Ex Parte Lynam

Patent Trial and Appeal Board

Jun 27, 2018

11623379 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111623,379 01/16/2007
153522 7590 06/29/2018
Honigman Miller Schwartz and Cohn LLP/TAF
650 Trade Centre Way
Suite 200
KALAMAZOO, MI 49002-0402
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Niall R. Lynam
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
LYN02 P-101 4746
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/29/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patent@honigman.com
tflory@honigman.com
asytsma@honigman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIALL R. LYNAM
Appeal2016-003024
Application 11/623,379 1
Technology Center 3700
Before EDWARD A. BROWN, RICHARD H. MARSCHALL, and
ANTHONY KNIGHT, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Niall R. Lynam (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's decision rejecting claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the real party in interest. Appeal Br. 2.
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THE CLAIMED SUBJECT MATTER
Appellant's claimed subject matter "relates to a method of teaching a
class of students about innovation and about practices and procedures for
intellectual property protection of innovation." Spec. i-f 1. Claims 1, 1 7, and
18 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A method of grading students at a learning institution,
said method comprising:
establishing a course in innovation and/or intellectual
property protection at the learning institution;
registering a plurality of students for the course at the
learning institution;
requiring each registered student of the plurality of
registered students to assign to an entity designated by the
learning institution an intellectual property right that student
might otherwise achieve by reason of that student being
registered for the course;
appointing an instructor for the course;
establishing a grading scheme for the course;
the instructor awarding a scholastic grade to each
registered student completing the course based on the grading
scheme;
filing a patent application at a Patent Office based on an
idea conceived as a result of establishing the course and as a
result of registering the plurality of students for the course
being offered at the learning institution, at least one student
registered for the course being a named inventor on the
application;
basing the scholastic grade awarded to each said at least
one named inventor student at least in part on that student's
inventive contribution to the patent application filed, wherein
the scholastic grade awarded said named inventor student is
enhanced by reason of (i) said named inventor student
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conceiving, as a result of said course, a concept that is disclosed
in the patent application filed, (ii) the filing of the patent
application at said Patent Office with said student being a
named inventor on the patent application filed and (iii) said
named inventor student's inventive contribution to the patent
application filed; and
each said at least one named inventor student assigning
his or her patent rights under the patent application filed to the
entity.
Appeal Br. 62---63 (Claims App.).
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-20 under 35 U.S.C. § 101 because the claimed
inventions are drawn to patent-ineligible subject matter.
2. Claims 1-5, 7-16, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kozma 2 and Rutgers. 3
3. Claims 6, 17, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Kozma, Rutgers, and Pressman. 4
ANALYSIS
I. Section 101 Rejection
A. Appellant's Procedural Arguments
In the Final Office Action, in support of the § 101 rejection, the
Examiner found that "[a] 'grade' is not a concrete or tangible item," and
"there is no transformation of the grade claimed." Final Act. 4. In the
2 John P. Kozma and Thomas Dion, An Intellectual Property Course for CS
Majors, ACM Crossroads (ACM, Inc. copyright 2000-2001) ("Kozma").
3 Rutgers Policy: Patent Policy for Rutgers, the State University of New
Jersey, Section 50.3.1 (Rutgers, April, 1996 Rev) ("Rutgers").
4 David Pressman, Patent It Yourself (7th ed. NOLO Press) ("Pressman").
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Appeal Brief, Appellant argued that a grade is a concrete and tangible item,
and that the Examiner's other findings and reasoning in support of the § 101
rejection lacked adequate support. Appeal Br. 6-30. In the Answer, the
Examiner found that "[h ]ad the office action been written after July 30,
2015," the Examiner would have taken into account the most recent Patent
Office guidelines for subject matter eligibility rejections. 5 Ans. 4. The
Examiner then made a series of findings following the Alice two-step
framework discussed in more detail below, and maintained the § 101
rejection. Id. at 2-8. The Examiner addressed Appellant's argument
regarding the claimed "grade" but otherwise largely dismissed Appellant's
remaining arguments as repetitive or moot because they addressed the
rejection made prior to the most recent guidelines. Id. at 13.
In the Reply Brief, Appellant argues that the Examiner's reasoning
and findings in the Answer amount to an improper "new ground of
rejection." Reply Br. 2-3. Appellant further contends that the Examiner
failed to follow 37 C.F.R. § 41.39 and pertinent provisions of the MPEP,
which require the Examiner to set forth a new ground of rejection, and
responses to Appellant's arguments, under a separate subheading. Id. at 6-7.
