Ex Parte Dick et al

Patent Trial and Appeal Board

Mar 27, 2018

13422949 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/422,949 03/16/2012 Zane Dick
25764 7590 03/29/2018
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.
73715-402934 9298
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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
Appeal2017-000057
Application 13/422,949 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, 3-10, 12-14, 18-20, 23, 25, 26, and
29-33, 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 ("App. Br.") filed January
11, 2016; Reply Brief ("Reply Br.") filed September 27, 2016; Examiner's
Answer ("Ans.") mailed August 3, 2016; Final Office Action ("Final Act.")
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Application 13/422,949
STATEMENT OF THE CASE
Appellants 'Invention
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. i-f 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, 12, 23, and 30 are independent. Representative claim 1 is
reproduced below:
1. A computer-based system for rece1vmg information
regarding an entity and automatically forwarding a compliance
rule pertinent to the entity, the computer-based system
compnsmg:
one or more processors;
a transmission object receiver configured to receive a
transmission object using the one or more processors, the
transmission object including only a subset of information from
a compliance document of an entity, the subset of information
including compliance rule information from the compliance
document of the entity and location information that identifies at
least one section of the compliance document of the entity in
which the compliance rule information is located, the
transmission object receiver being configured to parse the
compliance rule information from the location information;
mailed August 13, 2015; and original Specification ("Spec.") filed March
16, 2012.
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a compliance rules database containing data regarding a
set of compliance rules;
a compare module configured to identify a compliance
rule applicable to the entity using the data in the compliance rules
database and the compliance rule information from the
transmission object, wherein the compare module is configured
to receive the compliance rule information from the transmission
object receiver;
a notification compilation module configured to compile
an electronic notification indicative of the identified compliance
rule and to compile the location information from the
transmission object into the electronic notification, wherein the
notification compilation module is configured to receive the
location information from the transmission object receiver; and
a transmitter configured to transmit the electronic
notification to the entity.
App. Br. 22-28 (Claims App'x). 3
Evidence Considered
Rebstock US 2012/0159296 Al June 21, 2012
Hermann US 2008/0015883 Al Jan. 17,2008
Dirisala US 2006/0106763 Al May 18, 2006
Black US 2004/0243428 Al Dec. 2, 2004
McKibben US 2004/0123242 Al June 24, 2004
3 Appellants' Claim Appendix does not have numbered pages. We count
the pages of the Claim Appendix starting from page 22, which follows the
Appeal Briefs page 21.
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Application 13/422,949
Examiner's Re} ections4
(1) Claims 1, 3-10, 12-14, 18-20, 23, 25, 26, and 29-33 stand
rejected under 35 U.S.C. § 101 because the claimed invention is directed to
non-statutory subject matter. Final Act. 2-3. 5
(2) Claims 1, 5-8, 10, 23, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Black and Hermann. Final
Act. 6-15.
(3) Claims 12-14, 18, 19, 26, and 29-31 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Black, Hermann, and
Dirisala. Final Act. 15-27.
(4) Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Black, Hermann, Dirisala, and Rebstock. Final Act. 27-
28.
(5) Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Black, Hermann, and Rebstock. Final Act. 28-30.
(6) Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Black, Hermann, and McKibben. Final Act. 30-31.
(7) Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Black, Hermann, Dirisala, and McKibben. Final Act. 31.
4 Claims 34 and 35 were rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 3---6.
However, that rejection is moot because claims 34 and 35 have been
cancelled in an Amendment After-Final filed on October 14, 2015 entered
by the Examiner on November 9, 2015.
5 Claims 34 and 35 listed in the Examiner's rejection (Final Act. 2) have
been cancelled before the appeal.
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ANALYSIS
§ 101 Rejection of Claims 1, 3-10, 12-14,
18-20, 23, 25, 26, and 29-33
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
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, 12, 23, and 30, and dependent
claims 31-33 under 35 U.S.C. § 101, the Examiner finds these claims are
directed to identification, comparison, and transmission of compliance rule
information, analogous or similar to the abstract ideas of comparing new and
stored information and using rules to identify options discussed in
SmartGene, organizing, storing, and transmitting information discussed in
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Cyberfone, and organizing human activities discussed in Alice. Ans. 28
(citing SmartGene, Inc. v Advanced Biological Labs., SA, 852 F. Supp. 2d 42
(D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014); Cybeifone Sys.,
LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014));
Final Act. 2-3 (citing Alice, 134 S. Ct. at 2347).
