Ex Parte Cloud

Patent Trial and Appeal Board

Jun 8, 2018

13710105 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131710,105 12/10/2012
34395 7590 06/12/2018
OLYMPIC PA TENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
FIRST NAMED INVENTOR
Douglas R. Cloud
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.
35160.001C2 2395
EXAMINER
TROTTER, SCOTTS
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
joanne@olympicpatentworks.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS R. CLOUD
Appeal2016-008750
Application 13/710, 105 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellant, the real party in interest is Douglas R. Cloud.
App. Br. 1.
2 Our Decision refers to Appellant's Appeal Brief filed August 18, 2015
("App. Br."); Appellant's Reply Brief filed September 12, 2016 ("Reply
Br."); Examiner's Answer mailed July 7, 2016 ("Ans."); and Final Office
Action mailed March 20, 2015 ("Final Act.").
Appeal2016-008750
Application 13/710, 105
STATEMENT OF THE CASE
Claims on Appeal
Claims 1 and 11 are independent claims. Claim 1 is reproduced
below:
1. An electronic information market comprising:
advertiser computer systems that transmit electronically
encoded advertisements to remote computer systems and other
processor-controlled devices;
content-provider computer systems that transmit
electronically encoded information to remote computer systems
and other processor-controlled devices;
a user processor-controlled device that receives
electronically encoded information and electronically encoded
information for rendering and display on output components of
the user processor-controlled devices; and
an electronic information market system, implemented to
execute on one or more computer systems and other processor-
controlled devices that
negotiates on the behalf of the user processor-
controlled device with advertiser computer systems to
transmit electronically encoded advertisements to the user
processor-controlled device;
negotiates on the behalf of the user processor-
controlled device with content provider computer systems
to transmit electronically encoded information to the user
processor-controlled device;
aggregates electronically encoded advertisements
and information received from advertiser computer
systems and content-provider computer systems; and
transmits aggregated electronically encoded
advertisements and information to user computers.
2
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Tarr
Strauss
Menon
References
US 2002/0133438 Al
US 2007/0271136 Al
US 2008/0097843 Al
Examiner's Rejections
Sept. 19, 2002
Nov. 22, 2007
Apr. 24, 2008
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 12.
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement. Id. at 13.
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph
as being indefinite. Id. at 14.
Claims 1-5, 7-15, and 17-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Menon and Strauss. Id. at 16-29.
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Menon, Strauss, and Tarr. Id. at 30-33.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(l).
ANALYSIS
Rejection of Claims 1-20 under 35 US.C. § 101
The Examiner concluded claims 1-20 are directed to patent-ineligible
subject matter. Final Act. 12. We agree with the Examiner.
In Alice, the Supreme Court set forth an analytical "framework 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. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
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(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1296-97 (2012)). The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts." Id. If so, the second step is to consider the elements of the
claims "individually and 'as an ordered combination' to determine whether
the additional elements 'transform the nature of the claim' into a patent-
eligible application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other
words, the second step is to "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. (brackets in original) (quoting Mayo, 132 S.
Ct. at 1294).
First Step
Turning to the first step of the Alice analysis, we agree with the
Examiner that the present claims are directed to a patent-ineligible concept:
a negotiation between parties to agree upon terms for compensation for
transmitting advertisements and content. See Final Act. 12; see also
Ans. 26. We disagree with Appellant that such a description
"oversimplif[ies] and generaliz[ es] the subject matter of the current
application." App. Br. 6; see App. Br. 5, 7-10. An examination of claim 1
and claim 11 reveals the claims are directed to a system which "negotiates
on the behalf of the user processor-controlled device" with advertiser and
content-provider computer systems. The claims do not specify any
particular mechanism, technique, or manner of performing the recited
negotiations. Further, Appellant's Specification describes that the
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negotiations occurring between user devices and advertiser or content-
provider systems "arrive at mutually acceptable terms for various
information-exchange transactions," e.g., for "transactions in which users
agree to view advertising and receive a negotiated compensation for viewing
the advertising and transactions in which users obtain content from content
providers at a mutually agreeable cost." Spec. 11:12-15, 21-25. Claims 1
and 11 include further functions of "aggregat[ing] electronically encoded
advertisements and information," and "transmit[ting] aggregated
electronically encoded advertisements and information," i.e., providing the
negotiated advertisements and content to users, neither of which is more
than data collection and communication. Accordingly, based on the broadly
claimed negotiations, the Specification's descriptions of the negotiations,
and the additional steps of data collection and transmission, we determine
that the claims are directed to a negotiation between parties to agree upon
terms for compensation for transmitting advertisements and content.
