Ex Parte Fang

Patent Trial and Appeal Board

Feb 27, 2018

12632780 (P.T.A.B. Feb. 27, 2018)

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.
12/632,780 12/07/2009 Zhihua Fang ZFG-10202/29 4453
25006 7590 03/01/2018
DTNSMORF fr SHOHT T T P
EXAMINER
900 Wilshire Drive FU, HAO
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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
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MichiganPatTM @ dinsmore. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIHUA FANG
Appeal 2016-0081761
Application 12/632,780
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 21^10. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to “recording, sharing, and storing
data and materials for selective retrieval.” Spec. ^ 2.
1 The Appellant identifies the inventor, Zhihua Fang, as the real party in
interest. Appeal Br. 1.
Appeal 2016-008176
Application 12/632,780
Claim 21 is illustrative:
21. A method of storing personal information and
materials on a long-term basis for later retrieval and use, the
method comprising the steps of:
providing a computer network in communication with a
memory enabling individuals to contribute and store personal
information in electronic form;
providing a storage facility enabling the individuals to
contribute and store personal materials in non-electronic form;
establishing a financing plan in the form of an initial
endowment and the resulting interest to ensure that the personal
information and personal materials contributed by each
individual will be stored on a permanent basis;
wherein the personal information at least includes
documentary information and audio/visual information
submitted in electronic form; and
wherein the personal materials includes physical artifacts
chosen by an individual and one or more biological samples
taken from the individual.
Claims 21^40 are rejected under 35 U.S.C. § 101 as reciting ineligible
subject matter in the form of an abstract idea.
Claims 21-24, 26, 27, 30-342, 37, 39, and 40 are rejected under 35
U.S.C. § 103(a) as unpatentable over Kane (US 2008/0086475 Al, pub.
Apr. 10, 2008), Julie L. Williams, “Conditional Approval #479” to Scott
Anderson from the Comptroller of the Currency, Administrator of National
Banks, Washington, D.C., Sept. 2001 (hereinafter “Anderson”), Zylberberg
et al. (US 2008/0274459 Al, pub. Nov. 6, 2008), and Slay et al.
(US 2005/0228732 Al, pub. Oct. 13, 2005).
2 We treat the Examiner’s inclusion of claim 35 in the rejection over Kant,
Anderson, Zylberberg, and Slay, even though the claim is actually addressed
in a rejection that relies additionally on Official Notice, as inadvertent error.
See Final Act. 16.
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Claims 25, 35, 36, and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kane, Anderson, Zylberberg, Slay, and Official Notice.
Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kane, Anderson, Zylberberg, Slay, and Toda
(US 2010/0054566 Al, pub. Mar. 4, 2010).
We AFFIRM-IN-PART.
ANALYSIS
Rejection under 35 U.S.C. ft101
We are persuaded by the Appellant’s argument that storing physical
materials is not an abstract idea. Appeal Br. 2; see also Reply Br. 2 (“how
can storing physical artifacts be abstract!”).
The Examiner argues that the “claims merely recite the action of
providing a space for storing user’s physical materials. The action of
providing a space is intangible.” Answer 5.
However, in contrast with the Examiner’s assertion, independent
claim 21 recites “providing a storage facility enabling the individuals to
contribute and store personal materials” where the materials include
“physical artifacts chosen by an individual and one or more biological
samples taken from the individual.” A storage facility that stores physical
artifacts and biological samples which can be touched and generally
perceived by the senses is a tangible object, and, thus, not an abstract idea.
Even a storage facility that is merely space, as suggested by the Examiner,
can be perceived, and is tangible also.
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For this reason, we do not sustain the rejection of claim 21 as abstract
under 35 U.S.C. § 101. We also do not sustain the rejection of claims 22 40
that depend from claim 21 and were rejected along with claim 21.
Rejection of Claims 21, 22, 26, 27, 30—32, 34, 39, and 40 under
35 U.S.C. § 103(a)
We are unpersuaded by the Appellant’s argument that the prior art,
Kane, Anderson, Zylberberg and Slay, “are unrelated,” because they each do
not concern problems disclosed in the other references. Appeal Br. 6; see
also Reply Br. 4.
Whether a reference in the prior art is “analogous” is a fact question.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert, denied, 481
U.S. 1052 (1987)). Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. Id.
(citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599
F.2d 1032, 1036 (CCPA 1979)). “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d at 659.
Kane is directed to “an internet website that can be used to store a
user’s memories.” Kane ^ 2. Kane, thus, is in the same field of endeavor as
“providing a computer network in communication with a memory enabling
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individuals to contribute and store personal information in electronic form,”
as claimed.
Anderson is directed to storage of electronic materials, similar to
Kane, and recognizes that banks have long stored tangible materials such as
documents and other items in safe deposit boxes. Anderson 8, 10.
Anderson, thus, is in the same field of endeavor as “providing a storage
facility enabling the individuals to contribute and store personal materials in
non-electronic form,” as claimed.
Zylberberg is directed to “storing biological materials.” Zylberberg
^ 2. Zylberberg, thus, is in the same field of endeavor as storing “biological
samples taken from the individual,” as claimed.
Slay is directed to environmental projects to “locate suitable real
property, develop it into a wildlife habitat, and maintain it for perpetuity”
using an endowment.” Slay ^ 16. Slay is, thus, directed to providing
perpetual financing for real property projects, and, thus, is in the same field
of endeavor as financing projects on a “permanent basis,” as claimed.
Therefore, each of the references is in the same field of endeavor as
the corresponding aspect of the claimed invention. The four references are
analogous art to the claimed invention.
The Appellant essentially argues that the combination of Kane,
Anderson, and Zylberberg is in error, because if Kane’s web site were
modified to store personal artifacts and biologic samples, the result would
not be predictable. Appeal Br. 6.
We are not persuaded by the Appellant’s argument. The rejection
does not depend on any modification to Kane’s web site, but instead merely
combines Kane’s storage for electronic materials, with Anderson’s storage
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for personal artifacts in safe deposit boxes, and Zylberberg’s storage of
biologic samples. Final Act. 11-12. The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). A prima facie conclusion of obviousness may be supported by a
showing that the claims are directed to a process, machine, manufacture, or
composition of matter already known in the prior art that is altered by the
mere substitution of one element for another known in the field, and such
modification yields a predictable result. Id. (citing United States v. Adams,
383 U.S. 39, 40 (1966)).
Here, when combining three types of storage for three types of
materials, each storage facility after combination would continue to store
materials of the same type stored after combination as before, with
predictable results, because none of the storage facilities would need to
change for the type of storage they are used for. For example, Kane’s web
site would continue to store electronic data, Anderson’s safe deposit box
would continue to store artifacts, and Zylberberg’s facility would continue to
store biologic samples, each without the need for modification. This is
consistent with the arrangement envisioned by the Appellant, where
electronic storage, physical artifact storage, and biologic sample storage are
addressed with separate types of facilities. See Spec. ^ 26 (§§ 3.1.4-3.1.6).
The Appellant also essentially argues that the introduction of Slay to
the combination of Kane, Anderson, and Zylberberg is not suggested by
Kane, which has no financing plan, and there is no reason for the
combination except one gained only from impermissible hindsight. Appeal
Br. 7 ; see also Reply Br. 4-5.
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We do not agree with the Appellant. In KSR, the Supreme Court
further stated that “[I]f 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.” KSR at 417. When
considering obviousness of a combination of known elements, the operative
question is thus “whether the improvement is more than the predictable use
of prior-art elements according to their established functions.” Id.
We agree with the Examiner that it would have been within the skill
of the ordinary artisan to substitute Slay’s financing method, using an initial
endowment with generated interest (Final Act. 12 (citing Slay 13, 34)),
for Kane’s monthly fee {id. citing Kane ^ 41), where Slay’s financing
method would work just as well, after substitution, for the combined storage
facilities as for environmental remediation projects, before the substitution.
We are persuaded that Slay’s method of funding a project would have been
recognized by the ordinary artisan as being able to be predictably applied to
many other types of projects, to provide long-term funding beyond a reliance
on month-to-month subscriptions disclosed in Kane. “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR at 421.
For these reasons, the Appellant has not demonstrated legal error by
the Examiner in the rejection of claim 21 under 35 U.S.C. § 103(a), nor of
dependent claims 22, 26, 27, 30-32, 34, 39, and 40 that were not argued
separately. For this reason, we sustain the rejection of claims 21, 22, 26, 27,
30-32, 34, 39, and 40 under 35 U.S.C. § 103(a).