The Examiner also finds the additional claimed elements of
processors, compliance rules database, compare module, notification
module, transmitter, and computer readable medium are "generically-recited
computers" and "generic computer structure[s] that serve[] to perform
generic computer functions that are well-understood, routine, and
conventional." Final Act. 3; Ans. 30.
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 not directed to a mathematical relationship" or "organizing
human activities" and (2) the claims amount to more than an abstract idea.
App. Br. 16-18; Reply Br. 4--5. Particularly, Appellants argue "the pending
claims recite specific processor-based systems and technical processes that
enable an entity to receive updates to pertinent compliance rules without
placing its entire compliance document at risk of exposure, through the use
of select, isolated information from compliance documents (e.g., compliance
manuals) for transmission." App. Br. 17 (emphasis added). Appellants also
argue the claims "solve an Internet-centric problem" by transmitting a
"transmission object [that] does not include the entire compliance document
... in contrast to conventional systems ... that simply rely on conventional
technology to transmit entire documents with their sensitive information."
App. Br. 18 (emphasis added); see also Reply Br. 4. Appellants explain
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"[f]or example, claim 1 recites several components that handle compliance
rule information, as well as location information ... without exposing
confidential information in that compliance document to the risks created by
hackers and others exploiting flaws in conventional technology." Reply Br.
4 (emphasis added).
We are not persuaded by Appellants' arguments. At the outset, we
note these arguments are not commensurate with the scope of claims 1, 12,
30, and 31. Instead, claims 1, 12, 30, and 31 merely recite a transmission
object that includes "only a subset of information [or sections] from a
compliance document of an entity," but do not recite or require a
transmission object excluding confidential or sensitive information. Claims
1, 12, 23, and 30-33 also do not indicate how "using th[e] location
information ... improves the operations of the computer systems" as
Appellants advocate. See App. Br. 18.
We therefore agree with the Examiner that Appellants' claims 1, 12,
23, and 30-33 are directed to identification, comparison, and transmission of
compliance rule information-analogous or similar to the abstract ideas of
data manipulation and analysis identified in Cybeifone, SmartGene,
Digitech, Content Extraction, and Electric Power Grp. Ans. 28-30; Final
Act. 2-3; see SmartGene, Inc. v Advanced Biological Labs., SA, 852 F.
Supp. 2d 42 (D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014);
Cyberfone, 558 F. App'x at 988, 992; 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 & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d
1343, 1347--48 (Fed. Cir. 2014) (finding that "[t]he concept of data
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collection, recognition, and storage is undisputedly well-known," and
"humans have always performed these functions"); 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").
Additionally, we note Appellants' claimed "transmission objects" can
be generated and updated manually by a person (a compliance officer) by
pen and paper (see Spec. i-fi-120, 24, 34--35, 44, 49-51, 55). See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)
("[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under§ 101."); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or
processes of human thinking-standing alone are not patentable even if they
have practical application."); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature ... , mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work" (emphasis added)). Additionally, 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. CyberSource, 654
F.3d at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
Furthermore, "a compliance rule pertinent to the entity" as claimed, is
merely information, and as such is intangible. See, e.g., Microsoft Corp. v.
AT & T Corp., 550 U.S. 437, 451 n.12 (2007); Alice, 134 S. Ct. at 2355;
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Benson, 409 U.S. at 67---68, 71-72 ("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, 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);
Digitech, 758 F.3d at 1351; and CyberSource, 654 F.3d at 1370. That is,
"[ w ]ithout additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible." 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 ").
Appellants also argue their claims, like the claims in DDR, are
"necessarily rooted in computer technology" and "address a technical
solution to a technical problem arising from the realm of computer
networks" because the claims "recite a packet of information, i.e., the
transmission object, whose contents are different than what is sent with
conventional computer systems, as well as specific ways of acting on
different types of information within that transmission object" and "enabl[ e]
a more efficient way to update compliance documents without exposing
confidential information in those compliance documents." Reply Br. 6-7;
App. Br. 16, 18 (citing DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d
1245, 1257, 1259 (Fed. Cir. 2014)).
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We are unpersuaded because Appellants have not demonstrated their
claimed "transmission objects" are "different than what is sent with
conventional computer systems" (see Reply Br. 6). Appellants' claims 1,
12, 23, and 30 also do not identify non-conventional "ways of acting on
different types of information within that transmission object" (see Reply Br.
