Ex Parte Cohen et al

Patent Trial and Appeal BoardSep 19, 2012

11537491 (P.T.A.B. Sep. 19, 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. 11/537,491 09/29/2006 Peter D. Cohen 120137.536 1495 500 7590 09/20/2012 SEED INTELLECTUAL PROPERTY LAW GROUP PLLC 701 FIFTH AVE SUITE 5400 SEATTLE, WA 98104 EXAMINER BOSWELL, BETH V ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 09/20/2012 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 PETER D. COHEN and CHRISTOPHER E. SMOAK ____________________ Appeal 2011-004922 Application 11/537,491 Technology Center 3600 ____________________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004922 Application 11/537,491 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 10-47. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM-IN-PART.1 BACKGROUND Appellants’ invention relates to a computer-implemented method for facilitating performance of tasks by task performer users, e.g., by distributing information regarding tasks via users’ interactions with third- party websites (Spec., para. [0001]). Claim 10, reproduced below, is illustrative of the subject matter on appeal: 10. A computer-implemented method for a task exchange server to facilitate performance of tasks by task performers, the method comprising: receiving information at a task exchange server about tasks submitted by task requesters as being available for performance by human task performer users; and facilitating performance of at least some of the submitted tasks by distributing information about tasks via one or more information services that are not provided by the task exchange server, the facilitating being performed by one or more programmed computing systems of the task exchange server and including, for each of the one or more information services, 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed September 23, 2010) and Reply Brief (“Reply Br.,” filed December 15, 2010) and the Examiner’s Answer (“Ans.,” mailed October 19, 2010). Appeal 2011-004922 Application 11/537,491 3 receiving one or more requests that are each for task information that is to be presented along with other information to a task performer user interacting with the information service, at least some of the other information to be presented being provided by the information service; and for each of at least one of the requests, determining one or more available tasks, and providing information about the determined tasks for presentation to a human task performer user via the information service so that the human task performer user is able to perform at least one of the determined tasks. THE REJECTIONS The following rejections are before us for review: Claims 10-28 and 30-47 stand rejected under 35 U.S.C. § 102(b) as anticipated by Don (US 2003/0120559 A1, pub. Jun. 26, 2003). Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over Don in view of Downs (US 6,112,243, iss. Aug. 29, 2000). Claims 10-24 and 27-30 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office.). Additional facts may appear in the Analysis below. FF1. Don discloses a system and method of distributing public relations and marketing content via the Internet. In accordance with the Appeal 2011-004922 Application 11/537,491 4 method, information producers register their pertinent company information with a central database server (the Universal Internet Registry) and receive a unique identifier, which is encoded into news content submitted by the information producer to the central database server and through commercial wire services. Information consumers may submit search requests for news content to the central server for processing. A statistical processor and server report data back to the information producers regarding the number of times they are selected for news content tracking and the number of times each news content is accessed (Don, Abstract; paras. [0010] through [0013]; and Figs. 2 and 3). FF2. “Information producers,” as disclosed in Don, are companies, organizations and persons, e.g., public and private companies, non-profit organizations, educational institutions, government agencies and individuals, who want their news content provided to the public, doing so in various forms including but not limited to press releases (Don, para. [0020]). FF3. “Information consumers,” as disclosed in Don, communicate directly and indirectly with the central database server via the Internet, and are those persons, including companies, non-profit groups, competitors, investors, industry analysts, venture capitalists, financial analysts as well as marketing, sales, finance, engineering and administration professionals, who want to receive news content (Don, para. [0021]). Appeal 2011-004922 Application 11/537,491 5 ANALYSIS Prior Art Rejections Independent Claim 10 and dependent claims 11-28 and 30 We are persuaded of error on the part of the Examiner by Appellants’ argument that Don does not disclose, expressly or inherently, “receiving information at a task exchange server about tasks submitted by task requesters as being available for performance by human task performer users,” as recited in claim 10 (App. Br. 13-16 and Reply Br. 4-11). Claim 10 recites that a task exchange server facilitates performance of available tasks submitted by task requesters, by distributing information about the submitted tasks to human task performer users via one or more information services. Don, on the other hand, is generally related to news distribution, and describes a centralized database server that distributes public relations and other news content to users via the Internet (FF1). Mapping the claimed invention to Don’s disclosure, the Examiner maintains that Don’s information producers