).
Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A)
Focusing now more particularly on step one of the Mayo/Alice
framework, we are not persuaded by Appellant's argument that the
Examiner mischaracterized claim 1 as directed to "providing legal matter
updates" (App. Br. 34--35), 6 or that the Examiner otherwise erred in
6 The Examiner's characterization of claim 1 is, in our view, fully consistent
with the Specification, including the claim language. That the claim
includes more words than the phrase the Examiner used to articulate the
abstract idea, and that the Examiner, thus, articulates the abstract idea at a
higher level of abstraction than would Appellant is an insufficient basis to
persuasively argue that the claim language has been mischaracterized. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
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determining that claim 1 is directed to an abstract idea. The Federal Circuit
has explained that "the 'directed to' inquiry applies a stage-one filter to
claims, considered in light of the [S]pecification, based on whether 'their
character as a whole is directed to excluded subject matter."' Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an "abstract
idea" for which computers are invoked merely as a tool. See id. at 1335-36.
Here, the Specification, including the claim language, makes clear that
the claims focus on an abstract idea, and not on any improvement to
computer technology or functionality.
The Specification is entitled "LEGAL COMMUNICATIONS
MANAGEMENT MOBILE APPLICATION," and states that the disclosure
relates, in particular, "to a method for client-attorney communication
through a legal communications management mobile application" (Spec.
,r 1 ). The Specification describes, in the Background section, that "[ c ]lients
are often frustrated by an inability to easily communicate with their attorney
and by their lack of legal knowledge and information regarding the type of
case for which they seek legal representation" (id. ,r 2). The Specification
explains that "[ c ]oordinating meetings, collating documents, and
disseminating information takes considerable time and resources" which
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.").
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"often leaves clients feeling ignored or neglected, darkening their legal
experience" (id.). The Specification discloses that one problem in the legal
sector is that "[ u ]pdating existing clients on case status also requires
significant time and expense from legal counsel and/or his staff' and
"notifying a client about the availability of a document or the occurrence of
an event would require the legal counsel or staff member to halt a current
activity and then generate and send the notification to the client" (id. ,r 6).
According to common practice, these notifications would be sent "via
electronic mail, verbally through a telephone call, and/or through a postal
service (i.e.[,] USPS or Federal Express)" (id.).
The claimed invention is ostensibly intended to address these
shortcomings by providing "a solution that can automatically communicate
update information regarding legal proceedings to clients of legal counsel"
(id. ,r 15). The Specification describes that "[ o ]ne aspect of the present
invention can include an automated system for providing legal matter
updates," including a legal matter management application running on a
mobile device and a legal matter update service application (id. ,r 7). "The
legal matter update service application can be configured to identify and
convey legal matter update messages about the legal proceedings from a
legal business computing system to the legal matter management
application" and "[t]he legal matter update message can include one or more
elements of legal matter data" (id.).
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Appellant's Figure 1 is reproduced below, and depicts "a system 100
that automatically communicates legal matter update messages 175 to
clients 105 of legal counsel 145" (id. ,r 23).
FlG. l
The Specification describes that "a client 105 can utilize a legal matter
management application 115 running on a mobile device 110 to view and/or
perform response actions to legal matter update messages 17 5 received over
a network 170" (id.). The legal matter update messages 175 are sent to
mobile device 110 from a legal matter update service 140 monitoring events
within the business computing system 135 of a legal counsel 145 (id.). The
Specification also describes that "[i]n one embodiment, the legal matter
update service 140 can operate external to the business computing system
135, such as on legal matter server 150" (id. ,r 28).
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Consistent with this disclosure, claim 1 recites an automated system
for providing legal matter updates comprising "one or more processors and
one or more memories." The "one or more memories" store program
instructions of (1) a legal matter management application and (2) a legal
matter update service for execution by the "one or more processors." The
system also comprises "a legal matter server." Each of the claimed
components performs a function in furtherance of providing legal matter
updates. Specifically, the legal matter management application runs on a
mobile device and interactively provides a user with firm specific material
from a set of different law firms; the legal matter update service is
"configured to identify and convey legal matter update messages ... to the
legal matter management application." And the legal matter server has "a
data store configured to mediate communications between the legal matter
update service application and the legal matter management application."7
In other words, the system of claim 1 comprises a first application
configured to send messages to a second application, with a server acting
as an intermediary between the two applications.
These limitations, when given their broadest reasonable interpretation,
recite a system that uses computers to disseminate information, namely legal
matter updates. More specifically, the system of claim 1 facilitates legal
interactions between users by identifying and conveying legal messages
from sources to recipients, which is a method of organizing human activity,
7 According to Appellant, "[t]he term 'mediate' in context as interpreted by
one of ordinary skill would be interpreted to mean that the data store is an
intermediary between the two applications." App. Br. 40 (discussing
indefiniteness rejection).
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and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg.
at 52 ("Certain methods of organizing human activity" include "commercial
or legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations)").
Appellant ostensibly maintains that claim 1 is not directed to an
abstract idea because the focus of claim 1 is "on technological improvements
in communication technology with attorney/client privileged
communications made to mobile devices from multiple different law firms"
(App. Br. 34). Appellant asserts that "[t]he context of legal communications
is central to this improvement," i.e., that "communication[ s] are between a
mobile device running an application and a set of legal servers distributed
over a network" (id.). Yet, claim 1 does not require "a set of legal servers
distributed over a network," and Appellant's argument in that regard is
unpersuasive at least because it is not commensurate with the scope of the
claim. Claim 1 merely recites conveying messages "from a set of different
legal business computing systems" without specifying any particular
arrangement of the legal business computing systems on any network. In
fact, claim 1 does not recite any network at all.
It clearly appears from the Specification that, rather than focusing on
improved communication technology, the focus of claim 1 is on a legal
matter update service that identifies messages from sources (legal business
computing systems) and conveys messages to recipients (the legal matter
management application running on a user's mobile device).
The courts have held similar concepts to be abstract. For example,
in Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir.
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2016), the Federal Circuit held that a claim directed to "[a] post office for
receiving and redistributing email messages on a computer network" was
analogous to a corporate mailroom and, therefore, directed to a fundamental
practice and a method of organizing human activity, i.e., an abstract idea.
The claimed system included "a receipt mechanism," "a database of business
rules," "a rule engine coupled to receive an e-mail message from the receipt
mechanism and coupled to the database," and "a distribution mechanism
coupled to receive the set of actions from the rule engine and apply at least
one action thereof to the e-mail message to control delivery of the e-mail
message." Id. at 1316-17. The Federal Circuit noted that
[corporate] mailrooms receive correspondence, keep business
rules defining actions to be taken regarding correspondence
based on attributes of the correspondence, apply those business
rules to correspondence, and take certain actions based on the
application of business rules. Those actions include gating the
message for further review, as in claim 1, and also releasing,
deleting, returning, or forwarding the message, as described
elsewhere in the '142 patent.
