Ex Parte Colagiovanni

Patent Trial and Appeal BoardOct 11, 2017

13445875 (P.T.A.B. Oct. 11, 2017)

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. 13/445,875 04/12/2012 Joseph A. Colagiovanni JR. HRIS .P0002U S1 4249 32425 7590 10/13/2017 NORTON ROSE FULBRIGHT US LLP 98 SAN JACINTO BOULEVARD SUITE 1100 AUSTIN, TX 78701-4255 EXAMINER MONFELDT, SARAH M ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 10/13/2017 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): aoipdocket @ nortonrosefulbright .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH A. COLAGIOVANNI JR. Appeal 2016-003 518 Application 13/445,875 Technology Center 3600 Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Technology The application relates to insurance claims for large projects involving multiple participants. Spec. Abstract. Claim 1 is illustrative and reproduced below with the limitations at issue emphasized: 1. A method for managing risk on a project, said method comprising: storing, by a computing system, project information that defines scope, schedule, and contractual obligations for the project being covered, so as to reflect contract risk allocation provisions and project contingencies as specified in contract provisions for the project, the project further being insured by a coordinated set of insurance policies, the project information Appeal 2016-003 518 Application 13/445,875 further including project definitions and terms of the insurance policies; receiving, by the computing system from a project participant, a claim for coverage under the project contingencies or insurance policies that is related to at least one project definition; receiving, by the computing system, from at least one other project participant, a response to the claim at the computing system; displaying, by the computing system, the claim and at least one response to a project manager; receiving, by the computing system, a decision from the project manager about the claim; and notifying, by the computing system, the project participants of the decision about the claim by the project manager. Rejections Claims 1—4 and 14—17 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Simonson et al. (US 2002/0184058 Al; Dec. 5, 2002); David N. Ford, Achieving Multiple Project Objectives through Contingency Management, 128 J. Constr. Eng’g & Mgmt. 30 (2002); and Menendez (US 2004/0148204 Al; July 29, 2004). Final Act. 4. Claims 5—13 and 18—26 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Simonson, Ford, Menendez, and various other references. Final Act. 10—18.1 ISSUE Did the Examiner err in finding Menendez teaches or suggests “receiving,. . . from at least one other project participant, a response to the claim,” as recited in claim 1? 1 A rejection under 35 U.S.C. § 112, second paragraph also was withdrawn after an amendment was entered. See Advisory Act. (Nov. 7, 2014). 2 Appeal 2016-003 518 Application 13/445,875 ANALYSIS Claim 1 recites “receiving,. . . from a project participant, a claim” and “receiving, . . . from at least one other project participant, a response to the claim.” Independent claim 14 recites a commensurate limitation. We agree with Appellant that the Examiner has not shown Menendez teaches or suggests receiving a “response” from one “other” project participant. Br. 8. The Examiner relies on paragraphs 159 and 160 of Menendez. Final Act. 2. But those paragraphs involve information being submitted by “the person reporting the claim” (| 159) or “the claimant” (| 160), neither of which teaches a participant “other” than the one submitting the claim. The Examiner also relies on paragraph 135 of Menendez. Ans. 3; Final Act. 5. That paragraph discloses, “The client must choose the dollar threshold within which a claim can be approved in the online adjusting process,” and provides an example threshold of $10,000. Menendez 1135. “If the loss exceeds $10,000 [i.e., the example threshold] the adjuster/client is immediately notified of the claim.” Id. Thus, the threshold is set before the claim is submitted, not as a “response” to the claim as required. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 14, or their dependent claims 2—13 and 15—26. DECISION For the reasons above, we reverse the Examiner’s decision rejecting claims 1—26. REVERSED 3