Ex Parte Dick et al

Patent Trial and Appeal Board

Sep 19, 2018

13422955 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/422,955 03/16/2012 Zane Dick
25764 7590 09/21/2018
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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.
473715.410006 5409
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZANE DICK, GARY LALONDE, JANNA PULVER,
ROW AN C. SEIDEL, and LORA THODY
Appeal2017-006146
Application 13/422,955 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, 4, 6-10, 14--16, and 18-24, which
are all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Thomson Reuters
Global Resources. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief, filed June 24, 2016
("App. Br."); Reply Brief, filed March 6, 2017 ("Reply Br."); Examiner's
Answer, mailed January 9, 2017("Ans."); Final Office Action, mailed
February 2, 2016 ("Final Act."); and original Specification, filed March 16,
2012 ("Spec.").
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Application 13/422,955
STATEMENT OF THE CASE
Appellants' invention relates to "systems and methods for automated
compliance verification" and "automatically verifying the accuracy of rules
used in a compliance process" by an entity. Spec. ,r 2. Appellants'
invention uses a "transmission object ... created based on the compliance
documents [and] includ[ing] general information pertinent to the rules and/or
the entity ( e.g., jurisdictional or topical information)," and "identifies rules
pertinent to [the] transmission object and conducts a search to determine
whether any of those rules have been modified." Abstract.
Claims 1, 9, and 15 are independent. Representative claim 9 is
reproduced below:
9. A computer-based system for receiving updates to a
compliance rule referenced in a company compliance manual
while preserving privacy with respect to company-specific
compliance policies in the compliance manual, the system
compnsmg:
one or more processors;
an incorporation module configured to use the one or
more processors to:
parse a citation to a compliance rule in the company
compliance manual from company-specific compliance
policies regarding the compliance rule in the company
compliance manual; and
create a transmission object that include the citation to
the compliance rule in the company compliance manual
without including the company-specific compliance policies
regarding the compliance rule from the company compliance
manual;
a review module configured to use the one or more
processors to present the citation to the compliance rule in
the transmission object to a user for approval;
a communications module configured to send the
transmission object to an entity responsible for receiving the
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transmission object, using the citation to identify updates to
the compliance rule, and compiling the updates to the
compliance rule into a notification; and
an update module configured to use the one or more
processors to receive the notification from the entity in
response to sending the transmission object, the notification
conveying an update to the compliance rule in the company
compliance manual.
App. Br. 22-28 (Claims App.). 3
Evidence Considered
Tyree et al. ("Tyree") US 2009/0241165 Al Sept. 24, 2009
Kerry-Tyerman et al. US 2013/0013999 Al Jan. 10,2013
("Kerry")
Okabe et al. ("Okabe") US 2008/0040125 Al Feb. 14,2008
Bedi et al. ("Bedi") US 2007 /0118598 Al May 24, 2007
Black et al. ("Black") US 2004/0243428 Al Dec. 2, 2004
Examiner's Rejections4
(1) Claims 1, 2, 4, 6-10, 14--16, and 18-24 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter. Final Act. 5-8.
3 Appellants' Claim Appendix does not have numbered pages. We count
the pages of the Claim Appendix consecutively starting from page 22, which
follows the Appeal Briefs page 21.
4 Dependent claim 14 was rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for reciting a "computer-implemented
method" not found in base claim 10 ( directed to a "computer-based
system"). Final Act. 4. However, this rejection is moot because claim 14
has been amended to recite a "computer-based system" in an Amendment
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(2) Claims 1, 2, 4, 6, 15, 16, and 20-24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Tyree, Kerry, Okabe, and
Bedi. Final Act. 9-26.
(3) Claims 9, 10, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tyree, Kerry, and Okabe. Final Act. 26-33.
(4) Claims 7, 8, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tyree, Kerry, Okabe, Bedi, and Black. Final
Act. 33-39.
ANALYSIS
35 U.S.C. § 101 Rejection of Claims 1, 2, 4, 6--10, 14-16, and 18-24
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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, 134 S.Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. If the claims are directed to a patent-ineligible concept,
the second step in the analysis is to consider the elements of the claims
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a
After-Final filed on April 19, 2016, entered by the Examiner on May 19,
2016.
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patent-eligible application." Id. (citing Mayo, 566 U.S. at 79, 78). 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. (citing Mayo, 566 U.S. at 72-73).
