Ex Parte LeeDownload PDFPatent Trial and Appeal BoardMar 27, 201713803691 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 13/803,691 03/14/2013 Eugene M. Lee 113708.121 CON11 3146 23400 7590 03/29/2017 POSZ LAW GROUP, PLC 12040 SOUTH LAKES DRIVE SUITE 101 EXAMINER MOONEYHAM, JANICE A RESTON, VA 20191 ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): mailbox@poszlaw.com dposz@poszlaw.com tvarndell @ poszlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUGENE M. LEE Appeal 2015-001993 Application 13/803,691 Technology Center 3600 Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and CAROLYN D. THOMAS, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 21—28. We have jurisdiction under 35 U.S.C. § 6(b). We affirm, but enter new grounds of rejection using our authority under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Appellant’s invention is an intellectual property (IP) information analysis, searching, and access system that provides, among other things, integrated IP prosecution. To this end, the system determines a particular action to take to advance prosecution of a case based on the type of official correspondence, and generates associated responses. See generally Abstract; Spec. 19, 23, 27; Figs. 1, 13. Claim 21 is illustrative: Appeal 2015-001993 Application 13/803,691 21. A method for managing IP prosecution, comprising: receiving, by a computer processor device, an official correspondence relating to a case; identifying, by the computer processor device responsive to receipt of the official correspondence, a type of the official correspondence; determining, by the computer processor device, one of a plurality of predetermined actions to take to advance prosecution of the case based on the type of the official correspondence; preparing, by the computer processor device, an explanatory correspondence regarding the case, and attaching the explanatory correspondence to the official correspondence, when the predetermined action is to prepare correspondence; generating, by the computer processor device, a response template for the case with room for a substantive response to be inserted, when the predetermined action is to prepare a response; and generating, by the computer processor device, an amendment form for the case with room for a substantive response to be inserted, when the predetermined action is to prepare an amendment. RELATED APPEALS On page 4 of the Appeal Brief, Appellant cites seven related appeals, six of which are cited on page 4 of the Reply Brief. We decided the appeals in six of those applications, where one application (10/229,273) involved multiple appeals. See Ex parte Lee, No. 2009-010022 (BPAI Apr. 22, 2011) (“Lee 7”); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5, 2016) (“Lee IF), reh ’g denied (PTAB Nov. 15, 2016). The appeals in Applications 13/599,206, 13/599,415, 13/599,639, 13/618,979, and 13/619,486 have also been decided. See Ex parte Lee, No. 2014-009364 (PTAB Mar. 20, 2017); Ex parte Lee, No. 2014-003734 (PTAB Mar. 2, 2017); Ex parte Lee, No. 2014-009733 (PTAB Mar. 21, 2017); Ex parte Lee, No. 2014-008495 2 Appeal 2015-001993 Application 13/803,691 (PTAB Mar. 15, 2017); and Ex parte Lee, No. 2014-008498 (PTAB Mar. 15, 2017). THE REJECTIONS The Examiner rejected claims 21—28 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Ans. 3^4.1,2 The Examiner rejected claims 21—23 under 35 U.S.C. § 103(a) as unpatentable over Whitmyer (US 5,895,468; Apr. 20, 1999) and Frank (US 7,346,518 Bl; Mar. 18, 2008). Final Act. 3-6. The Examiner rejected claims 24 and 26 under 35 U.S.C. § 103(a) as unpatentable over Whitmyer, Frank, and Iwai (US 5,175,681; Dec. 29, 1992). Final Act. 6—8. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as unpatentable over Whitmyer, Frank, and Official Notice. Final Act. 8—9. The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as unpatentable over Whitmyer, Frank, Iwai, and Simpson (US 6,549,894 Bl; Apr. 15, 2003). Final Act. 9-10. The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as unpatentable over Whitmyer, Frank, and Rivette (US 5,754,840; May 19, 1998). Final Act. 10-11. 1 Throughout this opinion, we refer to (1) the Final Rejection mailed February 4, 2014 (“Final Act.”); (2) the Appeal Brief filed July 7, 2014 (“App. Br.”); (3) the Examiner’s Answer mailed September 9, 2014 (“Ans.”); and (4) the Reply Brief filed November 10, 2014 (“Reply Br.”). 2 The Examiner designates the § 101 rejection as a new ground of rejection in the Answer. 