Ex Parte Lundberg

Patent Trial and Appeal Board

Sep 1, 2017

13408877 (P.T.A.B. Sep. 1, 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.
13/408,877 02/29/2012 Steven W. Lundberg 3431.027US1 2678
21186 7590 09/06/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
DANZIG, REVA R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/06/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG
Appeal 2016-007623
Application 13/408,8771
Technology Center 3600
Before JOHN A. JEFFERY, JUSTIN BUSCH, and
DANIEL N. FISHMAN, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 3—14, and 16—21. Claims 2 and
15 were canceled previously. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, but designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b). We enter an additional new ground of
rejection under 35 U.S.C. § 112, second paragraph.2
1 According to Appellant, the real party in interest is Black Hills IP
Holdings, LLC. App. Br. 2.
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011.
Appeal 2016-007623
Application 13/408,877
STATEMENT OF THE CASE
Appellant’s disclosed “embodiments of the present disclosure include
systems and methods for managing patent annuity fee payments.” Spec.
Abstract. Claim 1 is representative and reproduced below:
1. A computer-implemented method of managing patent
annuity fee payments, the method comprising using one or more
processors to:
provide a universal registry of patent matters comprising,
at least, a listing of patent matters representing a totality of all
patent matters registered at a national patent office in the names
of a plurality of applicants or assignees and for which respective
patent annuity fees are payable;
register customers of the registry as registered users of the
universal registry;
allow at least one registered user of the registry to search
the full registry and tag one or more patent matters in the registry
listing for payment of patent annuity fees;
provide notification to the at least one registered user when
another registered user initiates a change to a tag state of the one
or more tagged patent matters; and
provide, for at least one registered user, a direct annuity
payment conduit between a national patent office and the at least
one registered user for payment of annuity fees due on at least
one patent matter tagged by the registered user, wherein
providing a direct annuity payment conduit for the at least one
registered user includes identifying or establishing a payment
facility in the name of, or for the benefit of, the at least one
registered user that can be accessed or drawn down by a national
patent office.
Appellant did not identify any related appeals. See App. Br. 3.
However, we note that there are at least twenty-eight (28) related appeals,
which are:
Anneal No. Application No. Decided/Status
2
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Application 13/408,877
2009-005709 10/128,141
2009-006404 10/874,486
2011-009966 11/061,383
2012-004166 11/061,312
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
2016-000319 13/309,080
2016-000912 13/309,060
2016-001687 11/888,632
2016-002121 13/309,200
2016-002680 13/310,279
2016-002792 12/605,030
2016-006797 13/310,368
2016-007186 13/573,803
2016-007415 13/464,598
2016-007787 13/310,322
2016-008030 13/253,936
2017-000280 13/408,917
2017-000386 11/098,761
2017-002337 14/010,376
2017-003702 14/483,903
2017-003815 14/094,542
2017-004158 14/010,391
2017-004159 14/010,380
2017-004188 14/010,400
Decision mailed Mar. 23, 2010
Decision mailed Aug. 2, 2010
Decision mailed Jan. 31, 2014
Decision mailed Nov. 4, 2014
Decision mailed July 26, 2017
Decision mailed Sept. 23, 2016
Decision mailed June 1, 2016
Decision mailed May 27, 2017
Pending
Decision mailed Jan. 19, 2017
Pending
Pending
Pending
Pending
Decision mailed July 28, 2017
Decision mailed July 31, 2017
Decision mailed Aug. 3, 2017
Decision mailed Aug. 3, 2017
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
3
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2017-006390 13/409,189 Pending
2017-006642 13/310,452 Pending
REJECTIONS
Claims 1, 3—14, and 16—21 stand rejected under 35 U.S.C. § 101, as
being directed to non-statutory subject matter. See Final Act. 3.