In rejecting independent claims 1, 9, and 15 under 35 U.S.C. § 101,
the Examiner finds these claims are directed to an abstract idea because the
steps recited for "identifying rules in documents, sending metadata
identifying ... a rule, []and receiving ... updates" are analogous or similar
to the abstract ideas of organizing, manipulating, and transmitting
information identified in Content Extraction and Versata. Final Act. 6; Ans.
9-10 (citing Content Extraction & Transmission LLC v. Wells Fargo Bank,
National Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014); Versata Dev. Group v. SAP
America, Inc., 793 F.3d 1306 (Fed. Cir. 2015)).
The Examiner also finds the additional claimed elements of
processors, modules, and database are generic computing elements
"performing generic computer functions" that are "well-understood, routine
and conventional in the art." Final Act. 7.
Appellants contend the Examiner erred in rejecting the claims under
35 U.S.C. § 101 as directed to non-statutory subject matter because: (1) the
claims are directed to non-abstract "applications and technical solutions for
separating compliance rule information from confidential information in
compliance documents in order to enable updating those compliance
documents without exposing the confidential information in the compliance
documents to increased risk of exposure;" and (2) the claims amount to more
than an abstract idea. App. Br. 8-15; see also Reply Br. 2-6. Particularly,
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Appellants argue their claims are similar to the claims of Enfish because
"[Appellants'] claims provide a technical solution that isolates confidential
information in compliance documents while still enabling updating the
compliance rules in the compliance documents." App. Br. 10-12 ( citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
Appellants assert their claims, like the claims in DDR, are "rooted in
computer technology" and solve a "particular Internet-centric problem" by
"creating a packet of information, i.e., the transmission object, whose
contents are different than what is sent with conventional computer
systems," as it "does not include the confidential information from the
compliance document." App. Br. 14--15 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)); see also Reply Br. 3, 6.
We are not persuaded by Appellants' arguments. At the outset, we
note Appellants' claimed "transmission objects"-which "include the
citation to the compliance rule ... without including the company-specific
compliance policies regarding the compliance rule from the company
compliance manual"----can be generated and updated manually by a person
(a compliance officer). See App. Br. 24, Claims App.; see also Spec. ,r,r 20,
24, 31, 34--35, 44, 49-51, and 55. Appellants' claims also do not recite
"technical limitations for separating compliance rule information from
confidential information in compliance documents" as Appellants assert.
See App. Br. 12. Thus, Appellants have not demonstrated that a specific
improvement to the way computers operate ( as in Enfish) separates the
compliance rule information from confidential information and produces the
claimed "transmission objects." See Enfish, 822 F.3d at 1336, 1339; see
also Ans. 10. Appellants also have not demonstrated their claims "improve
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the way a computer stores and retrieves data in memory," as the claims in
Enfish did. See Enfish, 822 F.3d at 1339; see also Ans. 3.
Thus, we agree with the Examiner's determination that the claims are
abstract because they are directed to data gathering, organizing, and
manipulation techniques similar to the techniques identified in Content
Extraction, Versata, Digitech, Electric Power Group, and Intellectual
Ventures. Ans. 9-10; see also Final Act. 6; Digitech Image Techs., LLC v.
Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (Employing
mathematical algorithms to manipulate existing information.); Content
Extraction, 776 F.3d at 1347--48 (Finding that "[t]he concept of data
collection, recognition, and storage is undisputedly well-known," and
"humans have always performed these functions."); Versata, 793 F.3d at
1306 (Fed. Cir. 2015); Electric Power Grp, LLC v. Alstom S.A., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016) (Collecting information and "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category."); and Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (Tailoring information
presented to a user based on particular information.).
Additionally, the law is clear that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under [section] 101." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011). Mental processes remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. See CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
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computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
Furthermore, "a compliance rule" and "company-specific compliance
policies regarding the compliance rule" as claimed, are merely information,
and as such are intangible. See, e.g., Microsoft Corp. v. AT & T Corp., 550
U.S. 437, 451 n.12 (2007); see also Alice, 134 S.Ct. at 2355; Gottschalk v.