Id. at 1317 (citations omitted). The court also noted that the patent was
"directed to a conventional business practice -the screening of messages by
corporate organizations - in the context of electronic communications." Id.
at 1318.
Like the claimed post office in Intellectual Ventures I, the system of
claim 1, in our view, is analogous to a corporate mailroom. Here, claim 1 is
directed to a conventional business practice - the conveyance of messages
by law firms - in the context of electronic communications.
Appellant further argues that the Examiner has mischaracterized the
update messages of claim 1 as advertising (App. Br. 34). According to
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Appellant, the "[u]pdate messages ... are not advertising" (id.); "[i]nstead,
they are attorney client privileged communication, which only occur when
an attorney and a client have a legal relationship" (id. at 34--35).
As an initial matter, we note that nothing in claim 1 excludes legal
matter update messages that include advertising. 8 And to the extent that the
claim requires a communication protected by attorney client privilege, 9 as
argued by Appellant, we do not see how the informational content of the
communication alters the § 101 analysis. Cf Praxair Distribution, Inc. v.
Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir.
2018) ("Claim limitations directed to the content of information and lacking
a requisite functional relationship are not entitled to patentable weight
because such information is not patent eligible subject matter under
35 U.S.C. § 101.").
Citing Enfzsh, Appellant argues that "the claims are directed to an
improvement in computer capabilities applied to a legal matter update
service, which requires an intermediary data store that mediates
communications when the legal matter management application [ (]running
on the mobile device) is unavailable" and that "[t ]his is an improvement in
the underlying communication process and infrastructure that increases
available [sic] over conventional infrastructures and therefore offers an
improvement in the computer capabilities" (App. Br. 36).
8 See, e.g., Spec. ,r 15 ("the law firm can advertise new legal services to the
mobile device users via the legal mobile application.").
9 Claim 16 recites "wherein the communication is subject to attorney client
privilege." Claim 1 contains no such limitation.
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The Federal Circuit, in Enfish, rejected a§ 101 challenge at the step
one stage of the Mayo/Alice analysis because the claims at issue focused on
"a specific type of data structure [i.e., a self-referential table for a computer
database] designed to improve the way a computer stores and retrieves data
in memory." Enfish, 822 F.3d at 1339. Based on the "plain focus of the
claims," the court, thus, held that the claims were directed to "a specific
improvement to the way computers operate, embodied in the self-referential
table," and, as such, were more than a mere abstract idea. Id. at 1336. We
find no parallel here between claim 1 and the claims in Enfish nor any
comparable aspect in claim 1 that represents an improvement to computer
functionality.
That claim 1 involves a computer acting as an intermediary is not a
persuasive reason to argue that claim 1 involves an improvement to
computer or communication technology. Indeed, the claimed invention in
Alice involved a computer system acting as a third-party intermediary
between two parties. See Alice, 573 U.S. at 213 (citations omitted). The
intermediary computer updated account records and sent instructions to
financial institutions. Yet, the Court held that "the claims at issue amount to
'nothing significantly more' than an instruction to apply the abstract idea of
intermediated settlement using some unspecified, generic computer." Id.
at 225-26.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites additional elements
that integrate the judicial exception into a practical application. Here, the
additional elements recited in claim 1, beyond the abstract idea, are the
claimed "one or more processors and one or more memories," "a mobile
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device," "legal business computing systems," and "a legal matter server."
These elements are described in the Specification at a high level of
generality, i.e., as generic computer components (see, e.g., Spec. ,r,r 20, 25,
32, 36, 43). Cf In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 612
(Fed. Cir. 2016) ("The specification does not describe a new telephone, a
new server, or a new physical combination of the two. The specification
fails to provide any technical details for the tangible components, but instead
predominately describes the system and methods in purely functional
terms.").
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the components and functions recited in claim 1
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) ("[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
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idea into a "practical application," as that phrase is used in the 2019 Revised
Guidance. 10
Appellant argues that claim 1 involves "organizing information that
normally is protected and not available to the mobile phone" (App. Br. 35).
Yet, organizing information is itself an abstract idea. Cf TL! Commc 'ns,
823 F .3d at 611 ("[T]he recited physical components merely provide a
generic environment in which to carry out the abstract idea of classifying
and storing digital images in an organized manner."). And claim 1 is not
limited to any particular way of organizing or storing information (unlike the
invention in Enfish). Nor does claim 1 recite any particular technique for
making "protected" information "available to the mobile phone," aside from
the recitation that the system is configured to "convey" messages to a mobile
device in some unspecified way.
We conclude, for the reasons outlined above, that claim 1 recites
facilitating legal interactions between users, i.e., an abstract idea, and that
the additional elements recited in the claim are no more than generic
computer components used as tools to perform the abstract idea of
facilitating legal interactions between users. As such, they do not integrate
the recited abstract idea into a practical application. See Alice Corp.,
573 U.S. at 223-24 ("[W]holly generic computer implementation is not
lO The Revised Guidance references the MANUAL OF p ATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a}-(c) and (e}-(h) in describing the
considerations that are indicative that an additional element or combination
of elements integrates the judicial exception, e.g., the abstract idea, into a
practical application. Id. at 5 5. If the recited judicial exception is integrated
into a practical application, as determined under one or more of these MPEP
sections, the claim is not "directed to" the judicial exception.
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generally the sort of 'additional featur[e]' that provides any 'practical
assurance that the process is more than a drafting effort designed to
monopolize the [ abstract idea] itself.'" ( alteration in original) ( quoting
Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (USPTO Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 adds specific limitations beyond the judicial exception that
are not "well-understood, routine, conventional" in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
As described above, the only claim elements beyond the abstract idea
are the claimed "one or more processors and one or more memories," "a
mobile device," "legal business computing systems," and "a legal matter
server." Appellant cannot reasonably maintain that there is a genuine issue
of material fact regarding whether operation of these components is well-
understood, routine, or conventional, where, as here, there is nothing in the
Specification to indicate that the operations recited in claim 1 require any
specialized hardware or inventive computer components or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions, e.g., storing, organizing, identifying,
and conveying information. Indeed, the Federal Circuit, in accordance with
Alice, has "repeatedly recognized the absence of a genuine dispute as to
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eligibility" where claims have been defended as involving an inventive
concept based "merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality." Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir.
2018) (Moore, J., concurring) ( citations omitted).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 1, and claims 2-9 and 16-20,
which fall with claim 1.
