Ex Parte Furman et al

Patent Trial and Appeal Board

Jul 22, 2016

11058790 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111058,790 02/16/2005
48985 7590 07/26/2016
BRIDGESTONE AMERICAS, INC
10 East Firestone Blvd.
AKRON, OH 44317
FIRST NAMED INVENTOR
George Furman
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.
P04017US2ABFDP 7490
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
iplawpat@bfusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GEORGE FURMAN, JULIE HOCHSTATTER,
GEORGE JONES, and CRAIG OXENDINE
Appeal2014-002467 1
Application 11/058,7902
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5, 8, 14--16, 18-25, and 28-31. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed July 23,
2013) and the Examiner's Answer ("Ans.," mailed October 2, 2013), and
Final Office Action ("Final Act.," mailed February 28, 2013).
2 Appellants identify BPS Diversified Products, LLC as the real party in
interest. Br. 1.
Appeal2014-002467
Application 11/058,790
CLAIMED fNVENTION
Appellants' claimed invention "relates to the construction industry
and more particularly to a system and method for generating submittal
packages" (Spec. ,-r 2).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method of generating a submittal package using
a distributed computing system comprising:
an application server encrypting Expert Logic Engine
business/product rules;
the application server sending the encrypted
business/product rules to a user device via a network connection;
a user entering site information relating to a construction
project, the site information identifying at least a building and an
address of the building;
the user entering relational data including installation
information and product information pertaining to a construction
project at the user device;
determining relational data entry points;
performing validity checks on entered relational data using
business/product rules;
changing relational data entry points if the validity checks
are not satisfied;
selecting pre-established documents using the relational
data, the pre-established documents corresponding to the
relational data and including at least one of Material Safety Data
Sheets and Technical information sheets;
the application server preparing reports integrating the
relational data and site information; and
the application server combining the reports and
documents to form a submittal package.
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Application 11/058,790
REJECTIONS
Claims 1-3, 5, 8, 14--16, 18-25, and 29-31 are rejected under
35 U.S.C. § 103(a) as unpatentable over Goodlett (US 2004/0193634 Al,
pub. Sept. 30, 2004), Harding (GB 2,389,499 A, pub. December 10, 2003),
and Official Notice.
Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Goodlett and Harding.
ANALYSIS
Independent claims 1, 14, and 28 and dependent claims 15, 18, 20-22, 24,
25, and 29-31
Appellants argue independent claims 1, 14, and 28 as a group (Br. 11-
17). We select claim 1 as representative. Claims 14 and 28 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim l under 35 U.S.C. § 103(a) because Goodlett, on
which the Examiner relies, does not disclose or suggest "entering site
information relating to a construction project, the site information
identifying at least a building and an address of the building," as recited in
claim 1 (Br. 11-12). Instead, we agree with, and adopt, the Examiner's
response to Appellants' argument as set forth at pages 18-19 of the Answer.
By way of background, Goodlett is directed to a system and method
for managing product regulatory information, and assists a user in generating
a product submittal package for submission to a regulatory agency
(Goodlett, Abstract). The submission package provides the information and
documents required to prove the product's compliance with the regulatory
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Application 11/058,790
standards of the target geographical market so that the product may be sold
legally in that market (see, e.g., id. i-fi-1 4, 7-8).
Appellants acknowledge that Goodlett discloses a universal submittal
package configurator 46 that presents a project initiator with a series of
questions to determine the country in which the project is to take place
(Br. 11-12 (citing Goodlett i-fi-164, 66, 107, 171-176)), i.e., that Goodlett
discloses a user entering information relating to a project, the information
identifying the site (e.g., the country) where the project will take place. But
Appellants maintain that Goodlett does not disclose or suggest that the user
enters site information "relating to a construction project, the site
information identifying at least a building and an address of the building, as
claimed" (id. at 12).
Appellants' argument is not persuasive because, as the Examiner
finds, the specific type of information entered by the user does not
functionally affect how the method is performed; as such, it constitutes non-
functional descriptive material that may not be relied on to distinguish over
Goodlett for purposes of patentability (Ans. 18-19).
The Federal Circuit has long held that where a limitation claims
printed matter that is not functionally or structurally related to its physical
substrate, the printed matter may not be relied on to distinguish over the
prior art for purposes of patentability. 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). In applying the printed matter doctrine,
the first step is to determine whether the limitation is, in fact, directed to
printed matter, i.e., whether the limitation claims the content of information.
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Application 11/058,790
See In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). If so, "one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is 'no' is the printed
matter owed no patentable weight." Id. at 851. See also King Pharms Inc.
v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir. 2010) (applying the
"printed matter" reasoning to method claims containing an "informing" step
that could be either printed or verbal instructions).
Here, claim 1 claims the informational content of the site information,
and as such, is directed to printed matter. The relevant inquiry then is
whether the recitation that the site information relates "to a construction