Benson, 409 U.S. 63, 67---68, and 71-72 (1972) ("Phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work."); and Parker v. Flook, 437 U.S. 584, 589, and 594--95 (1978)
("Reasoning that an algorithm, or mathematical formula, is like a law of
nature, Benson applied the established rule that a law of nature cannot be the
subject of a patent."). Information collection and analysis, including when
limited to particular content, is within the realm of abstract ideas. See, e.g.,
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); and Digitech, 758 F.3d at 1349-51 ("Data in its ethereal,
non-physical form is simply information that does not fall under any of the
categories of eligible subject matter under section 101.").
We are also not persuaded by Appellants' arguments that their claims
are similar to the claims of DDR. App. Br. 10, 12, and 14--15; see also
Reply Br. 4, 6. Appellants have not demonstrated their claimed generic
computing elements (i.e., the claimed processors, modules, and database), in
combination, are able to performfunctions that are not merely generic, as
the claims in DDR. Ans. 8-9; see also DDR Holdings, 773 F.3d at 1257-58
(Holding the claims at issue patent eligible because "they do not broadly and
generically claim 'use of the Internet' to perform an abstract business
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practice (with insignificant added activity)" and "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."). Additionally, Appellants' claims
focus on the problem of assisting entities in complying with rules pertinent
to their operations-a problem that is not a technical problem or one rooted
in computer technology or particular only to the Internet. See Spec. ,r,r 4,
16-17; see also Ans. 8-9.
In fact, none of the steps and elements recited in Appellants' claims
provide, and nowhere in Appellants' Specification can we find, any
description or explanation as to how the claimed transmission objects'
creation and manipulation steps, and compiled update notification are
intended to provide: (1) a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks," as explained by the Federal Circuit in DDR, 773
F.3d at 1257; (2) "a specific improvement to the way computers operate," as
explained in Enfzsh, 822 F.3d at 1336; or (3) an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
performance of the system itself," as explained in Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300, and 1302 (Fed. Cir. 2016). See
Ans. 6.
Appellants further argue their claims are similar to the claims of
McRO. Reply Br. 2, 5 ( citing McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016)). We remain unpersuaded. The
Federal Circuit determined that McRO's claim was not directed to an
abstract idea because it "uses the limited rules in a process specifically
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designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques." McRO, 837 F.3d at1316. In contrast to
McRO, Appellants' claims address a business problem of assisting entities in
complying with rules pertinent to their operations, by informing the entities
of identified rule updates. See Spec. ,r,r 4, 16-17; see also McRO, 837 F.3d
at 1316. The claims in McRO were drawn to improvements in the operation
of a computer at a task, rather than applying a computer system to perform
generic data manipulation and transmission steps, as in Appellants' claims 1,
9, and 15. See McRO, 837 F.3d at 1314. Further, with respect to Appellants'
preemption argument (Reply Br. 5), we note the McRO court also explicitly
"recognized that 'the absence of complete preemption does not demonstrate
patent eligibility."' See McRO, 837 F.3d at 1315 (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Accordingly, we agree with the Examiner that claims 1, 9, and 15 are
directed to an abstract idea.
Under step two of the Alice framework, we agree with and adopt the
Examiner's findings on pages 6 and 8-11 of the Answer. We find that the
additional limitations, taken individually and as a whole in the ordered
combination, do not add significantly more to the abstract idea of
manipulating and updating compliance rule information or transform the
abstract idea into a patent-eligible application. Alice, 134 S.Ct. at 2357.
Particularly, claims 1, 9, and 15 recite generic computing elements (i.e.,
processors, modules, and a database) that enable manipulation of compliance
documents and generate notifications of rules' updates using "general
purpose computing devices to perform well-understood, routine, and
conventional activities." Ans. 6, 8, 11 (citing Spec. ,r 21); Final Act. 3, 7.
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"[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
Further, under the second step of the Alice inquiry, Appellants argue
their claims are similar to the claims in Bascom. Reply Br. 3--4 ( citing
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348-51 (Fed. Cir. 2016)). Particularly, Appellants argue their
claims, like Bascom's, "recite a non-conventional and non-generic
arrangement that creates a technical solution to an existing problem." Reply
Br. 4. We disagree. Appellants' claims and Specification do not identify a
specific improvement to computer technology or computer operation
effected by the claims. Appellants' claims also do not cover a technology-
based solution that improves an existing technological process. In contrast,
Bascom's patent-eligible ordered combination of claim limitations contain
an "inventive concept [that] harnesses [a] technical feature of network
technology in a filtering system by associating individual accounts with their
own filtering scheme and elements while locating the filtering system on an
ISP [Internet Service Provider] server," thus "improv[ing] the performance
of the computer system itself' with a "technology-based solution ... to filter
content on the Internet that overcomes existing problems with other Internet
filtering systems." See Bascom, 827 F.3d at 1350-51.
