Ex Parte Mahnken et al

Board of Patent Appeals and Interferences

Oct 8, 2009

09843904 (B.P.A.I. Oct. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte TRACY A. MAHNKEN, PAMELA D. WEISS, 8
BENJAMIN C. GRABOSKE, and PATRICK R. WHELAN 9
___________ 10
11
Appeal 2009-000389 12
Application 09/843,904 13
Technology Center 3600 14
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16
Decided: October 8, 2009 17
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL23
Appeal 2009-000389
Application 09/843,904

2
STATEMENT OF THE CASE 1
Tracy A. Mahnken, Pamela D. Weiss, Benjamin C. Graboske, and Patrick R. 2
Whelan (Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection 3
of claims 1-24, the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
SUMMARY OF DECISION1 6
We AFFIRM. 7
THE INVENTION 8
The Appellants invented a way of executing a lease agreement for commercial 9
or residential property over a computer network (Specification 1:¶ 01). 10
An understanding of the invention can be derived from a reading of exemplary 11
claim 1 and 19, which are reproduced below [bracketed matter and some 12
paragraphing added]. 13
1. A system for establishing a lease agreement between a first party 14
and a second party, 15
wherein the lease agreement is executed over a computer 16
network, comprising: 17
[1] a listing module 18

1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,”
filed December 31, 2007) and Reply Brief (“Reply Br.,” filed March 19, 2008),
and the Examiner’s Answer (“Ans.,” mailed March 19, 2008).
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configured to provide over the computer network a list of units 1
available for leasing; 2
[2] a scoring module 3
configured to screen an applicant; 4
[3] a leasing module configured to 5
[3a] provide a lease agreement and 6
[3b] receive acceptance of the lease agreement over the 7
computer network; and 8
[4] a payment module 9
configured to receive payment over the computer network. 10
19. A method for establishing a lease agreement between a first party 11
and a second party, 12
wherein the lease agreement is executed over a computer 13
network, comprising: 14
[1] providing over the computer network to a first party 15
a list of units available for leasing; 16
[2] receiving over the computer network from the first party 17
a request to lease a unit; 18
[3] screening the first party 19
based on information provided by the first party over the 20
computer network; 21
[4] compiling a lease agreement pertaining to the first party, a second 22
party, and the requested unit; 23
[5] presenting the lease agreement over the computer network; 24
[6] receiving from the first party acceptance of the lease agreement 25
over the computer network; and 26
[7] receiving payment from the first party over the computer network. 27
28
THE REJECTIONS 29
The Examiner relies upon the following prior art: 30
Appeal 2009-000389
Application 09/843,904