3 Appeal 2015-001993 Application 13/803,691 THE § 101 REJECTION The Examiner concludes the claims are directed to the abstract idea of creating or generating documents responsive to receiving certain information or correspondence—a procedure that is said to be a fundamental business practice that the USPTO practices daily. Ans. 3. According to the Examiner, the Examiner generates a certain type of document, for example, an office action rejection, allowance, or Examiner’s Answer, responsive to the particular type of correspondence received, such as an amendment or Appeal Brief. Id. The Examiner adds that the recited elements other than the abstract idea are merely directed to instructions to implement the abstract idea on a computer and recite conventional generic computer functions and, therefore, do not transform the abstract idea into a patent-eligible application of the abstract idea. Id. at 3^4. As such, the claims are said to not recite significantly more than the abstract idea itself and, therefore, are ineligible under § 101. Id. at 4. Appellant argues that because the Examiner rejects all claims on the same ineligibility rationale, the Examiner fails to explain how or why the claims’ different limitations all amount to the same abstract idea. Reply Br. 21—22. Appellant also argues various claims separately regarding their eligibility including independent claim 21, which are said to recite additional elements beyond the identified abstract idea that are directed to patent- eligible applications of that idea, including the elements in claim 21’s preparing and generating steps. Reply Br. 22—29. 4 Appeal 2015-001993 Application 13/803,691 ISSUE Has the Examiner erred in rejecting claims 21—28 by concluding that they are directed to ineligible subject matter under § 101? This issue turns on whether the claimed invention is directed to a patent-ineligible abstract idea and, if so, whether elements of the claim—both individually and as an ordered combination—transform the nature of the claim into a patent- eligible application of that abstract idea. ANALYSIS Claims 21 and 25 To determine whether claims are patent eligible under § 101, we apply the Supreme Court’s two-step test articulated in Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014). First, we determine whether the claims are directed to a patent-ineligible concept: laws of nature, natural phenomena, and abstract ideas. Id. at 2354—55. If so, we then proceed to the second step and examine the elements of the claim—both individually and as an ordered combination—to determine whether the claim contains an “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application. Id. at 2357. Alice Step One Applying Alice step one, we find that claim 21 is directed to the abstract idea of creating or generating certain types of documents, including correspondence, forms, and templates, responsive to receiving certain information or correspondence. We reach this conclusion despite the fact 5 Appeal 2015-001993 Application 13/803,691 that all steps in claim 21 are performed by a computer processor device except for the attaching step. Claim 21 recites, in pertinent part, (1) receiving an official correspondence; (2) identifying a type of official correspondence responsive to its receipt; and (3) determining one of plural predetermined actions to take to advance prosecution based on the type of correspondence. Claim 2 l’s last three steps are performed under different conditions depending on the particular determined action, namely when the action is to prepare (1) correspondence; (2) a response; and (3) an amendment, respectively. Specifically, claim 21’s fourth step recites preparing, by a computer processor device, an explanatory correspondence regarding the case, and attaching the explanatory correspondence to the official correspondence when the predetermined action is to prepare correspondence. The next step recites generating a response template for the case with room for a substantive response to be inserted when the predetermined action is to prepare a response. The last step calls for generating an amendment form for the case with room for a substantive response to be inserted when the predetermined action is to prepare an amendment. Although these concepts are limited to an IP prosecution environment and are implemented by a computer processor device (except for the attaching step), these concepts are nonetheless fundamental and conventional business practices and are, therefore, abstract ideas. See Alice, 134 S. Ct. at 2356. That all but one step of claim 21 is implemented by a computer processor device does not change our conclusion. Notably, the claimed invention does not improve the computer processor device’s functionality or 6 Appeal 2015-001993 Application 13/803,691 efficiency, or otherwise change the way that device functions. Cf Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Rather, claim 21 recites nothing more than using a generic computer processor device to implement a routine, conventional business practice, namely creating or generating certain types of documents, including correspondence, forms, and templates, responsive to receiving certain information or correspondence—a practice that is fundamental to IP prosecution of patent applications as the Examiner explains. Ans. 2—A. To the extent that Appellant contends that it is somehow unconventional to generate templates and forms with room for inserting a substantive response as is the case with the recited “response template” and “amendment form” to remove these concepts from the realm of abstract ideas (see Reply Br. 23), we find no persuasive evidence on this record to prove such a theory. In any event, given the breadth of these terms that are undefined in the Specification—unlike at least one other term which leaves no doubt as to its meaning3—virtually any structured document, such as those generated by a word processor and associated document templates, could be considered a “response template” and “amendment form.” See, e.g., In and Out of the Classroom: Word 2000, Mar. 1, 1999, at https://www.scio.kl2.or.us/shs/Staffweb/Mettsg/Computer_Lit/msedu/classr oom/office2k/word2000.htm#formatting (“Word 2000”) (noting that documents can be created and formatted in Microsoft Word 2000 using templates that enable reusing, among other things, boilerplate text and document styles). 