11384870 (P.T.A.B. Jul. 31, 2014)

Ex Parte Martin

Patent Trial and Appeal BoardJul 31, 2014

11384870 (P.T.A.B. Jul. 31, 2014)

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. 11/384,870 03/20/2006 Ken Martin HO-P03282US0 1649 7590 07/31/2014 Fulbright & Jaworski L.L.P. Fulbright Tower Suite 5100 1301 McKinney Houston, TX 77010-3095 EXAMINER BOSWELL, BETH V ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 07/31/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEN MARTIN ____________ Appeal 2012–002959 Application 11/384,8701 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–4, 10, 12, 14, and 15 are rejected under 35 U.S.C. § 102(b) as anticipated by Moulinet (US 2001/0032172 A1, pub. Oct. 18, 2001). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellant, “[t]he real party in interest for this appeal is Tacilent Corporation, the assignee of record” (App. Br. 3). Appeal 2012–002959 Application 11/384,870 2 Claimed Subject Matter Claim 1, reproduced below with added bracketing, is illustrative of the appealed subject matter. 1. A system for presenting a plurality of user interfaces to a plurality of remote computers having a computer-readable medium encoded with software for presenting said plurality of user interfaces, said system comprising an application server including a non- transitory computer readable medium, wherein the computer-readable medium is encoded with: [1] one or more code segments to present a first user interface for allowing a first group of users to create response segments, for allowing said first group of users to designate a response segment as requiring evaluation, for allowing said first group of users to define a plurality of data values to be presented as choices, and for allowing said first group of users to associate scores with said plurality of data values; [2] one or more code segments to present a second user interface for displaying at least one of said response segments and at least one of said plurality of data values and allowing said second group of users to select at least one of said plurality of data values in response to said response segments and for displaying at least one of said response segments without one or more of said plurality of data values and allowing said second group of users to enter a response; [3] one or more code segments to present a third user interface for allowing a third group of users to view said data entered through said second interface by said second group of users and evaluate said data by selecting one or more of said plurality of data values in response wherein said third group of users are only presented said data entered by said second group of users in response to response segments designated by said first group of users as requiring evaluation; and Appeal 2012–002959 Application 11/384,870 3 [4] one or more code segments to automatically grade said second group of users’ and said third group of users’ selections of one or more of said plurality of data values using said scores associated with said plurality of data values by said first group of users. ANALYSIS Claim 1, claim limitation [1], calls for allowing a first group of users to create response segments, to define data values to be presented as choices, and to associate scores with the data values. See App. Br., Claims App’x. The Examiner relies on Moulinet at paragraph 39, lines 2–3 and Figure 2, blocks 130–138 for disclosing the subject matter of claim limitation [1]. Ans. 4. The Appellant correctly contends that blocks “130– 138 disclose a process of defining parameters for a new project, generating a list of previously-stored service providers capable of handling the project, performing a prequalification review to narrow the list of services providers, and requesting a proposal from those providers,” but does not disclose associating scores with data values, as called for by claim limitation [1]. Reply Br. 5–6 (citing Moulinet ¶¶ 46–53).2 In response to the Appellant’s contention, the Examiner additionally relies on Moulinet at paragraph 61 and states, “‘preparation of a scoring sheet using a weight or score for each criteria’ (pg. 5, paragraph 61, ll. 7–8) discloses creating scores associated with data values where the ‘criteria’ of Moulinet . . . disclose data values of the Instant Application.” Ans. 10. However, we agree with the Appellant that there is nothing in the cited 2 We note that Moulinet at paragraphs 46–53 describes elements 130–138 depicted in Figure 2 and Moulinet at paragraph 39 is relied on to address “one or more code segments,” and is not related to associating scores with data values. Appeal 2012–002959 Application 11/384,870 4 portions of Moulinet which discloses anything other than a user (i.e., first group) receiving and reviewing responses to the request for proposal (“RFP”) (see Fig. 2, element 150) after the RFP has been prepared and submitted (see Fig. 2, elements 144 and 146, respectively) by a second group. As such, the Examiner’s finding that Moulinet discloses, “associat[ing] scores with said plurality of data values,” as recited in claim 1 is inadequately supported, as Moulinet at paragraph 61 relates to processes after the RFP has been submitted. Additionally, we cannot agree with the Examiner that paragraph 61 of Moulinet also can be relied upon to disclose claim limitation [4] which “automatically grade[s] said second group of users’ . . . selections of one or more of said plurality of data values using said scores associated with said plurality of data values by said first group of users.” Here, the Examiner states, “‘preparation of a scoring sheet using a weight or score for each criteria’ (pg. 5, paragraph 0061, ll. 7–8) discloses automatic grading of the Instant Application.” Ans. 10. However, Moulinet at paragraph 61 clearly describes, “[a]t block 150, the client system receives the service provider’s response . . . [and] the user may systematically evaluate and rank each of the proposals against whichever criteria the user deems most appropriate.” Thus, the Examiner does not provide adequate evidence that Moulinet at paragraph 61 does anything other than allow a user to prepare a scoring sheet for each criterion after an RFP has been submitted. The Examiner also cites to Moulinet at paragraph 21, along with Figure 2, elements 152 and 154, in the rejection (Ans. 5) to address claim limitation [4]. However, these cited portions of Moulinet describe notifying a service provider that they have been awarded a contract, and do not relate Appeal 2012–002959 Application 11/384,870 5 to “automatically grade[ing] said second group of users’ . . . selections of one or more of said plurality of data values using said scores associated with said plurality of data values by said first group of users,” as claim recited in claim 1. Therefore, the Examiner’s rejection of claim 1, and claims 2–4, which depend therefrom as anticipated by Moulinet, is not sustained. Independent claims 10, 12, and 14 contain limitations substantially similar to the above-quoted recitations of claim 1. The Examiner’s rejection of claims 10, 12, and 14 relies on the same inadequately supported findings discussed above with respect to the rejection of claim 1. See Ans. 6–7. For the reason discussed above with respect to the rejection of claim 1, the Examiner’s rejection of independent claims 10, 12, and 14, and claim 15, which depends therefrom as anticipated by Moulinet, is not sustained. DECISION We REVERSE the rejection of claims 1–4, 10, 12, 14, and 15.3 REVERSED Klh 3 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014.