Ex Parte Tufte

Board of Patent Appeals and Interferences

Jun 19, 2009

10027829 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN N. TUFTE
____________

Appeal 2009-000309
Application 10/027,829
Technology Center 3600
____________

Decided:1 June 19, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000309
Application 10/027,829

2
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-30 and 32 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellant’s claimed invention is directed to methods and systems
for increasing the participation of contributors of charities and other non-
profits (Spec. 2:5-6). In one illustrative embodiment, the participation of
contributors is increased by allowing the contributors to track their
donations, or goods and/or services assigned to their donations, to an
ultimate destination (Spec. 2:12-15). Claim 1, reproduced below, is
representative of the subject matter of appeal.

1. A computer assisted method comprising the steps of:
receiving either directly or indirectly a donation from a contributor;
assigning the donation to a delivery lot;
delivering the delivery lot to one or more people in need;
obtaining the location of the delivery lot at one or more points in time;
and
providing the location of the delivery lot to the contributor at one or
more points in time;
wherein a computer processor assists in performing one or more of the
receiving, assigning, obtaining and providing steps.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
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Smith US 2002/0095306 A1 Jul. 18, 2002
O’Donnell US 2002/0013739 A1 Jan. 31, 2002
Price US 2002/0120539 A1 Aug. 29, 2002
Burke US 6,876,971 B1 Apr. 5, 2005

Make a Difference Day Honorees,
http://www.usaweekend.com/diffday/honorees/1999/ (last visited
Nov. 13, 2005) (hereinafter “Make a Difference Day Awards”).

Episcopal Relief and Development - Projects for Hope,
http://web.archive.org/web/20001017140838/www.er-
d.org/projectsforhope.htm (last visited Nov. 16, 2005) (hereinafter
“Projects for Hope”).

The following rejections are before us for review:
1. Claims 10 and 20-23 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 1-26 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Projects for Hope and Smith.
3. Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Projects for Hope, Smith, and Make a Difference Day Honorees.
4. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Projects for Hope, Smith, and O’Donnell.
5. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Projects for Hope, Smith, and Burke.
6. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Projects for Hope, Price, and Smith.
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THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regards to claims 10 and 20-23 as rejected under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement this issue turns on whether the Specification provides support
for a “cash equivalent” as recited in claim 10 and for the recitation “wherein
the two or more donations are not initially designated as corresponding to
any particular delivery lot” as recited in claims 20-23.
With regards to claims 1-28, 30, and 32 this issue turns on whether the
combination of Projects for Hope and Smith disclose or suggest the claim
limitations argued by the Appellant and if the combination of the references
would have been obvious to one of ordinary skill in the art.
With regards to claim 29 this issue turns on whether the combination
of Projects for Hope, Smith, and O’Donnell disclose or suggest the claim
limitations argued by the Appellant and if the combination of the references
would have been obvious to one of ordinary skill in the art.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Projects for Hope disclose a list of charitable projects available for
funding support online (Page 1).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF2. Projects for Hope discloses a project number, location of the project,
project description, and what the donation amount will be used to fund. For
example, Project Number PH0001 is in Mexico, will be used to buy supplies
for a facility serving children in need, and $440 will help purchase furniture
and supplies (Page 10).
FF3. Projects for Hope discloses that donations may be used in “the area of
greatest need” and thus give contributions which are unassigned (Page 7).
FF4. Smith discloses a mail piece tracing and tracking system for linking
data objects and physical objects (Title and Abstract).
FF5. Smith discloses that information is provided to the user relating to the
delivery of packages, catalogs or other mail pieces sent to or by the user
through various catalog companies, delivery services, and/or the postal
service. The user is provided the updated information through a personal
web page site. [0009].
FF6. O’Donnell discloses an apparatus and method for providing
anonymous shipping services (Title, [0002])
FF7. O’Donnell discloses that the apparatus for shipping may include
anonymous donations and anonymous chat rooms [0146].
FF8. The Specification discloses that donations may be received a “VISA
card number” or “by cash or check” (Page 7:6-13).
FF9. The Specification states that: “The donations that have been
accumulated to meet the resource request may then be updated to include a
pointer or other reference to the assigned delivery lot” (Page 3:11-13).

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PRINCIPLES OF LAW
Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
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improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). However, “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.” Id.

