Ex Parte Lundberg

Patent Trial and Appeal Board

Jul 26, 2017

13573803 (P.T.A.B. Jul. 26, 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.
13/573,803 10/03/2012 Steven W. Lundberg 3431.002US2 1607
21186 7590 07/28/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
TROTTER, SCOTT S
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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 2016-007186
Application 13/573,803
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, 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. We also enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
STATEMENT OF THE CASE
Appellant’s invention is a patent management system that includes
tools to help the parties involved in the patenting process make decisions.
The tools may provide patent analytics information to facilitate prosecution
of a patent manner by extracting and analyzing data from external patent
databases. See generally Spec. 13—14. Claim 1 is illustrative:
Appeal 2016-007186
Application 13/573,803
1. A method comprising:
storing in a database, a plurality of patent entries,
wherein a patent entry of the plurality of patent entries includes
data fields for a payment due date and a payment amount
associated with a fee due;
associating a primary contact and at least one secondary
contact with the patent;
receiving contact information for the primary contact and
contact information for the at least one secondary contact;
determining, using at least one processor, if the primary
contact is available by periodically contacting the primary
contact using the contact information for the primary contact
before the payment due date; and
when it is determined the primary contact is not
available:
contacting a secondary contact of the at least one
secondary contact to retrieve updated contact information
for the primary contact; and
when it is determined the primary contact is available:
storing an indication in the database that the
contact information for the primary contact is up-to-date.
RELATED APPEALS
Appellant did not identify any related appeals. See App. Br. 3.
However, there are at least twenty-eight (28) related appeals, which are:
Appeal No. Application No. Decided/Status
2009-005709
2009-006404
2011- 009966
2012- 004166
2015-000319
10/128,141
10/874,486
11/061,383
11/061,312
13/309,080
Decision mailed Mar. 22, 2010
Decision mailed July 30, 2010
Decision mailed Jan. 29, 2014
Decision mailed Oct. 31, 2014
Decision mailed May 27, 2016
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2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
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
2016-007415 13/464,598
2016-007623 13/408,877
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
2017-006390 13/409,189
2017-006642 13/310,452
Pending
Decision mailed Sept. 21, 2016
Decision mailed June 1, 2016
Pending
Decision mailed Jan. 17, 2017
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
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Application 13/573,803
THE REJECTIONS
The Examiner rejected claims 1—20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3.1
The Examiner rejected claims 1—5, 7—12, and 14—19 under 35 U.S.C.
§ 103(a) as unpatentable over Brudz (US 2004/0044688 Al; Mar. 4, 2004)
and Palahnuk (US 2009/0157717 Al; June 18, 2009). Id. at 3-13.
The Examiner rejected claims 6, 13, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Brudz, Palahnuk, and Lewis (US 2011/0320582 Al;
Dec. 29,2011). Id. at 13.
THE § 101 REJECTION
The Examiner finds that the claims are directed to the abstract idea of
maintaining contact information. Final Act. 3. According to the Examiner,
maintaining contact information is a method of organizing human activities.
Id. at 2. The Examiner further finds that the additional elements in the
claims other than the abstract idea amount to no more than the technological
environment used to maintain those contacts. Id. at 3.
Appellant argues that the claimed invention is not directed to an
abstract idea as the Examiner asserts. App. Br. 9-10; Reply Br. 2-4.
According to Appellant, the Examiner fails to meet the basic requirements
for establishing a prima facie case of subject matter ineligibility.
App. Br. 10. Specifically, Appellant argues the Examiner does not adhere to
1 Throughout this opinion, we refer to (1) the Final Rejection mailed April 7,
2015 (“Final Act.”); (2) the Appeal Brief filed December 29, 2015 (“App.
Br.”); (3) the Examiner’s Answer mailed May 13, 2016 (“Ans.”); and (4) the
Reply Brief filed July 13, 2016 (“Reply Br.”).
