Ex Parte Paintin et al

Patent Trial and Appeal Board

Apr 10, 2017

11535353 (P.T.A.B. Apr. 10, 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.
11/535,353 09/26/2006 Scott R. Paintin 90945-715596 (005610US) 7444
20350 7590 04/12/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
ABRAHAMSON, AMANDA C.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT R. PAINTIN, RIELEY K. SCOTT,
MICHAEL J. HAFER, and PAUL JOST
Appeal 2015-0072931
Application 11/535,3532
Technology Center 3600
Before: HUBERT C. LORIN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1—15, 17, 18, and 21—25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
November 25, 2014) and Reply Brief (“Reply Br.,” filed July 27, 2015), the
Examiner’s Answer (“Ans.,” mailed May 26, 2015), and Final Office Action
(“Final Act.,” mailed June 25, 2014).
2 Appellants identify Western Union Company of Englewood, Colorado as
the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
Appellants’ claims relate “generally relates to marketing systems and
methods” (Spec. 12).
Claims 1,9, 14, and 17 are the independent claims on appeal. Claims
1 and 14, reproduced below, with added bracketed notations and
paragraphing, are illustrative of the subject matter on appeal:
1. A method for providing a coupon code to a recipient
via a network, comprising:
[a] storing a coupon code on a tangible storage medium of
a host computer;
[b] receiving, at the host computer, a request for the
coupon code from the recipient;
[c] in response to the request for the coupon code, sending
a first text message to the recipient, wherein the first text message
includes a terms and conditions agreement associated with the
coupon code;
[d] prompting the recipient to accept or reject the terms
and conditions agreement by sending to the host computer a
response text message indicating acceptance or rejection of the
terms and conditions agreement; and
[e] in response to receiving the response text message
indicating acceptance of the terms and conditions agreement,
sending a second text message from the host computer to the
recipient, wherein the second text message includes the coupon
code.
14. A system for providing a discount on a money transfer
fee, comprising:
[a] a request device that receives a request to perform a
money transfer from a recipient;
[b] a fee device that calculates a money transfer fee for the
money transfer;
[c] a host computer system in communication with the
request device and the fee device, the host computer system
configured to, in response to the request for the money transfer,
send a first text message to the recipient, wherein the first text
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message includes a terms and conditions agreement associated
with a coupon code and a prompt the recipient to accept or reject
the terms and conditions agreement by sending to the host
computer a response text message indicating acceptance or
rejection of the terms and conditions agreement, and in response
to receiving the response text message indicating acceptance of
the terms and conditions agreement, sending a second text
message to the recipient, wherein the second text message
includes the coupon code; and
[d] a discount device in communication with the host
computer, the discount device configured to discount the money
transfer fee based on the coupon code, wherein the coupon code
corresponds to a discount based on an identifier associated with
the recipient’s request, the identifier comprising a member
selected from the group consisting of a name, an address, an
Automatic Number Identification (ANI), a loyalty code or
number, a registration number, and a personal identification
number (PIN).
REJECTIONS
Claims 1—15, 17, 18, and 21—25 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter (see Ans. 4).
Claims 1, 2, 4—9, 12, 13, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brown (US 2004/0249712 Al, pub. Dec. 9,
2004), Pappas (US 7,313,539 Bl, iss. Dec. 25, 2007), and Moore (US
2006/0004641 Al, pub. Jan. 5, 2006) (see Final Act. 2).
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hafer (US 2004/0205023 Al, pub. Oct. 14, 2004),
Pappas, and Brown (see id. at 18).
Claims 17 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hafer and Moore (see id. at 25).
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Claims 3,10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown, Pappas, Moore, and Hafer (see id. at 32).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hafer, Moore, and Brown (see id. at 35).
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Brown, Pappas, Moore, and Hanna (US 2007/0075129, pub. Apr. 5, 2007)
(see id. at 36).
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hafer, Moore, and Hanna (see id. at 37).