We further conclude that a negotiation between parties to agree upon
terms for compensation for transmitting advertisements and content is
directed to an abstract idea. Our reviewing court has determined that "a
method of using advertising as an exchange or currency" is directed to an
abstract idea. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014). Similar to Ultramercial, the claims here are directed to the abstract
idea of providing value for watching an advertisement. Indeed, Appellant
describes that the "current application further elaborates [on] compensation
to consumers for viewing advertisements." App. Br. 5 (citing Spec.
11:21-28). Although certain claims (e.g., claims 6 and 7) include further
recitations directed to the negotiations resulting in agreed upon
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compensation, for example, reaching an agreement on the value of the
advertising only further refines the abstract idea of using advertising as
currency. Furthermore, negotiating the cost of viewing content is a
transaction similar to "the abstract concept of offering media content in
exchange for viewing an advertisement," i.e., content in exchange for value.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d at 715-16. Indeed, the
Specification teaches embodiments within the purview of the claims, which,
like Ultramercial, "offer[] media content in exchange for viewing an
advertisement" (id.):
[I]f a user is provided one or more web pages that include ten
advertisements for which the user is paid ten cents per
advertisement to view, and the one or more web pages includes
content that the user has agreed to purchase from a content
provider for one dollar, the net charge to the user is zero.
Spec. 15:31-16:3.
Furthermore, Appellant's arguments that the claims are "directed to
machines and automated processes" and that "[ e ]lectronic systems are not
business practices" are not persuasive. Reply Br. 9-10; App. Br. 8.
Although the claims recite certain machines - advertiser computer systems,
content-provider computer systems, and a user processor-controlled device
- the claims are not directed to improvements to those machines. Rather,
those machines are part of the system that implements the abstract idea, and
the discussion of the machines that implement the abstract idea is better
suited to the second step of the Alice analysis, discussed infra.
Second Step
Turning to the second step of the Alice analysis, we agree with the
Examiner that the claims fail to transform the abstract idea into a patent-
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eligible invention. Final Act. 5, 12; Ans. 26-27. Although Appellant argues
the "claims are directed to a specific implementation involving multiple,
specific types of inter-cooperating computer systems that carry out specific
computational tasks" (Reply Br. 10), the claims do not reflect that assertion.
The claims recite "advertiser computer systems," "content-provider
computer systems," "a user processor-controlled device," "remote computer
systems" and "an electronic information market system ... execut[ing] on
one or more computer controlled system and other processor-controlled
devices" to implement the abstract idea. We agree with the Examiner's
finding that the recited systems and devices that implement the abstract idea
discussed supra are generic computing devices (see Ans. 27). Even
assuming the abstract idea is "new" (Reply Br. 1 O; see App. Br. 10), the
abstract idea is not transformed into patent-eligible subject matter by merely
implementing it on a generic computer system. Alice, 134 S. Ct. at 2358
("[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention."). Indeed, the
Examiner's finding the recited devices and systems which implement the
abstract idea are generic computing devices performing the abstract idea is
supported by Appellant's Specification, which teaches the "information
market to which the current application is directed is generally implemented
within a large variety of different types of processor-controlled information-
processing and communications methods and systems, including personal
computers, mobile phones, server computers, and many other types of
devices and systems." Spec. 4:7-11.
Appellant further argues that "the currently claimed invention cannot
possibly preempt a basic building-block concept." Reply Br. 10-11.
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Although preemption is characterized as a driving concern for patent
eligibility, preemption itself is not the test for patent eligibility. Rather,
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, 788 F.3d 1371, 1379 (Fed. Cir. 2015).
"Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Id. Moreover,
we are not persuaded the claims do not preempt certain types of
negotiations. The claims recite "negotiat[ing] on the behalf of the user
processor-controlled device" with advertisers or content-provider computer
systems in order to "transmit electronically encoded" advertisements and
information to the user processor-controlled device. The claims are silent as
to how that negotiation is performed. Accordingly, the claimed negotiation
encompasses and preempts any manner of negotiation between the user
processor-controlled device and advertiser or content-provider computer
systems.
Additionally, Appellant has not proffered sufficient evidence or
argument to persuade us that any of the limitations in the dependent claims
provide a meaningful limitation that transforms the claims into a patent-
eligible application. See App. Br. 5-12; see also Reply Br. 6-11.
Accordingly, Appellant has not persuaded us claims 1-20 are directed to
patent-eligible subject matter. Therefore, we sustain the rejection of claims
1-20 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
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Written Description: Claims 1-20
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement
because "[i]t is unclear in the Instant Specification exactly what an
'electronic information market' is or what an 'electronic information market
system' is and how or if they are different or the same." Final Act. 13.
Appellant argues the written description requirement "is not concerned with
the particular terms and phrases chosen by an application for recitation in the
claims." App. Br. 12. We are persuaded by Appellant's argument.
The Examiner applies an indefiniteness analysis, more applicable to a
rejection under 35 U.S.C. 112, second paragraph, to determine whether the
claims have adequate written description. In particular, the Examiner
determines the claimed limitations are "unclear." Final Act. 13; Ans. 28.
But that determination does not address the written description requirement,
i.e., whether a person of ordinary skill in the art would have recognized that
the Applicant had possession of the claimed invention. Accordingly, we are
persuaded the Examiner erred in finding claims 1-20 fail to comply with the
written description requirement under 35 U.S.C. § 112, first paragraph.
Indefiniteness: Claims 1-20
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, second
paragraph as being indefinite because it "is unclear if [claim 1] is a method
or a system claim" and because "[i]t is not clear what structure is included or
excluded by the claim language" of claim 11. Final Act. 14--15; Ans. 2 8-29.
Appellant argues the claims are "directed to a distributed computing
system," which "is a system claim." App. Br. 18.
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Claim 1 recites a collection of computing components that forms an
"electronic information market," e.g., "advertiser computer systems,"
"content-provider computer systems," "a user processor-controlled device,"
"remote computer systems," and "one or more computer systems" executing
an electronic information market system. Although claim 1 recites functions
of the computing components, the language of the claim itself is directed to
the computing components performing those functions. Because claim 1
recites its electronic information market is comprised of computing
components, we determine that the claim is an apparatus claim.
Claim 11 recites an "electronic information market system."
Claim 11 further recites computing components that execute that electronic
information market system, e.g., "one or more computer systems and other
processor-controlled devices," and further recites operations between
computing systems, e.g., "advertiser computer systems," "content-provider
computer systems," and "a user processor-controlled device." As such,
claim 11 recites an apparatus comprising computing components by which
the electronic information market system is executed and through which it
operates.
Therefore, we do not agree with the Examiner that it is unclear
whether the claims are directed to methods or apparatuses. Accordingly, we
are persuaded the Examiner erred in concluding claims 1-20 are indefinite
under 35 U.S.C. § 112, second paragraph.
Obviousness: Claims 1-5. 7-15. and 17-20
Appellant contends the Examiner erred in finding Menon teaches
"advertiser computer systems," "content-provider computer systems," "a
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user processor-controlled device," and an "electronic market system," as
recited in claim 1 and similarly recited in claim 11. App. Br. 19--26.
Specifically, Appellant argues that "the electronic information market
system to which [the claims are] directed necessarily includes four different
types of computer systems that carry out four different types of operations,"
that the claims "cannot be interpreted as being directed to a single computer
system," and that Menon does not teach "any particular computer systems,
and most certainly does not teach, disclose, mention, or suggest the four
different types of computer systems recited in [the claims] of the current
application." Id. at 23, 25.