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the July 2015 Update on Subject Matter Eligibility ( “Guidelines”) for
presenting a rejection under 35 U.S.C. § 101 because the Examiner does not
identify a recognized judicial exception recited in the claims nor any
rationale to support that the claims are directed to an abstract idea. Id. at 9
(citing Guidelines 6). Appellant further contends that the Examiner fails to
analyze the additional elements of the claims, and fails to provide a
reference or an affidavit (if relying on personal knowledge) to support an
allegation that the additional elements of claims 1—20 are well-known,
routine, or conventional. Id. at 10 (citing Guidelines 7).
ISSUES
I. Has the Examiner met the basic requirements for establishing a
prima facie case of subject matter ineligibility under § 101?
II. Has the Examiner erred in rejecting claim 1 by concluding that the
method of generating patent prosecution analytics is directed to ineligible
subject matter under § 101? This issue turns on whether the claimed
invention is directed to a patent-ineligible abstract idea and, if so, whether
elements of the claim—individually and as an ordered combination—
transform the nature of the claim into a patent-eligible application of that
abstract idea.
ANALYSIS
Prima Facie Case
Appellant’s contention that the Examiner fails to make a prima facie
case of ineligibility is unavailing. The Guidelines recite:
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For subject matter eligibility, the examiner’s burden is met by
clearly articulating the reason(s) why the claimed invention is
not eligible, for example by providing a reasoned rationale that
identifies the judicial exception recited in the claim and why it
is considered an exception, and that identifies the additional
elements in the claim (if any) and explains why they do not
amount to significantly more than the exception. This rationale
may rely, where appropriate,... on the case law precedent^]
July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015); see also 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74,618 (Dec. 16, 2014).
Contrary to Appellant’s position that the Examiner does not identify a
recognized judicial exception recited in the claims nor any rationale to
support that the claims are directed to an abstract idea, the Guidelines set
forth no such requirement. Rather, the Guidelines (emphasis added) set
forth the argued steps as “the examiner’s burden is met. . .for example [by
performing the argued steps].” The essence of Appellant’s argument
effectively asks this panel to turn this Guidelines example into a
requirement. We decline to do so. Further, Appellant’s contention that the
Guidelines require a reference or an affidavit (if relying on personal
knowledge) to show claim elements as well-known, routine, or conventional
(App. Br. 9—10) is unavailing. Alice does not stand for the proposition that
Examiners must provide evidentiary support in every case before concluding
that a claim is directed to an abstract idea. There is no such requirement.
Rather, we recognize that 35 U.S.C. § 132 sets forth a more general
prima facie notice requirement, and we review Appellant’s associated
arguments under that standard. As the Federal Circuit has clarified,
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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 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).
According to Jung, to present a prima facie case, the Examiner needs to
provide Applicant with information sufficient to address the rejection. Id.
Here, the Examiner finds that claim 1 is directed to an abstract idea
because its scope encompasses maintaining contact information as a form of
organizing human activities (Final Act. 3; see also Ans. 11) (part 1 of the
Alice analysis), and that the additional elements in the claims amount to no
more than the technological environment used to maintain the contact
information (Final Act. 3; see also Ans. 11) (part 2 of the Alice analysis).
Thus, we find the Examiner has notified Appellant, stating the reasons for
the rejection together with such information as may be useful in judging the
propriety of continuing prosecution of the application. 35 U.S.C. § 132.
Therefore, the Examiner established a prima facie case of ineligibility
that has not been persuasively rebutted. See Jung, 637 F.3d at 1362—63.
Given the Examiner’s undisputed findings in the rejection of claims 1—20
under § 101, for that reason alone, we see no error.
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Alice’s Two-Step Test
In Mayo Collaborative Services v. Prometheus Laboratories., Inc.,
132 S. Ct. 1289, 1294 (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 that
fall within one of the statutory categories (i.e. machine, manufacture,
process, or composition of matter) are patent eligible under § 101, we apply
the Supreme Court’s two-step test articulated in Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347 (2014). Claim 1 is directed to a method, so we
apply the Alice two-step test. First, we determine whether the claims are
directed to a patent-ineligible concept: laws of nature, natural phenomena,
and abstract ideas. Id. at 2354—55. Following the Court’s guidance, we turn
to the first step of the Alice analysis to determine if the claim is directed to
one of the judicial exceptions, i.e., an abstract idea. If so, we then proceed to
the second step and examine the elements of the claim—both individually
and as an ordered combination—to determine whether the claim contains an
“inventive concept” sufficient to transform the claimed abstract idea into a
patent-eligible application. Id. at 2357.
