Ex Parte Hanif et al

Patent Trial and Appeal Board

Jun 13, 2018

12777144 (P.T.A.B. Jun. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/777,144 05/10/2010 Amjad Hanif
132897 7590 06/15/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
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.
P2395.10139US03 3732
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/15/2018 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):
docket@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMJAD HANIF, BRIAN BURKE, and JEFF TAYLOR
Appeal2017-003570
Application 12/777, 144 1
Technology Center 3600
Before LINDA E. HORNER, JOSEPH A. FISCHETTI, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-27 and 29-34. Final Office Action
( October 16, 2015) (hereinafter "Final Act."). 2 We have jurisdiction under
35 U.S.C. § 6(b).
The claimed subject matter relates to the cancellation of feedback
received from users of a network-based transaction facility. Specification
1 Amjad Hanif et al. ("Appellants") identify the real party in interest as
PayPal, Inc. Appeal Brief (April 13, 2016) (hereinafter "Br."), at 3.
2 Claim 28 is canceled. Br. 50 (Claims Appendix).
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(May 10, 2010) (hereinafter "Spec."), ,r 2. The Specification explains: "For
users of a network-based transaction facility, such as an Internet-based
auction facility, feedback regarding other users is particularly important for
enhancing user trust of the transaction facility." Id. ,r 4. The Specification
further explains: "[A] positive feedback history may establish the credibility
and trustworthiness of a particular trader within an on-line trading
community. Similarly, a history of negative feedback may discourage other
traders from transacting with a specific user." Id. As acknowledged by the
Specification, "Sometimes, feedback left for a user may not be accurate."
Id. ,r 33. The claimed invention "provide[s] a mechanism for canceling
feedback in the transaction facility 10." Id.
The Examiner rejected the claims as directed to patent ineligible
subject matter and as unpatentable over the prior art. Appellants contest
both grounds of rejection. For the reasons set forth below, the Examiner did
not err in rejecting the claims under these grounds.
The Examiner also maintained a rejection of the claims based on
obviousness-type double patenting after Appellants had filed a terminal
disclaimer. We find no evidence in the record that the Examiner considered
the terminal disclaimer. We reverse the double patenting rejection. Should
there be further prosecution of this application, we direct the Examiner to
consider the terminal disclaimer. Because we sustain grounds of rejection as
to each of the pending claims, we AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 10, 16, and 3 0 are the independent claims. Claim 16 is
representative of the subject matter on appeal and is reproduced below.
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16. A method comprising:
receiving a request to cancel feedback pertaining to a
transaction in a network-based transaction facility from a first
party to the transaction;
determining, by use of a processor, whether one or more
feedback cancellation criteria are satisfied, at least one of the
determined feedback cancellation criteria includes a requirement
that each of the first party and a second party do not exceed a
feedback cancellation limit;
canceling the feedback pertaining to the transaction if the
one or more feedback cancellation criteria are satisfied; and
preventing the first party to the transaction from entering
feedback comments for the transaction upon canceling the
feedback pertaining to the transaction.
Br. 48 (Claims Appendix).
Ratterman
Marshall
Vaidyanathan
Burke
EVIDENCE
WO 01/61601 Al
US 2003/0233278 Al
US 2004/0128155 Al
US 7,885,850 B2
REJECTIONS
Aug. 23, 2001
Dec. 18, 2003
July 1, 2004
Feb. 8, 2011
The Final Office Action includes the following rejections:
1. Claims 1-27 and 29-34 stand rejected under 35 U.S.C. § 101 as
directed to patent ineligible subject matter.
2. Claims 1-27 and 29-34 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Vaidyanathan, Ratterman, and Marshall.
3. Claims 1-27 and 29-34 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-31 of Burke.
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RELATED APPEALS
This is the second appeal in the present application. In the first
appeal, the Board affirmed a rejection of then-pending claims 1-27 and 29-
34 under 35 U.S.C. § 103(a) as unpatentable over Vaidyanathan and
Ratterman. Appeal 2012-008773 (PTAB March 3, 2015). Since this
Decision, Appellants have amended the claims, and the Examiner has
presented new grounds of rejection of the amended claims.