Claims 1, 3—10, 13, 14, and 16—21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lundberg (US 2002/0091541 Al; July
11, 2002), Dennes (US 8,275,708 Bl; Sept. 25, 2012), and Reiss (US
2010/0191622 Al; July 29, 2010). See Final Act. ^U15.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lundberg, Dennes, Reiss, and Hahn-Carlson (US
2009/0265274 Al; Oct. 22, 2009). See Final Act. 16-17.
THE § 101 REJECTION
The Examiner finds that “the present claims are directed to the
fundamental economic practice of creating a contractual relationship to
mitigate the settlement risks of paying the annuity fees for selected patent
matters, which is considered to be an abstract idea” and are, therefore,
ineligible under § 101. Ans. 20. The Examiner adds the remainder of the
claims do not include significantly more than the abstract idea because the
generically-recited computer elements are routine and conventional, and
therefore do not add a meaningful limitation to the abstract idea. Ans. 21.
Appellant argues that the Examiner has failed to establish a prima
facie case of subject matter eligibility because (1) the Examiner has failed to
establish that the claims are directed to an abstract idea; (2) the Examiner
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has failed to establish that Appellant’s claims do not amount to significantly
more than an abstract idea; and (3) even assuming, arguendo, Appellant’s
claims are directed to an abstract idea, the elements of Appellant’s claims
amount to significantly more than an abstract idea. See App. Br. 7—11; see
also Reply Br. 2—3. Appellant argues various other recited limitations
summarized below.
ISSUE
Based on Appellant’s arguments in the Appeal Brief (App. Br. 7—11)
and Reply Brief (Reply Br. 2—3), the issue presented by Appellant’s
arguments is as follows:
Does the Examiner err in concluding claims 1, 3—14, and 16—21 are
directed to ineligible subject matter under § 101?
ANALYSIS
In Mayo Collaborative Services v. Prometheus Laboratories., Inc.,
566 U.S. 66, 71—73 (2012), the Supreme Court established an analytical
framework under § 101 to distinguish patents that claim patent-ineligible
laws of nature, natural phenomena, and abstract ideas—or add too little to
such underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. To determine whether claims are
patent eligible under § 101, we apply the Supreme Court’s two-step test
articulated in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).
Prima Facie Case
Appellant’s contention that the Examiner has failed to make a prima
facie case of unpatentability is unavailing. See App. Br. 7—11; Reply Br. 2—
3. At the outset, we note Appellant’s arguments effectively ask this panel to
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turn the (1) 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618 (Dec. 16, 2014) (“the 2014 Guidelines”); and (2) July 2015
Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015)
(“the 2015 Guidelines”) into a requirement that the Examiner must rely on
case law precedent. See App. Br. 7—9; Reply Br. 3. We decline to do so
because the 2015 Guidelines set forth no such requirement. Rather, the 2015
Guidelines (emphasis added) set forth the steps as “the examiner’s burden is
met... for example by providing a reasoned rationale that identifies the
judicial exception recited in the claim. . . . This rationale may rely, where
appropriate,... on the case law precedent^]”
Moreover, and contrary to Appellant’s contention that the Examiner
fails to provide an explanation regarding how and why Appellant’s claims
are similar to the concepts expressed in buySAFE, Inc. v. Google, Inc., 765
F.3d 1350 (Fed. Cir. 2014) and Alice, see Reply Br. 3, the Examiner refers to
buySAFE and Alice as cases representing fundamental economic practices
that include concepts similar to the present claims. Ans. 20 (referring to the
2015 Guidelines as instructing examiners to identify abstract ideas by
comparing the claims to the concepts found to be abstract in case law
precedent).