ANALYSIS
Non-statutory subject matter
Appellants argue claims 1—15, 17, 18, and 21—25 as a group (see
Reply Br. 2-4). We select claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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: “[ljaws of nature, natural phenomena, and
abstract ideas are not patentable.” See, e.g., Alice Corp. PtyLtd. v. CLS
BankInt7, 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 Labs.,
Inc., 566 U.S. 66, 82 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts.” Alice Corp., 134 S.Ct. at 2355. The
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first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts,” {id., (e.g., to an abstract
idea)). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “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
Corp., 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 70. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
concludes that the claims, considered as a whole, are
directed to sending a terms and conditions agreement to a
recipient who has already sent a request for a coupon code or
discount, and providing the recipient with the coupon code or
discount after the recipient agrees to the terms and conditions,
which is a fundamental business method and thus an abstract
idea.
(Ans. 4). The Examiner finds
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the use of text messages communicating with a host
computer to send out coupon codes to customers/members is
simply a business plan carried out by a common computer
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communications system that add nothing new to the coupon
marketing plan.
{Id. at 5). And, when “[vjiewed as a whole, these additional claim
element(s) 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.
(citing Alice Corp., 134 S.Ct. at 2347)).
Appellants first argue that the Examiner “does not identify what
exactly the allegedly abstract idea in the claims is, or (1 .b) provide citation
for its contention that for whatever the alleged abstract idea is, it is a
fundamental economic practice, method of organizing human activity, idea
itself, or a mathematical relationship/formula” (Reply Br. 2, 3). However,
the Examiner determined the claims are
directed to sending a terms and conditions agreement to a
recipient who has already sent a request for a coupon code or
discount, and providing the recipient with the coupon code or
discount after the recipient agrees to the terms and conditions,
which is a fundamental business method and thus an abstract
idea.
(Ans. 4), and as such, we find the Examiner has adequately articulated that
the claims are directed to an abstract idea and fundamental economic
practice. And, to the extent Appellants argue that the Examiner erred in
adequately supporting this determination by providing citation, we find this
argument unpersuasive.
In this regard, there is no requirement that examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See, e.g., para. IV “July 2015 Update:
Subject Matter Eligibility” to 2014 Interim Guidance on Subject Matter
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Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (“The courts
consider the determination of whether a claim is eligible (which involves
identifying whether an exception such as an abstract idea is being claimed)
to be a question of law. Accordingly, courts do not rely on evidence that a
claimed concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any factual
findings.”) (emphasis added). Evidence may be helpful in certain situations
where, for instance, facts are in dispute. But it is not always necessary. It is
not necessary in this case. Instead, we need only look to other decisions
where similar concepts were previously found abstract by the courts. See
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (“Instead of a definition [for what an ‘abstract idea’
encompasses], then, the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided.”)
According to the Specification, “[cjoupon codes are effective
marketing tools, and many consumers are attracted by the savings and other
opportunities made possible with these codes” (Spec. 14). The
Specification observes that “some current coupon codes are limited in their
ability to generate useful marketing information for coupon issuers and
others who may find value in such data” (id. ), and as such, “there remains a
need for better approaches for delivering coupon codes to recipients in a
convenient manner that can generate useful marketing data” (id. ). And,
taking independent claim 1 as representative, the claimed subject matter is
generally directed to “proving a coupon to a recipient” including steps for
“storing a coupon code,” “receiving ... a request for the coupon code,” “in
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response to the request for the coupon code, sending a . . . message to the
recipient. . . including] a terms and conditions agreement associated with
the coupon code,” “prompting the recipient to accept or reject the terms and
conditions agreement by sending ... [a] message indicating acceptance or
rejection of the terms and conditions agreement,” and “in response to
receiving the response . . . message . . . sending a second . . . message
including] the coupon code.”
In this regard, sending a coupon code to a recipient based on the
recipient’s assent to terms and conditions is a method of organizing human
activity and/or fundamental economic practice, and as such, an abstract idea.