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Weatherly US 6,049,784 Apr. 11, 2000
Walker US 2003/0101087 A1 May 29, 2003
Donahue US 7,024,397 B1 Apr. 4, 2006
Claims 1 and 10-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Weatherly and Donahue. 2
Claims 2-9 and 20-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Weatherly, Donahue, and Walker. 4
ARGUMENTS 5
Claims 1 and 10-19 rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Weatherly and Donahue. 7
The Appellants argue these claims as a group. Accordingly, we select claim 19 8
as representative of the group because it contains all the limitations argued. 9
37 C.F.R. § 41.37(c)(1)(vii) (2008). 10
The Appellants contend that none of the references describe limitation [5] and 11
[6] of presenting a lease agreement and receiving acceptance of a lease agreement 12
over a computer network. Appeal Brief 6-10. 13
The Examiner found that Donahue 1:8-12 described these limitations. Answer 14
4. 15
Claims 2-9 and 20-24 rejected under 35 U.S.C. § 103(a) as unpatentable over 16
Weatherly, Donahue, and Walker. 17
The Appellants made the same arguments as above with respect to these 18
claims. Appeal Brief 11-12. 19
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ISSUES 1
The issue of whether the Appellants have sustained their burden of showing 2
that the Examiner erred in rejecting claims 1 and 10-19 under 35 U.S.C. § 103(a) 3
as unpatentable over Weatherly and Donahue turns on whether the art describes 4
limitations [5] and [6] of claim 19, or whether those limitations were otherwise 5
predictable variations of the art as applied. 6
The issue of whether the Appellants have sustained their burden of showing 7
that the Examiner erred in rejecting claims 2-9 and 20-24 under 35 U.S.C. § 103(a) 8
as unpatentable over Weatherly, Donahue, and Walker turns on the outcome of the 9
first rejection. 10
FACTS PERTINENT TO THE ISSUES 11
The following enumerated Findings of Fact (FF) are believed to be supported 12
by a preponderance of the evidence. 13
Facts Related to Appellants’ Disclosure 14
01. In one embodiment, an object of the leasing module can be to accept a 15
legally binding signature from the prospective resident. For example, the 16
leasing module may accept a signature from the prospective resident 17
using digital signature methods. However, additional methods of 18
accepting a signature from the prospective resident apparent to those 19
having skill in the art may also be used. Spec. 14: ¶ 60. 20
Facts Related to the Prior Art 21
Donahue 22
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02. Donahue is directed to allowing two parties to negotiate and execute a 1
real estate lease over a computer network such as the Internet. Donahue 2
1:8-12. 3
03. Donahue facilitates a structured lease negotiation between two parties 4
to a real estate transaction. In each phase, parties must select from a 5
predefined list of actions (e.g., agree or defer) associated with a 6
particular aspect of the negotiation (e.g., rent to be charged, term of the 7
lease, etc.). Provisions to which both parties agree are "locked in" while 8
those that are deferred are worked out in a subsequent phase. A 9
computer generates intermediate documents that assist in the negotiation 10
(e.g., draft proposal letters) and identifies areas that require further 11
negotiation. If parties indicate that outside help is needed to define part 12
of the contract (e.g., architect review of an office layout), a computer 13
suggests vendors located in the geographic area of the lease property and 14
transmits via e-mail a draft scope of services request to one or more 15
vendors. Donahue 2:15-51. 16
04. Each party identifies “corporate approvals required to complete the 17
negotiation, and a computer-generated lease document can be printed for 18
signatures. Feedback from the parties in the form of problems 19
encountered and solutions achieved during the negotiation process are 20
collected and stored in a database for review and use by other future 21
negotiation parties.” Donahue 2:51-57. 22
05. A draft lease contract is generated by Donahue’s computer on the 23
basis of the negotiated information that was "locked in" by agreement of 24
the parties. The parties review and resolve the contract, and agree upon 25
lease attachments such as a detailed description of office space, final 26
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plans and specifications. A lease agreement is then prepared that the 1
parties agree on (but which has not yet been executed). Donahue 15:54-2
65. 3
06. The phase for obtaining approvals and executing documents begins 4
with preparing information summaries. If a corporate approval summary 5
is required, a standard corporate approvals form is generated. If a 6
financial analysis is required, a standard financial analysis form is 7
generated. Corporate approvals are obtained by each party. This includes 8
submitting the forms and information for internal approvals, obtaining 9
signatures of local subsidiaries, if required; and obtaining management 10
signatures on the approval forms. The legal documents are executed, 11
which may include steps of identifying authorized signatories; 12
transmitting original signature documents by e-mail, fax or express mail, 13
and obtaining the actual signatures. The parties exchange documents, 14
pay required deposits, and exchange keys or other entrance mechanisms 15
(security codes, etc.) The outcome of this phase is that all legal 16
documents are executed and access is granted to the premises. Donahue 17
15:66 – 16:18. 18
Weatherly 19
07. Weatherly is directed to creating and managing a lease agreement 20
wherein a third party provides lease management and payment 21
guaranties. Weatherly 1:6-9. 22
Facts Related To The Level Of Skill In The Art 23
08. Neither the Examiner nor the Appellants has addressed the level of 24
ordinary skill in the pertinent arts of systems analysis and programming, 25
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law office information systems, leasing systems, or user interface design. 1
We will, therefore, consider the cited prior art as representative of the 2
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 3
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the 4
level of skill in the art does not give rise to reversible error ‘where the 5
prior art itself reflects an appropriate level and a need for testimony is 6
not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 7
755 F.2d 158, 163 (Fed. Cir. 1985). 8
Facts Related To Secondary Considerations 9
09. There is no evidence on record of secondary considerations of non-10
obviousness for our consideration. 11
PRINCIPLES OF LAW 12
Claim Construction 13
During examination of a patent application, pending claims are given 14
their broadest reasonable construction consistent with the specification. In 15