Independent Claim 10 and Dependent Claims 11-15
In rejecting claim 10 under 35 U.S.C. § 101, the Examiner determined
that "[ c ]laim 10 is directed at a method of organizing human activities
because it is reciting the concept of satisfying a legal obligation required of
an attorney when trying to enter into of a contractual relationship with a
client when the attorney wants to send an advertisement to a client,"
specifically "an advertisement that will be governed by state bar rules"
(Final Act. 7). According to the Examiner:
The obligation to follow state bar rules that govern how attorneys
advertise, such as by obtaining the claimed acceptance of
conditions that is recited in the clam so that advertising can be
sent to a client, is considered to be a method of satisfying a legal
obligation, and for that reason is considered to be a method of
organizing human activities.
Id. The Examiner, thus, notified Appellant that the claims are directed to
"the concept of satisfying a legal obligation," which the Examiner concluded
is similar to other concepts that the courts have held abstract (Final Act. 7-8;
see also Ans. 9-10). The Examiner also determined that "[fJor claim 10, the
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additional limitations are the one or more processors, memories, use of
applications ( software that implies the use of generic computing devices), a
mobile device, and the installing of an application in the memory" (id. at 8).
Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A)
Turning to step one of the Mayo/Alice framework, we are not
persuaded, as an initial matter, that the Examiner erred in determining that
claim 10 is directed to an abstract idea. The Specification discloses that "[a]
significant complication to client-attorney communications relates to State
Bar rules established to minimize direct solicitation with potential clients"
and that "most state bars impose restrictions on direct attorney-to-client
communications until a relationship has been established" (Spec. ,r 3).
The claimed invention is ostensibly intended to address the need for
an open communication forum that disseminates law firm information in a
less hampered fashion (see id.). The Specification, thus, describes that an
aspect of the present invention can include "an automated method for
providing legal matter updates" by detecting a predefined event,
automatically generating a legal matter update message for the predefined
event, and conveying the legal matter update message to a legal matter
management application of a designated legal client (id. ,r 8), i.e. to an
application running on the client's mobile device (id. ,r 15). The
Specification also describes that, "[i]n one embodiment, the law firm can
advertise new legal services to the mobile device users via the legal mobile
application" (id.).
Consistent with this disclosure, claim 10 recites a method comprising
the following steps, each of which is performed by "one or more
processors": (1) installing a legal matter management application;
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(2) detecting of a predefined event within a legal business computing system
by a legal matter update service; (3) automatically generating a legal matter
update message for the predefined event; and ( 4) conveying the legal matter
update message to a legal matter management application running on the
mobile device of the at least one designated legal client. Claim 10 also
recites three "wherein" clauses: (a) "wherein installation of the legal matter
management application includes agreed upon conditions by the user, said
agreed upon conditions indicates that the user welcomes information
received from a plurality of legal counsels that participate in a legal matter
update service;" (b) "wherein the predefined event represents an attempt of
one of the legal counsels to solicit the user for new legal services;" and
( c) "wherein the legal matter update message comprises a solicitation
sanctioned by state bar advertising rules due to the agreed upon conditions
for installing the legal matter management application."
These limitations, when given their broadest reasonable interpretation,
recite a method for facilitating legal interactions between users, which is a
method of organizing human activity, and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52 ("Certain methods of organizing
human activity" include "commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations)").
As discussed above, the Federal Circuit similarly held in Intellectual
Ventures I, 838 F.3d at 1316-18 that screening and routing messages to
recipients is an abstract idea. See also Secured Mail Sols. LLC v. Universal
Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017) (claims were "directed to the
abstract process of communicating information about a mail object using a
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personalized marking."); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions."). And
similar to the step of "detecting of a predefined event" in claim 10, the
Federal Circuit has held that claims directed to using rules for detecting
misuse of patient health information and notifying a user when misuse is
detected were "directed to a combination of[] abstract-idea categories,"
namely mathematical algorithms and mental processes. Fair Warning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). See also
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1344--45 (Fed. Cir. 2013) (finding ineligible claims directed to generating
rule-based tasks for processing an insurance claim).
Having concluded that claim 10 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites additional elements
that integrate the judicial exception into a practical application. Here, the
additional elements recited in claim 10, beyond the abstract idea, are the
claimed "one or more processors," "one or more memories," "a mobile
device," and "a legal business computing system." As discussed above with
reference to claim 1, these elements are described in the Specification at a
high level of generality, i.e., as generic computer components.
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the components and functions recited in claim 10
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
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generic computer components to perform generic computer functions. See
DDR Holdings, 773 F.3d at 1256.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a "practical application," as that phrase is used in the 2019 Revised
Guidance.
Appellant argues that "[c]laims 10-15 are targeted to a novel
installation method, which permits a mobile application to open-up direct
solicitations within the applications between attorneys and the mobile user"
(App. Br. 34). According to Appellant, "[t]hese solicitations are typically
not permitted under state bar rules" and "[t]he context of using a mobile
phone (a ubiquitous device linked to user identity) for user-targeted
communications for legal services (with permissions) is part of the scope
under which this claim needs to be evaluated (for a proper evaluation)" (id.).
Appellant cites paragraphs 3 and 30 of Appellant's Specification as
disclosing the claimed "installing" limitation (see App. Br. 8 (Summary of
Claimed Subject Matter)). However, paragraph 3 merely describes that most
state bars impose restrictions on direct attorney-to-client communications
until after a relationship has been established and that this presents a
significant complication to client-attorney communications; it does not
discuss installing an application on a mobile device.
Paragraph 30 describes that "[i]nstallation of the legal matter
management application 115 can include agreed upon conditions, such as a
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condition that client 105 welcomes information from legal counsels 145
participating in the legal matter update service 140." But, no technical
details of the installation process are disclosed in that paragraph. 11
Appellant further argues that "[ c ]laim 10 is directed towards a novel
communication improvement that permits otherwise disallowed
communications to be conveyed to a mobile phone application, which is
premised on an installation agreement for subsequent communication" (App.
Br. 3 6). But the limitation of claim 10 that the message "comprises a
solicitation sanctioned by state bar advertising rules" does not alter our
analysis. Cf Praxair, 890 F.3d at 1032 ("Claim limitations directed to the
content of information and lacking a requisite functional relationship are not
entitled to patentable weight because such information is not patent eligible
subject matter under 35 U.S.C. § 101."). Appellant offers no explanation as
11 We note that the Specification discloses various ways of facilitating the
installation of the legal matter application (see Spec. ,r 51 ). As examples,
the installation can be initiated by a user selecting "a characteristic icon
[that] can be presented on home pages of law firm Web sites" or a link in a
text message or email (id.), or via "device-to-device communications ( e.g.,
BLUETOOTH) [ ... ] permitting one client 105 to pass the legal matter
management application 115, 200 to another" (id.). This disclosure does
not, however, alter our analysis because claim 10 does not contain any such
details. See Accenture, 728 F.3d at 1345 ("[T]he complexity of the
implementing software or the level of detail in the specification does not
transform a claim reciting only an abstract concept into a patent-eligible
system or method."); see also Intellectual Ventures I, 838 F.3d at 1322
("The district court erred in relying on technological details set forth in the
patent's specification and not set forth in the claims to find an inventive
concept." (citing Accenture, 728 F.3d at 1345, and Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1346
(Fed. Cir. 2014))).