3 See Spec. 2 (defining the term “application”). 7 Appeal 2015-001993 Application 13/803,691 In short, claim 21 is directed to the abstract idea of creating or generating certain types of documents, including correspondence, forms, and templates, responsive to receiving certain information or correspondence. That a computer processor device is used to this end does not change our conclusion even assuming, without deciding, that this device makes the recited process more efficient. In such a case, any speed increase comes from the capabilities of a general-purpose computer processor device—not the recited method itself. See FairWarningIP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)). Like the claims in FairWarning, the focus of claim 21 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use computer processors as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted). For the foregoing reasons, then, claim 21 is directed to an abstract idea. Alice Step Two Nor do the recited elements—considered both individually and as an ordered combination—transform the nature of claim 21 into a patent-eligible application of the abstract idea to ensure that the claim amounts to significantly more than that idea. See Alice, 134 S. Ct. at 2357. We reach this conclusion despite the fact that all steps in claim 21 are performed by a computer processor device except for the attaching step. But merely reciting a generic computer cannot transform a patent-ineligible abstract idea into a 8 Appeal 2015-001993 Application 13/803,691 patent-eligible invention. Id. at 2358. In other words, merely reciting an abstract idea while adding the words “apply it with a computer” does not render an abstract idea non-abstract: there must be more. See id. at 2359. But as the Examiner explains, the additional recited elements other than the abstract idea merely recite (1) instructions to implement the abstract idea on a computer, and (2) generic computer structure that performs generic functions that are well-understood, routine, and conventional. Ans. 3^4. Indeed, if the terms “by a computer processor device” or “by the computer processor device” were removed from claim 21, the recited steps of claim 21 could be performed solely by using mental steps and pen and paper not only by various personnel in an IP prosecution environment, including attorneys, paralegals, and other staff members, but also various personnel at the USPTO, including Examiners and technical support staff (e.g., when an Examiner’s Amendment is prepared). So the fact that a computer processor device is used for all of these otherwise manual (and mental) steps except for the attaching step is insufficient to transform the abstract idea into a patent- eligible application of that idea. To the extent that Appellant contends that (1) attaching an explanatory correspondence to official correspondence, and (2) generating a “response template” and “amendment form” with room for inserting a substantive response as claimed somehow transforms the abstract idea into a patent- eligible application of that idea (see Reply Br. 23), we disagree. As noted previously, these steps are not only well-known and conventional business practices, virtually any structured document, such as those generated by a word processor and associated document templates, could be considered a 9 Appeal 2015-001993 Application 13/803,691 “response template” and “amendment form” given the scope and breadth of those terms. See Word 2000. Lastly, the fact that the claim’s preamble recites that the method is for managing IP prosecution merely recites a field-of-use limitation that does not render the recited abstract idea patent-eligible. See Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (noting that Parker v. Flook, 437 U.S. 584 (1978) “stands for the proposition that the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the [idea] to a particular technological environment”) (internal quotation marks omitted). Therefore, we are not persuaded that the Examiner erred in rejecting claim 21 under § 101 as directed to non-statutory subject matter. Because we rely on newly-cited facts in reaching this conclusion, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). Claims 22 and 23 For similar reasons, we also sustain the Examiner’s § 101 rejection of claims 22 and 23. Claim 22 recites that the type of official correspondence is identified by electronically reading (1) an electronic label or barcode on the official correspondence; (2) a metadata field attached to the official correspondence; or (3) a data field in the official correspondence. Despite