6). Additionally, Appellants' claims 1, 12, and 30 do not refer to
"confidential information."
Appellants also have not demonstrated their claimed generic computer
components, in combination, are able to perform/unctions that are not
merely generic, as the claims in DDR. See 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 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. iii! 4, 16).
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 object
manipulation steps and notification compilation 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,"
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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, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); 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, 1302 (Fed. Cir.
2016).
Appellants further argue their claims are similar to the claims of
Enfish and Bascom because Appellants' claims "create discrete solutions
that enable updating compliance documents without exposing the
confidential information in those compliance documents to the risk of
exposure." Reply Br. 3-5, 7 (citing Enfzsh, 822 F.3d at 1327, and Bascom
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016)). We disagree. As discussed supra, claims 1, 12 and 30 do not
recite a transmission object excluding confidential or sensitive information;
thus, these claims do not update compliance documents "without exposing
the confidential information in those compliance documents to the risk of
exposure," as Appellants advocate (see Reply Br. 3-5, 7). Additionally, as
discussed supra, claim 23 merely recites a transmission object that could be
manually generated (e.g., by a compliance officer) to exclude the
confidential information. In addition, claims 1, 12, 23, and 30 do not recite a
specific improvement to the way computers operate, and Appellants do not
present evidence establishing these claims recite a specific improvement to
the computers. See Enfish, 822 F.3d at 1336, 1339. Appellants also have
not demonstrated their claims "improve the way a computer stores and
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retrieves data in memory," as the claims in Enfish did via a "self-referential
table for a computer database" (see Enfzsh, 822 F.3d at 1336, 1339).
We also find Appellants' reliance on McRO unavailing. Reply Br. 2,
4--5, 7 (citing McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016)). Particularly, Appellants argue their claims, like the
claims of McRO, "recite specific systems and techniques that parse and act
on different types of information in the transmission object in a manner that
enables the more efficient updating of the compliance documents without
exposing confidential information in that compliance document." Reply Br.
4--5 (emphasis added). We are unpersuaded because Appellants'
Specification does not explicitly define, or even mention the term "parse."
Thus, the claimed "parsing" is merely a generic operation performed by a
"generic computer." Ans. 30.
The court determined that McRO's claim was not directed to an
abstract idea because it "uses the limited rules in a process specifically
designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques"; in contrast, Appellants' claims address a
business problem of assisting entities in complying with rules pertinent to
their operations, by informing the entities of changes or updates to the rules.
See Spec. i-f 4; McRO, 837 F.3d at 1316. Additionally, 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 transmission and
manipulation steps, as in Appellants' claims 1, 12, 23, and 30-33. See
McRO, 837 F.3d at 1314. Further, with respect to Appellants' preemption
argument (Reply Br. 4, 7), we note the McRO court also explicitly
"recognized that 'the absence of complete preemption does not demonstrate
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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, 12, 23, and
30-33 are directed to an abstract idea.
Under step two of the Alice framework, we agree with and adopt the
Examiner's findings on pages 30 and 31 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 compliance rule data or transform the abstract idea into a
patent-eligible application. Alice, 134 S. Ct. at 2357. Particularly, claims 1,
12, 23, and 30 recite well-understood, routine, and conventional elements
(i.e., processors, compliance rules database, compare module, notification
module, transmitter, and computer readable medium) that enable
manipulation of compliance rule information and generate notifications of
the compliance rules' updates using a "generic computer structure" that
"perform[ s] generic computer functions that are well-understood, routine,
and conventional activities." Final Act. 3; see also Ans. 30. "[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); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)
(claims merely reciting the abstract idea of using advertising as currency as
applied to particular technological environment of the Internet are not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1345 (Fed. Cir. 2013) (claims reciting "generalized software
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components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" are not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("[ s ]imply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible").
Further, under the second step of the Alice inquiry, Appellants argue
their claims "relate to an improvement to computer and network technology"
and "harness[] particular technical features to overcome problems arising
from computer and/or network security breaches present in conventional
computer technology." App. Br. 20; Reply Br. 3 (citing Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed Cir.
2016). Appellants' arguments are not persuasive because Appellants have
not identified a specific improvement to computer technology or network
security effected by Appellants' claims.