Appellant's arguments in this regard are unavailing because they are
beyond the scope of our review on appeal. Whether the Examiner's findings
and analysis in the Answer should have been designated as a new ground of
rejection or not, that would be a matter addressed by petition. Appellant
relies on 37 C.F.R. § 41.39, but does not address 37 C.F.R. § 41.40, which
states that "[a]ny request to seek review of the primary examiner's failure to
5 See July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015) ("2015 Guidelines").
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designate a rejection as a new ground of rejection in an examiner's answer
must be by way of a petition to the Director under § 1.181 of this title filed .
. . before the filing of any reply brief. 3 7 C.F .R. § 41.40( a) (emphasis
added). "Failure of appellant to timely file such a petition will constitute a
waiver of any arguments that a rejection must be designated as a new ground
of rejection." Id. The MPEP also emphasizes this requirement, by stating
that § 41.40 "sets forth the exclusive procedure for an appellant to request
review of the primary examiner's failure to designate a rejection as a new
ground of rejection via a petition." MPEP § 1207.03(b). Accordingly, for
purposes of this Appeal, we consider the Examiner's findings and
conclusions from both the Final Rejection and the Examiner's Answer, and
do not consider whether the Examiner failed to identify this rejection as a
new ground of rejection.
B. Legal Framework for§ 101 Analysis
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in the analysis is to "determine whether the claims at
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issue are directed to one of those patent-ineligible concepts." Id. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
citations omitted). With respect to computer-enabled claimed subject
matter, it is helpful to determine whether the claims at issue can readily be
understood as simply adding conventional computer components to well-
known business practices or not. Id. at 1338. In that regard, we determine
whether the claims "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "search for an "'inventive concept"-
i.e., an element or combination of 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) (quoting Mayo, 566
U.S. at 72-73).
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C. Step One
Regarding step one, the Examiner found that "the claims are drawn to
the abstract idea of grading." Ans. 4. The Examiner found that the
limitations in claim 1 "simply describe a process of teaching" and "are akin
to a longstanding human organizing activity which was at issue in [Alice]
and has been identified among non-limiting examples to be an abstract
idea." Id. at 5. The Examiner also found that the "limitations can be
classified as 'an abstract idea of itself' since Applicant's process can be
practiced as an idea standing alone such as an un-instantiated concept, plan
or scheme, as well as a mental process (i.e. thinking) that can be performed
in the human mind or by a human using a pen and paper." Id. In support of
this finding, the Examiner found certain claim limitations resemble
"obtaining and comparing intangible data." Id. Finally, the Examiner found
that the "limitations can also be classified as 'certain methods of organizing
human activity' since the Applicant's process can be practiced as a concept
relating to interpersonal activities, such as transactions between people and
satisfying legal obligations," including "creating a contractual relationship."
Id. at 6.
As an initial matter, as part of the argument that the Examiner
improperly included a new ground of rejection in the Answer, Appellant
argues that the Examiner failed to rebut Appellant's§ 101 arguments in the
Appeal Brief addressing the Examiner's findings in the Final Office Action.
Reply Br. 3-5. As noted above, we do not reach the issue of whether the
Examiner should have issued a new ground of rejection, and we consider all
of the Examiner's findings in the Answer. Because the Examiner effectively
supplemented the basis for the rejection in the Answer by following Alice's
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two-step framework, see Ans. 4--7, we do not view the Examiner's failure to
rebut Appellant's arguments in the Appeal Brief, which are not directed to
the two-step framework, as fatal to the rejection. Instead, we consider the
Examiner's revised rejection as set forth in the Answer based on Alice's
two-step framework, and Appellant's relevant rebuttal to those findings in
the Reply Brief. Accordingly, although the Examiner has not withdrawn the
original basis for the rejection based on pre-Alice case law, any purported
flaws in the original basis for the rejection as stated in the Final Office
Action do not establish flaws in the two-step Alice framework.
