Ex Parte Singh

Patent Trial and Appeal Board

Nov 19, 2013

12281917 (P.T.A.B. Nov. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAVNEET SINGH
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Appeal 2011-011438
Application 12/281,917
Technology Center 3600
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Before JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellant’s invention relates to Internet-based non-partisan solutions
for elections and campaigns (Spec. 1, ll. 11-14).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of providing election information, the method
comprising:
receiving voter profile information from a voter;
associating a personal identifier with at least a portion of
the voter profile information;
determining at least one voting classification information
based on at least a portion of the voter profile information and
at least one public record database; and
providing at least a portion of the determined voting
classification information to the voter via a voter interface.

THE REJECTIONS
The following rejections are before us for review:
Claims 1-5, 7-11, 13, 14, and 16 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Fuller (US 2001/0029463 A1, pub. Oct. 11, 2001).

1 Our decision will refer to Appellant’s Appeal Brief (“App. Br.,” filed
March 15, 2011) and Reply Brief (“Reply Br.,” filed June 30, 2011), and the
Examiner’s Answer (“Ans.,” mailed May 11, 2011).
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Claims 6, 12, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fuller in view of Official Notice, as evidenced by
Appellant’s Own Admissions (hereinafter “AOA”), and as further evidenced
by Altomare (US 7,249,075 B1, iss. Jul. 24, 2007).

ANALYSIS
Anticipation
Independent claim 1 and dependent claims 3 and 8
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) by Appellant’s argument that Fuller fails to
disclose “providing at least a portion of the determined voting classification
information to the voter via a voter interface,” as recited in claim 1. Instead,
we agree with, and adopt the Examiner’s response, with findings by
paragraph and figure numbers, to Appellant’s argument as set forth at pages
9-11 of the Answer.
Therefore, we will sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(b). We also will sustain the Examiner’s rejection of
dependent claims 3 and 8, which were not separately argued.
Dependent claim 2
Claim 2 depends from claim 1 and recites that “the determining at
least one voting classification information is further based on private
candidate databases.”
We are not persuaded that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 102(b) by Appellant’s argument that “the citations to
paragraphs 6 and 36 [of Fuller], at best, discuss commercial databases”
(App. Br. 10). Instead, we agree with the Examiner that, in the context of
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claim 2, the term “private,” as reasonably broadly construed, refers to an
activity undertaken by individuals not holding public office or employment,
i.e., private citizens (Ans. 9).
Fuller discloses an advocate database in paragraphs [0018] and
[0042], and describes that the database contains grassroots advocate contact
information. We agree with the Examiner that an advocate database, which
contains information regarding “grassroots advocates,” is a “private
database,” as called for in claim 2, as distinguished from “a government-run
database, which would be a public database containing information
regarding public officials, and a commercial database for conducting
commerce and transactions i.e.[,] Amazon.com” (Ans. 12).
Therefore, we will sustain the Examiner’s rejection of claim 2 under
35 U.S.C. § 102(b).
Dependent claim 4
Appellant argues that the Examiner erred in rejecting claim 4 under
35 U.S.C. § 102(b) because “[c]laim 4 requires providing the information to
the candidate, but the Examiner’s citation only discloses providing
information to the ‘advocate’ or voter” (App. Br. 10). In fact, claim 4
recites, “[t]he method of claim 3 further comprising providing the candidate
profile to the voter based on the user voter profile information and candidate
profile” (emphasis added) – which Appellant ostensibly admits that the
“Examiner’s citation” discloses.
Therefore, we will sustain the Examiner’s rejection of claim 4 under
35 U.S.C. § 102(b).
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Dependent claim 5
Appellant argues that the Examiner erred in rejecting claim 5 under
35 U.S.C. § 102(b) because Fuller fails to disclose that “the voting
classification information comprises at least one polling place location,” as
recited in the claim (App. Br. 10). Appellant’s argument is not persuasive at
least because the feature that Appellant maintains is not disclosed in Fuller,
i.e., the nature of the voting classification information, does not affect the
manner in which the claimed method is performed. As such, it constitutes
non-functional descriptive material that may not be relied on for
patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is
not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability). See
also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative).
Therefore, we will sustain the Examiner’s rejection of claim 5 under
35 U.S.C. § 102(b).
Dependent claim 7
Appellant argues that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 102(b) because Fuller fails to disclose that “the voting
classification information comprises at least one candidate profile,” as
recited in claim 7 (App. Br. 10). However, as described above with respect
to claim 5, the nature of the voting classification information constitutes
non-functional descriptive material that may not be relied on for
patentability. See In re Ngai, 367 F.3d at 1339.
Therefore, we will sustain the Examiner’s rejection of claim 7 under
35 U.S.C. § 102(b).
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Claims 9-13
Appellant argues that “[t]he rejections to claims 9-13 fail for similar
reasons [to those set forth with respect to claims 1, 2, 4, 5, and 7]” (App.
Br. 10).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting any of claims 1, 2, 4, 5, and 7 under 35 U.S.C.
§ 102(b). Therefore, we will sustain the Examiner’s rejection of claims 9-13
under 35 U.S.C. § 102(b).
Independent claim 14 and dependent claim 16
Claim 14 is directed to a method for providing voter profile
information to a candidate and recites that the method comprises “providing
the voter profile to the candidate via a candidate interface.”
Appellant argues that the rejection of claim 14 under 35 U.S.C.
§ 102(b) should be withdrawn because “the ‘voter centric’ system described
in Fuller, and particularly in paragraph 36, does not make any
communications to the candidate . . . .” (App. Br. 11). However, we agree
with the Examiner that Fuller describes this feature at paragraph [0037]
(Ans. 14-15).
Therefore, we will sustain the Examiner’s rejection of claim 14 under
35 U.S.C. § 102(b). We also will sustain the Examiner’s rejection of
dependent claim 16, which was not separately argued.
Obviousness
Dependent claims 6 and 12
Claim 6 depends from claim 1 and recites that “the voting
classification information comprises at least one financial contribution
record.” Claim 12 depends from claim 10, which in turn depends from
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claim 9, and recites that “the voting classification information comprises at
least one of at least one polling place location, at least one financial
contribution record[,] and at least one candidate profile.”
We will sustain the Examiner’s rejection of claims 6 and 12 under
35 U.S.C. § 103(a) because these claims merely describe the nature of the
voting classification information – non-functional descriptive material that
neither affects the manner in which the method of claim 6 is performed nor
the structure or function of the computer usable medium of claim 12, and
which may not be relied on to distinguish over the prior art for purposes of
patentability. See In re Ngai, 367 F.3d at 1339.
Dependent claim 15
Claim 15 depends from claim 14 and recites that the method of
claim 14 further comprises:
determining at least one financial contribution record
associated with the determined voter profile;
comparing the determined financial contribution record
with a threshold financial contribution; and
providing at least one of the determined financial
contribution and a difference between the determined financial
contribution record and threshold financial contribution to the
candidate based on the comparison.