ANALYSIS
Claim Rejections under 35 U.S.C. § 112, first paragraph
The Appellant argues that the rejection of claims 10 and 20-23 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement because the claims contain subject matter which was
not described in the Specification in such a way to reasonably convey to one
skilled in the art that the inventor, at the time the application was filed had
possession of the claimed invention is improper. The Appellant argues with
regard to claim 10 that it is well known that there are a variety of alternatives
to paying cash and that the Specification refers to cash equivalents such as
checks and credit card transfers (Br. 11, Reply Br. 3-4). The Appellant
argues with regard to claim 20 that the Specification provides support for the
limitation “wherein the two or more donations are not initially designated as
corresponding to any particular delivery lot” (Br. 12, Reply Br. 4-5).
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The Examiner has determined that claims 10 and 20-23 are properly
rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the
written description requirement. Specifically the Examiner has found that
the Specification does not provide any indication of a “cash equivalent” as
recited in claim 10. The Examiner has also found that the Specification
provides no support for the recitation in claim 20 for “wherein the two or
more donations are not initially designated as corresponding to any
particular delivery lot.”
We agree with the Appellant. To satisfy the written description
requirement, the disclosure must convey with reasonable clarity to skilled
artisans that the Appellant was in possession of the claimed invention as of
the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). “It is not necessary that the claimed subject matter be described
identically, but the disclosure originally filed must convey to those skilled in
the art that applicant had invented the subject matter later claimed.” In re
Wilder, 736 F.2d 1516, 1520 (Fed. Cir. 1984) (citing In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983)).
Here with regard to claim 10, the Specification discloses that
donations may be received a “VISA card number” or “by cash or check”
(FF8). One of ordinary skill in the art would readily have inferred that a
credit card or check would be a “cash equivalent” even though not described
identically in the Specification and that the applicant was in possession of
the claimed invention as of the filing date.
With regard to claim 20 the Specification states that: “The donations
that have been accumulated to meet the resource request may then be
updated to include a pointer or other reference to the assigned delivery lot”
(FF9). Since the Specification states that the donations may not be
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immediately assigned a delivery lot one of ordinary skill in the art would
readily have inferred this to show “wherein the two or more donations are
not initially designated as corresponding to any particular delivery lot” and
that the Applicant was in possession of the claimed invention as of the filing
date.
For these above reasons the rejection of claims 10 and 20, and
dependent claims 21-23 which depend from claim 20, under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement is not sustained.

Claims 1-19, 24-28 and 30
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Projects for Hope and Smith is improper. The
Appellant argues that in Projects for Hope, the sender of the goods is clearly
the Projects for Hope organization, and not the contributor, whose only role
is making a donation via the Projects for Hope website (Br. 14, Reply Br. 6-
7). The Appellant also argues that Smith does not disclose or suggest
providing the location of the delivery lot to the contributor at one or more
points in time (Br. 15).
The Examiner has determined that Projects for Hope teaches a website
where contributors can donate goods or services to organizations and that
Smith teaches a method for tracking the items (Ans. 4-5). The Examiner has
also determined that the contributor in the Projects for Hope reference
equates to the “sender” and that the shipping service provider corresponds to
the charitable organization.
We agree with the Examiner. Projects for Hope discloses a list of
projects available for funding support online (FF1). Projects for Hope
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discloses with each charitable project a project number, location of the
project, project description, and what the donation amount will be used to
fund (FF2). Smith discloses a mail piece tracing and tracking system for
linking data objects and physical objects (FF4). Smith discloses that
information is provided to the user relating to the delivery of packages,
catalogs or other mail pieces sent to or by the user through various catalog
companies, delivery services, and/or the postal service (FF5). The
modification of the online donation system of the Projects of Hope to track
items which are being shipped as disclosed by Smith is considered an
obvious and predictable use of prior art elements according to their
established functions for the benefit of tracking that the donation was
actually used. In the Projects of Hope disclosure the person making the
contribution online clearly can be considered the “sender” since without
them no such donation would be imitated and taking place. Regardless, one
of ordinary skill in the art would see the obvious and predictable advantage
in allowing the person making the donation to track the shipment of the
items of their donation to see that the items were actually shipped. For these
reasons the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Projects for Hope and Smith is sustained. The Appellant has not
argued claims 2-19, 24-26, and 28 separately and the rejection of these
claims is rejected for these same reasons.
The Appellant’s arguments for claim 27 are the same as addressed
above and for the same reasons given above the rejection of claim 27 under
35 U.S.C. § 103(a) as unpatentable over Projects for Hope, Smith, and Make
a Difference Day Honorees is sustained.
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The Appellant’s arguments for claim 30 are the same as addressed
above and for the same reasons given above the rejection of claim 30 under
35 U.S.C. § 103(a) as unpatentable over Projects for Hope, Smith and Burke
is sustained.