Appellant’s arguments to the contrary (Reply Br. 24), electronically reading the recited data merely recites well-known and conventional business practices involving optical character recognition and bar code readers and, as such, these additional elements do not provide meaningful limitations to transform the above-noted abstract idea into a 10 Appeal 2015-001993 Application 13/803,691 patent-eligible application of the abstract idea as the Examiner indicates. Ans. 3—A. For example, the USPTO routinely used such practices to identify patent applications including official correspondence that were physically transferred from one location to another. See Manual of Patent Examining Procedure (MPEP) § 903.08 (6th ed. Jan. 1995)4 (“Upon receiving an application from the Application Division, the clerk in charge of processing new applications should wand the application on the PALM [Patent Application Location and Monitoring system]5 to the art unit to which it has been assigned . . . see also id. (“If an application is hand-carried at any stage of the transfer process, care must be taken that it is wanded in or out on the PALM system as appropriate so that the PALM system will always have an accurate record of the location of the application.”) (emphases added); id. § 1704 (“Information update is by means of video display transactions and, predominantly, by means of transactions entered via bar code readers (BCR). Among other things, classification, examiner docket, attorney, inventor, and prosecution history data as well as the location of each application can be retrieved and updated online with PALM.”) (emphases added). 4 This version of the MPEP (and other earlier editions) are available from the USPTO’s web site at https://www.uspto.gov/web/offices/pac/mpep/old/index.htm. 5 The PALM system is the automated data management system used by the USPTO for retrieving and/or online updating computer records of each patent application. MPEP § 1704 (6th ed. 1995). Among other things, the PALM system maintains Examiner docket and activity records. Id. 11 Appeal 2015-001993 Application 13/803,691 The USPTO similarly identified the type of official correspondence responsive to manual entry or selection indicating that type as recited in claim 22 not only by manually wanding patent application data in the PALM system as noted above, but also by selecting and entering patent application data, including types of actions and serial numbers, in various types of official correspondence. See id. § 1705 (“With each action, the examiner submits an Examiner’s Case Action Worksheet. . . upon which he/she indicates the type of action being taken. The docket clerk, thereafter, updates the PALM record of the application and the examiner’s production record by entry of the appropriate online bar code reader transaction.”); see also id. (“The examiner indicates the type of action ... on the worksheet, and the PALM system will automatically determine if it is a [first Action on the Merits] LAOM.”) (emphases added); id. § 503 (“The Application Division mails a filing receipt to the attorney or agent... for each complete application filed, giving the serial number, filing date, and group to which assigned.”); see also id. § 503 (noting that the USPTO stamped self- addressed postcards filed with patent applications with the receipt date and the serial number). Notably, the serial number itself not only indicated the type of official correspondence, namely correspondence pertaining to a patent application filed with the USPTO, but also the particular type of application (e.g., utility or design application). See Filing Years and Patent Application Serial Numbers Since 1882, USPTO (Leb. 18, 2016), at https://www.uspto.gov/web/offices/ac/ido/oeip/taf/filingyr.htm.6 These 6 Although this webpage published after Appellant’s filing date, it nonetheless evidences various types of patent applications and their associated serial numbers at the time of the invention and earlier. 12 Appeal 2015-001993 Application 13/803,691 type-based indications based on electronically reading data in—or on— applications and their correspondence were, therefore, conventional business practices at least at the USPTO. In light of these conventional and well-understood business practices, then, the additional elements recited in claims 22 and 23 do not provide meaningful limitations to transform the above-noted abstract idea into a patent-eligible application of the abstract idea as the Examiner indicates. Ans. 2—4. Therefore, we are not persuaded that the Examiner erred in rejecting claims 22 and 23 under § 101. Because we rely on new evidence in reaching this conclusion, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). Claims 24 and 26 For similar reasons, we also sustain the Examiner’s § 101 rejection of claim 24 reciting retrieving, by the computer processor device, data for the case from a docketing application and inserting the data regarding the case into the explanatory correspondence, response template, or amendment form. Despite Appellant’s arguments to the contrary (Reply Br. 25—27), retrieving case data, such an application serial number from