The application on appeal is a continuation of Application
10/749,736, which also was the subject of an appeal to this Board. In this
related appeal, the Board affirmed a rejection of pending claims 10-15 and
reversed a rejection of pending claims 1-7, 9, 16-25, and 27-34 under
35 U.S.C. § 103(a) as unpatentable over Vaidyanathan. Appeal 2008-1169
(BP AI October 2, 2008).
ANALYSIS
Rejection under 35 USC§ 101
In the Final Office Action, the Examiner determined that the claims
"are directed to the abstract idea of performing dispute resolution and related
calculations ... and considering a request to cancel a comment and
reflecting the outcome of the request." Final Act. 8. The Examiner found
that the additional elements recited in the claims "do not add significantly
more to the exception" and that "[ a ]11 additional elements function in a
conventional manner." Id.
Prima Facie Case
As to step 1 of the Mayo test, Appellants contend that the Examiner
failed to provide adequate explanation or evidence to support the
determination that the claims are directed to an abstract idea. Br. 10-11
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(numbered items 1-6). The Examiner's statement of the rejection identified
the abstract idea and analogized it to categories of subject matter previously
held by courts to be directed to abstract ideas:
Claims 1-27 and 29-34 are directed to the abstract idea of
performing dispute resolution and related calculations (i.e.,
organizing human activities, an idea of itself, mathematical
formulas/relationships) and considering a request to cancel a
comment and reflecting the outcome of the request (i.e.,
comparing new and stored information and using rules to
identify options, as per the SmartGene decision; using
categories to organize, store and transmit information, as per
the Cyberfone decision).
Final Act. 8. We find that Examiner's findings and analysis are sufficient to
present a prima facie case as to step one of Mayo. See, e.g., Amdocs (Israel),
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
( explaining that there is not a single test for what an abstract idea
encompasses and courts instead "examine earlier cases in which a similar or
parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided"); Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016) ("both [the Federal Circuit] and the Supreme
Court have found it sufficient to compare claims at issue to those claims
already found to be directed to an abstract idea in previous cases" to
determine what constitutes an abstract idea sufficient to satisfy step one of
the Mayo inquiry); see also Berkheimer v. HP Inc., 881 F.3d 1360, 1366-67
(Fed. Cir. 2018) (comparing the claims at issue to claims held directed to an
abstract idea in prior cases for step one of Mayo). The Examiner's analysis
was sufficient to put Appellants on notice of the basis for the ground of
rejection and to allow Appellants to recognize and seek to counter the
grounds of rejection. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
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As to step 2 of the Mayo test, Appellants contend that the Examiner
failed to provide adequate explanation or evidence to support the
determination that the claims do not add something more than the judicial
exception. Br. 11 (numbered items 7-13). The Examiner found:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because, while the claims recite the additional elements of a
processor, a feedback cancellation request receiver ( executable
by the processor), a feedback cancellation criteria evaluator
( executable by the processor), a feedback cancellation recorder,
a feedback cancellation request processor, a memory, a
processor, and a non-transitory computer-readable medium,
when considered separately and in combination, they do not
add significantly more to the exception. All additional
elements function in a conventional manner. For example, the
processor and/or software perform the conventional steps of
receiving information, identifying information, looking up data,
and calculating scores. The memory and non-transitory
computer readable medium merely store information. These
additional elements are broadly applied to carry out the abstract
ideas at a high level of generality, largely performing extra-
solution activities (such as receiving data and providing data).
The claims are directed to the abstract idea with additional
generic computer elements; however, the generically recited
computer elements do not add a meaningful limitation to the
abstract idea because these elements would be routine in any
computer implementation.
Final Act. 8-9. The Examiner notes, for example, that in independent
process claim 16, the additional element is a processor that "perform[ s] the
conventional steps of receiving information, identifying information, looking
up data, and calculating scores." Ans. 16-17. The Examiner explains,
These additional elements are broadly applied to carry out the
abstract ideas at a high level of generality, largely performing
extra-solution activities (such as receiving data and providing
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data). The claims are directed to the abstract ideas with
additional generic computer elements; however, the generically
recited computer elements do not add a meaningful limitation to
the abstract idea because these elements would be routine in
any computer implementation.
