Ex Parte Chen et al

Patent Trial and Appeal BoardNov 28, 2012

11394871 (P.T.A.B. Nov. 28, 2012)

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. 11/394,871 03/31/2006 Fred Chen 11884/491701 9782 53000 7590 11/28/2012 KENYON & KENYON LLP 1500 K STREET N.W. WASHINGTON, DC 20005 EXAMINER MATTIA, SCOTT A ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 11/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRED CHEN and TIAN XU ____________________ Appeal 2011-004903 Application 11/394,871 Technology Center 3600 ____________________ Before: MEREDITH C. PETRAVICK, MICHAEL W. KIM, and NINA L. MEDLOCK, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004903 Application 11/394,871 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 17 and 20-221. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to determining whether a newly found business partner, believed to be new by a user of the business partner database, matches an existing business partner record already saved in an internal business partner database or whether the newly found business partner is likely to be truly new, and therefore, needs to be stored into the business partner database as a new record (Spec., para. [0006]). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for identifying a new business partner, comprising: receiving a data record describing a first entity along a plurality of attributes; comparing, on an attribute-by-attribute basis, the received data record describing the first entity with another multi-attribute data record describing a second entity, the other data record stored in a database; calculating a total difference rate between the first entity and the second entity based on the attribute-by-attribute comparison, the calculated total difference rate including a weighting of at least two attribute comparisons, and if the total difference rate exceeds a first predetermined threshold, storing the first entity as a new business partner in a data storage device. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed June 23, 2010) and Reply Brief (“Reply Br.,” filed November 12, 2010), and the Examiner’s Answer (“Ans.,” mailed September 14, 2010). Appeal 2011-004903 Application 11/394,871 3 Claims 1-17 and 20-22 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1-7, 16-17, and 20-22 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Haimowitz (US 5,960,430, iss. Sep. 28, 1999) and Pant (US 6,012,053, iss. Jan. 4, 2000). Claims 8-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pant and Haimowitz. Claims 16, 17, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Haimowitz and Breese (US 6,018,738, iss. Jan. 25, 2000). ANALYSIS Written Description Rejection We are persuaded the Examiner erred in asserting that the Specification does not disclose “a data storage device,” as recited in independent claims 1 and 16 (App. Br. 5-7; Reply Br. 3-4). Specifically, paragraphs [0006], [0008], and [0027] of the Specification disclose importing new business partner information into database 103, 205, which is a data storage device. Statutory Subject Matter We are not persuaded the Examiner erred in asserting that claims 1-7, 16-17, and 20-22 recite non-statutory subject matter (App. Br. 7-8; Reply Br. 4-6). The only structure set forth in independent claims 1 and 16 is a data storage device for storing new record data. The Supreme Court in Bilski Appeal 2011-004903 Application 11/394,871 4 approvingly cited Flook, stating that “Flook stands for the proposition that the prohibition against patenting abstract ideas ‘cannot be circumvented by … adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010). The mere storing of new record data “on a data storage device” is just such an extra-solution activity insignificant to the core of the invention, and thus is disfavored by Bilski and Flook. To hold otherwise would allow Appellants to easily circumvent the unpatentability of abstract ideas by merely storing them on a data storage device, rendering superfluous the prohibition against patenting abstract ideas. Appellants assert that the data storage device is central to the invention, and thus not “mere insignificant extra-solution activity” (App. Br. 8). Appellants misunderstand the standard. Regardless of how technically “significant” the storing may be to the invention, the act of storing data on a data storage device itself is still considered extra-solution activity, and thus “insignificant.” Appellants assert the method steps are performed automatically, as set forth in the Specification (Reply Br. 6). However, aside from the extra- solution “storage” activity, none of the claims actually recites “automatically” performing the method steps, and limitations from the specification will not be imported into the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). Prior Art Rejection of Independent Claim 1 We are not persuaded the Examiner erred in asserting that a combination of Haimowitz and Pant discloses or suggests “calculating a total difference rate between the first entity and the second entity based on Appeal 2011-004903 Application 11/394,871 5 the attribute-by-attribute comparison,” as recited in independent claim 1 (App. Br. 9-10; Reply Br. 6-7). In reply to Appellants’ arguments set forth on pages 9-10 of the Appeal Brief, we agree with, and adopt, the Examiner’s findings and rationales, as set forth on pages 25-26 of the Answer. As Appellants also rely on these arguments for the rejections of claims 2-15 and 21-22, those rejections are also sustained (App. Br. 10; Reply Br. 7). Prior Art Rejection of Independent Claim 16 We are persuaded the Examiner erred in asserting that a combination of Haimowitz and Breese renders obvious independent claim 16 (App. Br. 10-11; Reply Br. 7). We agree with Appellants that the Examiner has not set forth which portions of Haimowitz and Breese correspond to “ɑ = 1 when an attribute of the potentially new business partner is different from a like-kind attribute of a previously stored data record,” as recited in independent claim 16 (Ans. 21-22). For the same reasons, we also do not sustain the prior art rejections of dependent claims 17 and 20. DECISION The Examiner’s rejection of claims 1-17 and 20-22 under 35 U.S.C. § 112, 1st paragraph, is REVERSED. The Examiner’s rejection of claims 1-7, 16-17, and 20-22 under 35 U.S.C. § 101 is AFFIRMED. The Examiner’s rejection of claims 16, 17, and 20 under 35 U.S.C. § 103(a) is REVERSED. Appeal 2011-004903 Application 11/394,871 6 The Examiner’s rejection of claims 1-15 and 21-22 under 35 U.S.C. § 103(a) 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