We are not persuaded. The Examiner relies on Menon' s disclosure of
a "method of network merchandising [that] incorporates contextual and
personalized advertising with human input to deliver relevant retail offers to
interested online consumers efficiently and intelligently." Menon i-f 39
(quoted at Final Act. 16-17). In particular, Menon's network merchandising
method includes "a merchandisable universe of products (MUP)" provided
through a content pipeline, i.e., content provider systems, "[m]arketers and
publishers [that] create and modify comer store ad units and specify product
offers from the MUP," i.e., advertiser systems, and "[u]sers [that] visit the
publisher's pages, viewing the product offers," i.e., user devices. Menon
i-f 39; see id. Figs. 2-3. The Examiner further finds, and we agree, Menon
teaches "multiple units/components/processors completing and processing
[Menon's] process." Final Act. 9 (citing Menon Figs. 1, 3-5).
Appellant's arguments are not commensurate with the scope of the
claims. Although the claims recite "advertiser computer systems," "content-
provider computer systems," "a user processor-controlled device," "remote
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computer systems," and an "electronic market system," the claims do not
limit the implementation of those computer systems-i.e., the claims do not
require the advertiser computer systems, content-provider computer systems,
user device, or electronic market computer systems to be in any particular
arrangement. Further, as the Examiner points out (Final Act. 7-8), the
Specification teaches "advertisers and content providers are generally
discrete, remote server computers within data centers or cloud-based virtual
data centers" (Spec. 10:31-11: 1 (emphasis added)), but the Specification
does not require that the advertisers and content providers are different
remote server computers, are different cloud-based virtual data centers, or
are in any other particular arrangement. Furthermore, the Specification does
not define an "electronic information market system" as any particular
computer system. Because the claims do not require any particular
arrangement of those computer systems, we are not persuaded the Examiner
erred in finding Menon teaches "advertiser computer systems," "content-
provider computer systems," "a user processor-controlled device," and an
"electronic information market system," as recited in claim 1 and similarly
recited in claim 11.
Appellant further contends the Examiner erred in finding the
combination of Menon and Strauss teaches a system that "negotiates on the
behalf of the user processor-controlled device with advertiser computer
systems to transmit electronically encoded advertisements to the user
processor-controlled device," as recited in claim 1 and similarly recited in
claim 11. App. Br. 26-32. Specifically, Appellant argues Menon does not
teach the disputed limitation. Id. at 26. Appellant further argues Strauss's
"auction takes place between advertisers and web-page publishers and not
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between advertiser computer systems and user devices that receive the
advertisements." Id. at 31. Still further, Appellant argues Strauss teaches
"[ e ]di ting databases and viewing price changes by advertisers" rather than
"an auction or an auction technique." App. Br. 26. Additionally, Appellant
argues Stauss' s process "is not a process carried out by an electronic
computing system but is, instead, a process carried out by a human user."
Id. at 26, 31.
We are not persuaded. Rather, we agree with the Examiner's finding
that Menon teaches a marketplace for transmitting advertisements to user
devices. Final Act. 16-17 (citing Menon i-f 39, Abstract). The Examiner
further relies on Strauss' s disclosure regarding price negotiations. Final Act.
18 (citing Strauss, Abstract, i-fi-126, 28, 30). In particular, Strauss discloses a
"method for determining a price charged to an advertiser to place a
geographically targeted advertisement on an Internet web page or other
remote area computer network" by "calculat[ing] a price for the
advertisement based on the target audience and the characteristics of the
advertisement." Strauss Abstract; see also Strauss i-f 26. Strauss further
discloses a "price calculation program" that calculates a "price for
displaying an advertisement ... on either a cost per impression or cost per
click basis." Strauss i-fi-118, 23; see also id. i-f 26("identifying a maximum
price per 'click' or per impression that each one of the plurality of advertiser
will pay").
Appellant's argument that Menon fails to teach a negotiation and that
Strauss' s "auction" is "not between advertiser computer systems and user
devices that receive the advertisements" (App. Br. 26, 31) improperly
attacks Menon and Strauss individually when the Examiner's rejection is
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based on the combination of Menon and Strauss. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references."). In
particular, Appellant's argument does not address the Examiner's
combination of Menon, teaching user computer systems receiving
advertisements from advertiser computer systems, with Strauss, teaching the
automated calculation of a price, to teach a system that "negotiates on the
behalf of the user processor-controlled device with advertiser computer
systems to transmit electronically encoded advertisements to the user
processor-controlled device." Final Act. 18-19; see also Ans. 31.