Id. at 17 (citing to JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY
guidance memo ("July 2015 Update"), which explains that courts have
recognized the recited computer functions to be well-understood, routine,
and conventional functions when they are claimed in a merely generic
manner). The July 2015 Update guidance memo cites to court decisions
finding that computer functions such as performing repetitive calculations
and receiving, processing, and storing data are well-understood, routine, and
conventional functions when claimed in a merely generic manner. July 2015
Update 7 (citing Parker v. Flook, 437 U.S. 584, 594 (1978), Bancorp
Services v. Sun Life, 687 F.3d 1266, 1278 (Fed. Cir. 2012), Alice Corp. Pty.
Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2360 (2014)).
The Federal Circuit recently explained, "Whether something is
well-understood, routine, and conventional to a skilled artisan at the time of
the patent is a factual determination." Berkheimer, 881 F.3d at 1369. We
understand the Examiner, through citation to the July 2015 Update, to rely
on prior court decisions finding that certain computer functions are
well-understood, routine, and conventional functions. These prior court
decisions adequately support the Examiner's finding to satisfy the
requirement to set forth a prima facie case of unpatentability under
35 U.S.C. § 101. We now examine the Examiner's analysis of each step of
the § 101 inquiry.
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Mayo Step One
Appellants argue that "the alleged abstract idea of 'performing dispute
resolution' is an examiner-written phrase that does not actually appear in any
of the rejected claims" and this phrase "abstracts certain examiner-selected
limitations and omits numerous other limitations." Id. at 14. We examine
this contention with reference to representative claim 16. The Examiner
reproduced claim 16 in the Answer with the limitations directed to the
details of the abstract idea highlighted in italics. Ans. 15-16. The Examiner
essentially italicized the entire claim but for the claim phrase "by use of a
processor" in the second recited step. Id.
The method of claim 16 can be summarized as follows: rece1vmg a
request from a party to a transaction to cancel feedback pertaining to the
transaction, determining if feedback cancellation criteria are satisfied,
including determining if either party to the transaction has exceeded a
feedback cancellation limit, canceling the feedback if the criteria are
satisfied, and preventing the party from entering feedback comments for the
transaction upon granting of the request. As explained in Appellants'
Specification, providing a process to cancel feedback and prevent
introduction of new feedback allows inaccurate feedback to be removed to
preserve the reputation of a particular user within the transaction facility.
Spec. ,r 33. For example, if negative feedback about a transaction is posted,
and the parties to the transaction were able to resolve the problem after the
negative feedback was left, then the parties may agree to cancel the negative
feedback. Id. In this instance, when parties resolve a problem that formed
the basis of the negative feedback, but negative feedback remains in the
transaction facility that implicates the reputation of one of the parties to the
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transaction, the existence of this negative feedback means that a dispute still
exists between the parties until the parties agree to cancel the negative
feedback and refrain from posting any new feedback related to this
transaction. See id. ,r 37 (describing determining that parties agree to cancel
feedback prior to cancellation) and ,r 4 7 ( describing preventing the posting
of further feedback relating to the transaction). Thus, the feedback
cancellation process is a means to fully resolve the dispute between the
parties to the transaction. As such, we find no error in the Examiner's
characterization of the abstract idea of the claims as being one of performing
dispute resolution.
It has been a long-prevalent practice to maintain a repository of
reputational information for people engaged in business transactions and to
control the integrity of that information. See, e.g., Vaidyanathan ,r 5
( describing prior art processes involving governmental or non-profit
consumer organizations, such as the Better Business Bureau, that provide
services to consumers involved in disputed transactions); see also
www.bbb.org (Better Business Bureau website, an organization founded in
1912 to advance marketplace trust, which allows consumers to provide
reviews of member businesses). This type of fundamental practice long
prevalent in business relations in our system of commerce is directed to an
abstract idea. See Alice, 134 S. Ct. at 2356 (holding that "fundamental ...
practice[ s] long prevalent" are abstract ideas).