are “task requesters” who submit “tasks,” i.e., press releases, product announcements, news alerts, and other information, to the central database server, i.e., the claimed “task exchange server,” which in turn distributes information to news media and database services, i.e., the claimed “other information services” (Ans. 13- 14). However, the “information producers” that the Examiner compares to the claimed “task requesters,” are companies, organizations and persons who want their news content provided to the public (FF2). These information producers submit news content to the centralized database server for release to the public, not information regarding available tasks to be performed by Appeal 2011-004922 Application 11/537,491 6 human task performer users. As such, they are not “task requesters,” as recited in claim 10. The Examiner analogizes Don’s information consumers to the claimed “task performer users,” who the Examiner maintains perform searches for content and respond to the content by performing task options contained in the products or services, e.g., request additional information, navigate to a product purchasing site (Ans. 13-14). But Don’s “information consumers” are those persons who want to receive news content (FF3). These persons receive news content submitted by the “information producers,” not information regarding available tasks that they may perform, and are not “task performers” or “task performer users,” as recited in claim 10. We find that Don does not disclose “receiving information at a task exchange server about tasks submitted by task requesters as being available for performance by human task performer users.” Therefore, we will not sustain the Examiner’s rejection of independent claim 10 or dependent claims 11-28 and 30 as anticipated by Don. Dependent Claim 29 Claim 29 depends indirectly from claim 10. The Examiner has not established, on this record, that Downs overcomes the deficiency of Don. Therefore, we also will not sustain the Examiner’s rejection of claim 29 under § 103. Independent Claims 31and 41 and dependent claims 32-38, 40 and 42-47 Independent claims 31and 41 include language substantially similar to claim 10. Therefore, we will reverse the Examiner’s rejection of Appeal 2011-004922 Application 11/537,491 7 independent claims 31and 41 and dependent claims 32-38, 40 and 42-47 as anticipated by Don for the same reasons as set forth above with respect to claim 10. Dependent Claim 39 Appellants have presented no arguments with respect to dependent claim 39. Therefore, the Examiner’s rejection of claim 39 under 35 U.S.C. § 102 is summarily affirmed.2 Non-Statutory Subject Matter Appellants argue that the rejection of independent claim 10 and dependent claims 11-24 and 27-30 under 35 U.S.C. § 101 is improper because claim 10 recites a process that is tied to a particular machine, i.e., one or more programmed computing systems (App. Br. 21 and Reply Br. 13- 14). In contrast, referencing the machine-or-transformation test, the Examiner maintains that the rejection is proper because “the claimed use of the ‘one or more programmed computing systems’ is limited to ‘facilitating performance of at least some submitted tasks’ and facilitating (e.g., accepting inputs, displaying, etc.) may be ‘extra-solution’ activity” (Ans. 16). We agree with Appellants that the recited programming computer systems recited in claim 10 are not limited to “facilitating performance of at least some submitted tasks” (App. Br. 21-22 and Reply Br. 13-14). Instead, claim 10 recites that the programmed computing systems perform additional 2 Appellants have stated, “[t]he rejection of claim 39 is not being appealed” (App. Br. 4). Appeal 2011-004922 Application 11/537,491 8 operations, including “determining one or more available tasks” and “providing information about the determined tasks for presentation to a human task performer user via the information service” – operations that are more than “extra-solution” activity, as the Examiner has conceded (Ans. 16, “These very well may be more than ‘extra-solution’ activity”). These operations explicitly require the use of “one or more programmed computing systems” and, therefore, tie claim 10 to a particular machine, i.e., a computer specifically programmed to perform the step of “facilitating performance of at least some submitted tasks,” including “determining one or more available tasks” and “providing information about the determined tasks for presentation to a human task performer user via the information service.” The Supreme Court has made clear that the machine-or- transformation test is not dispositive of the § 101 inquiry. See Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). However, we find no factors in the record that would weigh against patent eligibility. For example, claim 10 does not recite purely mental steps, i.e., steps that can be performed in the human mind. The claim also does not merely describe an abstract idea or concept; instead, it recites process steps performed using a programmed computer system, and these steps are not insignificant extra-solution activity. We conclude that claim 10 is directed to patent-eligible subject matter. Therefore, we will not sustain the Examiner’s rejection of independent claim 10 and dependent claims 11-24 and 27-30 under 35 U.S.C. § 101. DECISION The Examiner’s rejection of claims 10-28, 30-38 and 40-47 under 35 U.S.C. § 102 is reversed. Appeal 2011-004922 Application 11/537,491 9 The Examiner’s rejection of claim 29 under 35 U.S.C. § 103(a) is reversed. The Examiner’s rejection of claim 39 under 35 U.S.C. § 102 is affirmed. The Examiner’s rejection of claims 10-24 and 27-30 under 35 U.S.C. § 101 is reversed. AFFIRMED-IN-PART mls