Ex Parte Wallman

Board of Patent Appeals and Interferences

Apr 17, 2009

11218589 (B.P.A.I. Apr. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN M.H. WALLMAN
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Appeal 2009-1558
Application 11/218,589
Technology Center 3600
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Decided:1 April 17, 2009
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Before HUBERT C. LORIN, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/218,589

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STATEMENT OF THE CASE
The Appellant seeks our review of the Examiner’s final rejection of claim 1
under 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We affirm.
Appellant claims a method for voting corporate shares by enabling a
shareholder to enter preferences regarding how to vote his or her proxies into a
computer system, which then screens the received proxies and automatically enters
the shareholder’s preferences onto the proxy cards. The completed proxy cards are
then automatically returned to the election authority at the proper time
(Specification 4:2-6). Claim 1, reproduced below, is the lone claim on appeal.
1. A method for voting shares comprising:
receiving by a computer preferences regarding
how to vote a user's shares in a corporation in future
corporate votes, said preferences including an
identification of one or more organizations whose voting
recommendations are to be followed when voting the
user's shares; and
automatically voting the user's shares by a
computer in accordance with the received preferences in
one or more subsequent corporate votes.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Chisholm US 5,400,248 Mar. 21, 1995

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The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Chisholm.
ISSUE
Has the Appellant shown that the Examiner erred in finding that Chisholm
teaches receiving by a computer preferences regarding how to vote a user’s shares
in a corporation in future corporate votes?

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).
1. The Specification provides no lexicographic definition for the term
“preferences.”
2. Preference is defined as “[t]he selecting of someone or something over
another or others,” “[t]he right or chance to so choose”, or “[s]omeone or
something so chosen.” “[p]reference.” The American Heritage® Dictionary
of the English Language, Fourth Edition (Houghton Mifflin Company,
2004).
3. Chisholm teaches a voting system that allows voters to express and cast
votes that are conditional on the votes of others of a voting group. Votes
may be conditional on the votes of specific individuals, on the number or
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percent of the overall group who vote a certain way, external events or on
any combination thereof (Chisholm, Abstract).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is broader
than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
We remind appellants that it is their burden to precisely define the invention,
not that of the Examiner. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Appellants always have the opportunity to amend the claims during prosecution,
and broad interpretation by the examiner reduces the possibility that the claim,
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once issued, will be interpreted more broadly than is justified. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969).
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the scope
and content of the prior art, (2) any differences between the claimed subject matter
and the prior art, (3) the level of ordinary skill in the art, and (4) where in evidence,
so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). Only if this initial burden is met does the burden of coming forward
with evidence or argument shift to the appellant. Id. at 1445. See also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445; Piasecki, 745 F.2d at 1472.

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ANALYSIS
The Examiner found that Chisholm teaches each of the limitations of claim
1, but for not expressly teaching that (1) a user is voting shares per se in a
corporate voting; and (2) the voters can establish voting preferences based on an
organization per se. The Examiner found both of these limitations to be obvious
over Chisholm alone (Answer 4-5). The Appellant does not contest the
Examiner’s findings as to the obviousness of these individual elements (Br. 4).
The Appellant does argue that Chisholm does not disclose voting
preferences for future corporate votes because Chisholm’s system requires the
voter to submit a conditional vote for every election or voting event, which is not a
voting preference (Br. 4). According to the Appellant, the distinction is that a
voting preference can be established across multiple securities, while the
conditional vote must be submitted for each different security (Br. 5).
The Examiner noted that the actual voting of the user’s shares in accordance
with the received preferences is only required to be performed in “one or more
subsequent corporate votes” so only one future vote is required by the claim
(Answer 6-7). We agree. To the extent that Appellant is arguing that Chisholm
does not disclose voting in accordance with the received preferences in more than
one subsequent corporate vote, that argument is not commensurate with the scope
of claim 1. Moreover, claim 1 requires receiving by a computer preferences
regarding how to vote a user’s shares in a corporation, not multiple corporations,
so the Appellant’s argument that Chisholm requires that a conditional vote must be
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submitted for each different security also is not commensurate with the scope of
claim 1.
The Appellant has provided no lexicographic meaning for the term
“preference” (Finding of Fact 1), so we construe the term applying the broadest
reasonable construction in light of the specification as it would be interpreted by
one of ordinary skill in the art. Preference is defined as “[t]he selecting of
someone or something over another or others,” “[t]he right or chance to so
choose,” or “[s]omeone or something so chosen.” (Finding of Fact 2).
The Examiner found that Chisholm discloses receiving by a computer
preferences regarding how to vote a user's shares in a corporation in future
corporate votes, because Chisholm’s users must establish voting preferences before
they cast their own vote, which the Examiner considers to be preferences regarding
future votes (Answer 3, citing Chisholm, col. 4, ll. 34-63 and col. 5, l. 11 – col. 9, l.
20). The Examiner also found that the conditional votes are voting preferences
because they provide guidance to automatically determine how their respective,
final votes should be cast when all tallying is complete (Answer 9). Chisholm
teaches the submission of a conditional vote, which expresses the conditions under
which the voter will vote yes or no on a particular measure (Finding of Fact 3).
Such a conditional vote includes preferences for selecting one vote over another.
We therefore find the Examiner’s interpretation to be consistent with a broadest
reasonable construction in light of the specification as it would be interpreted by
one of ordinary skill in the art. The Appellant thus has failed to show that the
Examiner erred in rejecting claim 1 as unpatentable over Chisholm.
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CONCLUSIONS
We conclude that the Appellant has not shown that the Examiner erred in
finding that Chisholm teaches receiving by a computer preferences regarding how
to vote a user’s shares in a corporation in future corporate votes.

DECISION
The decision of the Examiner to reject claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Chisholm is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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