Appellants argue that the Examiner failed to show that the claims are
analogous to the abstract ideas in SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 Fed.Appx. 950 (Fed. Cir. 2014) or Cybeifone Systems, LLC
v. CNN Interactive Group, Inc., 558 Fed.Appx. 988 (Fed. Cir. 2014).
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Br. 15-21. The Examiner compared the claimed subject matter to the
abstract idea identified by the court in SmartGene of comparing new and
stored information and using rules to identify options. Final Act. 8. The
Examiner further compared the claimed subject matter to the abstract idea
identified by the court in Cyberfone of using categories to organize, store,
and transmit information.
We agree with the Examiner that representative claim 16 implies, in
the step of determining that each party has not exceeded a feedback
cancellation limit, a comparison of new information (i.e., the current
cancellation request) and stored information (i.e., instances of prior
cancellation requests). The claim further indicates that, in the determining
step, other rules (i.e., criteria) may be applied against information pertaining
to the cancellation request prior to honoring the request and cancelling the
feedback. For instance, as described above, the process may entail ensuring
that both parties agree to the cancellation prior to cancelling the feedback.
These steps are no different than the steps a human mediator would
take in attempting to resolve a dispute between parties about a transaction.
For instance, if a party dissatisfied with a transaction submits negative
feedback about the transaction to the Better Business Bureau, and the parties
seek the services of a mediator to resolve the dispute, the mediator may seek
to ensure that both parties agree to retraction of the negative feedback prior
to seeking to have the negative feedback removed. See, e.g., Vaidyanathan
,r 5 ( describing prior art processes involving governmental or non-profit
consumer organizations, such as the Better Business Bureau, that provide
services to consumers involved in disputed transactions).
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Appellants argue that the decision in SmartGene should be limited to
the abstract idea of computerizing what doctors do routinely. Br. 16. The
court in SmartGene broadly stated, however, "this court held that section
101 did not embrace a process defined simply as using a computer to
perform a series of mental steps that people, aware of each step, can and
regularly do perform in their heads." 555 Fed.Appx. 950, 954 (Fed. Cir.
2014) (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011)) (additional citations omitted). The court noted that
"the claim at issue here involves a mental process excluded from section
101 : the mental steps of comparing new and stored information and using
rules to identify medical options." Id. at 955.
Admittedly, the steps recited in representative claim 16 go beyond
purely mental steps. For instance, the claims recite actually canceling the
feedback and preventing the entry of further feedback. However, the realm
of abstract ideas is not limited to purely mental steps. For instance,
"[p ]atents that merely claim well-established, fundamental concepts fall
within the category of abstract ideas." Cybeifone, 558 Fed.Appx. at 991
(citing Bilski v. Kappas, 561 U.S. 593, 611 (2010)). As noted in Cyberfone,
the court has held that conducting arbitration, which is similar to the dispute
resolution claimed here, is one such well-established, fundamental concept.
Id. (citing In re Comiskey, 554 F.3d 967, 970-91, 981 (Fed. Cir. 2009)).
The court in Comiskey found that the claims directed to a method for
mandatory arbitration resolution claim the mental process of resolving a
legal dispute between two parties by the decision of a human arbitrator. 554
F.3d at 981.
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We further examine whether the claims "focus on a specific means or
method that improves the relevant technology" or are "directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016). In this case, the claims do not recite a particular way
of programming or designing the software to allow for cancelation of
feedback, but instead merely claim the resulting system and are directed to
functionality. The claims are not directed to a specific improvement in the
way computers operate. Cf Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36 (Fed. Cir. 2016).
For these reasons, the Examiner did not err in determining that
representative claim 16 is directed to an abstract idea under step one of the
Mayo inquiry.