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to how the content of the message being "sanctioned by state bar advertising
rules" is functionally related to the mobile phone application itself.
We also are not persuaded of Examiner error by Appellant's argument
that "DDR Holdings is controlling on claim 10, as like DDR [H]oldings a
functioning and operation of a platform is improved by expanding the
technology base" (App. Br. 36). The court, in DDR Holdings, held that the
claims distinguished over patent-ineligible claims that "broadly and
generically claim 'use of the Internet' to perform an abstract business
practice (with insignificant added activity)," because they "specify how
interactions with the Internet are manipulated to yield a desired result - a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink." Id. at 1258. Here, we do
not find, and Appellant does not identify, any analogous modification to the
routine and conventional functioning of computer network technology. At
best, the claimed invention uses generic computer components ( e.g., one or
more processors, a mobile device, a legal business computing system ( claim
10)) to perform an abstract business practice (i.e., facilitating legal
interactions between users).
We conclude, for the reasons outlined above, that claim 10 recites a
method for facilitating legal interactions between users, i.e., an abstract idea,
and that the additional elements recited in the claim are no more than generic
computer components used as tools to perform the abstract idea of
facilitating legal interactions between users. As such, they do not integrate
the recited abstract idea into a practical application. Accordingly, we agree
with the Examiner that claim 10 is directed to an abstract idea.
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Step Two of the Mayo/Alice Framework (USPTO Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 10 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 10 adds specific limitations beyond the judicial exception that
are not "well-understood, routine, conventional" in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
As described above, the only claim elements beyond the abstract idea
are the claimed "one or more processors," "one or more memories," "a
mobile device," and "a legal business computing system." Appellant cannot
reasonably maintain that there is a genuine issue of material fact regarding
whether operation of these components is well-understood, routine, or
conventional, where, as here, there is nothing in the Specification to indicate
that the operations recited in claim 10 require any specialized hardware or
inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., installing an application on a generic
mobile device and detecting, generating, and conveying information.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 10 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 10, and its dependent claims 11-
15, which are not argued separately.
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Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
Independent Claim 1
In rejecting claim 1 under§ 112, first paragraph, the Examiner found
that the Specification fails to provide adequate written description support
for "the legal matter management application ... configured to organize
legal matter data pertaining to a plurality of different legal proceeding" or "a
data store configured to mediate communications between the legal matter
update service application and the legal matter management application," as
recited in independent claim 1 (Final Act. 15-16). However, we agree with
Appellant that the requisite written description support is provided at least
by claims 1 and 8, as originally filed (App. Br. 37-38). 12 See In re Koller,
12 Claim 1, as originally filed, recited recites "a legal matter management
application ... configured to organize legal matter data pertaining to at least
one legal proceeding" (Spec. 20). And claim 8, as originally filed, recites "a
legal matter server having a data store configured to mediate
communications between the legal matter update service application and the
legal matter management application" (id. at 21 ).
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613 F .2d 819, 823 (CCP A 1980) ("original claims constitute their own
description"); see also In re Gardiner, 475 F.2d 1389, 1391 (CCPA 1973)
("[ A ]n original claim, in itself constituted a description in the original
disclosure equivalent in scope and identical in language to the total subject
matter now being claimed.").
Therefore, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 112, first paragraph.
Dependent Claims 3, 4, and 6--9
Dependent claims 3, 4, and 6-9 are rejected as failing to comply with
the written description requirement based solely on their dependence from
claim 1. Accordingly, we do not sustain the Examiner's rejection of
claims 3, 4, and 6-9 under 35 U.S.C. § 112, first paragraph, for the same
reasons set forth above with respect to claim 1.
Dependent Claim 2
In rejecting claim 2 under§ 112, first paragraph, the Examiner found
that the Specification fails to provide adequate written description support
for "a communications interface component configured to access and utilize
at least one communication medium supported by the mobile device," as
recited in claim 2 (Final Act. 17). According to the Examiner, "the applicant
has not actually explained or disclosed how this is occurring by the legal
matter management application" (id. at 18 ( citing Spec. ,r 41 )).
Claim 2, as originally filed, recited "a communications interface
component configured to access and utilize at least one communication
medium supported by the mobile device." We agree with Appellant (App.
Br. 38-39) that the Specification includes the requisite written description
support at least in original claim 2.
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Therefore, we do not sustain the Examiner's rejection of claim 2
under 35 U.S.C. § 112, first paragraph.
Dependent Claim 5
In rejecting claim 5 under§ 112, first paragraph, the Examiner found
that the Specification fails to provide adequate written description support
for the recitation in claim 5 that "the at least one communication medium
comprises at least one of an email, an instant message, a cell phone call, a
video player, an audio player, a streaming video transmission, and a social
network update" (Final Act. 18).
Claim 5, as originally filed, recites "wherein the at least one
communication medium comprises at least one of an email, an instant
message, a cell phone call, a video player, an audio player, a streaming video
transmission, and a social network update." We agree with Appellant (App.
Br. 38-39) that the Specification includes the requisite written description
support at least in original claim 5.
Therefore, we do not sustain the Examiner's rejection of claim 5
under 35 U.S.C. § 112, first paragraph.
Dependent Claim 17
In rejecting claim 17 under§ 112, first paragraph, the Examiner found
that the Specification fails to provide adequate written description support
for "wherein selection of the option triggers execution of computer usable
program code causing an appointment entry for the time and date to be
created within a calendar software application installed upon the mobile
device," as recited in claim 17 (Final Act. 18). According to the Examiner,
"[t]he only disclosure on how this is performed is that an 'add to calendar'
option is presented to the user" which can be used to "have the appointment
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added to a calendar of a calendar software program that is not disclosed
other than in a very generic fashion" (id. at 19 (citing Spec. ,r 72)).
Although Appellant argues that "[t]his limitation is an original claim"
(App. Br. 39), we see no mention of any calendar appointment in the
original claims. Nevertheless, as the Examiner acknowledges, original
paragraph 72 discloses that "[ s ]election of the 'Add to Calendar' handling
option 3 68 can create an appointment for the date and time specified within
the message text 367 within a calendar software application installed upon
the mobile device 302." We find that a person of ordinary skill in the art
would understand from the Specification as filed, particularly including
paragraph 72, that Appellant was in possession of the claimed subject
matter.
Therefore, we do not sustain the Examiner's rejection of claim 17
under 35 U.S.C. § 112, first paragraph.