Regarding the Examiner's substantive analysis of step one, Appellant
sets forth several arguments in support of its contention that the claimed
invention is not directed to an abstract idea. Reply Br. 7-14. First,
Appellant lists the claim limitations and argues that "this litany of claim
limitations ... render[ s] the invention implementable in a tangible way with
observable and verifiable claim elements ... with a transformation that is
expressly recited and is particular." Id. at 8-9 (emphasis added). Appellant
also argues that "the claimed invention ... is not a mental process" as the
Examiner found because it requires "tangible, concrete, measureable,
observable, verifiable and meaningfully-limited steps involving a
transformation." Id. at 9 (emphasis added). Although couched in terms of
the Examiner's abstract idea finding, Appellant's argument goes to the
"machine or transformation test," which was at issue in the Examiner's
findings in the Final Office Action, but was not used as a basis for finding
that the claims are directed to an abstract idea under Alice. Compare Final
Act. 2--4, with Ans. 4--7. Moreover, the machine-or-transformation test may
provide a "useful clue" in relation to the second step of Alice, not the
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abstract idea inquiry involved in the first step. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). Appellant's arguments in
this regard do not establish error in the Examiner's finding that the claims
are directed to an abstract idea under Alice.
In a similar vein, Appellant argues that certain limitations, such as the
"grade" and "Virtual Patent Application," are concrete and tangible items
and therefore not abstract. See Reply Br. 10, 14. Such arguments largely go
to the machine-or-transformation test and/or disputes regarding the
Examiner's findings in the Final Office Action. See Final Act. 3--4.
Because this issue is not the basis for the Examiner's finding that the claims
are directed to an abstract idea under Alice, they do not establish error in the
Examiner's findings in that regard. See Ans. 4--7. In addition, even if some
claim limitations are "concrete" and "tangible" as argued by Appellant, that
does not establish that the claims are not directed to an abstract idea. Claims
may include limitations directed to concrete and tangible computer
hardware, for example, and still remain directed to abstract ideas. See
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1324
(Fed. Cir. 2016) (holding that claims reciting generic computer components
such as an "interface," "network," and "database" are directed to an abstract
idea).
Appellant also argues that the Examiner erred in finding that the
claims can be classified as methods of organizing human activity. Reply Br.
10-11. These arguments appear to be based on the "transformation" and
"concrete/tangible" arguments already addressed above. See id. Appellant's
arguments do not apprise us of error in the Examiner's finding that the
limitations in claim 1 "simply describe a process of teaching" and "are akin
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to a longstanding human organizing activity." Ans. at 5. For similar
reasons, we are not persuaded by Appellant's similar arguments in the
context of the Examiner's finding that a human using a pen and paper could
perform the claimed steps. See Reply Br. 9. Appellant does not point to
anything in the claims or the specification that require anything more than a
human using pen and paper to carry out the claimed steps, and we discern no
error in the Examiner's findings in this regard. See id.
We have considered Appellant's additional arguments directed to
dependent claims 2--4 as well as claims 6, 1 7, and 19 (due to the "Virtual
Patent Application" limitation). See Reply Br. 10-14. Several of those
arguments repeat the arguments addressed above. See id. (alleging that
certain limitations, including "Virtual Patent Application," are "concrete and
tangible"). Appellant also contends that the Examiner failed to address
dependent claims 2 and 3 in the Final Office Action, but the Examiner did
address claims 2 and 3 in the Final Office Action, and again, more explicitly,
in the Answer. See Final Act. 2--4; Ans. 6-8. Regarding claim 3, Appellant
argues that the claim "is far more than an alleged contractual condition to
carry out an abstract idea." Reply Br. 12. Regarding claim 4, Appellant
alleges that the claim's further requirements are "not an abstract idea-the
Examiner's so contending is fallacy (see, for example, pages 13-16 of the
Appeal Brief)." Id. at 12-14. Such conclusory, undeveloped arguments do
not apprise us of error in the Examiner's findings, especially when referring
back to previous arguments in the Appeal Brief that do not address the
Examiner's findings related to Alice's two-step analysis.
Based on the foregoing, we are not apprised of error in the Examiner's
findings in support of the conclusion that the claims are directed to an
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abstract idea.
D. Step Two
Regarding step two, the Examiner found that "[t]he claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception." Ans. 6. The Examiner also found that the
"claim as a whole clearly could be applied readily to other teaching
environments with means for collecting and generating data." Id. Finally,
the Examiner found that "these additional claim elements do not provide
meaningful limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim( s) amounts to
significantly more than the abstract idea itself." Id.