Alice Step One
Under step one of Alice step, “[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). The “directed to”
inquiry cannot simply ask whether the claims involve a patent-ineligible
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concept, because essentially every routinely patent-eligible claim involving
physical products and actions involves a law of nature and/or natural
phenomenon. See Mayo, 132 S. Ct. at 1293 (“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); see Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369,
1375 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016).
Here, when reading the claims as a whole in light of the Specification,
we agree with the Examiner that the claimed invention is directed to
maintaining up-to-date contact information. According to the Specification,
the invention is directed to an annuity management system. Spec. 114. The
Specification explains that it is important to have up-to-date contact
information for an entity responsible for paying an annuity, and so the
annuity management system provides tools to keep contact information up-
to-date. Id. The illustrative embodiment provides the subject matter from
claim 1. See id. H 69—70; Fig. 6.
Appellant argues the claims as a group. See App. Br. 9-10. We,
therefore, select claim 1 as the representative claim for this group, and
claims 2—20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1 is directed to a method and recites four steps: (1) storing
patent entry information; (2) associating primary and secondary contact
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information; (3) gathering contact information for the primary and secondary
contacts; and (4) determining whether the primary contact is available to
maintain the primary contact’s contact information. Each of these steps
involves various forms of contact information that is associated, gathered,
and maintained—a building block of human ingenuity, like methods of
organizing human activity. See Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). Therefore, the
recited steps are directed to a method of organizing human activities, that is,
the activities associated with maintaining up-to-date contact information,
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 1 is directed to an abstract idea, the claims must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to “significantly more” than the abstract idea itself. Alice, 134 S.
Ct. at 2357.
That claim 1 adds “using at least one processor” to perform the
determining step in claim 1 does not change our conclusion. Nor does the
claimed invention improve the computer’s functionality or efficiency, or
otherwise change the way the computer functions. Cf. Enfish, 822 F.3d at
1335. Rather, claim 1 recites nothing more than using a generic computer to
contact a primary contact to determine whether the primary contact is
available. But merely reciting a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention. See Alice, 134 S. Ct.
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at 2358. In other words, merely reciting an abstract idea while adding the
words “apply it with a computer” does not render an abstract idea non­
abstract: there must be more. See id. at 2358. “[Ajfter Alice, there can
remain no doubt: reciting 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, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014) (internal citations and quotation marks omitted).
We reach the same conclusion despite claim 1 reciting a “database”
from which patent entries, including data fields for a payment due date and a
payment amount associated with a fee due, are stored. “Purely
‘conventional or obvious’ ‘[pre]-solution activity’ is normally not sufficient
to transform an unpatentable law of nature into a patent-eligible application
of such a law.” Mayo, 132 S. Ct. at 1298 (brackets in original)
(citing Parker v. Flook, 437 U.S. 584, 590 (1978)). Such a data gathering
step is insignificant extra-solution activity that is insufficient to render the
claim patent-eligible. See In re Bilski, 545 F.3d 943, 962—63
(Fed. Cir. 2008), aff’d on other grounds, 561 U.S. 593 (2010).
Appellant’s contention that the § 101 analysis is tied to the outcome of
prior art rejections (e.g., § 103) is unavailing. Reply Br. 4 (citing B as com,
827 F.3d at 1341). Controlling precedent makes clear that § 101 is a
threshold inquiry separate from §§102 and 103. Bilski, 561 U.S. at 962;
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1064
(Fed. Cir. 2011) (applying Bilski). Indeed, as found by the Supreme Court in
Diehr, “[t]he question therefore of whether a particular invention is novel is
‘wholly apart from whether the invention falls into a category of statutory
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subject matter.”’ Diamond v. Diehr, 450 U.S. 175, 190 (1981) (quoting In
re Bergy, 596 F.2d 952, 961 (CCPA 1979)) (emphasis omitted); accord
Bilski, 561 U.S. at 962.
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, 132 S. Ct. at 1298).
Therefore, we are not persuaded that the Examiner erred in rejecting claim 1,
and claims 2—20 not argued separately with particularity.
