Ex Parte Tagg

Patent Trial and Appeal Board

Aug 29, 2016

11053377 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111053,377 02/08/2005 Bradley S. Tagg
30449 7590 08/31/2016
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920040l59US1 7301
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte BRADLEY S. TAGG
Appeal2014-003166
Application 11/053,3771
Technology Center 3600
Before, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRADLEY B. BYAT, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 4--8, 10, 11, 13-18, 22-27, 29, 31-37, 41--46, 48,
50-56, 60-65, 67, 69-74 and 76. We have jurisdiction under 35 U.S.C.
§ 6(b ).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2014-003166
Application 11/053,377
1. A system, comprising:
a processing device; and
an agreement authoring tool for generating a revisable
agreement defining a set of terms and conditions related to an
offering, wherein said offering comprises a software product or
an Internet service, wherein said terms and conditions consist of
copyright laws associated with said offering and a specific time
frame that said offering is good, wherein said processing device
is for executing said agreement authoring tool, wherein said
agreement authoring tool is for first managing a list of
agreement subscribers, wherein said first managing is based on
messages exchanged when a customer receives the offering,
accepts an agreement, and becomes a subscriber; wherein said
agreement authoring tool is for second managing a list of
different agreements previously transmitted to different
agreement managing tools for future maintenance of the
different agreements, wherein said agreement authoring tool is
configured to generate a registration associating said offering
with a subscriber, wherein said agreement authoring tool is
configured to store said registration in a subscriber database
within said agreement authoring tool, wherein said agreement
authoring tool is configured to verify, based on said
registration, that said offering is associated with said subscriber,
wherein said agreement authoring tool is configured to generate
at least one associated action related to said revisable
agreement, wherein said at least one associated action is for
said agreement managing tool to perform an action on a copy of
said revisable agreement, wherein said action comprises a
future action consisting of extending said revisable agreement,
accepting or declining said revisable agreement, and changing
terms of said revisable agreement, wherein said processor is
configured to apply local and enterprise level defaults and
limits to said copy of said revisable agreement, wherein said
local and enterprise level defaults and limits are associated with
choices provided by said at least one associated action, wherein
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Appeal2014-003166
Application 11/053,377
said processor is configured to define enterprise policies related
to performing said specified action on said copy, wherein said
enterprise policies are associated with a governing party,
wherein said enterprise policies comprise defaults related to
choices and user agreements related to said revisable
agreement, wherein said agreement authoring tool is configured
to define a related script, wherein said related script comprises a
sequence of steps comprised by said at least one associated
action, wherein said agreement authoring tool is configured to
determine that a relationship exists between said related script
and additional execution scripts comprised by additional actions
from additional agreements, wherein said agreement authoring
tool is configured to link said least one associated action to the
related script and a related event comprising a related portion of
said revisable agreement, wherein said agreement authoring
tool is configured to link said least one associated action, said
related script and said related event to said additional execution
scripts, said additional actions, and said additional agreements,
wherein said agreement authoring tool is configured to store
said revisable agreement and said least one associated action as
a master copy, wherein said packaging tool is configured to
create a package comprising said copy of said revisable
agreement, said offering, said at least one associated action,
said related script, said related event, said additional execution
scripts, said additional actions, and said additional agreements,
and wherein said agreement authoring tool is configured to
transmit said package to an agreement managing tool for
revising said copy.
App. Br. 135-137 (Claims Appendix).
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Appeal2014-003166
Application 11/053,377
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Conant et al.
Elias et al.
US 2002/0129056 Al
US 2007/0124228 Al
Sep. 12,2002
May 31, 2007
The following rejections are before us for review. 2
Claims 1, 4--8, 10, 11, 13, and 15-17 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Conant et al.
Claims 18, 22-27, 29, 31, 33-37, 41--46, 48, 50, 54--56, 60-65, 67,
69, and 71-74 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Conant et al.
2 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 most recent Patent Office
guidance on § 101 found in the May 4, 2016 Memorandum to the Examining
Corps, titled "Formulating a Subject Matter Eligibility Rejection and
Evaluating the Applicant's Response to a Subject Matter Eligibility
Rejection," and the "July 2015 Update on Subject Matter Eligibility,"
80 Fed. Reg. 45429 (July 30, 2015), which supplements the "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014 ), and the "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.