With two potential exceptions, Appellant does not advance any
specific arguments against the Examiner's findings regarding step two. See
Reply Br. 2-14. In the context of Appellant's "new ground of rejection"
argument, in a footnote, Appellant alleges that the Examiner failed to satisfy
the Alice two-step process, and that the claims, "as discussed through the
Appeal Brief, amount to significantly more than a patent upon the purported
abstract idea itself." Id. at 4 n.2. Appellant also quotes the Examiner's
finding that the additional claim elements do not "transform the abstract idea
into a patent eligible application of the abstract idea such that the claim(s)
amounts to significantly more than the abstract idea itself," but Appellant
only takes issue with the "abstract idea" portion of these findings. Id. at 10
("In response, Appellant again traverses that the claims are directed to an
abstract idea.").
We do not view Appellant's limited references to step two as
advancing any specific arguments that could apprise us of error in the
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Examiner's findings regarding step two. Appellant broadly asserts that
discussions in "the Appeal Brief' show that the claims amount to
"significantly more," but a broad reference to a 61-page brief does not
adequately direct us to the pertinent argument and evidence that may support
Appellant's position. This general principle applies with even more force
here, where the Examiner did not make the findings related to Alice's two-
step process until after the Appeal Brief was filed. See Ans. 4--7.
To the extent that that Appellant's arguments with respect to step
one-such as the argument that certain limitations such as a "grade" and
"Virtual Patent Application" are "concrete and tangible"-apply to step two,
those arguments do not apprise us of error in the Examiner's findings
regarding step two. Merely identifying certain tangible, concrete physical
limitations in the claims does not establish that the claims amount to
"significantly more" than an abstract idea or that the claims have been
transformed into an inventive concept. See Mortg. Grader, 811 F.3d at
1324--25 (holding that limitations reciting generic computer components
such as an "interface " "network " and "database" "do not satisfy the
' '
inventive concept requirement"; "The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point" (citations
omitted)).
Accordingly, to the extent that Appellant did not waive its argument
regarding step two, we find the argument insufficient to establish error in the
Examiner's findings regarding step two. Based on the foregoing, we are not
persuaded that the Examiner erred in finding that the claims are not directed
to an inventive concept or something more than the abstract idea.
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Accordingly, we sustain the rejection of claims 1-20 as not directed to
statutory subject matter.
II. Section 103 Rejections
A. Claims 1-16 and 18-20
The Examiner rejected claim 1 based on Kozma and Rutgers, relying
on Kozma as disclosing steps related to establishing a course, registering
students, appointing an instructor, establishing a grading scheme, and
preparing a patent application. Final Act. 4--5. The Examiner found that
neither Kozma nor Rutgers discloses filing a patent application at a patent
office, but determined that it would have been obvious to do so "since the
procedural requirements for writing and filing a patent application are
unique only to a Patent Office." Id. at 5. The Examiner took official notice
"that it is old and well-known that a named inventor student conceiving, as a
result of said course, a concept that is disclosed in the patent application
filed, since it is a common practice of education to stimulate thought and
create an environment conducive for learning and creativity." Id. The
Examiner also found that Kozma "fails to teach" requiring students to assign
rights to an entity, but that Rutgers discloses "a contractual agreement
regarding the patent policy" at Rutgers that requires assigning intellectual
property rights to Rutgers. Id. at 7; Ans. 15.
Regarding the limitation requiring enhancing a grade based on (i)
conceiving, during the course, subject matter disclosed in the application, (ii)
the "student being a named inventor," and (iii) the "named inventor
student's inventive contribution to the patent application filed," the
Examined found that neither Kozma nor Rutgers disclose the limitation.
Ans. 19-20. The Examiner took official notice that
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it is old and well-known that (i) named inventors must conceive
a concept that is disclosed in the patent application filed and
that provides support for at least one claim of the patent
application filed; (ii) the filing of the patent application at said
Patent Office with a named inventor on the patent application
filed and (iii) said named inventor's inventive contribution to
the patent application filed, since these are common practices
and procedural requirements for filing a patent application.
Id. at 20. The Examiner found that Appellant "failed to reasonably traverse"
the rejection based on official notice.
Appellant argues, among other things, that the Examiner's taking of
official notice does not articulate how the notice renders obvious the claim
elements requiring enhancing a grade based on the three conditions. Appeal
Br. 33, 38--41; Reply Br. 15-16. Appellant also argues that the Examiner's
use of official notice in the Answer was improper, because it included
reliance on official notice for the first time in several instances, which did
not allow Appellant an opportunity to contest the use such notice. Reply Br.
23-25.