THE OBVIOUSNESS REJECTION OVER BRUDZ AND PALAHNUK
Regarding claim 1, the Examiner finds that Brudz discloses every
recited element of claim 1 except for verifying contact information. See
Final Act. 4—5. The Examiner further finds Palahnuk teaches other email
addresses associated with a contact such as a secretary or co-worker. Id. at
2. The Examiner explains that a message may be sent to more than one
account depending on who picks the email addresses to which messages are
sent. Id.
Appellant argues that Brudz does not teach or suggest contacting a
secondary contact to retrieve updated contact information for a primary
contact. App. Br. 10-12; Reply Br. 4—5. According to Appellant, Palahnuk
discloses updating the single contact’s contact information by sending a
message to the single contact, but does not disclose that an alternate e-mail
address is from a different person. App. Br. 11—12 (citing Palahnuk || 5—6,
12).
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Bradz and Palahnuk collectively would have taught or suggested
contacting a secondary contact to retrieve updated contact information for a
primary contact?
ANALYSIS
Claims 1—5 and 7
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). “Construing
claims broadly during prosecution is not unfair to the applicant. . . because
the applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id.
Here, the body of claim 1 recites, in pertinent part, determining if a
primary contact is available by periodically contacting the primary contact
using contact information. The two limitations following this initial
condition specify two possible outcomes of the recited determination,
namely when it is determined the primary contact is not available (the first
conditional limitation) and when it is determined the primary contact is
available (the second conditional limitation). Indeed, these are the only two
possibilities of the recited determination: either the primary contact is
available or not.
These possibilities recited in claim 1 ’s two “when” clauses are
conditional limitations. See Ex parte Schulhauser, No. 2013-007847, slip
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op. at 9—10 (PTAB Apr. 28, 2016) (precedential).2 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 recitations
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, in this context, we construe “when” to be synonymous with
“if’; therefore, the term “when” in the context of claim 1 renders the
associated limitations conditional.
To be sure, there are only two possibilities of claim 1 ’s determination
despite the fact that these two possibilities are conditional due to their
respective “when” clauses. That is, one condition must occur from these
two possibilities. But because only one condition must occur from the
recited determination, only one condition need be satisfied to meet claim 1—
not both.
Turning to the rejection, it is undisputed that the cited prior art teaches
the second conditional limitation. See Final Act. 5; see also App. Br. 10-12
(arguing the first conditional limitation). Given the Examiner’s undisputed
findings, we see no error in the Examiner’s rejection of claim 1 regardless of
whether Brudz and Palahnuk teach the first conditional limitation because
claim 1 is rendered unpatentable by, among other things, the cited prior art
satisfying the second conditional limitation. See Schulhauser at 9—10. For
that reason alone, Appellant’s arguments regarding the prior art’s alleged
2 This decision is available at the Board’s web site at
https://www.uspto.gov/patents-application-process/appealing-patent-
decisions/decisions-and-opinions/precedential.
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shortcomings pertaining to only the first conditional limitation are not
commensurate with the scope of the claim and, therefore, do not
persuasively rebut the Examiner’s findings and conclusions regarding the
second conditional limitation.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, as well as claims 2—5 and 7, not argued separately with
particularity.
Claims 8—12 and 14^19
We will not, however, sustain the Examiner’s rejection of independent
claim 8 that recites limitations similar to those in independent method claim
1, including the first and second conditional limitations. Claim 8, is directed
to a product, namely a non-transitory computer-readable medium including
instructions that, when executed by at least one process, configure the at
least one processor to perform the method of independent claim 1. Nor do
we sustain the Examiner’s rejection of independent apparatus claim 15 that
recites limitations similar to those in independent method claim 1, including
the first and second conditional limitations.
The broadest reasonable interpretation of a product or apparatus claim
with structure that performs a function that need only occur if a condition
precedent is met, still requires structure for performing the function should
the condition occur. See Schulhauser at 14—15. Therefore, our
interpretation of product claim 8 or apparatus claim 15 differs from method
claim 1 because the structure, namely the hardware configured to perform
the recited functions, is present in the system regardless of whether the first
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and second conditional limitations are met and the function is actually
performed.
