11686693 (P.T.A.B. Sep. 18, 2013)

Ex Parte Fano

Patent Trial and Appeal BoardSep 18, 2013

11686693 (P.T.A.B. Sep. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/686,693 03/15/2007 Andrew E. Fano 0095-0043 6819 113123 7590 09/18/2013 Harrity & Harrity, LLP 11350 Random Hills Road Suite 600 Fairfax, VA 22030 EXAMINER CHANNAVAJJALA, SRIRAMA T ART UNIT PAPER NUMBER 2157 MAIL DATE DELIVERY MODE 09/18/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW E. FANO ___________ Appeal 2011-003257 Application 11/686,693 Technology Center 2100 ____________ Before KRISTEN L. DROESCH, JASON V. MORGAN, and DANIEL N. FISHMAN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003257 Application 11/686,693 2 This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 3-12, 14-18, and 20-26. App. Br. 2. Claims 2, 13, and 19 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE THE INVENTION Appellant’s invention relates to receiving and displaying information indicative of processing performed by analysts using an analyst network. See generally Abstract. Claim 1, reproduced below, is illustrative: 1. In a workstation coupled to a computer-implemented analyst network used by a plurality of analysts receiving information from an information network via a routing controller, a method for presenting acquired information elements, comprising: receiving, from the routing controller, at least representative data of the acquired information elements and information indicative of processing of the acquired information elements performed by at least a portion of the plurality of analysts; and displaying the at least representative data to provide displayed results, wherein at least a portion of the displayed results comprises a representation of the information indicative of processing of the acquired information elements performed by at least the portion of the plurality of analysts, the representation of the information enabling prioritization of processing by an individual analyst of the plurality of analysts of the acquired information elements, wherein the representation of the information comprises indicia of treatment indicative of treatment statuses for at least a portion of the acquired information elements. Appeal 2011-003257 Application 11/686,693 3 THE REJECTIONS The Examiner rejected claims 1, 12, 18, and 24-26 on the ground of nonstatutory obviousness-type double patenting over claims 1, 8, and 19 of co-pending patent application number 11/686,615. Ans. 6-8. Claims 1, 3-12, 14-18, and 20-23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gatto (U.S. Patent No. 6,681,211 B1; issued Jan. 20, 2004) and Reese (U.S. Patent No. 6,370,516 B1; issued Apr. 9, 2002). Ans. 8-12. Claims 24-26 are rejected under 35 U.S.C. § 102(b) as anticipated by Reese. Ans. 13-14. THE OBVIOUSNESS-TYPE DOUBLE-PATENTING REJECTION Earlier filed, co-pending patent application 11/686,615 remains pending and is the subject of a related pending appeal (Appeal No. 2011- 007451). The obviousness-type double-patenting rejection should therefore have been stated as provisional. We decline to decide the appeal as to a provisional obviousness-type double-patenting rejection and specify that the Examiner process the provisional obviousness-type double-patenting rejections consistent with MPEP § 804. On the record before us, addressing the Examiner’s provisional rejection would be premature. See Ex parte Moncla, No. 2009-006448, 95 USPQ2d 1884, 1885 (BPAI June 22, 2010) (precedential). We therefore do not reach the Examiner’s provisional obviousness-type double-patenting rejections of claims 1, 12, 18, and 24-26. Appeal 2011-003257 Application 11/686,693 4 THE § 103 REJECTION The Examiner rejected claim 1 finding that Gatto teaches the receiving and displaying steps but does not specifically disclose “wherein the representation of the information comprises indicia of treatment indicative of treatment statuses for at least a portion of the acquired information elements.” Ans. 8-10. The Examiner then finds that Reese discloses this limitation and provides a reason for combining Gatto and Reese. Ans. 10. Appellant argues that Gatto teaches “users” that review what “analysts” have done but that “users” are not “analysts” as recited in claim 1. App. Br. 23-27; Reply Br. 3-22. Appellant argues that Reese does not alleviate this alleged deficiency of Gatto because Reese also refers to “users” as distinct from the claimed analysts. App. Br. 27-28. We are unpersuaded by Appellant’s arguments. While it is true that Gatto refers to “users” and “analysts” as different types of users of the analytical system, nothing in Gatto precludes the “users” from being other analysts. Further, Appellant’s Specification broadly defines an analyst as “any person that processes a large amount of content (i.e., materials of virtually any nature) in order to become more knowledgeable about that topic and, of particular importance, to be able to develop appropriately meaningful insight and responses of such knowledge. ” Spec. ¶ 0003. We conclude this definition encompasses both Gatto’s and Reese’s “users.” In view of the above discussion, we are unpersuaded that the Examiner erred in finding that the combination of Gatto and Reese discloses all features of claim 1 and claims 3-12, 14-18, and 20-23 not separately argued with particularity. App. Br. 22 (n. 2). Appeal 2011-003257 Application 11/686,693 5 THE § 102 REJECTION Appellant argues that Reese does not anticipate claim 24 for the same reasons as above with respect to claim 1—specifically arguing that Reese “distinguishes between a single user of the system and investment advisors who do not actually use the system.” App. Br. 29; see also Reply Br. 11. For the same reasons as above with respect to claim 1, we are unpersuaded by Appellant’s argument and conclude that “users” in Reese are encompassed by Appellant’s definition of “analysts.” We are therefore unpersuaded that the Examiner erred in finding that Reese discloses all features of claim 24 and claims 25-26 not separately argued with particularity. App. Br. 29 (n. 3). DECISION For the reasons discussed above, the rejection of claims 1, 3-12, 14- 18, and 20-23 under 35 U.S.C. § 103 is affirmed. For the reasons discussed above, the rejection of claims 24-26 under 35 U.S.C. § 102 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED gvw