10172772 (B.P.A.I. Sep. 27, 2010)

Ex Parte Eckert et al

Board of Patent Appeals and InterferencesSep 27, 2010

10172772 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/172,772 06/14/2002 Daniel J. Eckert 1713-0016 1532 7590 09/27/2010 Harold C. Moore Maginot, Moore & Bowman Bank One Center/Tower 111 Monument Circle, Suite 3000 Indianapolis, IN 46204-5115 EXAMINER WEISBERGER, RICHARD C ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 09/27/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DANIEL J. ECKERT, ROSS J. ECKERT, TODD O. PERRY, and CHRISTOPHER W. CLAUS ____________ Appeal 2009-014086 Application 10/172,772 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-014086 Application 10/172,772 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 (2002) of the Examiner’s final decision rejecting claims 1 to 20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b) (2002). We AFFIRM. BACKGROUND Appellants’ invention is directed to a system and method of trading securities based on the income of a performer (Spec. 1). Claim 1 is illustrative: 1. A system comprising: a first processor circuit configured to receive and store a plurality of bids for the purchase of one or more security instruments, each security instrument having a value based on the prospective service-based income of a performer; and a plurality of remote processor circuits operable to communicate the plurality of bids to the first processor circuit. Appellants appeal the following rejections: Claims 1 to 8 under 35 U.S.C. § 102(e) as anticipated by Lawrence (US 6,876,309 B1, iss. Apr. 5, 2005). Claims 1 to 20 under 35 U.S.C. § 103(a) as unpatentable over Lawrence (US 6,876,309 B1, iss. Apr. 5, 2005) in view of Future Wealth (Harvard Business School Working Knowledge, Future Wealth (May 30, 2000) (http://hbswk.hbs.edu/tools/print_item.jhtml?id=1542&t=strategy) (hereinafter “Future Wealth”). Appeal 2009-014086 Application 10/172,772 3 ISSUE Did the Examiner err in rejecting the claims under 35 U.S.C. § 102(e) because the Examiner erroneously considered the recitation in claim 1 of “each security instrument having a value based on the prospective service- based income of a performer”? FACTUAL FINDINGS We adopt the Examiner’s findings as our own. (Ans. 3 to 4). ANALYSIS Anticipation At the outset we note that nonfunctional descriptive material cannot render patentable an invention that is otherwise not patentable over the prior art. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Our reviewing court and its predecessor have frequently cautioned the "Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art." In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994) (quoting Gulack, 703 at 1384-85). Furthermore, the Federal Circuit has cautioned against a liberal use of a printed matter rejection. Id. at 1582-83. Nonetheless, we recognize in the instant case the classic printed matter situation in which Appellant is advancing patentability based on the type of security instrument of the invention. These printed matter cases "'dealt with Appeal 2009-014086 Application 10/172,772 4 claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind.'" Id. (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Accordingly, although we will not disregard any claim limitations and will assess the claimed invention as a whole, we will follow the Federal Circuit's guidance as in the Gulack decision and will "not give [any] patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate." Id. Compare Ex parte Curry, (BPAI 2005) (http://www.uspto.gov/web/offices/dcom/bpai/its/fd050509.pdf) (Informative) Common situations involving nonfunctional descriptive material are: - a computer-readable storage medium that differs from the prior art solely with respect to nonfunctional descriptive material, such as music or a literary work, encoded on the medium, - a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer), or - a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention. Thus, if the prior art suggests storing a song on a disk, merely choosing a particular song to store on the disk would be presumed to be well Appeal 2009-014086 Application 10/172,772 5 within the level of ordinary skill in the art at the time the invention was made. The difference between the prior art and the claimed invention is simply a rearrangement of nonfunctional descriptive material. See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (Informative) [O]ur reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art). In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. [Gulack], 703 F.2d [at 1385] (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). The Appellants' argument that Lawrence does not disclose that each security instrument has a value based on the prospective service based income of a performer is unconvincing because we view the type of security instrument to be nonfunctional descriptive matter. In this regard, the Appellants have not filed evidence sufficient to show that the structure of the first or the remote processors are functionally affected by receiving and communicating the specific security recited. In other words, the Appellants have not shown that the processors disclosed are functionally different because they receive and communicate security instruments that have a value based on the prospective service based income of a performer rather than any other security instrument such as the bonds disclosed in Lawrence. Absent such evidence, it is reasonable to conclude that the type of security instrument is merely descriptive and as such is not patentably consequential. Appeal 2009-014086 Application 10/172,772 6 In view of the foregoing, we will sustain the Examiner’s anticipation rejection of claim 1. We will also sustain this rejection as it is directed to claims 2 to 4, 7, and 8 because the Appellants have not argued the separate patentability of these claims. We are not convinced of error by the Examiner by Appellants' argument that claims 5 and 6 are patentable because Lawrence does not disclose a processor circuit operably coupled to communicate disclosure information regarding the performer. Once again, we agree with the Examiner that the type of information communicated is not functionally related to the processor and thus can not form the basis of patentability. As such, we will sustain the rejection as it is directed to claims 5 and 6. Obviousness At the outset, we note that as we have sustained the Examiner’s rejection of claims 1 to 8 as anticipated by Lawrence, these claims are likewise obvious because anticipation is the epitome of obviousness. Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). With regard to Appellants' argument that Future Wealth discloses ideas that are in development and therefore it was not possible to create a tradable security based on prospective personal income, we note that such conclusory statements, without further analysis and evidence, does not demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). In addition, what is relevant in an obviousness analysis is what the prior art would have taught a person of ordinary skill in Appeal 2009-014086 Application 10/172,772 7 the art at the time of the invention rather than the actual implementation of the teachings of the prior art. In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968). Appellants' argument that there is no motivation or suggestion to combine the teachings of the prior art is likewise unconvincing of error by the Examiner. To the extent Appellants are looking for an explicit motivation, suggestion, or teaching in the art, this rigid test has been foreclosed by the Supreme Court's recent holding in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, the Court characterized the teaching, suggestion, motivation test as a “helpful insight” but found that when it is rigidly applied, it is incompatible with the Court's precedents. KSR, 550 U.S. at 418-19. The holding in KSR makes clear that it is no longer absolutely necessary to find motivation in the references themselves. See KSR, 550 U.S. at 418-19. The Court explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. (Id. at 417). The operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. Appeal 2009-014086 Application 10/172,772 8 In this instant case we are of the opinion that since Future Wealth teaches the use of a security instrument having a value based on the prospective service-based income of a performer, the use of this type of security instrument in Lawrence instead of the therein disclosed bond, would have been no more than the use of a known security instrument in a known manner to achieve predictable results. In view of the foregoing, we will also sustain the Examiner’s obviousness rejection. DECISION The decision of the Examiner is AFFIRMED. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1) (2007). AFFIRMED Appeal 2009-014086 Application 10/172,772 9 hh Harold C. Moore Maginot, Moore & Bowman Bank One Center/Tower 111 Monument Circle, Suite 3000 Indianapolis, IN 46204-5115