Regarding the first conditional limitation, the Examiner finds that
Brudz collects multiple contacts for a single patent application. Final Act. 7
(citing Brudz H 91, 98); see also Ans. 16. As shown in Figure 6 of Brudz,
contact name data box 400 “includes at least one of a list of inventors, an
outside attorney responsible for the prosecution of the disclosure, and an in-
house attorney responsible for managing the prosecution of the disclosure.”
Brudz 191. A contact may also be added to the Contact list by clicking an
Add One Here link. Id. ]f 98.
The Examiner’s reliance on paragraphs 5, 6, and 12 of Palahnuk to
cure Brudz’s deficiency (Final Act. 8; Ans. 15—16) is unavailing. Although
paragraph 5 of Palahnuk sends an email with a link to a webpage to a contact
upon determining the contact has not received an initial email, a secondary
contact is not contacted to retrieve updated contact information for the
contact. Further, although paragraph 12 of Palahnuk updates contact
information from a contact’s response to a greeting event, no determination
is made as to whether the contact received the email or not, much less
contacting a secondary contact to retrieve updated contact information for
the contact upon the determination. Instead, we agree with Appellant that
the cited references do not teach or suggest, upon determining a primary
contact is not available, contacting a secondary contact of the at least one
secondary contact to retrieve updated contact information for the primary
contact. App. Br. 12.
We reach this conclusion even assuming, without deciding, that it
would have been obvious to enter a secretary in addition to the other case-
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related contacts (i.e., attorneys and inventors) in Brudz’s contact name data
box 400 in Figure 6 and paragraph 91 as the Examiner seems to suggest.
See Ans. 15—16 (finding that a secretary can be used if desired). Even if a
secretary is entered in this box (a finding that is unsupported on this record),
there is still no evidence on this record proving that the secretary is a
“secondary contact,” let alone that this “secondary contact” would be
contacted when it is determined that the primary contact is unavailable as
claimed. To the extent that the Examiner finds otherwise, such a theory is
unsubstantiated on this record and, therefore, untenable.
Therefore, we are persuaded that the Examiner erred in rejecting
independent claims 8 and 15, and dependent claims 9—12, 14, and 16—19 for
similar reasons. Because this issue is dispositive regarding our reversing the
Examiner’s rejection of these claims, we need not address Appellant’s other
associated arguments.
THE REJECTION OVER BRUDZ, PALAHNUK, AND LEWIS
Claim 6
We will, however, sustain the Examiner’s rejection of claim 6.
Claim 6 depends from claim 5 (which depends from independent claim 1)
and recites determining that the primary contact is unavailable when a social
network account (as included in the primary contact’s contact information)
has not been updated for a period of time.
Despite Appellant’s arguments to the contrary (App. Br. 13;
Reply Br. 5), we see no error in the Examiner’s reliance on Lewis’ parked
accounts. Final Act. 13; Ans. 16; Lewis Tflf 10, 11, 13, 37. Appellant asserts
Lewis infers deleting an account based on inactivity for a period of time, but
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argues the inference is not the same as the subject matter recited in claim 6.
App. Br. 13.
Lewis is directed to an online presence management (OPM) system
that manages parking accounts on websites such as social networking sites.
Lewis, Abstract. By “parking,” an account is kept active so that it remains
in existence until such time the account’s user “decides it is no longer
desired.” Lewis 13. Therefore, Lewis at least suggests determining that an
account’s user is unavailable when the account user decides the account is
no longer desired. Notably, nothing in claim 6 precludes the recited
unavailability from being when Lewis’s account user decides the account is
no longer desired, particularly in light of the plain meaning of the term
“unavailable” which is “[n]ot available, accessible, or at hand” (The
American Heritage Dictionary 1941 (2d College ed. 1985)), and
“available” which is “[pjresent and ready for use; at hand; accessible”
{id. at 127). Until Lewis’ account user decides the account is no longer
desired, Lewis’s OPM system maintains the account active by changing
passwords, periodic access or fee payment, or other periodic maintenance
imposed by the social networking site. Lewis 137. Therefore, Lewis at
least suggests determining that an account’s user (the claimed “primary
contact”) is unavailable when a social network account (as included in the
primary contact’s contact information) has not been updated for a period of
time.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 6.
