Ex Parte WallmanDownload PDFBoard of Patent Appeals and InterferencesApr 17, 200911218589 (B.P.A.I. Apr. 17, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEVEN M.H. WALLMAN ____________ Appeal 2009-1558 Application 11/218,589 Technology Center 3600 ____________ Decided:1 April 17, 2009 ____________ 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). Appeal 2009-1558 Application 11/218,589 2 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 Appeal 2009-1558 Application 11/218,589 3 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 Appeal 2009-1558 Application 11/218,589 4 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, Appeal 2009-1558 Application 11/218,589 5 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. Appeal 2009-1558 Application 11/218,589 6 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 Appeal 2009-1558 Application 11/218,589 7 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. Appeal 2009-1558 Application 11/218,589 8 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 hh KENYON & KENYON, LLP 1500 K STREET N.W. 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