Appellants also argue their claims are similar to those in Amdocs in
that "the instant claims recite a discrete implementation that provides a
particular way of updating compliance documents, which overcomes the
conventional problems of exposing confidential information in those
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compliance documents." Reply Br. 4, 6 (citing Amdocs, 841 F.3d at 1300-
02). We disagree that Appellants' claims resemble the claims in Amdocs.
There, Amdocs patents concerned network components "arrayed in a
distributed architecture" that "collect[ ed] and process[ ed] data close to its
source," and thereby "enable[d] load distribution" and reduced network
congestion. See Amdocs, 841 F.3d at 1291-92, 1300, 1303, and 1306. The
Federal Circuit decided Amdocs' claims satisfied Mayo/Alice step two
because they: (1) "entail[ ed] an unconventional technological solution ... to
a technological problem" that required generic computer components to
"operate in an unconventional manner to achieve an improvement in
computer functionality;" or (2) "recite[d] a technological solution to a
technological problem specific to computer networks-an unconventional
solution that was an improvement over the prior art." Id. at 1299-1306.
Unlike Amdocs, Appellants' claims do not achieve an improvement in
computer functionality or computer networks, and Appellants do not address
the operation of a computer itself or a database itself. See Ans. 6, 8-9.
Instead, Appellants discuss "updating compliance documents" without
"exposing confidential information in those compliance documents," by
"isolat[ing] confidential information in compliance documents." Reply Br.
4; see also App. Br. 11. As discussed supra, however, the claimed
"transmission objects" could be manually generated ( e.g., by a compliance
officer) to exclude those confidential company-specific compliance policies.
Accordingly, claims 1, 9, and 15, when considered "both individually
and 'as an ordered combination,"' amount to nothing more than an attempt
to patent the abstract idea embodied in the steps of the claims. See Alice,
134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
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Because we agree with the Examiner's analysis and find Appellants'
arguments insufficient to show error, we sustain the Examiner's § 101
rejection of independent claims 1, 9, and 15, and dependent claims 2, 4, 6-8,
10, 14, 16, and 18-24 for which no separate arguments are provided.
35 U.S.C. § 103(a) Rejections of Claims 1, 2, 4, 6--10, 14-16, and 18-24
With respect to independent claim 9, the Examiner finds Tyree's
compliance policy management system teaches a computer-based system for
receiving updates to a compliance rule referenced in a company compliance
manual, the computer-based system having an "incorporation module"
(Tyree's compliance policy processing subsystem 410) that creates a
"transmission object" (Tyree's associations between rules and compliance
policies), as claimed. Final Act. 26-27 (citing Tyree ,r,r 39--41, 47--48, 90-
93, 98-100, Figs. 3 and 9). Particularly, the Examiner finds Tyree's "data
representative of ... newly created rule associations" teaches the claimed
"transmission object that include the citation to the compliance rule in the
company compliance manual without including the company-specific
compliance policies regarding the compliance rule from the company
compliance manual." Final Act. 27 (emphasis omitted); see also Ans. 12.
The Examiner further finds Tyree's computer-based system sends the
transmission object to Tyree's rules management subsystem 420, which
teaches the claimed "entity responsible for receiving the transmission
object." Final. Act. 28 ( emphasis omitted).
To support the conclusion of obviousness, the Examiner relies on:
( 1) Kerry for teaching the claimed identifying updates to the compliance rule
and creating a notification conveying the compliance rule updates; and (2)
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Okabe for providing a reason to combine Kerry with Tyree to receive
compliance rules' updates and maintain up-to-date compliance documents.
Final Act. 28-30.
Appellants contend the Examiner's combination of Tyree, Kerry, and
Okabe does not teach or suggest an incorporation module "creat[ing] a
transmission object that include[s] the citation to the compliance rule in the
company compliance manual without including the company-specific
compliance policies regarding the compliance rule from the company
compliance manual" as recited in claim 9. App. Br. 24 (Claims App.)