Mayo Step Two
The claim elements, both individually and when combined, do not
transform the claimed abstract idea into a patent-eligible application of the
abstract idea. The patent claim adds conventional computer components to
well-known business practices. Enfzsh, 822 F.3d at 1338. For instance, as
noted by the Examiner in examining representative method claim 16, the
claim recites an abstract idea of dispute resolution performed "by use of a
processor." Ans. 15-16. Using a processor to a receive a request to cancel
information, comparing information to determine if cancellation criteria are
satisfied, and canceling the information, and preventing entry of further
information, involve conventional input/output, processing, and data storage
activities of a generic computer processor. It is not sufficient to recite
performing conventional activities "on a computer." Cf Alice, 134 S. Ct. at
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2358 ("Stating an abstract idea while adding the words 'apply it with a
computer"' is not enough for patent eligibility) (quoting Mayo, 132 S. Ct. at
1294). "[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
We are unpersuaded that anything in representative claim 16 purports
to improve computer functioning or "effect an improvement in any other
technology or technical field." Alice, 134 S. Ct. at 2359. Nor are we
persuaded that the claims solve a problem unique to the Internet, because the
Internet is not recited in claim 16. See DDR Holdings, 773 F.3d at 1257.
The claims also are not adequately tied to "a particular machine or
apparatus." Bilski, 561 U.S. at 602. For these reasons, the Examiner did not
err in determining that representative claim 16 fails to recite significantly
more than the abstract idea under step two of the Mayo inquiry.
Because claim 16 is directed to an abstract idea, and nothing in the
claims adds an inventive concept, the claim is not patent-eligible under
§ 101. Therefore, we sustain the Examiner's rejection of claim 16 under
35 U.S.C. § 101. We find no meaningful distinction between independent
method claim 16 and independent claims 1, 10, and 30; the claims all are
directed to the same underlying invention. As the Federal Circuit has made
clear "the basic character of a process claim drawn to an abstract idea is not
changed by claiming only its performance by computers, or by claiming the
process embodied in program instructions on a computer readable medium."
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See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375-76
(Fed. Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982)). Therefore,
claims 1, 10, and 3 0 fall with claim 16.
Dependent Claims
Appellants contend that the Examiner failed to consider the dependent
claims separately and has not established a prima facie case against the
dependent claims. Br. 21-23. Representative dependent claim 17 depends
from method claim 16 and recites the additional step of "determining that
the second party to the transaction agrees to cancel the feedback pertaining
to the transaction." Br. 48 (Claims Appendix). The Examiner explained:
"[T]he dependent claims further define details of the abstract ideas.
Appellant[ s] ha[ ve] not identified any additional elements in the dependent
claims that amount to significantly more than any of the abstract ideas ....
There is no unconventional functionality attributed to any of the additional
elements recited throughout the claims." Ans. 21; see also Final Act. 3.
As to whether the Examiner has set forth a prima facie case, the
Examiner has explained adequately the basis for the rejection of these
claims, in explaining that the subject matter recited in each dependent claim
further defines details of the abstract idea and does not add unconventional
functionality to the additional elements. Appellants characterize certain
additional elements recited in the dependent claims as "additional limitations
pertaining to dispute resolution." Br. 22. This characterization bolsters the
Examiner's view that the additional elements recited in the dependent claims
further define the details of the abstract idea. For instance, representative
dependent claim 1 7 recites that the processor determines if the second party
agrees to cancellation of the feedback. This is a conventional step that a
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dispute resolution mediator would take in attempting to reach agreement
between parties to resolve a dispute about a transaction.
For these reasons, we are not persuaded by Appellants that the
Examiner failed to present a prima facie case as to representative dependent
claim 17. Accordingly, we sustain the rejection of claim 17 under 35 U.S.C.
§ 101, and claims 2-9, 11-15, 18-29, and 31-34 fall with claim 17.