a docketing application, such as PALM, and inserting this data into a document, such as in the header of explanatory correspondence, was a conventional and well- understood business practice at least at the USPTO. See, e.g., MPEP § 707 (7th ed. 1998) (reproducing a form used by Examiners filled in with various 13 Appeal 2015-001993 Application 13/803,691 data from the PALM docketing system, including the application serial number, applicant name, and art unit). In light of these conventional and well-understood business practices, then, the additional elements recited in claims 24 and 26 do not provide meaningful limitations to transform the above-noted abstract idea into a patent-eligible application of the abstract idea as the Examiner indicates. Ans. 7—A. Therefore, we are not persuaded that the Examiner erred in rejecting claims 24 and 26 under § 101. Because we rely on new evidence in reaching this conclusion, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). Claim 27 For similar reasons, we also sustain the Examiner’s § 101 rejection of claim 27 reciting transmitting, from the computer processor device, an indication of completion of transmission or filing to the docketing application when (1) the explanatory correspondence is transmitted, and (2) the response template or amendment form are completed and then electronically filed. Despite Appellant’s arguments to the contrary (Reply Br. 28—29), transmitting the recited indication to a docketing application when the recited events occur merely recites well-known and conventional business practices that update dockets automatically when certain correspondence and responses are completed and filed. See, e.g., MPEP § 1704 (6th ed. 1995) (“The recording of changes to examiner dockets is accomplished by PALM simultaneously with the recording of incoming and outgoing 14 Appeal 2015-001993 Application 13/803,691 communications, transfers of applications to and from dockets, and other types of updating of the application record.”) (emphasis added). In light of these conventional and well-understood business practices, then, the additional elements recited in claim 27 do not provide meaningful limitations to transform the above-noted abstract idea into a patent-eligible application of the abstract idea as the Examiner indicates. Ans. 2—A. Therefore, we are not persuaded that the Examiner erred in rejecting claim 27 under § 101. Because we rely on new evidence in reaching this conclusion, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). Claim 28 For similar reasons, we also sustain the Examiner’s § 101 rejection of claim 28 reciting (1) determining, by the computer processor device, whether there is inconsistent terminology between amended claims in the completed amendment form, and (2) notifying a user when inconsistent terminology is determined to exist. Despite Appellant’s arguments to the contrary (Reply Br. 29), determining whether inconsistent terminology exists between amended claims in a completed “amendment form” was a conventional and well- understood business practice at least at the USPTO. For example, Examiners routinely engaged in this practice by (1) making such determinations when examining amended claims, and (2) notifying applicants of a discrepancy via a rejection, objection, or otherwise. See, e.g., MPEP §§ 714.14—24 (7th ed. 1998) (discussing USPTO amendment practice); see also id. §§ 2173—2173.06 (discussing criteria for claim 15 Appeal 2015-001993 Application 13/803,691 definiteness under § 112, second paragraph); id. § 706.01 (instructing Examiners to object to claims if the claims’ form is improper as opposed to their substance); id. §§ 714.23—24 (discussing amending amendments and associated directions and notifying applicants of changes). That a computer processor device is used to make the recited determination does not change our conclusion even assuming, without deciding, that this device makes the recited process more efficient. In such a case, any speed increase comes from the capabilities of a general-purpose computer processor device—not the recited method itself. See FairWarning, 839 F.3d at 1095. In light of these conventional and well-understood business practices, then, the additional elements recited in claim 28 do not provide meaningful limitations to transform the above-noted abstract idea into a patent-eligible application of the abstract idea as the Examiner indicates. Ans. 3^4. Therefore, we are not persuaded that the Examiner erred in rejecting claim 28 under § 101. Because we rely on new evidence in reaching this conclusion, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). THE OBVIOUSNESS REJECTION OVER WHITMYER AND FRANK Regarding claim 21, the Examiner finds that Whitmyer discloses a computer processor device that (1) receiving an official correspondence (reply 22) relating to a case; (2) identifies a type of official correspondence responsive to receiving the official correspondence; (3) determines one of plural actions to take to advance prosecution based on that correspondence type; and (4) prepares an explanatory correspondence (action form 66) and 16 Appeal 2015-001993 Application 13/803,691 