Because Appellants' claims 1, 3-10, 12-14, 18-20, 23, 25, 26, and
29-33 are directed to a patent-ineligible abstract concept and do not recite
something "significantly more" under the second prong of the Alice analysis,
we sustain the Examiner's rejection of these claims under 35 U.S.C. § 101.
§ 103(a) Rejections of Claims 1, 3---8, 10,
12-14, 18-20, 23, 25, 26, and 29-31
With respect to independent claim 1, and similarly independent claims
12, 23, and 30, the Examiner finds Black teaches the claimed (1)
"transmission object receiver" configured to receive a "transmission object
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including only a subset of information from a compliance document of an
entity, the subset of information including compliance rule information from
the compliance document of the entity," (2) a "compliance rules database,"
(3) a "compare module," (4) a "notification compilation module," and (5) a
transmitter. Final Act. 6-8 (citing Black i-fi-f 13, 16, 31, 37-39, 43, 47--49,
53-56, 58, 66, Figs 1-2). To support the conclusion of obviousness, the
Examiner relies on Hermann for teaching the claimed "location information
that identifies at least one section of the compliance of the entity in which
the compliance document of the entity in which the compliance rule
information is located." Final Act. 9-10 (citing Hermann i-fi-f 10, 13, 65, 69,
78, Figs. 2-3).
Appellants contend neither Black nor Hermann teach or suggest: (1) a
"transmission object including only a subset of information from a
compliance document of an entity" as recited in claim 1; (2) "a transmission
object that includes only a subset of information from the compliance
document" as recited in claim 12; (3) a "transmission object ... including
metadata identifying a section of a compliance document that references the
compliance rule without transmitting confidential information" as recited in
claim 23; and (4) "a transmission object ... that includes information from
only those particular sections of the compliance document" where the
"particular sections form[] only a subset of the compliance document" as
recited in claim 30. App. Br. 9-10. Appellants argue Black "simply
describe[ s] how clients complete templates and forms with status data and
transmit those documents back to the internet-based system in their
entireties," and "Hermann ... discusses submitting the entire Form I-9,
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including any employee identification and other sensitive information."
App. Br. 10-11.
We agree with Appellants that the Examiner has not identified
sufficient evidence to show that Black's forms-transmitted by a client to a
server-include only a subset of information from a compliance document
of the client. Rather, Black merely teaches "[t]he term 'form' and 'human
resources form' should be broadly construed to include any employee form,
template, manual or other material that can be used to implement a human
resources process," the "forms includ[ing] applications, authorizations,
requests, disclosures, instruction materials, and training materials." See
Black i-f 47. Further, Black teaches the forms include "'status data' [that]
should be broadly construed to include any information corresponding to the
client or client parties, such as, but not limited to, personalized information
(e.g., name, address, birthday, etc.), as well as professional information (e.g.,
experience, title, position, compensation, etc.)." See Black i-f 53. Thus,
Black does not teach (i) the claimed transmission object including only a
subset of information from a compliance document of an entity, and (ii) the
claimed transmission object referencing a compliance rule without
transmitting confidential information.
Hermann does not make up for the above-noted deficiencies of Black,
as Hermann merely describes transmission of "information provided on an
electronic [form] I-9 or other electronic employment eligibility form" to
"perform computerized employment eligibility verification queries." See
Hermann Abstract. The Examiner does not use the additional teachings of
Dirisala, Rebstock, and McKibben to cure the above-noted deficiencies of
Black and Hermann. As the Examiner has not shown where the references
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disclose the "transmission objects" recited in claims 1, 12, 23, and 30, we do
not sustain the Examiner's rejection of independent claims 1, 12, 23, and 30,
and claims 3-8, 10, 13, 14, 18-20, 25, 26, 29, and 31-33 dependent
therefrom.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1, 3-10, 12-14, 18-20,
23, 25, 26, and 29-33 under 35 U.S.C. § 101, but have demonstrated the
Examiner erred in rejecting claims 1, 3-8, 10, 12-14, 18-20, 23, 25, 26, and
29-33 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1, 3-
10, 12-14, 18-20, 23, 25, 26, and 29-33 under 35 U.S.C. § 101. However,
we REVERSE the Examiner's final rejection of claims 1, 3-8, 10, 12-14,
18-20, 23, 25, 26, and 29-33 under 35 U.S.C. § 103(a).
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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