Additionally, Appellant's arguments that"[ e ]diting databases and
viewing price changes by advertisers is not an auction" and that Strauss' s
"process [is] carried out by a human user" rather than being automated (App.
Br. 26, 31) do not address the Examiner's finding that Strauss's "method for
determining a price charged to an advertiser to place a geographically
targeted advertisement on an Internet web page" (Final Act. 18 (citing
Strauss Abstract)) teaches a system that performs an automated negotiation.
In particular, Strauss calculates the price for an advertisement using "a price
calculation program 11," which "obtain[s] general pricing information and
information on the size of the viewing audience the advertisement will
reach." Strauss i-fi-f 18, 23. Stauss' s price calculation program is part of the
offer for an advertisement price that can be accepted, and, accordingly,
teaches an automated negotiation. Therefore, we are not persuaded the
Examiner erred in finding the combination of Menon and Strauss teaches a
system that "negotiates on the behalf of the user processor-controlled device
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with advertiser computer systems to transmit electronically encoded
advertisements to the user processor-controlled device," as recited in claim 1
and similarly recited in claim 11.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Menon and Strauss teaches or suggests the limitations as
recited in independent claims 1 and 11. Additionally, Appellant does not
provide separate arguments for claims 2-5, 7-10, 12-15, and 17-20 which
depend from claims 1and11. See App. Br. 19-36. Therefore, we sustain
the obviousness rejection of claims 1-5, 7-15, and 17-20.
Obviousness: Claims 6 and 16
Appellant contends Tarr does not teach
a negotiator of the one or more negotiators receives an
advertisement provision proposal from a candidate advertiser
computer system and negotiates compensation to be paid by the
candidate advertiser computer system to the user processor-
controlled device for transmitting electronically encoded
advertisements to the user processor-controlled device; and
wherein, when the negotiation results in an agreed compensation,
transmits a message to the candidate advertiser computer system
directing the candidate advertiser computer system to begin
transmitting electronically encoded advertisements to one or
more aggregators,
as recited in claim 6 and similarly recited in claim 16. App. Br. 32-34.
Specifically, Appellant argues "Tarr does not teach, disclose, mention, or
even remotely suggest any type of negotiation, but instead simply discusses
a point-based compensation system." Id. at 33.
We are not persuaded. As discussed above, we agree with the
Examiner's finding that the combination of Menon and Strauss teaches a
negotiation between advertisers and users. Final Act. 18-19; see also
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Ans. 31. The Examiner further relies on Tarr' s disclosure of a system "that
allows viewer[ s ]/users to review potential advertising categories ... and if
they so elect, [to] choose to review a particular advertisement or several
advertisements" and "receive redeemable 'points' for reviewing the ads."
Tarr Claim 1 (cited at Final Act. 31 ). Tarr, therefore, teaches that a user who
agrees to watch an advertisement receives compensation for watching the
advertisement.
Appellant's argument (App. Br. 33) improperly attacks Tarr
individually when the Examiner's rejection is based on the combination of
Menon, Strauss, and Tarr. In re Merck & Co., 800 F .2d at 1097. In
particular, the Examiner combines Menon and Strauss, teaching a
negotiation between a user and an advertiser, with Tarr, teaching that a user
accepts an offer to view an advertisement in return for compensation, to
teach
a negotiator of the one or more negotiators receives an
advertisement provision proposal from a candidate advertiser
computer system and negotiates compensation to be paid by the
candidate advertiser computer system to the user processor-
controlled device for transmitting electronically encoded
advertisements to the user processor-controlled device; and
wherein, when the negotiation results in an agreed compensation,
transmits a message to the candidate advertiser computer system
directing the candidate advertiser computer system to begin
transmitting electronically encoded advertisements to one or
more aggregators.