As the Federal Circuit has clarified,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
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seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Here, we find the Examiner’s rejection satisfies the initial burden of
production by identifying that “the present claims are directed to the
fundamental economic practice of creating a contractual relationship to
mitigate the settlement risks of paying the annuity fees for selected patent
matters, which is considered to be an abstract idea” (part 1 of the Alice
analysis), and that “the present claims do not include ‘significantly more’
because the generically-recited computer elements do not add a meaningful
limitation to the abstract idea as the actions, functions, and/or steps
performed by the generically-recited computer elements would be routine
and conventional in any computer implementations” (part 2 of the Alice
analysis). Ans. 20—21. Accordingly, the Examiner has set forth the
statutory basis for the rejection (a judicial exception to 35 U.S.C. § 101) and
explained the rejection in sufficient detail to permit Appellant to respond
meaningfully. Thus, we find that the Examiner set forth a prima facie case
of ineligibility.
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). Abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Alice, 134 S. Ct. at 2355—57. The “directed to” inquiry
cannot simply ask whether the claims involve a patent-ineligible concept,
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because essentially every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural phenomenon.
See Mayo, 566 U.S. at 71 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas.”). Rather, the “directed to” inquiry applies a stage-one filter to
claims, considered in light of the Specification, based on whether “their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
According to the Specification, the invention is directed to managing
patent annuity fee payments. Spec. Abstract. The “Summary” section of
Appellant’s Specification indicates the invention is an improvement to the
current handling of patent annuity fee payments. Spec. 13. Appellant’s
Specification discloses that, instead of having “various different annuity
payment services keep track of various different clients to handle payments
for those clients and their matters annuity payment services[,] ... a single
payment registry is provided, where there is just one representation of each
matter in any particular patent office.” Id.
Appellant argues the claims as a group. See App. Br. 7—11. We,
therefore, select independent claim 21 as the representative claim for this
group, and the remaining claims 1, 3—14, and 16—20 stand or fall with claim
21. 37 C.F.R. § 41.37(c)(l)(iv). Claim 21 requires, in essence, providing a
universal registry of patent matters, registering users of the universal
registry, allowing the registered users to search and tag patent matters in the
universal registry, providing notification when another registered user
changes a tag state, and providing a first annuity payment conduit for
payments of annuity fees. Here, the subject matter of claim 21, as
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reasonably broadly construed, is about an implied contractual relationship—
managing a patent annuity fee payment between a single payment registry
(e.g., a national patent office) and a registered user of the single payment
registry, which is merely managing a specific type of financial obligation.
Here, when reading claim 21 as a whole in light of the Specification, we
agree with the Examiner that the claimed invention is directed to a
fundamental economic practice. Similar to Bilski v. Kappos, 561 U.S. 593
(2010), which involved a method of entering into contracts to hedge risk in
commodity prices, and Alice, which involved methods and systems for
“exchanging financial obligations between two parties using a third-party
intermediary to mitigate settlement risk” {Alice, 134 S. Ct. at 2356), the
contractual relations at issue constitute “a fundamental economic practice
long prevalent in our system of commerce.” Bilski, 561 U.S. at 611; see
Alice, 134 S. Ct. at 2356, 2357. Therefore, the recited steps are directed to a
fundamental economic practice, that is, the activities associated with
managing a payment transaction, which is an abstract idea under the first
step of the analysis.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 21 is directed to an abstract idea, we “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78). The Supreme Court describes the second step of this analysis as
“a search for an inventive concept—i.e., an element or combination of
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elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.” Id.
(brackets in original) (internal quotations omitted). Limitations referenced
in Alice that may be enough to qualify as “significantly more” when recited
in a claim with an abstract idea include, as non-limiting or non-exclusive
examples: (1) improvements to another technology or technical field, id. at
2358 (citing the example of a mathematical formula applied in a specific
rubber molding process from Diamond v. Diehr, 450 U.S. 175, 177—78
(1981)); (2) improvements to the functioning of the computer itself, Alice,
134 S. Ct. at 2359; and (3) meaningful limitations beyond generally linking
the use of an abstract idea to a particular technological environment, id. at
2360 (noting that none of the hardware recited “offers a meaningful
limitation beyond generally linking ‘the use of the [method] to a particular
technological environment,’ that is, implementation via computers” (citing
Bilski, 561 U.S. at 610-11)).