SeeMorsa v. Facebook, Inc., 77 F.Supp.3d 1007, 1014 (C.D. Cal. 2014),
aff d, 622 F. App’x 915 (Fed. Cir. 2015) (claims directed to “targeting
advertisements to certain consumers, and using a bidding system to
determine when and how advertisements will be displayed” held to be
directed to an abstract idea). As noted by the court in Mors a, matching
consumers with a given product or service “has been practiced as long as
markets have been in operation.” Morsa, 77 F. Supp.3d at 1014 (quoting
Tuxis Technologies, LLC v. Amazon.com, Inc., No. CV 13—1771—RGA,
2014 WL 4382446, at *5 (D.Del. Sept. 3, 2014)); see also OpenTV, Inc. v.
Netflixlnc., 76 F.Supp.3d 886, 893, No. 1A-CV-01525-RS, at 10, 2014 WL
7185921 (N.D.Cal. December 16, 2014) (“The concept of gathering
information about one’s intended market and attempting to customize the
information then provided is as old as the saying, ‘know your audience.’”);
see also Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266,
1270 (Fed. Cir. 2016) (delivering media content to a wireless device is an
abstract idea).
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Appellants further argue that even if the claims are directed to an
abstract idea, the claims “do not risk tying up the use of an abstract idea
[and, thus,] do not pose a risk of preempting others from exploiting these
‘building blocks’ of human ingenuity” (Reply Br. 3). Appellants’ argument
is not persuasive.
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” Alice, 134 S.Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir.2015) (citing Alice, 134 S.Ct. at 2354). Yet although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.
Appellants also argue that the Examiner fails to satisfy the second step
of the Alice analysis because the Examiner merely “states in a conclusory
manner that the claims don’t add anything more to the abstract idea itself (of
which the Office Action has failed to identify)” (Reply Br. 4). However, the
only claim elements beyond the abstract idea are directed to the system
(including generic computing devices, processors, and memories) on which
the method of proving a coupon to a recipient is performed. Considered as
an ordered combination, these computer components add nothing that is not
already present when the steps of the method are considered separately. The
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claims do not, for example, purport to improve the functioning of the
computer itself. Nor do they effect an improvement in any other technology
or technical field. Instead, the claims amount to nothing significantly more
than an instruction to apply the abstract idea of sending a coupon code to a
recipient based on the recipient’s assent to terms and conditions, i.e.,
“providing a coupon code to a recipient,” which is not enough to transform
an abstract idea into a patent-eligible invention. See Alice Corp., 134 S.Ct.
at 2360.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2—15, 17, 18, and 21—
25, which fall with independent claim 1.
Obviousness
Independent claim 1 and dependent claims 2—8, 24, and 25
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Pappas, on
which the Examiner relies, fails to disclose or suggest “prompting the
recipient to accept or reject the terms and conditions agreement by sending
to the host computer a response text message indicating acceptance or
rejection of the terms and conditions agreement,” as recited by limitation [d]
of independent claim 1 (see Appeal Br. 4—7).
The Examiner maintains that the rejection is proper, and cites column
2, lines 31—36; column 5, lines 21—32; column 6, lines 48—57; column 9,
lines 30-36; and Figures 2 and 3, of Pappas as disclosing the argued
limitation (see Final Act. 5—6, 39-40; see also Ans. 5—6). However, we
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agree with Appellants that there is nothing in the cited portions that discloses
or suggests the argued limitation.
In making this determination, we note that Pappas is directed to a
system for “providing electronic options for goods or services via a
computer network such as the Internet or an intranet” (Pappas, col. 1,11. 8—
10). Pappas observes that its “method should make it easy and convenient
for a purchaser to buy an option on goods or services to reserve a right to
purchase desired goods or services with option terms set by a supplier of the
goods or services” {id. at col. 2,11. 33—37). Pappas discloses
[w]hen an electronic option is purchased, a purchaser is sent
periodic reminders about the electronic options until the
electronic option expires at the desired future time. The periodic
reminders can be sent electronically, such as with electronic
mail, (“e-mail”) or sent in other electronic or non-electronic
formats (e.g., a post card in regular mail).
{Id. at col. 5,11. 21—26; see also id. at col. 11,11. 45—52). Pappas further
discloses
[i]n another embodiment of the present invention, the electronic
option is a “personalized electronic coupon” dynamically created
by a server network device and sent to a client network device
based on current or previous input from a user. In such an
embodiment, a purchaser of the option may also input one or
more desired options terms to create his/her own personalized
electronic coupon. The personalized electronic coupon is
governed by the electronic options terms determined by a desired
supplier and/or by the purchaser.