re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. 16
Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). 17
Limitations appearing in the specification but not recited in the claim are not 18
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. 19
Cir. 2003) (claims must be interpreted “in view of the specification” without 20
importing limitations from the specification into the claims unnecessarily) 21
Obviousness 22
A claimed invention is unpatentable if the differences between it and the 23
prior art are “such that the subject matter as a whole would have been obvious at 24
the time the invention was made to a person having ordinary skill in the art.” 35 25
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U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); 1
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 2
In Graham, the Court held that that the obviousness analysis is bottomed on 3
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be 4
determined; [(2)] differences between the prior art and the claims at issue are to be 5
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383 6
U.S. at 17. See also KSR, 550 U.S. at 406. “The combination of familiar elements 7
according to known methods is likely to be obvious when it does no more than 8
yield predictable results.” Id. at 416. 9
ANALYSIS 10
Claims 1 and 10-19 rejected under 35 U.S.C. § 103(a) as unpatentable over 11
Weatherly and Donahue. 12
The Appellants contend that the claims allow a tenant to view a rental unit, be 13
approved, view and accept a lease agreement, and pay a deposit in a single session 14
without any physical transfer of lease or payment paperwork (App. Br. 6); that 15
Weatherly only automates lease agreements after execution (App. Br. 7-8); and 16
that Donahue requires that signature sheets be printed and sent to the parties (App. 17
Br. 8-9). 18
As to allowing activities including claim 19 steps [5] and [6] without physical 19
transfer of paperwork, this argument is not commensurate with the scope of the 20
claim. Claim 19 is silent as to whether physical paperwork is used or not. 21
Donahue specifically states, that it allows two parties to negotiate and execute 22
a real estate lease over a computer network such as the Internet. FF 02. Execution 23
requires and therefore implicitly includes, acceptance. Further such negotiation 24
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implies presentation of the subject of the negotiation. Thus Donahue describes 1
performing limitations [5] and [6]. 2
The Appellants argue that this portion of Donahue is “less than compelling.” 3
Reply Br. 3. The Appellants contend that Donahue uses the term “executed” 4
primarily in reference to specific pre-defined steps executed in the course of 5
negotiating the lease. The Appellants present three examples of where Donahue 6
describes steps being executed. Id. Tellingly, each of these examples explicitly 7
refer to steps being executed, contrasted with the lease being executed in FF 02. 8
The Appellants point out that Donahue states that in the step in which 9
documents are executed, this may include steps of identifying authorized 10
signatories; transmitting original signature documents by e-mail, fax or express 11
mail, and obtaining the actual signatures. See FF 06. To this, we find first that 12
these modes are exemplary and not limiting, and that these steps of identifying 13
signatories and transmitting original signature documents by email are within the 14
environment of the network. 15
Further, Donahue is silent as to the nature of the signatures, and as the 16
Appellants’ Specification makes clear, digital signatures were at least known at the 17
time of the invention. FF 01. Further, the Appellants’ Specification makes clear 18
that additional methods of accepting a signature known to those of ordinary skill 19
were within the scope of the disclosed method. Id. Such methods of accepting a 20
signature would necessarily have included the time honored method or manual 21
signatures. Such manual signatures would not have been inconsistent with 22
limitation [6] of receiving from the first party acceptance of the lease agreement 23
over the computer network, since Donahue states that the transmission of the 24
acceptance might be by email. One of ordinary skill would have immediately 25
recognized such an email as including the scanned image of the signature page. 26
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Finally, we find that all of the steps in claim 19 are those performed 1
conventionally in any lease agreement, but occurring with the aid of a computer 2
network. This is no more than using a computer network for the purpose to which 3
is known, viz. communication. 4
It is, generally, obvious to automate a known manual procedure or mechanical 5
device. Our reviewing court stated in Leapfrog Enterprises Inc. v. Fisher-Price 6
Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill in the art would have 7
found it obvious to combine an old electromechanical device with electronic 8
circuitry “to update it using modern electronic components in order to gain the 9
commonly understood benefits of such adaptation, such as decreased size, 10
increased reliability, simplified operation, and reduced cost. . . . The combination 11
is thus the adaptation of an old idea or invention . . . using newer technology that is 12
commonly available and understood in the art.” Id at 1163. 13
Such use of a computer network to automate a known manual process is 14
exactly the type of substitution the Leapfrog court found would be obvious. 15
Claims 2-9 and 20-24 rejected under 35 U.S.C. § 103(a) as unpatentable over 16
Weatherly, Donahue, and Walker. 17
The Appellants presented the same arguments as with the above rejection and 18
accordingly these claims fall with those above. 19
CONCLUSIONS OF LAW 20
The Appellants have not sustained their burden of showing that the Examiner 21
erred in rejecting claims 1 and 10-19 under 35 U.S.C. § 103(a) as unpatentable 22
over Weatherly and Donahue. 23
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The Appellants have not sustained their burden of showing that the Examiner 1
erred in rejecting claims 2-9 and 20-24 under 35 U.S.C. § 103(a) as unpatentable 2
over Weatherly, Donahue, and Walker. 3
DECISION 4
To summarize, our decision is as follows. 5
• The rejection of claims 1 and 10-19 under 35 U.S.C. § 103(a) as 6
unpatentable over Weatherly and Donahue is sustained. 7
• The rejection of claims 2-9 and 20-24 under 35 U.S.C. § 103(a) as 8
unpatentable over Weatherly, Donahue, and Walker is sustained. 9
No time period for taking any subsequent action in connection with this appeal 10
may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 11
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AFFIRMED 13
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