Claims 20-23 and 32
The Appellants argue that the rejection of claim 20 under 35 U.S.C.
§ 103(a) as unpatentable over Projects for Hope and Smith is improper
because the references fail to disclose “wherein the two or more donations
are not initially designated as corresponding to any part corresponding lot”
or “each contributor receiving the location of the delivery lot(s) that
corresponds to the contributor’s donation(s)” (Br. 18-19).
In contrast the Examiner has determined that Projects for Hope does
disclose that donations may be used in “the area of greatest need” and thus
give contributions which are unassigned (Ans. 17).
We agree with the Examiner. Projects for Hope does disclose that
donations may be used in “the area of greatest need” and thus give
contributions which are unassigned (FF3) and as such these donations would
not be initially designated as corresponding to any part corresponding lot.
Once Projects of Hope assigned these donations to the area of greatest need
the modification of the system to track items which are being shipped as
disclosed by Smith is considered an obvious and predictable use of prior art
elements according to their established functions for the benefit of tracking
that the donation was actually used. For these reasons the rejection of claim
20 under 35 U.S.C. § 103(a) as unpatentable over Projects for Hope; and
Smith is sustained. The Appellant has not argued claims 21-23 separately
and the rejection of these claims is rejected for these same reasons.
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The Appellant’s arguments for claim 32 are same as addressed above
and for the same reasons given supra the rejection of claim 32 under 35
U.S.C. § 103(a) as unpatentable over Projects for Hope, Price, and Smith is
sustained.
Claim 29
The Appellant argues that the rejection of claim 29 under 35 U.S.C.
§ 103(a) as unpatentable over Projects for Hope, Smith, and O’Donnell do
not teach to providing a chat room so that that the contributors that provided
donations to a common delivery lot can communicate with each other (Br.
20).
In contrast the Examiner has determined that O’Donnell does disclose
the facilitations of chat rooms for anonymous donations (Ans. 17) and that
the combination of the references would have been obvious.
We agree with the Examiner. Projects for Hope discloses with each
online charitable project a project number, location of the project, project
description, and what the donation amount will be used to fund (FF2).
Smith discloses a mail piece tracing and tracking system for linking data
objects and physical objects (FF4). O’Donnell discloses an apparatus for
shipping including anonymous donations and anonymous chat rooms (FF7).
The modification of the online donation system of Projects of Hope to track
items which are being shipped as disclosed by Smith and to include a chat
room to allow the anonymous donors to communicate as taught by
O’Donnell is considered an obvious and predictable use of prior art elements
according to their established functions for the benefit of tracking that the
donation was actually used and to allow donors to communicate. O’Donnell
has disclosed an apparatus for shipping including anonymous donations and
anonymous chat rooms and the extension of this teaching to the disclosures
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of Projects of Hope and Smith to provide a way for donors to communicate
with each other would have been a predictable benefit. For these reasons the
rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable over Projects
for Hope, Smith, and O’Donnell is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 10 and 20-23 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1-26 and 28 under 35 U.S.C. § 103(a) as
unpatentable over Projects for Hope and Smith.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claim 27 under 35 U.S.C. § 103(a) as unpatentable over
Projects for Hope, Smith, and Make a Difference Day Honorees.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claim 29 under 35 U.S.C. § 103(a) as unpatentable over
Projects for Hope, Smith, and O’Donnell.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claim 30 under 35 U.S.C. § 103(a) as unpatentable over
Projects for Hope, Smith, and Burke.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claim 32 under 35 U.S.C. § 103(a) as unpatentable over
Projects for Hope, Price, and Smith.
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DECISON
The Examiner’s rejection of claims 1-30 and 32 is 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)(1)(iv) (2007).

AFFIRMED

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