{Id. at col. 6,11. 48—57). Pappas discloses that “the electronic option terms
established by the desired supplier for the desired good or service received
on the client network device include a request for a user to enter personal
information (e.g., name, address, phone number, e-mail address, etc.) that is
used to associate a user with a desired electronic option” {id. at col. 9,11. 30-
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36). Pappas discloses that when “the electronic option terms 60 for the
DVD player are accepted on the client network device 16 ... . the electronic
option terms are accepted by selecting the ‘ACCEPT’ button 58 (FIG. 4B)”
(id. at col. 10,11. 13-16).
We have reviewed the cited portions of Pappas and agree with
Appellants that none of the cited portions of Pappas discloses or suggests the
argued limitation. Instead, as Appellants point out, “Pappas specifically
recites that ‘the electronic option terms are accepted by selecting the
‘ACCEPT’ button 58 (FIG. 4B)’” (Appeal Br. 5 (citing Pappas, col. 10,11.
15—16)), and as such, “the user must actually click an accept button in order
to accept the option terms” (id.). Thus, we fail to see, and the Examiner
does not adequately explain how, Pappas’s disclosure regarding “‘emailing
reminders about electronic options’ considered by the Examiner to be
‘sending terms and conditions’ of the current invention[], and []‘purchaser
directly purchasing or deferring a purchase on an electronic option’
considered by the Examiner to be ‘accepting or declining the terms and
conditions’ of the current invention[]” (Ans. 5—6 (bracketing omitted))
discloses or suggests the argued limitation. The Examiner does not rely on
Brown or Moore to cure this deficiency (see Ans. 5—8).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Brown, Pappas, and Moore. For the same reasons, we also do not sustain
the Examiner’s rejections of dependent claims 2—8, 24, and 25 which depend
from independent claim 1.
Independent claim 9 and dependent claims 10—13 and 21
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We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 9 under 35 U.S.C. § 103(a) because Pappas, on
which the Examiner relies, fails to disclose or suggest “the [interactive voice
recognition (IVR)] system prompts the recipient to accept or reject the terms
and conditions agreement,” as recited by limitation [d] of independent claim
1 (see Appeal Br. 4—7).
The Examiner maintains that the rejection is proper, and cites column
2, lines 31—36; column 3,11. 29-35; column 5, lines 21—32; column 9, lines
30-36; and Figures 2 and 3, of Pappas as disclosing the argued limitation
(see Final Act. 9-10, 39-40; see also Ans. 6). More particularly, the
Examiner finds that “Pappas teaches in col. 3, lines 29-35 and figure 1 an
electronic option system that includes client network devices, including
wireless telephones []‘wireless telephones’ considered by the Examiner to be
‘interactive voice or IVR systems’ of the current invention[]” (Ans. 6).
However, we agree with Appellants that there is nothing in the cited
portions that discloses or suggests the argued limitation. In this regard, we
note that the “client network devices 12,14,16, i.e.,” (see Pappas, col. 3,11.
31) “wireless telephones,” referred to by the Examiner (see Ans. 6), are only
used to communicate with “server network devices 20, 22, 24” (see Pappas,
col. 3,11. 45 46). Therefore, whether or not the “wireless telephones” of
Pappas constitute an “IVR system” as required by independent claim 9, is
irrelevant because it is not the wireless telephone that “prompts the recipient
to accept or reject the terms and conditions agreement,” as required by
limitation [d], but rather the “server network devices 20, 22, 24” (id.) of
Pappas that would “prompt the recipient.” The Examiner does not rely on
Brown or Moore to cure this deficiency (see Ans. 5—8).
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In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Brown, Pappas, and Moore. For the same reasons, we also do not sustain
the Examiner’s rejections of dependent claims 10—13 and 21 which depend
from independent claim 9.
Independent claim 14 and dependent claim 15
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 14 under 35 U.S.C. § 103(a) because “[wjhile
Hafer discloses money transfer convenience cards, Hafer nonetheless, fails
to teach or suggest presenting a fee discount coupon in response to
acceptance of terms and conditions associated with the coupon, as in claim
14,” as recited by limitation [c] of independent claim 14 (see Appeal Br. 7,
8).