( emphasis added). Rather, Appellants argue Tyree teaches the opposite of
claim 9 because "Tyree requires the transmission and storage of company-
specific plans into the 'rules database, [ of rules management subsystem
420], thereby providing third parties access to those company-specific
plans." App. Br. 18-19. In contrast, claim 9's computer-based system
"preserv[es] privacy with respect to company-specific compliance policies
in the compliance manual." App. Br. 24 (Claims App.).
We agree with Appellants. Specifically, we agree Tyree does not
teach or suggest creating and sending a transmission object "that include[s]
the citation to the compliance rule in the company compliance manual
without including the company-specific compliance policies regarding the
compliance rule from the company compliance manual," as recited in claim
9. Id.
Particularly, claim 9's incorporation module parses a citation to a
compliance rule (e.g., a publicly known law or regulation, such as an
Environmental Protection Agency rule (see Spec. ,r,r 3, 16)) in a company's
compliance manual,from "company-specific compliance policies regarding
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[that] compliance rule in the ... manual." App. Br. 24 (Claims App.)
( emphasis added). That is, the parsing separates publicly known information
(the compliance rule) from private, "company-specific compliance policies"
regarding the compliance rule. App. Br. 24 (Claims App.) ( emphasis
added). The claimed "transmission object" therefore includes the publicly
known information ("the citation to the compliance rule in the company
compliance manual"), but does not include private, company-specific
information ("the company-specific compliance policies regarding the
compliance rule"). App. Br. 24 (Claims App.). The transmission object is
sent to an "entity"----one that uses the citation to identify updates to the
publicly known compliance rule. App. Br. 24 (Claims App.). Because the
transmission object does not include the private company-specific
information ("the company-specific compliance policies regarding the
compliance rule"), the "entity" does not receive the company's private
information. App. Br. 18-19.
In contrast to Appellants' claim 9, Tyree's "entity" ( rules management
subsystem 420) and "incorporation module" ( compliance policy subsystem
410) share access to the "company-specific compliance policies regarding
the compliance rule from the company compliance manual." App. Br. 16,
18; see also Reply Br. 7-8. Particularly, Tyree's rules management
subsystem 420 (Examiner's asserted "entity") collects all of the company's
public and private compliance information, including "rules derived from a
set of compliance policies associated with an organization," "a listing of
each rule[], a listing of the compliance policies associated or linked with
each rule, [ and] text of the relevant sections within the compliance policies
associated with each rule." See Tyree ,r 69. Thus, Tyree's rules
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management subsystem 420 ( claimed "entity") aggregates the company's
private compliance information, including: "[the business organization's]
own set of customized policies" such as "a customized internal policy
applicable to organization 110 and/ or one or more of the business units
120;" and "rules derived from the policies" to "ensure [ the organization's]
compliance with each of the policies." See Tyree ,r,r 31, and 35-36
(emphasis omitted). Tyree's compliance policy subsystem 410 (Examiner's
asserted "incorporation module") has similar access to the company's
compliance policies. See Tyree ,r,r 51, 87.
For example, compliance policy subsystem 410 may "process
compliance policy data ( e.g., a compliance policy file) to display the text of
a compliance policy, allow selection of one or more sections of the policy,"
and "facilitate ... association of one or more sections within the compliance
policy with one or more rules within the rules database [ of rules
management subsystem 420]." See Tyree ,r,r 51, 87 ( emphasis added).
Tyree's described association is created by "a user ... us[ing] GUI 1000
[provided by compliance policy subsystem 41 OJ to select a section of text
within a compliance policy [from compliance policy subsystem 410] and
associate the selected section with one or more rules within rules database
[ of rules management subsystem 420]." See Tyree ,r 87 ( emphasis omitted).
"To associate a particular rule [from rules management subsystem 420] with
the selected section 1100 [ of a compliance policy from compliance policy
subsystem 410], the user may select a checkbox 1130" in a pop-up window
presented by subsystem 420 to subsystem 410, the "checkbox 1130
corresponding to the particular rule [ from rules management subsystem
420]." See Tyree ,r,r 95, 97-98, and Fig. 11 ( emphasis added). The selected
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rules (from rules management subsystem 420) are thus linked to the selected
compliance policy section 1100 (from compliance policy subsystem 410)
within the rules database ( of rules management subsystem 420). See Tyree
iT 98.