attaches (i.e., merges) the explanatory correspondence to the official correspondence when the predetermined action is to prepare correspondence. Final Act. 3^4; Ans. 5—8. Although the Examiner acknowledges that Whitmyer does not generate a response template or amendment form for a case as claimed, the Examiner cites Frank as teaching this feature in concluding that the claim would have been obvious. Final Act. 4—5. Appellant argues that Whitmyer does not attach an explanatory correspondence to an official correspondence as the Examiner asserts, but rather merges an action request 66 with a retrieved action form 66. App. Br. 9-11; Reply Br. 9—12. Appellant also argues that Frank does not generate responses when there is a particular type of predetermined action, let alone teach or suggest when or why responses are generated. App. Br. 11—12; Reply Br. 12—14. Appellant adds that the Examiner’s interpretation of “official correspondence” is overly broad, and that the Examiner’s mapping Whitmyer’s form 22’ to “official correspondence” is unreasonable. App. Br. 12—13; Reply Br. 14—16. ISSUE Under § 103, has the Examiner erred in rejecting claim 21 by finding that Whitmyer and Frank collectively would have taught or suggested (1) receiving an official correspondence relating to a case; (2) attaching explanatory correspondence to the official correspondence; and (3) generating a response template and amendment form for the case when the predetermined action is to prepare a response and amendment, respectively? 17 Appeal 2015-001993 Application 13/803,691 ANALYSIS We begin by noting that the last three clauses of claim 21 are performed only under certain conditions, namely when a predetermined action is to prepare (1) correspondence; (2) a response; and (3) an amendment, respectively. These steps are directed to temporal conditional limitations that need not be satisfied to meet the claim. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 at *9-10 (PTAB Apr. 28, 2016) (precedential).7 Therefore, Appellant’s arguments regarding Frank’s alleged shortcomings with respect to generating a response template and amendment form (App. Br. 11—12; Reply Br. 12—14) are not commensurate with the scope of the claim which does not require performing these steps to satisfy the claim. Similarly, Appellant’s arguments regarding Whitmyer’s alleged failure to attach an explanatory correspondence to an official correspondence (App. Br. 9—11; Reply Br. 9—12) are also not commensurate with the scope of the claim, for this attachment occurs only upon satisfying the specified condition, namely when the predetermined action is to prepare correspondence. But like the other recited conditions, this condition need not be satisfied to meet the claim. See Schulhauser, 2016 WL 6277792 at *9-10. So regardless of whether Whitmyer’s merging an action form 66 (“explanatory correspondence”) with a reply 22 (“official correspondence”) attaches these elements together as the Examiner indicates (Final Act. 4; 7 This decision is available at the Board’s web site at https://www.uspto.gov/patents-application-process/appealing-patent- decisions/decisions-and-opinions/precedential. 18 Appeal 2015-001993 Application 13/803,691 Ans. 5—6), this attachment need not occur to meet the claim because this step is conditional. In any event, we see no error in the Examiner’s finding that Whitmyer’s merge function least suggests the recited attachment. First, the term “attach” is not defined in the Specification to so limit is meaning, unlike at least one other term. See Spec. 2:14—18 (defining the term “application”). In light of the term’s plain meaning, then, we find no error in the Examiner’s broad, yet reasonable, interpretation of the term “attach” as “‘to join together; unite; combine.’” Ans. 5 (bolding omitted). As shown in Whitmyer’s Figure 4, script 62 merges a retrieved action form 66 with the reply 22’s action request to produce an action 24’. Whitmyer, col. 5,11. 48—51, 65—67; col. 6,11. 15—18. Whitmyer’s Figure 3 shows a similar merge function, namely that professional computer 12 merges an action form with the reply in the dashed box in that computer.8 Ans. 6 (noting this functionality). Given this merge function, Whitmyer at least suggests attaching an “explanatory correspondence,” namely an action form, to “official correspondence” (i.e., a reply). By combining or uniting these elements together under the Examiner’s interpretation, each element would effectively be attached to the other. Therefore, despite Appellant’s arguments to the contrary (Reply Br. 11—12), Whitmyer’s explanatory correspondence (action form) is attached to the official correspondence (reply) due to this union, and 8 Notably, the label indicating merging of the action form with the reply 22 ’ in the dashed box in the professional computer 12 in Whitmyer’s Figure 3 differs from the label denoting the server script 62’s merging the action form with the action request (which is part of the reply 22) in Figure 4. 