Ex Parte Lee

Patent Trial and Appeal Board

Mar 13, 2017

13619486 (P.T.A.B. Mar. 13, 2017)

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.
13/619,486 09/14/2012 Eugene M. Lee 113708.121 CON10 3463
23400 7590 03/15/2017
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
EXAMINER
MOONEYHAM, JANICE A
RESTON, VA 20191 ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @ poszlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal 2014-008498
Application 13/619,486
Technology Center 3600
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s invention is an integrated intellectual property (IP) system
that includes IP docketing and prosecutor applications. The docketing
application provides information for managing and scheduling all
prosecution duties relating to patents, trademarks, and copyrights. In one
aspect, the system determines the cost of foreign filing a particular patent
application. See generally Abstract; Spec. 1, 14—15, 23; Fig 14. Claim 1 is
illustrative:
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Application 13/619,486
1. An electronic filing system for determining a binding
cost of foreign filing a particular patent application, comprising:
a communications port operable to transmit and receive
communications over at least a portion of a communication
network;
a display operable to interact with a user; and
a processor cooperatively operable with the
communications port and the display, and configured to
facilitate:
interacting via the display with a user to manually select:
one patent application which is to be foreign filed, plural
countries of interest in which to file the one patent application,
and a registered member associate in each of the selected
countries of interest;
performing calculations to determine a binding estimate
for filing the patent application in each of the selected countries
of interest, depending on a number of pages in the patent
application and a number of claims in the patent application;
returning, for each of the selected countries of interest,
the binding estimate for the patent application that corresponds
precisely to an exact invoice; and
responsive to selection of a single button by the user at
the display, electronically directing the one patent application
and a request for filing over the communications port to the
selected registered member associate in each of the selected
countries; the binding estimate being binding on the selected
registered member associate in each of the selected countries in
response to the selection of the single button.
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Application 13/619,486
THE REJECTIONS
The Examiner rejected claims 1, 3, 7, 9, 13—15, and 17 under
35 U.S.C. § 103(a) as unpatentable over Franks (US 2003/0018484 Al; Jan.
23, 2003) and Official Notice. Final Act. 4—8.1
The Examiner rejected claims 2, 8, and 16 under 35 U.S.C. § 103(a)
as unpatentable over Franks, Official Notice, and Andrews (US 5,243,519;
Sept. 7, 1993). Final Act. 8.
The Examiner rejected claims 4—6, 10—12, and 18—20 under 35 U.S.C.
§ 103(a) as unpatentable over Franks, Official Notice, and Iwai (US
5,175,681; Dec. 29, 1992). Final Act. 8-11.
RELATED APPEALS
On page 2 of the Reply Brief, Appellant cites six related appeals, five
of which are cited on page 4 of the Appeal Brief. We decided the appeals in
two of those applications, where one application (10/229,273) involved
multiple appeals. See Ex parte Lee, No. 2009-010022 (BPAI Apr. 22, 2011)
(“Lee /’); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5, 2016) (“Lee IF),
reh ’g denied (PTAB Nov. 15, 2016). The appeal in Application 13/599,415
has also been decided. See Ex parte Lee, No. 2014-003734 (PTAB Mar. 2,
2017).
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 27, 2013 (“Final Act.”); (2) the Appeal Brief filed April 1, 2014
(“App. Br.”); (3) the Examiner’s Answer mailed May 30, 2014 (“Ans.”); and
(4) the Reply Brief filed July 30, 2014 (“Reply Br.”).
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Application 13/619,486
THE REJECTION OVER FRANKS AND OFFICIAL NOTICE
The Examiner finds that Franks discloses every recited element of
claim 1 except for (1) filing patent applications, and (2) performing
calculations to determine a binding estimate for filing a patent application
depending on the number of pages and claims in the application. Final Act.
4—6. The Examiner, however, finds that Franks’ system is not only capable
of filing patent applications, but determining the filing cost based on the
number of pages and claims in the application is well known in patent
prosecution as evidenced, for example, by the USPTO fee schedule. Final
Act. 4—7. Given these findings, the Examiner concludes that claim 1 would
have been obvious. Final Act. 6—7.
Appellant argues that Franks not only pertains to trademark—not
patent—applications, Franks’ system does not allow the user to manually
select (1) one patent application which is to be foreign filed; (2) countries of
interest in which to file the application; and (3) a registered associate in each
selected country. App. Br. 9-12; Reply Br. 3—8. According to Appellant,
step (3) must be performed after steps (1) and (2) under the terms of claim
1—an order of selection that Franks’ system is said to prevent, nor is there
any reason to modify Franks such that associates are selected manually after
selecting the application and countries as claimed. App. Br. 9—13; Reply Br.
3-8.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Franks and Official Notice collectively would have taught or suggested
an electronic filing system for determining the binding cost for foreign filing
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Application 13/619,486
a patent application, where the system comprises a processor configured to
facilitate interacting, via a display with a user to manually select (1) one
patent application which is to be foreign filed; (2) countries of interest in
which to file the application; and (3) a registered associate in each selected
country?
ANALYSIS
As noted above, claim 1 recites, in pertinent part, a processor
configured to facilitate interacting, via a display with a user to manually
select (1) one patent application which is to be foreign filed; (2) countries of
interest in which to file the application; and (3) a registered associate in each
selected country. Because the term “facilitate” is not defined in the
Specification, we interpret the term with its plain meaning, namely “to make
easy or easier.” Webster’s New World Dictionary 485 (3d College ed.
1988).
Notably, claim 1 is not directed to a method of performing steps