Rejection under 35 USC§ 103(a)
In the Final Office Action, the Examiner found that Vaidyanathan
discloses the apparatus substantially as recited in claim 1, including a
feedback cancellation request receiver, a feedback cancellation criteria
evaluation, and a feedback cancellation recorder, but does not explicitly
disclose, inter alia, that at least one of the determined feedback cancellation
criteria includes a requirement that each of the first party and a second party
do not exceed a feedback cancellation limit. Final Act. 9-12. The Examiner
found that Marshall presents dispute resolution services as a commodity and
teaches that parties to a transaction may prepay for a limited number of
dispute resolutions in an online dispute resolution service. Id. at 12-13
( citing Marshall ,r,r 54-55). The Examiner further found that
Vaidyanathan's system is a dispute resolution system and has the ability to
charge for this service. Id. Based on these facts, the Examiner determined
that it would have been obvious to modify Vaidyanathan to include prepaid
online dispute resolution services and criteria requiring that the parties do
not exceed a feedback cancellation limit "in order to encourage frequent
users of Vaidyanathan's transaction and dispute resolution services to
purchase a package of limited dispute resolution services" including the
ability to request cancellation of feedback. Id. at 13 ("Simply checking to
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see if a threshold of requests to cancel feedback by any participating party
serves to confirm that contractual obligations are or have been met"). The
Examiner explains that using such pre-payment options allow Vaidyanathan
to achieve cost recovery or possibly profitability for its value-added service.
Id.
Appellants contend that the Examiner erred in rejecting the claims
because the Examiner misconstrued a "feedback cancellation limit" and "[a]
need for a threshold limit for prepaid services would not motivate, nor is
equivalent to, a feedback cancellation limit." 3 Br. 42 (emphasis omitted).
Appellants assert the Examiner misinterpreted the claimed "feedback
cancellation limit." We look to Appellants' Specification to interpret this
term.
Appellants' Specification discloses, "The feedback cancellation
criteria evaluator 604 is responsible for evaluating information pertaining to
the current feedback cancellation request based on a set of feedback
cancellation criteria that encompass various rules for canceling feedback in
the transaction facility 10." Spec. ,r 36; see also id. ,r 42. The Specification
provides that such rules "may require, for example, ... that the feedback
cancellation request be below a threshold number of allowed feedback
cancellations for each party to the transaction." Id. The Specification
further provides "exemplary feedback withdrawal criteria used by the
criteria evaluator 604." Spec. ,r 51 (citing Table 1). The criteria include
determining whether the user is over a usage limit. Id. (Table 1, Order 10).
3 Appellants argue the claims subject to the obviousness rejection as a group.
Br. 41--43. We select claim 1 as representative, and claims 2-27 and 29-34
stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
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The Specification explains: "You can request withdrawal for only 15
transactions during a 30-day period." Id.; see also id. ,r 54 (Table 2, Order
lOM). We interpret a "feedback cancellation limit" in light of Appellants'
Specification to mean an upper threshold on the number of cancellation
requests allowed for each party to the transaction.
Appellants' arguments appear to attribute some undisclosed reason for
imposing a feedback cancellation limit different from the motivation for
imposing such a limit proposed by the Examiner (e.g., a threshold number of
requests based on the number of such dispute resolutions for which pre-
payment was made). The claim does not recite the reason for imposing a
limit, and the Specification does not confine the limit to any particular
reason. The Examiner's articulated reasoning for imposing a limit on the
number of cancellation requests is based on rational underpinnings that the
prior art teaches dispute resolution services as a commodity. As such,
Appellants have not demonstrated error in the Examiner's rejection based on
obviousness.
For these reasons, we sustain the rejection of representative claim 1,
and claims 2-27 and 29-34 which fall with claim 1, under 35 U.S.C.
§ 103(a).
Rejection based on Obviousness-Type Double Patenting
Appellants filed a terminal disclaimer on August 8, 2011, disclaiming
the terminal part of the statutory term of any patent granted on the
application on appeal that would extend beyond the expiration date of the
full statutory term of the Burke patent. The terminal disclaimer further
agreed that any patent granted on the application on appeal shall be
enforceable only if such patent and the Burke patent are commonly owned.
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We cannot find any evidence in the record that the Examiner considered this
terminal disclaimer. We reverse the obviousness-type double patenting
rejection. Should there be further prosecution of this application, we direct
the Examiner to consider the terminal disclaimer.
DECISION
The decision of the Examiner rejecting claims 1-27 and 29-34 under
35 U.S.C. § 101 is affirmed.
The decision of the Examiner rejecting claims 1-27 and 29-34 under
35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner rejecting claims 1-27 and 29-34 under
the doctrine of obviousness-type double patenting is reversed.
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)(l )(iv).
AFFIRMED
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