In rejecting claim 15 under 35 U.S.C. § 103(a), the Examiner took
Official Notice that “it is old and well known in the political arts to ensure
that financial contributions are of public record, and that contributors may
provide financial contributions at levels that will augment their relationships
with the candidates” (Ans. 6). The Examiner also pointed to AOA as
showing that “contributions and donations to a political candidate are known
in the political arts” (Ans. 6-7) and as further teaching that “voters may fail
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to support candidates that would match the views of the voter for lack of
knowledge of the candidate’s identity, or fail to support the candidate with
as much money as the voter could” (see Spec. 2, ll. 26-29).
In the Response to Argument, the Examiner asserts that “an obvious
practical implementation [of the algorithm recited in claim 15] would be to
determine if a candidate’s financial contribution from an individual meets of
[sic] exceeds a certain threshold, among many other applications” (Ans. 17).
The Examiner cites Altomare at column 11, lines 48-62 as disclosing one
such other application, and explains that Altomare “discloses a financial
transaction and is used as support for the Examiner’s position of OFFICIAL
NOTICE” (Ans. 17).
We are not persuaded that the Examiner erred in rejecting claim 15 by
Appellant’s argument that “[w]hether it is ‘old and well known’ that
donations are public record is flat irrelevant to the question of whether it is
obvious to provide ‘at least one of the determined financial contribution and
a difference between the determined financial contribution record and
threshold financial contribution to the candidate based on the comparison’ as
claimed in claim 15” (App. Br. 11). We also are not persuaded that “the
subject of the Official Notice does not justify the rejection [of claim 15]”
(Reply Br. 2).
Altomare is directed a system and method for managing customer
holdings in a trust (see, e.g., Altomare, cols. 3 and 4), and discloses a
method at column 11, lines 48-62 for computing periodic, e.g., quarterly,
cash and performance distributions. Altomare describes that a
predetermined threshold is established to secure a base price for a trust unit
against which a call may be made to ensure the integrity of the unit. If the
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threshold is met, i.e., if the difference between the trust unit price at the end
of the period and the threshold is greater than the minimum payment for the
trust unit, the excess monies are distributed to the unit owners as a benefit.
Altomare thus discloses that the method for computing periodic distributions
comprises the steps of (1) computing the trust unit price “X” based on
market data at the end of the period; (2) comparing price X to the
predetermined threshold; and (3) computing the difference between X and
the predetermined threshold. This difference is then used in determining the
amount of the performance payment (see Altomare, col. 11, ll. 48-62).
The Supreme Court has stated that when considering obviousness “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Thus, “if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” Id. at 417.
Altomare discloses an algorithm for determining whether a threshold
has been met in judging whether excess funds are available for distribution
to the owner of a trust unit, i.e., to advance the individual owner’s financial
position. We conclude in this case that a person skilled in the art would
have recognized that this same algorithm may similarly be used to
determine, based on a threshold comparison, whether excess funds (over the
funds already contributed) are available that may be distributed (i.e.,
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contributed) to a candidate’s campaign, i.e., to advance the individual
voter’s political position.
Therefore, we will sustain the Examiner’s rejection of claim 15 under
35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1-16 under 35 U.S.C. § 103(a)
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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