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Rejection of Claim 23 under 35 U.S.C. § 103(a)
Dependent claim 23 recites “wherein the physical artifacts and
biological samples are stored in secure, locked-down, fire-proof, and
earthquake-resistant facilities.”
In rejecting claim 23, the Examiner cites to Anderson, page 10, and
Zylberberg, paragraphs 4, 8, and 16. Final Act. 13.
We are not persuaded by the Appellant’s argument that “the Examiner
has presented no factual evidence that a person of skill in the art ‘would
know that nationals [sic] banks typically have vaults that are secure, locked-
down, fire-proof, and earthquake resistant.’” Appeal Br. 7. The ordinary
artisan would understand from Anderson’s national bank safe deposit box
“safekeeping of physical items” (Anderson 10), and Zylberberg’s storage in
“preserving environments]” (Zylberberg 4) that these environments would
need to be resistant to perils such as theft, earthquake, and fire to keep items
safe and preserved over time. The teaching in the prior reference need not
be ipsissimis verbis. Structural Rubber Products Co. v. Park Rubber Co.,
749 F. 2d 707, 716 (Fed. Cir. 1984).
The Appellant has failed to establish error in the Examiner’s rejection,
and for this reason we sustain the rejection of claim 23 under
35 U.S.C. § 103(a).
Rejection of Claim 24 under 35 U.S.C. § 103(a)
Dependent claim 24 recites
the step of segmenting the personal information or personal
materials into a plurality of categories, including:
1) public sharing;
2) sharing only within circles of family, friends, or other
community as specified by an individual; and
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Application 12/632,780
3) private, to be shared only by the individual who
contributed the information or materials or executors authorized
by an individual through legal agreement.
We are persuaded by the Appellant’s arguments that the Examiner has
not supported adequately that the claim language is disclosed in the cited
references, because Kane does not disclose all the recited categories, and the
passing references, on page 13 of the Final Action, to “Google Plus and
Facebook” are inadequate. Appeal Br. 7-8.
In describing the categorization of data, the Specification describes a
number of different arrangements between public, shared, and private
categories. For example, Section 3.1.1 describes “1) Public, 2) Access Only
for Families and Friends and Communities, and 3) Private.” Spec. ^ 26.
Another section clarifies that “some Tmmordata data can be shared with the
public; some may be shared only with families, friends, or authorized legal
entities; but some will be private to the individuals only.” Id. ^ 28. Here
“authorized legal entities” are considered to be part of the shared category
but not the “private” category. Original claim 20 recites a third
arrangement, providing:
a public category, which is open to any public viewing by a
person who has a way to view said physical artifacts and
biological data and materials, and a communal category, which
is open to a person who has to obtain permission from a
community to view or use said physical artifacts and biological
data and materials, and a private category, which is to be
accessed only by said customer and executors authorized by said
customer.
Spec., Claims Appendix. Here, the shared category is controlled by
permission from a “community,” not the individual user, and the private
category has a specific description of “executors authorized by said
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customer,” which varies from “authorized legal entities” in the shared
category in paragraph 28.
We can infer from these varying arrangements of access categories
that the Appellant intended to clearly define the three claimed categories of
access permission, not to broadly define “segmenting ... by different
categories of users” or “different security level[s],” as asserted by the
Examiner. Answer 11.
Kane discloses public and private categories of access, but these do
not correspond to the specific claimed categories, at least because there is no
corresponding “shared” category between public and private, and no
disclosure of where an “executor” falls. See Kane 18, 21 cited at Final
Act. 13; Answer 11. The Examiner’s sweeping assertion (Final Act. 13;
Answer 11) that “Google Plus and Facebook both provide this feature”3 is
unsupported by the evidence of record.
For these reasons, the Examiner has failed to support adequately the
conclusion of obviousness of claim 24. For this reason, we do not sustain
the rejection of claim 24 under 35 U.S.C. § 103(a).
Rejection of Claim 33 under 35 U.S.C. § 103(a)
We are not persuaded by the Appellant’s argument that “Kane makes
no mention of a ‘family tree.’” Appeal Br. 7.
The Examiner finds that Kane discloses a family tree at paragraph 37,
which discloses “a family can start a family tree through its memory web
page, uploading its memory assets each year, so that future generations of
3 In addition, we are of the understanding that Google+ came into public use
approximately two years after the filing date of the instant application,
which would mean this reference may not qualify as prior art.