Appellant specifically contends “providing] notification to the at least
one registered user when another registered user initiates a change to a tag
state of the one or more tagged patent matters” (the “disputed limitation”), as
recited in claim 21, is not “well-known, routine, or conventional.” App. Br.
10. Appellant contends the disputed limitation addresses the technical
problem of tracking user activity in large scale multi-user applications with
the disputed limitation as a technical solution. Id. at 11. Appellant further
argues that, because the disputed limitation “includes a server, with a
processor and a memory, running software operable on the processor,” a
generic computer is transformed into a specially programmed computer. Id.
(emphases omitted). We disagree.
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The only portion of the claimed method that could be considered
“technological” is the use of generic computer hardware, i.e., the claimed
server, with a processor and a memory, which is not enough to confer
subject matter eligibility. See Alice, 134 S. Ct. at 2358 (“[I]f a patent's
recitation of a computer amounts to a mere instruction to ‘implement] ’ an
abstract idea ‘on ... a computer,’ that addition cannot impart patent
eligibility.”). To the extent that the disputed limitation represents an
improvement to tracking user activity in large scale multi-user applications
as argued by Appellant, see App. Br. 11, we are not persuaded that the
improvement is to any technology, but rather an improvement to a general
economic practice.
Appellant further argues that the Examiner fails to provide a
discussion of the claims as an ordered combination, as BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed.
Cir. 2016) suggests is necessary for a proper analysis under step two of the
Alice/Mayo test. We disagree.
The Federal Circuit has held that a claim may pass the second step if
“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014). In BASCOM, the Federal Circuit found “the limitations of
the claims, taken individually, recite generic computer, network and Internet
components, none of which is inventive by itself,” but “an inventive concept
can be found in the non-conventional and non-generic arrangement of
known, conventional pieces.” BASCOM, 827 F.3d at 1349-50. Claim 21
recites generic components, such as “a network,” “a server,” “a processor,”
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and “a memory,” and Appellant does not provide any persuasive explanation
of how the recited ordered combination of these elements amounts to an
inventive concept that converts an abstract idea into patent-eligible subject
matter. The Examiner finds “the claimed invention is directed to non-
statutory subject matter because the claim(s) as a whole, considering all
claim elements both individually and in combination, do not amount to
significantly more than an abstract idea.” Ans. 2 (emphasis added); see also
Final Act. 3. On this record, then, the weight of the evidence supports the
Examiner’s conclusion.
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Therefore, we are not persuaded the Examiner erred in rejecting claim 21,
and claims 1, 3—14 and 16—20, not argued separately with particularity.
THE OBVIOUSNESS REJECTION OVER LUNDBERG, DENNES, AND
REISS
The Examiner finds that Lundberg, Reiss, and Dennes collectively
teach or suggest all recited elements of independent claims 1, 20, and 21.
Final Act. 4—7. Among other things, the Examiner finds that Lundberg
allows a registered user of a universal registry to tag one or more patent
matters for payment of patent annuity fees. Id. at 5. The Examiner also
cites Dennes for teaching a direct annuity payment conduit between a
national patent office and registered users for payment of annuity fees due
on patent matters. Id. at 6. Reiss is cited for teaching providing a
notification to the registered user when another registered user initiates a
change to a tag state of the tagged one or more patent matters. Id. at 7. The
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Examiner finds one of ordinary skill in the art would have been motivated to
combine Dennes and Lundberg to “assign[]any of the funding sources to an
automatic payment plan for any product or service,” and to include Reiss’s
notification with Lundberg and Dennes to “combin[e] the security of
monetary systems with the openness of computer network architecture.” Id.
at 6—7 (citing Reiss 1 5); Ans. 23—24.
Appellant argues that Reiss’s receipt or failure notice is a notification
of a future activity, not a notification that occurs at initiation of a change by
another user. Appellant concludes Reiss’s receipt or failure notice is not
temporally linked to the disputed limitation. App. Br. 12—13. Appellant
further argues the Examiner provides no rationale why or how a skilled
artisan would combine Reiss with Lundberg and Dennes to arrive at the
claimed invention apart from a conclusory and aspirational statement of
desired functionality provided by paragraph 5 of Reiss. Id. at 13.
