Ex Parte Lee

Patent Trial and Appeal Board

Mar 27, 2017

13803691 (P.T.A.B. Mar. 27, 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.
13/803,691 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:
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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
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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.
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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.
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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
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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
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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”).
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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
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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
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“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
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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.
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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.
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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
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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
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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
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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
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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?
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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.
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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.
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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
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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
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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
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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.
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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