When Tyree's compliance document at the compliance policy
subsystem 410 (Examiner's asserted "incorporation module") is "a
customized internal policy applicable to [the] organization" (see Tyree
iT 31 }-i.e., is the claimed private "company-specific compliance policies
regarding [a] compliance rule"-Tyree' s association (Examiner's
"transmission object") includes and shares these company-specific
compliance policies with Tyree's rules management subsystem 420
(Examiner's asserted "entity"). App. Br. 16, 18; see also Tyree iTiT 87, 95,
and 97-98. That is because Tyree's association shares the above-mentioned
text section 1100 (of the internal compliance policy from
subsystem 410/incorporation module) with Tyree's rules management
subsystem 420/entity sourcing the "rules within the rules database that are
relevant to the selected section 1100." See Tyree iT 94 (emphasis omitted).
Thus, we find Tyree does not teach creating and sending "a
transmission object that include[ s] the citation to the compliance rule in the
company compliance manual without including the company-specific
compliance policies regarding the compliance rule from the company
compliance manual" as recited in claim 9. App. Br. 17. Rather, "Tyree
requires the transmission and storage of company-specific plans into the
'rules database,' thereby providing third parties access to those company-
specific plans." App. Br. 19. In fact, "Tyree's main goal[] is to enable
external parties to access the company-specific plans." App. Br. 18 (citing
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Tyree ,r,r 69, 71); see also Reply Br. 7; and Tyree ,r,r 29, 105. Thus, Tyree
achieves "the very opposite result of the claimed invention." App. Br. 18;
see also Reply Br. 8.
Kerry does not make up for the above-noted deficiencies of Tyree.
Kerry shares entire compliance documents (e.g., legal documents) between a
user computing device 102a and a remote entity/computing device 102b.
See Kerry ,r,r 4, 25, 28, 39, Figs. 1 and 4. Thus, Kerry does not teach or
suggest creating and sending, to an entity responsible for compiling updates,
"a transmission object that include[ s] the citation to the compliance rule in
the company compliance manual without including the company-specific
compliance policies regarding the compliance rule from the company
compliance manual" as recited in claim 9.
The Examiner also has not shown that the additional teachings of
Okabe, Bedi (used in the rejection of independent claims 1 and 15 reciting
"transmission object" limitations similar to claim 9), and Black (used in the
rejection of dependent claims 7, 8, 18, and 19) cure the above-noted
deficiencies of Tyree and Kerry. See App. Br. 22, (Claims App.)
("[C]reating a transmission object by the one or more processors by
incorporating the metadata identifying the reference to the compliance rule
and the section of the compliance document in which the compliance rule is
referenced without incorporating the compliance document into the
transmission object," and "sending the transmission object ... to the second
entity that uses the metadata identifying the reference to the compliance rule
in the compliance document to identify an update to the compliance rule."),
and 25-26 (Claims App.) ("[C]reating a transmission object ... by
compiling the citation to the compliance rule from the compliance document
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[ of the first entity] ... without including the at least one policy specific to
the first entity from the compliance document" and "sending the
transmission object ... to an operator server of a second entity ...
configured to analyze the transmission object to ... identity an update to the
compliance rule.").
As the Examiner has not shown where the references disclose the
"transmission object" recited in claims 1, 9, 15, we do not sustain the
Examiner's obviousness rejections of independent claims 1, 9, and 15, and
claims 2, 4, 6-8, 10, 14, 16, and 18-24 dependent therefrom. Because the
above-discussed issue is dispositive as to the obviousness rejections of all
claims on appeal, we do not reach additional issues raised by Appellants'
arguments as to the rejection of dependent claim 21.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1, 2, 4, 6-10, 14--16,
and 18-24 under 35 U.S.C. § 101, but have demonstrated the Examiner
erred in rejecting claims 1, 2, 4, 6-10, 14--16, and 18-24 under
35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1, 2, 4,
6-10, 14--16, and 18-24 under 35 U.S.C. § 101. However, we REVERSE
the Examiner's final rejection of claims 1, 2, 4, 6-10, 14--16, and 18-24
under 35 U.S.C. § 103(a).
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1, 2, 4, 6-10, 14--16, and 18-24. See 37 C.F.R. § 4I.50(a)(l).
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
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