Final Act. 30-31. Even further, Appellant's argument that Tarr does not
teach "any type of negotiation" (App. Br. 33) is not commensurate with the
scope of the claim. Neither the claims nor the Specification define the term
negotiation, but the Specification does describe that a negotiation "arrive[ s]
at mutually acceptable terms." Spec. 11: 12-15. Tarr teaches a negotiation
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within the Specification's description because Tarr provides an offer to a
user from an advertiser, which the user may accept, thereby arriving at
mutually acceptable terms. Tarr, Abstract, Claim 1.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Menon, Strauss, and Tarr teaches or suggests the limitations
as recited in claims 6 and similarly recited in claim 16. Therefore, we
sustain the obviousness rejection of claims 6 and 16.
Priority
Appellant argues the Examiner "refus[ es] to respect the priority
claim." App. Br. 34. However, the Examiner's "refusal" of the priority
claim is not the basis of any rejection. In particular, although the Examiner
states that "the prior-filed application ... fails to provide adequate support
or enablement in the manner provided by 35 U.S.C. [§] 112(a) or pre-AIA
35 U.S.C. [§] 112, first paragraph for one or more claims of this application"
(Final Act. 11 ), the Examiner has not actually rejected any particular claim
under 35 U.S.C. § 112, first paragraph for lacking written description or
being non-enabled on the basis of that priority claim (see Final Act. 11, 13).
Rather, the Examiner's rejection under 35 U.S.C. § 112, first paragraph, is
based on the Specification filed with this application. Further, Appellant
does not contend that, had the priority claim been accepted by the Examiner,
the prior art relied upon in the Examiner's 35 U.S.C. § 103(a) rejections
would have been disqualified. See App. Br. 4--35. As such, the priority
claim is not determinative of any ground of rejection before us on Appeal.
Therefore, we do not consider the matter of whether Appellant is entitled to
claim priority and/ or benefit of an earlier filing date of the parent
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Application under any of 35 U.S.C. §§ 119(e), 120, 121, and 365(e). See
3 7 CPR § 1.181.
Decorum
37 C.F.R. § 1.3 states, in relevant part: "Applicants and their
attorneys or agents are required to conduct their business with the United
States Patent and Trademark Office with decorum and courtesy."
(Emphases added). In contravention of this requirement, Appellant's Appeal
Brief and Reply Brief repeatedly disparage the Examiner.
Appellant's representative contends that "no statements that would
qualify as argumenta ad hominem" have been made. Reply Br. 4. We
disagree. For example, Appellant states:
"[T]hose familiar with the English language and having even a
high-school level understanding of computers would easily
understand .... "(App. Br. 14);
"Appellant's representative has rarely read a more
disconnected and nonsensical passage in an office communication.
Again, the Examiner appears to be completely unfamiliar with the
examination process" (id. at 23);
"The Examiner also appears to be unable to read and
understand simple English-language statements" (id);
"[A]s with many of the Examiner's statements, the sentence is
unparseable and makes no sense" (id. at 26);
"[T]o those familiar with the English language and even
remotely familiar with history .... "(Reply Br. 3); and
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"Appellant's representative does not believe that such logically
unsound, unreasoned, conclusory, incorrect, and strange statements
should ever he encountered in an official communication issued by the
USPTO." (Id. at 4).
Such comments are not arguments; they are unnecessary, unhelpful,
and unprofessional insults. Those comments do not aid the Board in
properly resolving the issues necessary to render a decision on the merits.
Moreover, those comments do nothing to represent Appellant's best
interests. Appellant is advised to avoid the use of language and tone that
may be considered accusatory, condescending, or inflammatory in future
proceedings, in violation of 37 C.F.R. § 1.3.
DECISION
We affirm the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
We reverse the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.
We reverse the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 112, second paragraph as being indefinite.
We affirm the Examiner's decision to reject claims 1-5, 7-15, and
17-20 under 35 U.S.C. § 103(a) as being unpatentable over Menon and
Strauss.
We affirm the Examiner's decision to reject claims 6 and 16 under
35 U.S.C. § 103(a) as being unpatentable over Menon, Strauss, and Tarr.
19
Appeal2016-008750
Application 13/710, 105
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.
§ 41.50(±).
AFFIRMED
20