Indefiniteness
Independent Claim 1
In rejecting claim 1 under 35 U.S.C. § 112, second paragraph, the
Examiner took the position that "the legal matter management application
running on a mobile device," as recited in claim 1, renders claim 1 indefinite
because the limitation is "directed at a step or act being performed" and
"[t]his is a mixing of different statutory classes of invention and introduces
indefiniteness to the claim" (Final Act. 20). The Examiner also took the
position that "a legal matter server having a data store configured to mediate
communications between the legal matter update service application and the
legal matter management application," as recited in claim 1, renders the
claim indefinite because it is unclear how the communications are mediated
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and what kind of acts are considered as mediating the communications
between the claimed applications (Final Act. 21 ).
We are not persuaded that a person of ordinary skill in the art would
be unable to determine the metes and bounds of claim 1, when read in light
of the Specification. See In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989)
(During examination, after applying the broadest reasonable interpretation to
the claim, if the metes and bounds of the claimed invention are not clear, the
claim is indefinite and should be rejected.); Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for
definiteness under 35 U.S.C. § 112, second paragraph is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the specification."). In particular, we find that a person of ordinary
skill in the art would understand from the Specification that "a legal matter
management application" is "a software application designed to operate on
the mobile device 11 O" (Spec. ,r 38). And, as to the "mediate" limitation, we
agree with Appellant that a person of ordinary skill in the art would
understand that "configured to mediate communications" means that the
messages from the legal matter update service to the legal matter
management application are stored in the data store of the legal matter server
as an intermediate step (App. Br. 40-41). See Spec. ,r 32 ("For example,
legal matter update messages 175 can be stored in the data store 155 for
future delivery when the mobile device 110 is not accessible over the
network 170.")
Therefore, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 112, second paragraph.
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Dependent Claims 2-5, 7, and 9
Dependent claims 2-5, 7, and 9 are rejected as indefinite based solely
on their dependence from claim 1. Accordingly, we do not sustain the
Examiner's rejection of claims 2-5, 7, and 9 under 35 U.S.C. § 112, second
paragraph, for the same reasons set forth above with respect to claim 1.
Dependent Claim 6
In rejecting claim 6 under 35 U.S.C. § 112, second paragraph, the
Examiner took the position that "wherein the legal matter management
application is further configured to facilitate an initial contact between a user
of the legal matter management application and a legal counsel," as recited
in claim 6, renders the claim indefinite because "[t]he scope of the claimed
configuration is not clear" (Final Act. 22).
We agree with Appellant that, rather than being unclear, the claim
language merely encompasses multiple possible implementations (App.
Br. 41 ). To the extent that the claim covers alternative methods for
facilitating an initial communication, this relates to the breadth of the claim,
and not to indefiniteness. See, e.g., In re Miller, 441 F.2d 689, 693
(CCP A 1971) ("Breadth is not ... indefiniteness.").
Therefore, we do not sustain the Examiner's rejection of claim 6
under 35 U.S.C. § 112, second paragraph.
Dependent Claim 8
We are not persuaded by Appellant's arguments that the Examiner
erred in rejecting claim 8 under 35 U.S.C. § 112, second paragraph (App.
Br. 42). Instead, we agree with the Examiner that the term "basic," as
recited in claim 8, i.e., "displays basic legal advice for each user selected
topic or subtopic," is a relative term that renders the claim indefinite at least
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because the term is not defined, and the Specification does not provide an
objective standard for determining which degree of legal advice is "basic"
and which is not (Final Act. 6). See Datamize LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) ("Datamize has offered no
objective definition identifying a standard for determining when an interface
screen is 'aesthetically pleasing' .... While beauty is in the eye of the
beholder, a claim term, to be definite, requires an objective anchor.").
Appellant argues that "the advice provided and displayed in claim 8 is
advice able to be accurately provided regarding a user selected topic or
subtopic that does not require lower-level case-specific understandings of
the minutia, which requires the expertise of a trained legal counsel" (App.
Br. 42). But, we find nothing in Specification, including the claims, that
provides a metric for determining what "basic legal advice" entails or at
what point legal advice becomes "basic."
The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention. See Application of Musgrave, 431 F.2d 882, 893
(CCP A 1970) (noting that "[a] step requiring the exercise of subjective
judgment without restriction might be objectionable as rendering a claim
indefinite"). Some objective standard must be provided in order to allow the
public to determine the scope of the claimed invention. Where, as here, no
such objective standard is provided, the claim is rendered indefinite.
In view of the foregoing, we sustain the Examiner's rejection of
claim 8 under 35 U.S.C. § 112, second paragraph.
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Independent Claim 10 and Dependent Claims 11-15
We are not persuaded by Appellant's arguments that the Examiner
erred in rejecting claims 10-15 under 35 U.S.C. § 112, second paragraph
(App. Br. 42--43). Instead, we agree with the Examiner (Final Act. 23) that
the phrase "a solicitation sanctioned by state bar advertising rules" as recited
in independent claim 10 renders the claims indefinite.
There is nothing in the Specification, including the claims, that
indicates which state bar advertising rules are applicable. Instead, the claim
language is amenable to two or more plausible claim constructions because
the meaning of the phrase "a solicitation sanctioned by state bar advertising
rules" depends on the relevant jurisdiction, i.e., the applicable state bar
advertising rules in effect at the time the method is performed. As such, it
renders the claims indefinite. Cf Ex parte Miyazaki, 89 USPQ2d 1207,
1215 (BPAI 2008) (precedential) (if claim language is subject to multiple
interpretations, the claim language is ambiguous and, thus, indefinite).
Appellant argues that "[g]iven a state, one of ordinary skill can
determine whether a solicitation is within the rules established for that given
state" (App. Br. 42). Although that may be true, claim 10 does not specify
any particular state. Therefore, a person of ordinary skill in the art would be
unable to determine the metes and bounds of the claim at the time the
application was filed. See, e.g., W.L. Gore & Assoc. v. Garlock, Inc., 721
F.2d 1540, 1556 (Fed. Cir. 1983) (Compliance with section 112 is
determined as of the application filing date).
In view of the foregoing, we sustain the Examiner's rejection of
claims 10-15 under 35 U.S.C. § 112, second paragraph.
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Obviousness
Overview of Mehmet
By way of background, Mehmet is directed to an automated case
management system that enables parties to a dispute to "present and receive
settlement offers and counter-offers, send and receive electronic payments,
electronic document filing of Court records [sic] and electronically file
insurance claims with the Insurers, and to access documents and information
regarding pending cases via at least one communications network" (Mehmet
,r 2). Mehmet discloses, in the "BACKGROUND" section, that "while
many systems are available wherein clients can access documents over the
Internet prepared by an attorney on their behalf, these systems do not give
clients the ability to efficiently settle cases, or to print up reports
personalized '24/7,' ... or allow attorneys, clients and third-parties to
enter/review/pull-up file documents outside their office without having to
connect to the attorney's hard drive within their office" (id. ,r 4).