associated with the recited interaction, nor is the user part of the recited
system. Rather, claim 1 recites, in pertinent part, a processor configured to
facilitate (i.e., make easy or easier) the recited user interaction involving the
three recited selections. Cf Typhoon Touch Techs., Inc. v. Dell, Inc., 659
F.3d 1376, 1381—82 (Fed. Cir. 2011) (finding no error with a district court’s
interpreting a processor for executing a function that facilitated data
collection as requiring a device programmed or configured to perform that
function). To the extent that Appellant’s arguments are predicated on the
notion the steps associated with the recited functions must be actually
performed by a user or otherwise to satisfy the claim (see App. Br. 9-10;
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Reply Br. 3—8), such a requirement transforms the claim into an improper
hybrid claim that recites both apparatus and method limitations that would
be indefinite under § 112, second paragraph. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (noting that when a
claim recites both a system and a method for using that system, it is unclear
whether infringement occurs when (1) one creates a system that allows a
user to perform the recited method (i.e., change predicted transaction
information or accept a displayed transaction), or (2) the recited method
actually occurs (the user actually uses an input means to perform these
steps)); see also In re Katz Interactive Call Proc. Pat. Litig., 639 F.3d 1303,
1318 (Fed. Cir. 2011) (claims reciting an “interface means for providing
automated voice messages ... to certain of said individual callers, wherein
said certain of said individual callers digitally enter data” held indefinite
under § 112, second paragraph); Rembrandt Data Techs., LP v. AOL, LLC,
641 F.3d 1331, 1339 (Fed. Cir. 2011) (same for claims reciting (1) four
apparatus elements including a “trellis encoding means,” and (2) a final
element reciting “transmitting the trellis encoded frames”).
Although we construe claim 1 as limited to a processor configured to
facilitate the recited functions, but does not require actually performing the
steps corresponding to those functions, we nevertheless leave the issue of
whether claim 1 is indefinite as a hybrid claim to the Examiner to consider
in the event of further prosecution after this opinion. See MPEP
§ 2173.05(p)(II).
Turning to the rejection, claim 1 ’s processor-facilitated interaction
involves three manual selections, the latter of which selects a registered
associate in each selected country. Our emphasis on the term “selected” and
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its past tense highlights a key aspect of this dispute, namely whether the
processor must facilitate the user’s selecting the associate after selecting the
countries as Appellant contends. App. Br. 9-10; Reply Br. 3^4.
But even if facilitating this particular order was required by claim 1,
we still see no error in the Examiner’s reliance on Franks for teaching the
recited facilitated interaction limitation. It is undisputed that a user, namely,
a human operator at Frank’s host server 100, preselects associates in
different countries before a user at a customer terminal 108 selects the
countries in which to file a trademark application as noted in paragraph 86.
See App. Br. 12 (“Franks’ customer at customer terminal 108 cannot, after
selecting a country and patent application, select an associate for that
country because the associates for each country have already been selected
at the host server.'''’ (emphasis added)); see also Reply Br. 6, 8 (noting that
per-country associates are preselected in Franks).
Due to this preselection, then, when a user selects countries of interest
in which to file a trademark application at Franks’ customer terminal as
shown, for example, in Figure 7, that user effectively selects associates
corresponding to those selected countries. That is, when customers select
countries in Franks, they also select corresponding associates, albeit
predetermined associates. Therefore, we see no error in the Examiner’s
finding that Franks teaches a processor that would at least facilitate this
interactive selection.
That Franks pertains to filing trademark applications, and not patent
applications, does not change our conclusion. On this record, we see no
reason why Franks’ system could not also be used for other types of
intellectual property applications, including patent applications, as the
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Application 13/619,486
Examiner indicates. Ans. 5. On this record, then, we find that using Franks’
system to file patent applications instead of trademark applications would
have merely realized a predictable result, and would therefore have been an
obvious variation to an artisan at the time of Appellant’s invention. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).Nevertheless, even
assuming, without deciding, that Franks’ system would require some
modification to file patent applications in lieu of—or in addition to—
trademark applications, there is no persuasive evidence on this record that
such a modification would have been beyond the level of ordinarily skilled
artisans.
To be sure, the cost of filing a trademark application may not depend
on numbers of pages or claims as Appellant contends. App. Br. 13—14.
Nevertheless, the Examiner’s rejection is not based solely on Franks, but
also relies on Official Notice for the notion that page- and claim-based costs
associated with filing patent applications were well known in the art at the
time of Appellant’s invention. Final Act. 6—7; Ans. 5. We see no error in
this finding. Moreover, Appellant’s arguments regarding Frank’s individual
shortcomings regarding filing patent applications do not show
nonobviousness where, as here, the rejection is based on collective teachings
of Franks and Official Notice. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3, 7, 9, 13—15, and 17 not argued separately with
particularity.
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Application 13/619,486
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 2, 4—
6, 8, 10-12, 16, and 18—20. Final Act. 8—11. Because these rejections were
not argued separately with particularity, we are not persuaded of error in
those rejections for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1—20 under § 103.
DECISION
The Examiner’s decision rejecting claims 1—20 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)(l)(iv).
AFFIRMED
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