ISSUE
Based on Appellant’s arguments, App. Br. 3—5; Reply Br. 2—3, the
issues presented by Appellant’s arguments are as follows:
I. Does the Examiner err in finding the combination of Lundberg,
Dennes, and Reiss teaches or suggests providing notification to at least one
registered user when another registered user initiates a change to a tag state
of one or more tagged patent matters, as recited in independent claims 1, 20,
and 21?
II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?
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ANALYSIS
Claims 1, 3—14, and 16—19
To resolve the question of patentability under § 103, we begin by
construing claim 1. During examination, claims are given their broadest
reasonable interpretation consistent with the specification. See In re Am.
Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, the
disputed limitation of claim 1 recites: “provide notification to the at least one
registered user when another registered user initiates a change to a tag state
of the one or more tagged patent matters.” App. Br. 15 (Claims App’x)
(emphasis added).
In accord with our precedent, the disputed limitation of claim 1 need
not be satisfied. See Ex Parte Schulhauser, Appeal 2013-007847,
2016 WL 6277792, at *3—5 (PTAB Apr. 28, 2016) (precedential) (holding
that in a method claim, a step reciting a condition precedent does not need to
be performed if the condition precedent is not met). Although the
limitations at issue in Schulhauser were rendered conditional by the
recitation of “if’ (see id. at 6—8), we discern no meaningful distinction
between the recitation of “if’ and “when” in this context. Indeed, one
dictionary definition of “when” is “in the event that: on condition that: IF.”
Merriam-Webster’s Third New Int’l Dictionary of the English
Language 2602 (2002). Accordingly, we construe “when” to be
synonymous with “if’; therefore, the term “when” in the context of claim 1
renders the disputed limitation conditional.
Turning to the rejection, we find Appellant’s argument that Reiss does
not teach or suggest the disputed limitation of claim 1 (App. Br. 11—13;
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Reply Br. 3) unavailing because the disputed limitation of claim 1 need not
be satisfied as discussed above.
We also find no error in the Examiner’s reason to combine Reiss
(Final Act 7; Ans. 24)—proposed enhancements to the combination of
Lundberg and Dennes that, as noted above, predictably use prior art
elements according to their established functions to yield a predictable
result. See KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Despite Appellant’s arguments to the contrary (App. Br. 13; Reply Br. 5—6),
the Examiner’s reason to combine Reiss is not based solely on impermissible
hindsight, but rather supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion. Combining
the security of monetary systems with the openness of computer network
architecture, as stated by the Examiner (Final Act 7; Ans. 24), overcomes a
lack of trust between parties sending and receiving electronic funds. For
example, we find it would have been obvious to one of ordinary skill in the
art at the time the invention was made for Reiss’s notification of a tag state
change to be incorporated with Lundberg and Dennes’ method of managing
patent annuity fee payments to (1) monitor insufficient funds, overdrawn
credit, or fraud; and (2) provide customer service by allowing the payor
and/or payee to know whether the attempted transaction is completed.
For the above reasons, we affirm the Examiner’s rejection of
independent claim 1. Although the overall thrust of our analysis is the same
as the Examiner’s reasoning, we have provided additional explanations not
provided by the Examiner. Accordingly, in the interest of giving Appellant
a full and fair opportunity to respond, we designate our affirmance as a new
ground of rejection to the extent it relies on new underpinnings in support of
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the proffered reason. Appellant makes no further substantive arguments
with respect to claims 3—14 and 16—19, which ultimately depend from
independent claim 1; therefore, we also affirm the Examiner’s rejection of
those claims for the same reasons discussed above.