Mehmet's invention is ostensibly intended to address this problem by
"creat[ing] an attorney, client and opposing party daily on-line market place
through the receiving, transmitting and storing of documents, data and
communications through multiple interconnecting attorney, client and
opposing party modules" (id. ,r 23). The attorney module is accessible by an
attorney and "provides various modules, tools and interfaces" that enable the
attorney to "keep clients and opposing parties informed of current case status
and upcoming deadlines" and "manually or automatically draft documents,
such as notifications, pleadings, summons and complaints, discovery, and
other relevant documents" (id. ,r 27). The client module provides various
modules, tools and interfaces that enable a client to, for example, "set-up
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attorney and opposing party files," "upload documents," "choose and
manage multiple attorneys for particular claims and disputes," "review
relevant documents and information uploaded by attorneys and/or opposing
parties," "access information and documents inputted by attorneys via
attorney modules or opposing parties via opposing party modules," and "be
informed of current case status and upcoming deadlines" (id. ,r 28).
Figure 1 of Mehmet is reproduced below.
25
J8
16 19
150
" U) 8 --c---"'-.entral_.,. -0)\.fultl. . e:.__r-- ~n·er Sen er
"------J
21
Figure 1 of Mehmet (above) depicts a system including central server 10
having a database 150, and a computer network 12 that connects the central
server 10 and remote end user stations, including clients 16, attorneys 18,
and insurers 19 ( id. ,r,r 7 5-7 6).
Overview of Balsevich
Balsevich is directed to the communication of data between
computers connected on a data network (Balsevich ,r 7). In particular a
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server attached to the network communicates with at least two clients in
order to conduct the data communication between the clients (id.). The
server maintains a list of active clients, indicated by a table of such indicia
and the corresponding IP address for such client (id. ,r 11 ); the server list of
clients can include registered but inactive clients (id. ,r 12). In one
embodiment, "[p ]ersistence is achieved by routing the messages between
Client A and Client B through the server" (id. ,r 15).
Independent Claim 1 and Dependent Claims 2 and 3
In rejecting independent claim 1 under 35 U.S.C. § 103(a), the
Examiner finds that Mehmet discloses substantially all of the limitations of
claim 1, including a legal matter management application running on a
mobile device, a legal matter update service application, and a legal matter
server (Final Act. 23-29). The Examiner, however, acknowledges that
"Mehmet does not expressly [disclose] that the server is configured to store
messages when the legal management application is unavailable" (id. at 30).
The Examiner cites Balsevich to cure the deficiency of Mehmet (id.), and
the Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of Appellant's invention to modify
Mehmet's server to include determining a network accessibility status of a
mobile device and storing the message when the mobile device is offline, as
disclosed in Balsevich, "so that a message sender and receiver do not have to
be online at the same [time] to exchange a message," thereby enabling "the
sender to create and send the message at one time, and the recipient to obtain
the message the next time they are available/online" (id. at 31 ).
Appellant asserts that in claim 1, "a mobile application organizes
content for an end user on its own stor[ age] medium (drive) from many
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different law firm systems," each handling different proceedings; that "the
update service ... retrieve[s] updates from [the] different law firm computer
systems"; and that "[a] different server (legal matter server) facilitates this
communication (so that when the phone/mobile application isn't available,
the content is cached)" (App. Br. 15). Appellant argues that this
arrangement is "completely dissimilar to a centralized server with a database
backend providing Web portals," as disclosed in Mehmet, because
"[r]egardless of whether a personal computer browser or a mobile device
browser accesses the Web portal, the content of the Web portal remains in
the database" (id.). Appellant, thus, maintains that, in Mehmet, "there is no
gathering of information on a mobile application from different legal firms"
and legal matter data "is not locally stored [in the mobile device of
Mehmet], since it is accessed from a Web portal" (id. at 18).
Responding to Appellant's arguments in the Answer, the Examiner
points out, and we agree, that, in Mehmet, "[ w ]hen the device being used by
the user is a mobile device, this results in the application being stored on and
running on a mobile device as claimed" (Ans. 24). Appellant has offered no
persuasive argument or technical reasoning to support Appellant's assertion
that Mehmet's end user stations do not store legal matter data locally. In
fact, the portions of Mehmet relied on by the Examiner expressly disclose
that the end user devices are configured to run modules and store legal
matter data locally (see Final Act. 26 ( citing Mehmet ,r 77 ("End user
attorneys 18 will have a comprehensive resident program 25 ( or attorney
module) in their hard drives"), ,r 103 ("[ A ]ttorney module 25 includes files
management module 800 . .. [that] enable[s] the attorney to manage client
files."), ,r 106 ("Attorney module 25 may also include a notification module
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825 which allows an attorney to notify clients ... of upcoming deadlines,
dates, meetings, court dates, settlement conferences, etc. Notification
module 25 may also interface or cooperate with a document module 820 to
track documents being manually or automatically prepared or drafted" and
"immediately notify clients, other attorneys, and/or opposing parties."))).
We also are not persuaded by Appellant's argument that "[n]o
'organizing' of different attorney/client protected information from different
law firm systems occurs" in Mehmet (App. Br. 15). Appellant maintains
that "[ n Jo equivalent to an end-user mobile device application ( claimed legal
matter management application) that organizes 'legal matter data' to
different firms and attorneys is present" in Mehmet (id. at 17). Yet, as the
Examiner points out (Final Act. 28-29), Mehmet discloses a system that
"allows attorneys, clients and opposing parties to review and manage
pending cases in a secure and reliable manner" (Mehmet ,r 24) via
"receiving, transmitting and storing of documents, data and communications
through multiple interconnecting attorney, client and opposing party
modules" (id. ,r 23). In particular, the attorney module includes tools and
interfaces that enable the attorney to "set-up and/or access client and
opposing party files" and "review relevant documents and information
uploaded by clients and/or opposing parties" (id. ,r 27). Mehmet also
"envisions numerous attorneys having individualized attorney modules"
(id.). We agree with the Examiner that a person of ordinary skill in the art,
reviewing this disclosure in Mehmet, would understand that the attorney
module organizes "legal matter data pertaining to a plurality of different
legal proceedings" as called for in claim 1.
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Appellant further argues that the Examiner improperly refused to give
patentable weight to "wherein the legal matter management application
interactively provides the user with firm specific material from a set of
different law firms, each handling at least one of the different legal
proceedings," as recited in claim 1 (App. Br. 17). But, that argument is not
persuasive because it mischaracterizes the Examiner's position.
Rather than refusing to give this limitation patentable weight, the
Examiner found that Mehmet meets the claim language, i.e., that Mehmet's
attorney module 25 "interactively provides the user with firm specific
material from a set of different law firms, each handling at least one of the
different legal proceedings" (Final Act. 25-26). The Examiner only
concluded, and we agree, that the content of the claimed "legal matter data,"
as recited in claim 1, i.e., that it pertain[ s] to a plurality of different legal
proceedings" is non-functional descriptive material and, therefore, not
entitled to patentable weight (id. at 26-27).