The Examiner maintains that the rejection is proper, and cites column
6, lines 48—57 of Pappas as disclosing the argued feature (see Ans. 8; see
also Final Act. 19-20 (citing Hafer | 50, Fig. 1A; Pappas, col. 5,11. 23—32,
col. 10,11. 8—23, Figs. 2, 3, 4A, and 4B)). More particularly, the Examiner
finds
[i]n the Final Office Action mailed June 25, 2014, claim 14 was
prosecuted over Hafer in view of Pappas. As such, any
deficiencies in Hafer can be covered by Pappas. In this instance,
Pappas teaches in col. 6, lines 48—57 a “personalized electronic
coupon” dynamically created by a server network and sent to a
client network device based on current or previous input from a
user. A purchaser of an option may input one or more desired
options terms to create his/her own personalized electronic
coupon [“purchaser inputting options terms in order to create
his/her own personalized electronic coupon” considered by the
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Examiner to be “acceptance of terms and conditions associated
with the coupon” of the current invention] and [“coupon”
inherently considered by the Examiner to be a “discount” of the
current invention],
(Ans. 8).
We have reviewed the cited portions of Pappas and Hafer, and agree
with Appellants that none of the cited portions of Pappas or Hafer discloses
or suggests the argued features. Here, we note that limitation [c] of
independent claim 14 recites
a host computer system in communication with the request
device and the fee device, the host computer system configured
to, in response to the request for the money transfer, send a first
text message to the recipient. . . prompting] the recipient to
accept or reject the terms and conditions agreement by sending
to the host computer a response text message indicating
acceptance or rejection of the terms and conditions agreement.
Independent claim 14, thus, requires “prompting] the recipient to
accept or reject the terms and conditions agreement by sending to the host
computer a response text message indicating acceptance or rejection of the
terms and conditions agreement.” However, as discussed above with respect
to independent claim 1, we agree with Appellants that “Pappas specifically
recites that ‘the electronic option terms are accepted by selecting the
‘ACCEPT’ button 58 (FIG. 4B)’” (Appeal Br. 5 (citing Pappas, col. 10,11.
15—16)), and as such, Pappas does not disclose or suggest that the recipient
“accept[s] or reject[s] the terms and conditions agreement by sending to the
host computer a response text message.” Thus, we fail to see, and the
Examiner does not adequately explain how, Pappas discloses or suggests the
argued feature. The Examiner does not rely on Hafer or Brown to cure this
deficiency (see Ans. 8).
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In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Hafer, Pappas, and Brown. For the same reasons, we also do not sustain the
Examiner’s rejection of dependent claim 15 which depends from
independent claim 14.
Independent claim 17 and dependent claims 18, 22, and 23
Appellants assert that “[c]laim[] 17 stands rejected as being obvious
over Hafer in view of Moore. Appellant respectfully traverses this rejection
at least because Hafer and Moore do not teach or suggest all of the
recitations of claim 17” (Appeal Br. 8).
However, Appellants’ assertion does not rise to the level of a
substantive argument for patentability. Cf. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (holding that the Board reasonably interpreted 37 C.F.R.
§ 41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). Here,
Appellants refer to “the same or similar reasons stated above with regard to
Hafer and Moore” (Appeal Br. 8), however, none of independent claims 1, 7,
and 14 are rejected under this rejection. We also note that Appellants’ briefs
provide no arguments with respect to Moore.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 17 under 35 U.S.C. § 103(a) as unpatentable over Hafer
and Moore. For the same reasons, we also sustain the rejections of
dependent claims 18, 22, and 23, which are not separately argued.
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DECISION
The Examiner’s rejection of claims 1—15, 17, 18, and 21—25 under
35 U.S.C. § 101 is sustained.
The Examiner’s rejections of claims 1—15, 21,21, 24, and 25 under 35
U.S.C. § 103(a) are sustained.
The Examiner’s rejections of claims 17, 18, 22, and 23 under 35
U.S.C. § 103(a) are not sustained.
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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