11236924 (B.P.A.I. Aug. 14, 2012)

Ex Parte Hickey

Board of Patent Appeals and InterferencesAug 14, 2012

11236924 (B.P.A.I. Aug. 14, 2012)

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. 11/236,924 09/28/2005 Brent Hickey 1468.004 4929 54434 7590 08/15/2012 BOOTH UDALL, PLC 1155 W. Rio Salado Pkwy. Suite 101 Tempe, AZ 85281 EXAMINER VIG, NARESH ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 08/15/2012 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 BRENT HICKEY ____________________ Appeal 2011-001952 Application 11/236,924 Technology Center 3600 ____________________ Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001952 Application 11/236,924 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 6 and 8-19. We have jurisdiction under 35 U.S.C. § 6(b). The claims are directed to data processing systems and associated processes to provide for the management of data relating to rights or interests in property, and in the transmission or distribution of related data (para. [0001]). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer readable storage medium encoded with a data structure associated with fractional interests in property, the data structure comprising: a first data portion identifying a fractional interest in a property of a property owner, wherein the property owner has a legal interest in the property, and wherein: the first data portion is associated with a novelty deed for the identified interest; the novelty deed conveys an ownership right in the property owner's legal interest in the property, but no legal liability associated with the property; and the first data portion includes additional information associated with the property; and a second data portion for tracking sale or resale of the novelty deed associated with the identified interest in the property, wherein: the novelty deed is at least initially associated with a predetermined amount of money; and the second data portion includes information associated with at least one current or previous owner of the novelty deed associated with the identified interest in the property. Appeal 2011-001952 Application 11/236,924 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Snow US 2002/0178097 A1 Nov. 28, 2002 Frost US 7,389,242 B2 Jun. 17, 2008 Information on MoonShop.com, retrieved on 02 June 2003, archived web pages retrieved from www.archive.org, dates for the webpage are in the URL in YYYYMMDD format (hereinafter “MoonShop.”) Claims 1-4 are not patentable under 35 U.S.C. § 103(a) as being unpatentable over Snow in view of Frost. Claims 5-6 and 8-19 are not patentable under 35 U.S.C. § 103(a) as being unpatentable over Snow in view of MoonShop and Frost. We AFFIRM. FINDINGS OF FACT Snow FF1. The “Lunar Deed” provided by the seller to a buyer may have a notation in the bottom left of the “Lunar Deed” stating “[t]his is a novelty gift” (paras. [0008]-[0009]). FF2. Snow discloses a method of defining fractional property interests on the Moon (claim 17). Appeal 2011-001952 Application 11/236,924 4 ANALYSIS Obviousness Rejection of Independent Claim 1 We are not persuaded the Examiner erred in asserting that a combination of Snow and Frost renders obvious independent claim 11 (App. Br. 15-18). Appellant asserts that a combination of Snow and Frost fails to render obvious “the novelty deed conveys an ownership right in the property owner’s legal interest in the property, but no legal liability associated with the property,” as recited in independent claim 1 (App. Br. 16; emphasis original), because “the Final Office Action merely states that Snow and Frost teaches, ‘the novelty deed conveys ownership right in the property owner’s legal interest in the property’ and fails to address the portion that reads ‘does not convey an actual ownership right in the property owner's legal interest’” (App. Br. 19-20). However, as the Lunar Deed in Snow is a novelty deed (FF1), there would be no legal liability associated with the property. Appellant then asserts that because “the entire purpose of the Snow reference is to convey actual legal title to lunar land to the purchaser,” it would render Snow unsatisfactory for its intended purpose to modify the references to as “to result in a deed that conveys no actual ownership right” (App. Br. 17). However, Snow discloses an embodiment where a deed conveys no actual ownership right (FF1). Moreover, in order for a modification to destroy the intended purpose of a reference, inoperability is required. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Appellant has not shown that altering the deed in Snow, in the manner suggested by the 1 We choose independent claim 1 as representative of claims 1-4. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-001952 Application 11/236,924 5 Examiner, would render the deed itself inoperative; in the end, it is still a piece of paper with writing on it. Indeed, we are unclear as to what exactly would make a deed inoperative. Appellant additionally asserts that “the entire purpose of the Frost reference is to provide a database to real estate professionals to enable them to more efficiently keep track of property being sold. Nowhere does Frost even disclose the creation of a deed, much less a deed that conveys no legal liability associated with the property as recited in claim 1” (App. Br. 17). However, Snow is cited as disclosing these aspects (Exam’r’s Ans. 4-6, 11). See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single reference alone does not disclose the recited claimed steps is not persuasive because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”) Appellant further asserts that a combination of Snow and Frost fails to render obvious “a first data portion identifying a fractional interest in a property of a property owner,” as recited in independent claim 1 (App. Br. 18, emphasis original). According to Appellant, because Snow discloses that no one owns the Moon, “the Snow reference fails to teach the dividing of property belonging to a property owner.” However, Appellant admits that Snow discloses that “the United States does not currently own any land on the moon, but may be able to enforce claims to land on the moon based on its exploration of the various Apollo landing sites.” Thus, Appellant admits Appeal 2011-001952 Application 11/236,924 6 that Snow discloses “a property of a property owner” should the United States enforce such claims in the future. Independent claim 1 does not recite that the property must currently be in the possession of a property owner. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into the claims). Furthermore, claim 17 of Snow discloses how to define fractional interests on the Moon (FF2), should that future come to fruition (Exam’r’s Ans. 4-6, 11). Accordingly, Snow does disclose “identifying a fractional interest in a property of a property owner,” as recited in independent claim 1. Appellant additionally asserts that “Frost fails to furnish this limitation. Thus, Snow and Frost cannot be combined as they teach away from one another” (App. Br. 18). However, Snow is cited for the above- referenced limitation, and we are unpersuaded that the lack of disclosure by Frost of the above-referenced limitation amounts to a teaching away. See In re Merck & Co. Inc., 800 F.2d at 1097. Obviousness Rejection of Independent Claim 5 We are not persuaded the Examiner erred in asserting that a combination of Snow, MoonShop, and Frost renders obvious independent claim 52 (App. Br. 18-23). Most of Appellant’s arguments are the same as those set forth for independent claim 1. Accordingly, we adopt herein our analysis set forth above with respect to independent claim 1. 2 We choose independent claim 5 as representative of claims 5-6 and 8-15. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-001952 Application 11/236,924 7 Appellant further asserts that a combination of Snow, MoonShop, and Frost fails to render obvious “means for identifying multiple fractional interests of a famous property of a property owner, the famous property being located on or in earth, wherein the property owner has a legal interest in the famous property” (emphasis added), because Snow and MoonShop are only applicable to property located on the Moon or other planetary land property (App. Br. 21-22). In response, the Examiner asserts that “[o]ne of ordinary skill could have adopted teachings of Snow in view of MoonShop to generate revenue by selling novelty deeds to famous locations on earth” (Exam’r’s Ans. 7) and “cited references teaches capability and concept for Creating Novelty Deed to the used on Property which can be Located on Earth” (Exam’r’s Ans. 11). We agree with the Examiner. In the end, all that is being created is a novelty deed listing a property. Appellant then asserts that “[t]he Snow reference would not work at all for properties on Earth because most property on Earth already has a method for allocating, claiming, and distributing land, a method that varies depending on the jurisdiction in which the land is located. It simply would not work on land that is already owned by someone but is to be divided for novelty deeds” (App. Br. 22). As the deeds are for novelty purposes (FF1), however, we are not persuaded it makes a difference whether the land is or is not currently owned. Appeal 2011-001952 Application 11/236,924 8 Obviousness Rejection of Independent Claim 16 We are not persuaded the Examiner erred in asserting that a combination of Snow and MoonShop renders obvious independent claim 163 (App. Br. 23-27). All of Appellant’s arguments concerning independent claim 16 have been addressed in our analysis of independent claims 1 and 5. DECISION The Examiner’s rejection of claims 1-6 and 8-19 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED JRG 3 We choose independent claim 16 as representative of claims 16-19. See 37 C.F.R. § 41.37(c)(1)(vii).