project" and identifies "at least a building and an address of the building,"
i.e., the claimed informational content, has a "new and unobvious functional
relationship" with the method. Id. at 1279.
There is no objective evidence of record that there is a functional
distinction in entering site information "relating to a construction project"
and "identifying at least a building and an address of the building," as
opposed to entering some other type of site information. Regardless of the
nature of the site information, the underlying method is the same. The
nature of the site information does not depend on the method, and the
method does not depend on the nature of the site information. As such, it
constitutes non-functional descriptive material that may not be relied on for
patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
For much the same reasons, we agree with, and adopt the Examiner's
response to Appellants' further arguments that Goodlett fails to disclose or
suggest "entering relational data including installation information and
product information pertaining to a construction project at the user device"
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Application 11/058,790
(Br. 12-14 ); "selecting pre-established documents .... corresponding to the
relational data and including at least one of Material Safety Data Sheets and
Technical information sheets" (id. at 15-16); and/or "preparing reports
integrating the relational data and site information" (id. at 16-17), as set
forth at pages 19-21 of the Answer.
Appellants argue that Goodlett fails to disclose the limitations recited
in claim 1 but the argued differences between the claim elements and the
method disclosed in Goodlett only concern the informational content of the
claimed "site information," "relational data," and/or "pre-established
documents." Appellants do not contend, for example, that Goodlett fails to
disclose a user entering relational data or that Goodlett fails to disclose
selecting pre-established submittal documents using the relational data
entered by the user; instead, Appellants merely argue that Goodlett does not
disclose relational data "including installation information and product
information pertaining to a construction project" (id. at 12) or "at least one
of Material Safety Data Sheets and Technical information sheets" (id. at 15).
Appellants argue that the claimed relational data cannot properly be
considered non-functional descriptive material because the relational data
are relevant to the steps of the method and functionally interrelated to the
claimed selection of pre-established documents and to the claimed
performing validity checks and changing data entry point (id. at 13-15). Yet
the relevant inquiry is not whether the relational data affect the way the
method is performed. Rather, the relevant inquiry is whether the particular
type of relational data, i.e., its content, affects or otherwise alters the way the
method is performed. And there is no objective evidence of record to
establish that it does.
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In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claim 1, and independent claims 14 and
28, which fall with claim 1. We also sustain the Examiner's rejection of
dependent claims 15, 18, 20-22, 24, 25, and 29--31, which are not argued
separately.
Dependent claims 2, 3, 5, 8, 15, and 16
Appellants' arguments with respect to dependent claims 2, 3, 5, 8, 15,
16 (Br. 17-21) are substantially similar to Appellants' arguments with
respect to claim 1 in that the argued differences concern the specific nature
of the report, i.e., a "Sample Warranty" (claims 2 and 15) or a "Letter of
Good Standing" (claims 3, 8, and 16), that is prepared from the relational
data and site information and transmitted to the user in a submission
package, and/or the specific content of the relational data, i.e., that it
comprises "roofing construction project information" (claim 5).
We agree with the Examiner that the specific type of report and the
specific content of the relational data constitute non-functional descriptive
material that may not be relied on for patentability (Ans. 6-11). Therefore,
we sustain the Examiner's rejection of claims 2, 3, 5, 8, 15 and 16 under
35 U.S.C. § 103(a).
Dependent claims 19 and 23
Appellants argue claims 19 and 23 as a group (Br. 21-22). We select
claim 19 as representative. Claim 23 stands or falls with claim 19.
See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 19 depends from claim 18, which depends, in tum, from
claim 1. Claim 18 recites that the method of claim 1 further comprises
"providing a repository view to the user showing the pre-established
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documents the user has selected as a check for verifying that all pre-
established documents for the submittal package have been selected." And
claim 19 recites that "repository view is provided in a tree format showing
all documents available for selection with the selected documents being
indicated as having been selected."
Appellants argue that the Examiner erred in rejecting claim 19 under
35 U.S.C. § 103(a) because Goodlett does not disclose or suggest showing
all documents for selection, as claimed, but rather discloses only displaying
the components that have been selected (Br. 21 (citing Goodlett, Figs. 16B
and 16C)).
Responding to Appellants' argument in the Response to Argument
section of the Answer, the Examiner cites Figure 2B and paragraphs 13 and
16 of Goodlett as disclosing the concept of displaying all documents
available for selection in a hierarchical tree format, including providing an
indication that a particular document has been selected (Ans. 23-24).
Appellants do not address the cited portions of Goodlett in their Appeal
Brief, and Appellants did not file a Reply Brief.
In the absence of further explanation, we are not persuaded of error on
the part of the Examiner. Therefore, we sustain the Examiner's rejection
under 35 U.S.C. § 103(a) of claim 19, and claim 23, which falls with
claim 19.
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Application 11/058,790
DECISION
The Examiner's rejections of claims 1-3, 5, 8, 14--16, 18-25, and 28-
31 under 35 U.S.C. § 103(a) are 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)(l )(iv).
AFFIRMED
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