19 Appeal 2015-001993 Application 13/803,691 vice-versa. So even if claim 21 required performing the recited attachment (which it does not), Whitmyer still at least suggests as much. Lastly, we see no error in the Examiner’s mapping the recited “official correspondence” to Whitmyer’s reply. Final Act. 4; Ans. 6—8. First, the term “official” is not defined in the Specification to so limit its meaning, unlike at least one other term. See Spec. 2:14—18 (defining the term “application”). The term “official” is defined, in pertinent part, as “by, from, or with the proper authority; authorized or authoritative.” Webster’s New World Dictionary of American English 941 (3d College ed. 1993). Therefore, a reply generated from a client requesting a particular action to be taken by a professional serving that client as in Whitmyer is “official correspondence” because this correspondence reflects the client’s authority to make that request. Even assuming, without deciding, that this request is “informal” as Appellant contends (App. Br. 13; Reply Br. 15), it is still “official correspondence” because it reflects the client’s authority to make the request in that correspondence. Appellant’s contention that this “official correspondence” allegedly does not relate to advancing prosecution in an IP case (id.) is likewise unavailing. Although Whitmyer does not disclose IP prosecution explicitly, Whitmyer nonetheless refers to various functions performed by attorneys and other professionals that serve clients involving notifying clients about deadlines or taking particular actions based on the client’s response. See Whitmyer, col. 1,1. 11 — col. 2,1. 14. Because such activities are commensurate with those performed by professionals prosecuting IP-related cases, such as patent applications, Whitmyer’s system is applicable to those cases. That Frank teaches generating responses to office actions and other 20 Appeal 2015-001993 Application 13/803,691 functions to manage IP prosecution (see Frank, col. 21,1. 55 — col. 24,1. 44) only bolsters the notion that the Whitmyer/Frank system is applicable to managing IP prosecution, and relates to cases involved in IP prosecution. Therefore, we are not persuaded that the Examiner erred in rejecting claim 21, and claims 22 and 23 not argued separately with particularity. THE OBVIOUSNESS REJECTIONS OF CLAIMS 24-26 AND 28 We also sustain the Examiner’s obviousness rejections of claims 24— 26 and 28. Final Act. 6—11. Because these rejections are not argued separately with particularity, we are not persuaded of error in these rejections for the reasons previously discussed. THE REJECTION OVER WHITMYER, FRANK, IWAI, AND SIMPSON We also sustain the Examiner’s obviousness rejection of claim 27 over Whitmyer, Frank, Iwai, and Simpson. Final Act. 9-10. First, the transmitting the recited completion indication is based on two conditions, namely when (1) the explanatory correspondence is transmitted, and (2) the response template or amendment form are completed and then electronically filed. But like the other recited conditions in claim 21, these additional conditions need not be satisfied to meet the claim. See Schulhauser, 2016 WL 6277792 at *9-10. So regardless of whether Simpson transmits the recited completion indication to a docketing application as the Examiner indicates (Final Act. 9—10; Ans. 8), this transmission need not occur to meet the claim because this step is conditional and, indeed, requires satisfying two conditions—not 21 Appeal 2015-001993 Application 13/803,691 just one. Appellant’s arguments to the contrary (App. Br. 15—16; Reply Br. 17—19) are unavailing and not commensurate with the scope of the claim. In any event, we see no error in the Examiner’s reliance on Simpson’s removal date that is entered in the associated column in the docketing-based action screen of Figure 5 for at least suggesting the recited completion indication transmission. See Final Act. 9-10; Ans. 8 (citing Simpson, col. 7, 11. 14—34). Even assuming, without deciding, that this removal date is manually entered as the Examiner seems to suggest (see Ans. 8), Simpson nonetheless at least suggests that data associated with this indication would be transmitted to the associated docketing application for processing via this manual entry. That Simpson’s removal date is entered when an action is completed in Simpson’s column seven, lines 24 to 26 only further bolsters the Examiner’s position that transmitting the recited completion indication under the specified conditions would have been obvious. So even if claim 27 required performing the recited transmission (which it does not), the cited prior art still at least suggests as much. Therefore, we are not persuaded that the Examiner erred in rejecting claim 27. CONCLUSION The Examiner did not err in rejecting claims 21—28 under §§101 and 103. We designate our affirmance of the Examiner’s § 101 rejection as a new ground of rejection. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of 22 Appeal 2015-001993 Application 13/803,691 rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. DECISION The Examiner’s decision rejecting claims 21—28 is affirmed. 23 Appeal 2015-001993 Application 13/803,691 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 37 C.F.R. $ 41.50(b) 24 Copy with citationCopy as parenthetical citation