We need not reach the propriety of the Examiner's newly articulated
use of official notice in the Answer, because we agree with Appellant that
the Examiner has not adequately supported the finding that Kozma or
Rutgers, with or without official notice, discloses the "enhanced" grade
limitation, or renders the claim obvious. The Examiner acknowledges that
neither reference discloses the limitation. Ans. 19-20. Further, the
Examiner's use of official notice does not adequately track the requirements
of the claim. Id. at 20. The claim requires enhancing a grade based on three
conditions-"conceiving ... a concept that is disclosed" in the application;
"being a named inventor on" the application; and the "named inventor
student's inventive contribution" to the application. Appeal Br. 62---63
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(Claims App.). The Examiner's official notice merely suggests that it is old
and well known that named inventor's "must conceive a concept" disclosed,
must be named on a filed patent application, and must include the inventor's
contribution in the filed application, because these are requirements of filed
applications. Ans. 20. These findings related to official notice go to the
contents of a filed patent application presuming an inventor and inventive
content have been identified; they do not mention much less establish that it
is old and well known to enhance a course grade for any of the reasons
required by claim 1. Moreover, the Examiner does not make findings on this
point going beyond official notice, by articulating why it would have been
obvious to enhance a grade based on the claimed criteria, in light of the facts
purportedly established by official notice. Id.
Based on the foregoing, we do not sustain the rejection of claim 1
based upon Kozma and Rutgers. The Examiner does not address the
deficiencies discussed above in the rejection of claims 2-16, which depend
from claim 1, or in claims 18 and 19, which contain the same relevant
limitations. Appeal Br. 63---68 (Claims App.). Accordingly, we do not
sustain the rejection of claims 2-16 and 18-20 for the same reasons as
discussed above for claim 1.
B. Claim 17
Claim 1 7 requires a "virtual patent application comprising an
application that is substantially similar to an actual patent application that
has been at least partially prosecuted at a Patent Office but that has been
rendered covert by the instructor ... and wherein the instructor utilizes art,
office actions and responses of said actual patent application in conjunction
with said virtual patent application" Appeal Br. 66---67 (Claims App.). The
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Examiner found that Pressman discloses the claimed virtual patent
application, and determined that it would have been obvious to use
Pressman's virtual patent application "within the course of Kozma as
modified by Rutgers so as to provide the student with experience in the
complete prosecution of a patent application." Final Act. 9; Ans. 25. The
Examiner also took official notice "that it is old and well-known to utilize
art, office actions and responses of patent applications, since it is part of the
procedural process of seeking patent protection" and that Appellant failed to
"reasonably traverse the rejection" based on official notice. Ans. 26.
Appellant argues that Pressman fails to disclose the claimed virtual
patent application because the Examiner's findings fail to establish that
Pressman's application "is substantially similar to an actual patent
application that has been at least partially prosecuted at the Patent Office."
Appeal Br. 46. According to Appellant, the portions of Pressman relied on
by the Examiner "appear to be entirely made-up documents composed for
purposes" of Pressman's disclosure, not based on an actual application. Id.
Appellant also argues that the Examiner improperly relied on official notice
because Appellant adequately traversed the rejection. Reply Br. 32.
As above, we need not reach Appellant's arguments regarding official
notice or the related claim limitations, because we agree with Appellant that
the Examiner did not adequately support the finding that Pressman discloses
the claimed virtual patent application. The Examiner asserts that certain
pages of Pressman "are substantially similar to applications at least partially
prosecuted by a Patent Office," but does not find that that Pressman's
application is substantially similar to an "actual" patent application that has
been rendered covert, as required by claim 17. See Final Act. 9; Ans. 25.
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Further, the Examiner's finding that Pressman's application has been
rendered "covert" because the application number used by Pressman does
not correspond to the actual patent application bearing that number does not
cure the deficiency. See id. The application number ("07 /345678") may
have been made up by Pressman, and, not surprisingly, it may not
correspond to the application bearing that number at the Patent Office. This
fact, however, does not establish that Pressman's application was based on
an actual application at the Patent Office as required by claim 1 7. It may be
that Pressman's content tracks an actual application on file at the Patent
Office in some respects, but the findings before us do not establish
adequately that this is the case. Accordingly, we do not sustain the rejection
of claim 17 based upon Kozma, Rutgers, and Pressman.
DECISION
We affirm the decision of the Examiner to reject claims 1-20 under 35
U.S.C. § 101. We reverse the decision of the Examiner to reject claims 1-20
under 35 U.S.C. § 103(a).
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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