Claims 20 and 21
We also sustain the Examiner’s rejection of independent claims 20
and 21, which recite limitations similar to those in independent method
claim 1 (including the disputed limitation), but are directed to hardware to
perform the method of independent claim 1. The broadest reasonable
interpretation of an apparatus claim with hardware that performs a function,
which only needs to occur if a condition precedent is met, still requires
structure for performing the function should the condition occur.
Schulhauser, 2016 WL 6277792, at *14—15. Therefore, claims 20 and 21
have different scope than method claim 1 because the structure, namely the
hardware configured to perform the recited function, is required regardless
of whether the function is actually performed.
On this record, we see no error in the Examiner’s obviousness
rejection of claim 20. In the rejection, the Examiner relies on Lundberg for
teaching many elements of claim 20, including allowing a registered user of
a universal registry to tag patent matters for payment of patent annuity fees.
Final Act. 5 (citing Lundberg || 7, 18). We agree with the Examiner’s
findings and adopt them as our own. Lundberg’s user builds a user portfolio
database by retrieving a set of patents from a source database of patents
issued by a national patent office. Lundberg 17. Appellant’s Specification
does not define what it means to “tag.” We, therefore, construe the term
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“tag” in accordance with its plain meaning, namely “to provide or mark
with.” Merriam-Webster’s Collegiate Dictionary 1196 (10th ed.
1999) (verb def. la). Thus, by placing the patent in the user’s portfolio
database, the patent is marked, and thereby “tagged.”
Lundberg’s user may view the patents in the user portfolio database
and “be allowed to elect to pay or not pay annuities or maintenance fees.”
Lundberg 118. Accordingly, Lundberg at least suggests (1) the user’s
tagging is “for payment of patent annuity fees,” as claimed; and (2) the
payment of patent annuity fees is made to an entity (e.g., a national patent
office or one of its employees) other than the user. The national patent
office or one of its employees who receives the payment would also be a
user of the universal registry in order to update the payment status upon
receiving a valid payment. Appellant’s Specification does not define a
“user.” We, therefore, construe the term “user” in accordance with its plain
meaning, namely “[a]ny person or any thing that may issue or receive
commands and messages.” IBM Dictionary of Computing 722 (10th ed.
1994). Accordingly, because the payment of patent annuity fees is a
command and message, the other entity (e.g., a national patent office)
intended to receive the payment of patent annuity fees at least suggests
another registered “user.” The Examiner acknowledges that Lundberg’s
registered user is not notified when another registered user initiates a change
to a tag state of the tagged patent matters, but cites Reiss for teaching the
notification. Final Act. 6—7 (citing Lundberg || 5, 12).
Appellant’s argument that Reiss’s receipt or failure notice is a
notification of a future activity, not a notification that occurs at initiation of
a change by another user is unavailing and not commensurate with the scope
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of claim 20. See App. Br. 12—13. The disputed limitation from claim 20
recites “provide notification to the at least one registered user when another
registered user initiates a change to a tag state of the one or more tagged
patent matters.” As discussed above, “when” is “in the event that: on
condition that: IF.” Merriam-Webster’s Third New Int’l Dictionary
of the English Language 2602 (2002).
Reiss is generally directed to conducting a transaction. Reiss,
Abstract. Reiss discloses that to complete the transaction between a payor
and payee, the payor’s authentication information is sent to the payee’s
funding target for approval. Reiss 110. Reiss further discloses that “[u]pon
approval, instructions are sent to initiate a transfer of funds from a funding
source associated with the payor to the funding target.” Id. Paragraph 12 of
Reiss, as relied upon by the Examiner, discloses:
An authenticated receipt or failure notice (the latter, if the
transaction is declined for any reason by the funding source) may
be sent at least to the payor and the payee, either or both of which
may use the receipt to update their accounting information, such
as within their accounting software.