Appellant also has not persuasively explained how claim 1 recites a
"novel infrastructure" that is not disclosed in the prior art (App. Br. 17). See
id. (arguing that Mehmet's "centralized server 10 and centralized
database 150 utilizes [sic] a different infrastructure that is only targeted for
mediation involving multiple parties"). We do not see how claim 1 requires
any specific "infrastructure" and Appellant's arguments in that regard are
unpersuasive at least because they are not commensurate with the scope of
the claim.
Appellant, moreover, has offered no persuasive argument or technical
reasoning to explain why the "legal matter server having a data store" of
claim 1 is patentably distinguishable from Mehmet' s central server 10
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having a database 150. Appellant characterizes Mehmet's server as a "web
portal" (id.), but not only does that phrase not appear in Mehmet, Appellant
does not explain how claim 1 excludes a web portal.
Finally, Appellant argues that "[n]o proper motivation has been
provided" for the proposed modification of Mehmet's server (id. at 18), and
that "the Office lacks any viable rational[ e] as to why a Web server caches
content for a specific device that is offline ( and unable to access the Web
server, so the point of access is moot)" (id. at 19). But, Appellant does not
explain why the Examiner's articulated reason for the modification, namely
that "[ o ]ne of ordinary skill in the art at the time of the invention would have
been motivated to provide this feature to Mehmet so that a message sender
and receiver do not have to be online at the same to exchange a message"
(Final Act. 30-31 ), is unreasonable or otherwise unsupported.
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the rejection
of dependent claims 2 and 3, which are not argued separately.
Dependent Claim 4
In rejecting claim 4 under 35 U.S.C. § 103(a), the Examiner reasoned
that "the language reciting that 'the profile data is provided by a third-party
directory service' does not define or materially limit/modify any structure
for the claimed system" "is considered non-functional descriptive material"
and "is not given weight" (Final Act. 3 5). We agree with Appellant that this
is not a proper basis for a printed matter rejection (App. Br. 21) because, the
origin of the claimed profile data is not part of the informational content of
the profile data. Cf In re Distefano, 808 F.3d 845, 851 (Fed. Cir. 2015)
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("where the information came from, its 'origin,' is not part of the
informational content at all.")
As an alternative ground of rejection, the Examiner took Official
Notice "that third party directory service providers were old and well known
at the time of the claimed invention" (Final Act. 39). According to the
Examiner, "web-based third party legal directory service providers
commonly provide the ability to look up attorneys in a directory for the
purpose of obtaining profile/contact information ( e.g.,
www.YellowPages.com, www.Findlaw.com)" (id.). The Examiner
concluded that "[ o ]ne of ordinary skill in the art would readily and easily
recognize that sourcing directory data from a third party service provider
would be more efficient than creating a directory from scratch (i.e., well
known benefits of business service specialization)" (id.).
Appellant argues that the Examiner does not explain "[ w ]hy this
[directory] information would be aggregated with the mobile application"
and that "the official notice is deficient under the Zurko [In re Zurko,
258 F.3d 1379 (Fed. Cir. 2001)] standard" (App. Br. 22). But, that argument
is not persuasive at least because it does not address the Examiner's position.
The Examiner cited evidence in the form of two URLs for third-party
directory services publically available via the Internet. And the Examiner
articulated reasoning for modifying Mehmet's system to obtain directory
data from a third party service provider, namely, that it would be more
efficient than creating a directory from scratch.
It also is notable here that Mehmet discloses receiving information
about attorneys and law firms and providing a directory of said information
(see, e.g., Mehmet Figures 28, 44, and 56, ,r 103 ("Files management
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module 800 may enable an attorney to input information about itself during
registration, such as name, contact information, etc."), ,r 138 ("an interface
that receives contact information of attorneys and Insurers from multiples
attorney modules, consolidates the information and displays it as a directory
entry.")). In other words, Mehmet discloses creating a directory "from
scratch" based on information received from users. Appellant has presented
no persuasive argument or technical reasoning to explain why combining the
teachings of Mehmet and commonly available third-party directories of
attorney information ( e.g., a website such as Findlaw.com), as the Examiner
proposes, is unreasonable or otherwise more than the predictable use of prior
art elements according to their established functions. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
Therefore, we sustain the Examiner's rejection of claim 4 under
35 U.S.C. § 103(a) as unpatentable over Mehmet, Balsevich, and Official
Notice.
Dependent Claim 5
Appellant argues "[ w ]ith regard to claim 5, the Examiner states that it
doesn't matter whether a communication is email, IM, or a cell phone call,
which is not a proper basis for a printed matter rejection" (App. Br. 21 ).
Appellant's argument is unpersuasive at least because it does not address the
Examiner's position. The Examiner did not rely on the printed matter
doctrine in rejecting claim 5. Instead, the Examiner cited express disclosure
in Mehmet that "[ e ]nd users 16, 18, 19 may be notified by phone, fax, email
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or pager, or other communications devices which can be contacted by the
system 13" (Final Act. 36 (quoting Mehmet ,r 90)).
In view of the foregoing, we sustain the Examiner's rejection of
claim 5 under 35 U.S.C. § 103(a).
Dependent Claim 6
In rejecting claim 6 under 35 U.S.C. § 103(a), the Examiner cited
paragraphs 73, 76, 77, and 86 of Mehmet as disclosing "wherein the legal
matter management application is further configured to facilitate an initial
contact between a user of the legal matter management application and a
legal counsel" (Final Act. 36-37).
We have reviewed the cited portions of Mehmet on which the
Examiner relies. And we agree with Appellant that nothing there discloses
or suggests the argued limitation (App. Br. 21 ).
Therefore, we do not sustain the Examiner's rejection of claim 6
under 35 U.S.C. § 103(a).
Dependent Claim 7
Claim 7 depends from claim 1 and recites that "the legal matter data
comprises at least one of data extracted from legal matter update messages
and predefined legal advice data" (App. Br. 45 (Claims Appendix)).
In rejecting claim 7, the Examiner determined, and we agree, that this
limitation "does not define or materially limit/modify any structure for the
claimed system" and "at most provides a descriptive label for
data/information in the system" (Final Act. 3 8). As such, it constitutes
nonfunctional descriptive material that may not be relied on to distinguish
over the prior art for purposes of patentability.
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The Federal Circuit has long held that where a limitation claims
printed matter that is not functionally or structurally related to its physical
substrate, the printed matter may not be relied on to distinguish over the
prior art for purposes ofpatentability. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). In applying the printed matter doctrine,
the first step is to determine whether the limitation is, in fact, directed to
printed matter, i.e., whether the limitation claims the content of information.
