Ex Parte SteenDownload PDFPatent Trial and Appeal BoardSep 4, 201311935150 (P.T.A.B. Sep. 4, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GARNET HUGH STEEN ____________ Appeal 2011-008376 Application 11/935,150 Technology Center 3600 ____________ Before: ANTON W. FETTING, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008376 Application 11/935,150 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1-9 and 11-201. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates generally to a method and system for a credit report reminding service (Spec., para. [0002]). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A computer-implemented method for reminding a consumer to obtain a plurality of free credit reports from a plurality of credit reporting bureaus, comprising: receiving a request from the consumer, through a website user interface, to provide reminders to obtain free credit reports from the plurality of credit reporting bureaus; querying the consumer, through the website user interface, for identification information and past credit reporting information; storing the identification information and the past credit reporting information into one or more credit report reminder service databases; determining, with a credit report reminder server and using the past credit reporting information stored in the one or more credit report reminder service databases, a first date on which a reminder is to be sent to the consumer with respect to a first credit reporting bureau of the plurality of credit reporting bureaus; and transmitting a first reminder message to the consumer on the first date, via the credit report reminder server and across an electronic communication network, to obtain a first free credit report from the first credit reporting bureau. 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Sep. 27, 2010) and the Reply Brief (“Rep. Br.,” filed Feb. 14, 2011), and the Examiner’s Answer (“Ans.,” mailed Dec. 13, 2010). Appeal 2011-008376 Application 11/935,150 3 Claims 9 and 12 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Claims 1-4, 7-12, 15, 16, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Guy (US 2005/0154664 Al; pub. Jul. 14, 2005), Neil J. Rubenking, MYTRUSTON, PC Magazine (Feb. 26, 2007) (hereinafter Truston), and Sun, Get a Free Credit Report Every Four Months (http://www.thesunsfinancialdiary.com/credit-reportlget -a-free-credit- report-every-four-months/) (last visited Mar. 11, 2009) (hereinafter Sun). Claims 5, 6, 13, 14, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Guy, Truston, Sun, Godley (US 2008/0040386 Al; pub. Feb. 14, 2008), and Flexo, Consumerism Commentary, 1-5 (Mar. 29, 2006) (hereinafter Flexo). We AFFIRM. ANALYSIS Indefiniteness Rejection of Claims 9 and 12 We are not persuaded the Examiner erred in asserting that claims 9 and 12 are indefinite under 35 U.S.C. § 112, second paragraph (App. Br. 5- 8; Reply Br. 4-6). Appellant does not challenge the propriety of the rejection. Instead, Appellant only requests entry of the Amendment After Final filed January 14, 2010, which purportedly renders this rejection moot. However, refusal by the examiner to enter an Amendment After Final relates to a petitionable matter and not to an appealable matter. In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973); In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also Manual of Patent Examining Procedure (MPEP) §§ 1002.02(c), 1201 (8th Ed., Rev. 9, Aug. 2012). Thus, Appellant’s proper Appeal 2011-008376 Application 11/935,150 4 recourse was to file a petition under 37 C.F.R. §§ 1.127 and 1.181 to be addressed by the Technology Center Director instead of by appeal to this Board. Accordingly, as claims 9 and 12 are currently not amended in view of the Amendment After Final filed January 14, 2010, and Appellant does not substantively challenge the rejection of claims 9 and 12 in their current form, we sustain this rejection. Obviousness Rejection of Claims 1-4, 7-12, 15, 16, 19, and 20 We are not persuaded the Examiner erred in asserting that a combination of Guy, Truston, and Sun renders obvious Claims 1-4, 7-12, 15, 16, 19, and 20 (App. Br. 6-7; Reply Br. 4). Appellant does not challenge the merits of the references. Instead, Appellant filed a Declaration under 37 C.F.R. § 1.131 on July 2, 2009 to antedate the Truston reference. The Examiner found the Declaration deficient, and issued a final rejection on October 30, 2009. We agree with the Examiner’s analysis concerning this Declaration on pages 5 and 6 of the final rejection. To remedy the deficient Declaration, Appellant filed a Second Declaration under 37 C.F.R. § 1.131 on January 14, 2010. The Examiner refused entry of the Second Declaration in an Advisory Action mailed February 4, 2010. Appellant now asks the Board to enter the Second Declaration and review its merits in antedating the Truston reference. We cannot. Entry of the Second Declaration after a final rejection is a formal matter of sufficiency and propriety that is under the Examiner’s purview. Concerning this, MPEP § 715.08 (8th Ed., Rev. 9, Aug. 2012) reads as follows: 715.08 Passed Upon by Primary Examiner [R-6] The question of sufficiency of affidavits or declarations under 37 C.F.R. § 1.131 should be reviewed and decided by a primary examiner. Appeal 2011-008376 Application 11/935,150 5 Review of questions of formal sufficiency and propriety are by petition filed under 37 C.F.R. § 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)). Review on the merits of a 37 C.F.R. § 1.131 affidavit or declaration is by appeal to the [Patent Trial and Appeal Board]. Accordingly, Appellant’s proper recourse was to file a petition under 37 C.F.R. § 1.181 to be addressed by the Technology Center Director. In the absence of the Second Declaration, the rejection is unchallenged, and thus we sustain this rejection. Obviousness Rejection of Claims 5, 6, 13, 14, 17, and 18 Appellant does not challenge the rejection of claims 5, 6, 13, 14, 17, and 18 as obvious over a combination of Guy, Truston, Sun, Godley, and Flexo. Accordingly, we summarily sustain this rejection. DECISION The decision of the Examiner to reject claims 1-9 and 11-20 is 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh Copy with citationCopy as parenthetical citation