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Claims 13 and 20
Claims 13 and 20 depend from claims 8 and 15, respectively—the
rejection of which we find problematic, as noted previously. Because the
Examiner has not shown that Lewis cures those deficiencies, we will not
sustain the Examiner’s rejection of claims 13 and 20.
NEW GROUND OF REJECTION
Under 37 C.F.R. § 41.50(b), we enter the following new ground of
rejection. Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brudz and Palahnuk. We incorporate the Examiner’s
rejection of claims 8 and 15 for Brudz’s disclosure of all elements of the
claim except for the determining step and the first and second conditional
limitations.
Palahnuk is directed to a contact aggregator that imports contacts from
existing databases, harvests additional contact information, and maintains
the contact information. Palahnuk, Abstract. Palahnuk’s harvesting
involves periodically examining a contact database to determine whether
contact information is incomplete, out of date, or in error. Id. 147. Figure 6
of Palahnuk illustrates that upon receiving incomplete contact information
(610), the process sends an email to the contact with a link to a website for
the contact to visit and provide any missing or updated information (620).
Id. 58—60; Fig. 6. Palahnuk discloses that if the contact has visited the
website and provided the missing or updated information, the contact
database is updated with the provided information (630). Id. 160. If the
contact has not visited the website over a specified time period (635), and no
other contact information is attainable (640), then the process notifies the
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user that the contact’s contact information is bad or incomplete (660). Id.
1 63. Palahnuk’s process also inquires if the user has additional contact
information for the contact. Id.
Accordingly, we find Palahnuk teaches or suggests the determining
step, and the first and second conditional limitations of independent claims 8
and 15. That is, Palahnuk teaches or suggests:
determining, using at least one processor, if the primary
contact [(the claimed “primary contact”)] is available by
periodically contacting the contact [(by periodically examining
the contact’s contact information)] using the contact
information for the primary contact. . . ; and when it is
determined the primary contact is not available: contacting a
secondary contact [(the claimed “secondary contact”)] of the at
least one secondary contact to retrieve updated contact
information for the primary contact; and when it is determined
the primary contact is available: storing an indication in the
database that the contact information for the primary contact is
up-to-date.
We conclude that it would have been obvious to an ordinarily skilled
artisan for Brudz’s contact to be contacted in the manner taught by Palahnuk
“to automatically gather, organize, and maintain user contact information.”
Palahnuk 12. Further, although Palahnuk teaches generally periodically
contacting the contact, Palahnuk does not explicitly teach periodically
contacting the contact “before the payment due date.” Nevertheless,
Brudz’s contacts include an in-house attorney responsible for managing
prosecution of the disclosure (Brudz 191)—an activity that can involve
managing associated fee payments. See generally MPEP § 509 (8th ed.
2001). Moreover, Brudz’s interface displays the department responsible for
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foreign filing expenses, and displays the percentage offees for which the
sponsor is responsible. Bradz 191.
Given these contacts and associated fee-based information and
responsibilities in Brudz’s interface, contacting a primary contact
periodically before a payment is due would have been at least an obvious
variation to, among other things, ensure those responsible for, or otherwise
have an interest in, such payments are notified that the payment will be due,
thus at least minimizing the possibility of a late payment.
Accordingly, we conclude the combination of Brudz and Palahnuk
would have taught or suggested the subject matter recited in independent
claim 8. Independent claim 15 is rejected for similar reasons because it
recites commensurate limitations. Although we decline to reject every claim
under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize
that our decision does not mean that the remaining claims are patentable.
Rather, we merely leave the patentability determination of these claims to
the Examiner in light of our new ground of rejection. See MPEP § 1213.02
(9th ed. Rev. 07.2015, Nov. 2015).
CONCLUSION
The Examiner did not err in rejecting claims 1—7.
The Examiner erred in rejecting claims 8—20 under § 103, but did not
err in rejecting those claims under § 101.
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DECISION
The Examiner’s decision in rejecting claims 1—20 is affirmed.
We enter a new ground of rejection for claims 8 and 15 under
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 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.
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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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