See In re Distefano, 808 F.3d at 848. If so, "one must then determine if the
matter is functionally or structurally related to the associated physical
substrate, and only if the answer is 'no' is the printed matter owed no
patentable weight." Id. at 851. See also King Pharms Inc. v. Eon Labs, Inc.,
616 F.3d 1267, 1278-79 (Fed. Cir. 2010) (applying the "printed matter"
reasoning to method claims).
Here, claim 7 claims the informational content of the legal matter
data, namely that the legal matter data comprises "at least one of data
extracted from legal matter update messages and predefined legal advice
data." As such, this limitation is directed to printed matter. The relevant
inquiry then is whether the recitation that the legal matter data comprises "at
least one of data extracted from legal matter update messages and predefined
legal advice data," i.e., the claimed informational content, is functionally or
structurally related to the claimed system.
There is no objective evidence of record that the fact that the legal
matter data comprises "at least one of data extracted from legal matter
update messages and predefined legal advice data," as opposed to some
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other information, affects the structure or function of the claimed system in
any way. Regardless of the nature of the legal matter data, the function and
structure of the claimed system is the same. As such, the nature of the legal
matter data, i.e., that it comprises "at least one of data extracted from legal
matter update messages and predefined legal advice data," constitutes
nonfunctional descriptive material that may not be relied on for patentability.
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
We are not persuaded by Appellant's arguments that the Examiner
erred in rejecting claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Mehmet and Balsevich (App. Br. 21-22). Therefore, we sustain the
Examiner's rejection. 13
Dependent Claim 8
Claim 8 depends from claim 1, and recites that "the legal matter
management application comprises a legal advice feature ... [that] present[s]
the user with a plurality of different legal topics and additional subtopics,
and displays basic legal advice for each user selected topic or subtopic" (id.
at 45--46 (Claims Appendix)).
In rejecting claim 8 under 35 U.S.C. § 103(a), the Examiner found
that Heston discloses this limitation in paragraphs 100 and 101 (Final
Act. 43). Appellant disagrees and argues that the rejection is improper
because paragraph 100 of Heston "just discusses using a database for form
entry" (App. Br. 23) and "[n]o mobile application that gives legal advice for
different topics or subtopics is evident" (id. at 24).
13 We need not, and do not, reach the Examiner's further rejection of
claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Mehmet,
Balsevich, and Heston.
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We are not persuaded of Examiner error at least because the Examiner
found the claimed mobile application in Mehmet, as discussed above, not in
Heston. Moreover, we agree with the Examiner that Heston discloses the
argued limitation, i.e., a legal advice feature that presents the user with a
plurality of different legal topics and additional subtopics, and displays
basic legal advice for each user selected topic or subtopic, at least in
paragraphs 100 and 101.
Paragraph 100 of Heston discloses a web site that displays a list of
selectable categories; these categories are hyper-linked to other web pages,
which contain subcategories for selection by a client. The categories include
legal topics such as "Criminal" (Heston ,r 80) with subcategories such as
"DUI/DWI" (id. ,r 81) and "Other felony" (id. ,r 82). After the client selects
an appropriate category and subcategory, the client may enter information
describing his or her inquiry (id. ,r 101 ). The legal entity then sends an e-
mail to the client in response to the client's inquiry (id. ,r 102).
In view of the foregoing, we sustain the Examiner's rejection of
claim 8 under 35 U.S.C. § 103(a).
Dependent Claim 9
Claim 9 depends from claim 1, and recites that "the legal matter
management application is further configured to exchange data with at least
one other software application installed upon the mobile device (App. Br. 46
(Claims Appendix)).
In rejecting claim 9 under 35 U.S.C. § 103(a), the Examiner took
Official Notice "that it was old and well known in the computer/IT arts to
configure applications to exchange data with other applications installed on
the same device" (Final Act. 40) (referencing dynamic data exchange
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(DDE)). And the Examiner concluded that it would have been obvious to a
person of ordinary skill in the art at the time of Appellant's invention "to
configure Mehmet's case management application to exchange data with
other applications so that data can be utilized in different ways ( e.g., copy
and paste data from an email to a word processor application)" (id. at 40-
41 ).
Appellant argues that the Examiner's use of Official Notice is
improper and that "attempting to exchange data through DDE to a portal
server, would be a security flaw (typical of malware )" (App. Br. 23). But,
Appellant offers no persuasive argument or technical reasoning to explain
why the Examiner's position, i.e., that it would been obvious to configure
Mehmet's case management application to copy and paste data from one
application to another, is unreasonable or unsupported. It also is significant
here that the Examiner did not propose to modify Mehmet to "exchange data
through DDE to a portal server." The Examiner simply concluded that an
application running on a mobile device, such as attorney module 25 of
Mehmet, can exchange data with other applications on the mobile device,
such as via copying and pasting between applications.
In view of the foregoing, we sustain the Examiner's rejection of
claim 9 under 35 U.S.C. § 103(a).
Independent Claims 10 and 16 and Dependent Claims 13-15, 19, and 20
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 10 and 16 under 35 U.S.C. § 103(a) because
Mehmet, on which the Examiner relies, fails to disclose or suggest "a legal
matter management application running on the mobile device of the at least
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one designated legal client," as recited in claim 10, and similarly recited in
claim 16 (App. Br. 25, 30).
The Examiner cites paragraphs 77, 78, and 90 of Mehmet as
disclosing the argued feature (Final Act. 48). And the Examiner takes the
position that resident program 25 ( attorney module) meets the argued
limitation.
Mehmet discloses in paragraph 77 that "end user attorneys 18 will
have a comprehensive resident program 25 ( or attorney module) in their hard
drives." But, Mehmet does not disclose or suggest that the attorney module
is "running on the mobile device of the at least one designated legal client,"
as called for in claims 10 and 16. Although an attorney can be a designated
legal client (e.g., a client of another attorney), Mehmet does not disclose or
suggest that this is the case with end user attorneys 18 using attorney
module 25. Therefore, we do not see how, and the Examiner has not
adequately explained how, Mehmet's resident program 25 (attorney module)
meets the argued limitation.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 10 and 16 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 13-15, 19,
and 20. 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").
Dependent Claims 11, 12, 17, and 18
The Examiner's rejections of dependent claims 11, 12, 17, and 18 do
not cure the deficiencies in the Examiner's rejection of independent
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claims 10 and 16. Therefore, we do not sustain the Examiner rejection of
claims 11, 12, 17, and 18 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-9 and 17 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is reversed.
The Examiner's rejection of claims 1-7 and 9 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's rejection of claims 8 and 10-15 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner's rejections of claims 1-5 and 7-9 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner's rejections of claims 6 and 10-20 under 35 U.S.C.
§ 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
52