Id. 112. Thus, Reiss’s receipt or failure notice is a notification sent to the
payor, and is initiated in the event that (i.e., “when”) the payee approves or
declines a transaction. Accordingly, it is the combination of Lundberg and
Reiss that teaches or suggests providing notification to Lundberg’s
registered user when another registered user (e.g., a national patent office or
one of its employees) initiates a change to a tag state of the tagged one or
more patents (i.e., initiates a transaction to indicate acceptance or denial of a
payment).
Therefore, we are not persuaded the Examiner erred in rejecting claim
20, as well as claim 21, not argued separately with particularity. To the
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extent our analysis may supplement or augment the Examiner’s reasoning,
and in the interests of giving Appellant a full and fair opportunity to
respond, we designate our affirmance of this § 103 rejection as a new ground
of rejection.
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejections of claims 11
and 12. Final Act. 16—17. Because these rejections are not argued
separately with particularity, we are not persuaded of error in those
rejections for the reasons previously discussed.
NEW REJECTION UNDER 35 U.S.C. § 112,12
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). We reject claims 1, 3—14, and 16—21 under 35 U.S.C.
§ 112,12 as being indefinite. “A claim is indefinite if its legal scope is not
clear enough that a person of ordinary skill in the art could determine
whether a particular composition infringes or not.” Geneva Pharms., Inc. v.
GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003).
Independent claims 1, 20, and 21 each recite, in relevant part:
[a] allow at least one registered user of the registry to search
the full registry and tag one or more patent matters in the registry
listing for payment of patent annuity fees;
[b] provide notification to the at least one registered user when
another registered user initiates a change to a tag state of the one
or more tagged patent matters; and
[c] provide, for at least one registered user, a direct annuity
payment conduit between a national patent office and the at least
one registered user for payment of annuity fees due on at least
one patent matter tagged by the registered user, wherein
providing a direct annuity payment conduit for the at least one
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registered user includes identifying or establishing a payment
facility in the name of, or for the benefit of, the at least one
registered user that can be accessed or drawn down by a national
patent office.
App. Br. 15, 19-20 (Claims App’x) (emphasis added).
It is unclear whether “the at least one registered user” of step [c] is the
at least one registered user introduced in step [a], the another registered user
introduced in step [b], or the at least one registered user newly introduced in
step [c]. Similarly, it is unclear whether “the registered user” of step [c] is
the at least one registered user introduced in step [a], the another registered
user introduced in step [b], or the at least one registered user newly
introduced in step [c].
Accordingly, we find the independent claims indefinite because they
are amenable to at least three plausible claim constructions discussed above
for each of “the at least one registered user” and “the registered user” of step
[c]. Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAINov. 19, 2008)
(precedential) (holding that when a claim is amenable to two or more
plausible claim constructions, the claim is unpatentable under 35 U.S.C.
§112, second paragraph, as indefinite).
DECISION3
We affirm the Examiner’s decision to reject claims 1, 3—14, and lb-
21 under 35 U.S.C. § 101.
3 We leave it to the Examiner to determine whether independent claim 20
meets the requirements of 35 U.S.C. § 112, || 1, 6. In particular, we leave
the following questions to the Examiner:
(1) Whether or not the phrase “one or more processors to:” is a
generic placeholder for “means for” and invoke 35 U.S.C. § 112, sixth
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We affirm the Examiner’s decision to reject claims 1, 3—14, and 16—
21 under 35 U.S.C. § 103, but designate our affirmance as a new ground of
rejection.
We enter a new ground of rejection for claims 1, 3—14, and 16—21
under 35 U.S.C. § 112,12 as being indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
paragraph. See Manual of Patent Examining Procedure (MPEP)
§ 2181(1), 9th ed., Rev. 07.2015 (Nov. 2015).
(2) If the Examiner determines claim 20 invokes 35 U.S.C. § 112,
sixth paragraph, whether claim 1 is a single means claim and subject
to an enablement rejection under 35 U.S.C. § 112, first paragraph.
See MPEP § 2164.08(a).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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Application 13/408,877
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under §41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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.
§ 41.50(f).
AFFIRMED; 37 C.F.R, § 41.50(b)
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