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that family can look back and see their long line of relatives and witness
their experiences and interests.” Final Act. 15 (citing Kane ^ 37).
Because Kane clearly meets the claim language, we sustain the
rejection of claim 37 under 35 U.S.C. § 103(a).
Rejection of Claim 37 under 35 U.S.C. § 103(a)
Dependent claim 37 recites “the step of using the personal information
from a plurality of individuals to establish a community or country.”
We are unpersuaded by the Appellant’s argument that “Kane does not
teach or suggest the limitations of Appellant's claim 37, in [0036] or
Figure 8.” Appeal Br. 8.
Where an Appellant’s remarks do not point to any specific language
within the claims to distinguish over the prior art, those remarks amount to a
general allegation that the claims define a patentable invention. Such
allegations will not be considered an argument for separate patentability.
37 C.F.R. § 41.37(c)(l)(vii) (2007).
In addition, the Examiner indicates that the Final Action “misquoted
the paragraph number,” because instead paragraph 37 discloses using
personal information to form communities. Answer 12. Kane discloses
using stored information to form communities in the forms of “future
generations of that family,” and a “group of high school friends” that shared
common experiences. Kane ^ 37. The Appellant does not refute this
evidence in the Reply Brief.
For these reasons, we sustain the rejection of claim 37 under
35 U.S.C. § 103(a).
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Rejection of Claims 25, 35, 36, and 38 under 35 U.S.C. § 103(a)
Each of claims 25, 35, 36, and 38 were rejected over Kane, Anderson,
Zylberberg, and Slay, with the additional citation to separate findings of
Official Notice for each claim. See Final Act. 16-17.
The Appellant articulates that “Appellant traverses all such reliance
on the basis that the materials noticed by the Examiner in this case are not
common or well-known in the instant, relevant art.” Appeal Br. 8. For each
finding of Official Notice, the Appellant argues the Examiner “has provided
no evidence.” Id. 8-9.
To adequately traverse the taking of Official Notice, which itself is a
form of evidence, an applicant must come forth with information or
argument that, on its face, casts reasonable doubt regarding the justification
of the Official Notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971)
(explaining that an applicant has the right to challenge the official notice and
demand production of evidence in support thereof, provided such challenge
is accompanied by adequate information or argument that, on its face,
creates a reasonable doubt regarding the circumstances justifying the official
notice); see also MPEP § 2144.03. Merely stating disagreement with the
Examiner’s conclusions, as the Appellant did here, does not rise to the level
of a traversal of Official Notice.
Because the Appellant has not adequately traversed the Examiner’s
taking of Official Notice, the facts of which the Examiner took Official
Notice are admitted prior art. See In re Ahlert, 424 F.2d 1088, 1091
(CCPA 1970) (where an applicant for a patent has failed to challenge a fact
officially noticed by the Examiner, and it is clear that the applicant has been
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amply apprised of such finding so as to have the opportunity to make such
challenge, the Examiner's finding shall be considered conclusive).
For this reason, we sustain the Examiner’s rejection of claims 25, 35,
36, and 38 under 35 U.S.C. § 103(a).
Rejection of Claims 28 and 29 under 35 U.S.C. § 103(a)
Dependent claim 28 recites “wherein the documentary information or
audio/visual information submitted by an individual in electronic form
includes the medical records of that individual.” Dependent claim 29 recites
“wherein the documentary information or audio/visual information
submitted by an individual in electronic form includes medical imagery.”
Claims 28 and 29, thus, limit the nature or meaning of the electronic
content that is stored.
The Appellant argues error because Toda, cited by the Examiner as
disclosing medical records and imagery, is “unrelated” to the other cited
references.
We are not persuaded by the Appellant’s argument. Toda is directed
to “a medical image management apparatus for storing and managing the
medical image data.” Toda ^ 1. We find that this is in the same field of
endeavor as storing “medical records” and “medical imagery,” as claimed.
Toda, therefore, is analogous art to the claimed invention.
For this reason, we sustain the rejection of claims 28 and 29 under
35 U.S.C. § 103(a).
DECISION
We reverse the rejection of claims 21-40 under 35U.S.C. § 101.
We affirm the rejections of claims 21-23 and 25^10 under
35 U.S.C. § 103(a).
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We reverse the rejection of claim 24 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-IN-PART
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