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Appeal2014-003166
Application 11/053,377
Claim 76 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Conant et al. in view of Elias et al.
ANALYSIS
Independent claims 1, 8, 18, 27, 37, 46, 56 and 65 each require in one
form or another,
wherein said agreement authoring tool is
configured to define a related script, wherein said
related script comprises a sequence of steps
comprised by said at least one associated action,
wherein said agreement authoring tool is
configured to determine that a relationship exists
between said related script and additional
execution scripts comprised by additional actions
from additional agreements, wherein said
agreement authoring tool is configured to link said
least one associated action to the related script and
a related event comprising a related portion of said
revisable agreement ....
Claim 1 Appx.
The Examiner found concerning this limitation:
([0036; 0037; 0068] discloses the system being
configured to define revision to clauses (i.e. a
related script) wherein the revision to a clause
comprises a sequence of steps such as identifying
the clauses that are in negotiation, inserting the
proposed revision into the clauses in a redline
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Appeal2014-003166
Application 11/053,377
format, etc ... ), wherein said agreement authoring
is configured to determine that a relationship exists
between said related script and additional
execution scripts comprised by additional actions
from additional agreements, wherein said
agreement authoring tool is configured to link said
at least one associated action to the related script
and a related event comprising a related portion of
said revisable agreement ([0076] discloses
determining a relationship and linking the revised
clauses (i.e. related script) and the comments and
revised documents (i.e. additional agreements)
associated with an executed document), wherein
said agreement authoring tool is configured to link
said at least one associated action, said related
script, and said related event to said additional
execution scripts, said additional actions, and said
additional agreements ([007 6] discloses
determining a relationship and linking the revised
clauses (i.e. related script) and the comments and
revised documents (i.e. additional agreements)
associated with an executed document),
(Final Act. 9).
Appellants argue,
[the] method of Conant does not even suggest
determining a relationship between a related script
(or sequence of steps) and additional execution
scripts or steps (comprised by additional actions
from additional agreements) as recited in
Appellant's claim 1. The preceding argument by
the Examiner states that Conant discloses
"determine that a relationship exists between said
related script and additional execution scripts
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Appeal2014-003166
Application 11/053,377
comprised by additional actions from additional
agreements ... ([0076] discloses determining a
relationship and linking the revised clauses (i.e.
related script)". Appellant argues that the method
of Conant does not even suggest determining
relationships between a related script (or sequence
of steps) and additional execution scripts or steps
(comprised by additional actions from additional
agreements). Appellant contends that Conant
teaches (in paragraph 0076) assigned selectable
privileges differing from determining relationships
between scripts or sequences of steps (as recited in
Appellants claim 1 ). Furthermore, Appellant
argues that Conant does not even suggest any
sequence of steps that are even associated with an
action.
(Appeal Br. 31 ).
We agree with Appellants. Conant at paragraph 7 6 discloses
facilitating the "creation of a proposed document and then monitors and
governs the procedures by which the proposed document can be modified by
the respective parties who access the document through an exchange" and,
providing "selectable privileges to be assigned to various users of the
system". The Examiner does not explain, and it is not apparent how this
disclosure discloses a script comprising a sequence of steps and a
linking/relating by the agreement authoring tool so as "to link said least one
associated action to the related script and a related event comprising a
related portion of said revisable agreement" of claim 1. "A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference."
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Appeal2014-003166
Application 11/053,377
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987), cert. denied, 484 U.S. 827 (1987).
The rejection of independent claims 18, 27, 37, 46, 56 and 65 under
35 U.S.C. § 103(a) does not remedy the deficiencies found above, and hence
the rejection of these claims is likewise reversed.
Because claims 4--7, 10, 11, 13-17, 22-26, 29, 31-36, 41--45, 48, 50-
55, 60-64, 67, 69-74, and 76 depend from one of independent claims 1, 8,
18, 27, 37, 46, 56 and 65 which we do not sustain, the rejection of the
dependent claims likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1, 4--8, 10, 11,
13, and 15-17 under 35 U.S.C. § 102(b).
We conclude the Examiner did err in rejecting claims 18, 22-27, 29,
31, 33-37, 41--46, 48, 50, 54--56, 60-65, 67, 69, 71-74 and 76 under 35
U.S.C. 103(a)
DECISION
The decision of the Examiner to reject claims 1, 4--8, 10, 11, 13-18,
22-27, 29, 31-37, 41--46, 48, 50-56, 60-65, 67, 69-74 and 76 is reversed.
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)(l )(iv).
REVERSED
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