Ex Parte Nelson et al

Patent Trial and Appeal Board

Apr 13, 2016

13073061 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/073,061 03/28/2011
23117 7590 04/15/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Jill Aileen Nelson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DMB-4885-36 7286
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JILL AILEEN NELSON, NORMAN EDWARD MULLOCK, and
KRIS SATKUNAS
Appeal2013-009731 1
Application 13/073,061 2
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 12, 2012) and Reply Brief ("Reply Br.," filed July 29, 2013), and the
Examiner's Answer ("Ans.," mailed June 4, 2013), Advisory Action ("Adv.
Act.," mailed December 27, 2012), and Final Office Action ("Final Act.,"
mailed October 12, 2012).
2 Appellants identify Lexis Nexis, a division of Reed Elsevier, as the real
party in interest. App. Br. 1.
Appeal2013-009731
Application 13/073,061
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 8-14 and 21-33. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
CLAIMED INVENTION
Appellants' claimed invention "generally relate[s] to systems and
methods for client development, and particularly to determining client
statistics and predictions from a plurality of sources" (Spec. i-f 1 ).
Claims 8 and 21, reproduced below, are illustrative of the subject
matter on appeal:
8. A method for client development comprising:
receiving client identification data for a client, the client
identification data being received from client analysis logic;
receiving client billing data for the client;
determining, by a computing device, from the client
identification data and the client billing data, billing trend data
for the client;
predicting, from the billing trend data, a likelihood of
expanded billing for the client; and
providing, by the computing device, a first user interface
for display, the first user interface providing at least a portion of
the billing trend data and data related to the likelihood of
expanded billing for the client, the first user interface further
providing a filtering user option to filter at least a portion of the
billing trend data from the first user interface.
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Application 13/073,061
21. A system for client development comprising:
a memory component that stores logic that, when executed
by the system, causes the system to perform at least the
following:
receive client identification data for a client of an
organization, the client identification data being received
from client analysis logic, wherein the client is an entity
external to the organization;
receive client billing data for the client;
determine, from the client identification data and the client
billing data, billing trend data for the client;
predict, from the billing trend data, a likelihood of
expanded billing for the client; and
provide a first user interface for display, the first user
interface providing at least a portion of the billing trend data and
data related to the likelihood of expanded billing for the client.
REJECTIONS
Claims 21-27 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 8, 9, 11-14, 21, 22, 24--29, and 31-33 are rejected under
35 U.S.C. § 103(a) as unpatentable over Carden (US 2009/0099894 Al,
pub. Apr. 16, 2009) and Kisin (US 2010/0082382 Al, pub. Apr. 1, 2010).
Claims 10, 23, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Carden, Kisin, and Whitacre (US 2004/0138944 Al,
pub. July 15, 2004).
ANALYSIS
Non-Statutory Subject Matter
We are not persuaded that the Examiner erred in rejecting claims 21-
27 under 35 U.S.C. § 101. Instead, we agree with the Examiner that, under a
broadest reasonable interpretation, independent claim 21 covers transitory
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propagating signals, which are non-statutory subject matter (Final Act. 11 ).
See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter); see also Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (finding a
machine readable storage medium non-statutory under § 101 ).
Appellants variously argue that the rejection of claims 21-27 under
§ 101 is improper and should be withdrawn because (1) "the plain language
of the term 'memory component' necessitates a hardware element";
(2) claims 21-27 satisfy the machine-or-transformation test; and (3) all of
the examples of a memory component provided in the Specification include
non-transitory computer-readable media (App. Br. 5---6). Yet although the
Specification states in paragraph 3 2 that the memory component "may
include random access memory (including SRAM, DRAM, and/or other
types of RAM), flash memory, secure digital (SD) memory, registers,
compact discs (CD), digital versatile discs (DVD), and/or other types of non-
transitory computer-readable mediums," we find nothing in the Specification
that excludes a transitory medium, such as a signal that can store data, i.e.,
hold or transmit data for a period of time, as a "memory component."
Instead, the Specification includes non-limiting examples only.
Because Appellants' Specification does not define "memory
component" to exclude transitory media, the claimed "memory component,"
under a broadest reasonable interpretation, encompasses transitory media,
which are not patent-eligible. Therefore, we sustain the Examiner's rejection
of claims 21-27 under 35 U.S.C. § 101.
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Obviousness
Independent claim 8 and dependent claims 9 and 11-14
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 8 under 35 U.S.C. § 103(a) because neither Carden nor
Kisin, taken alone or in combination, discloses or suggests a method for
client development, as recited in claim 8 (App. Br. 6-11).
Carden is directed to employee management, and, as described by the
Examiner, "teaches the management of employee talent strengths (e.g.[,]
quality of legal work as depicted in Fig. 3) from both a development and
recognition perspective (i-f [0106] and Fig. 4)" (Final Act. 4). Kisin
discloses a method and apparatus for forecasting litigation discovery costs
by collecting and analyzing historical data to predict future costs and timing
(Kisin i12).
Citing paragraph 2 of Appellants' Specification, the Examiner
interprets the term "client," as recited in claim 8, as "as an individual
working for the law firm, a contractor, an outsourced/insourced personnel,
an intern or an extern and NOT a product or service customer, a consumer,
or a buyer as the simple meaning of the term entails" (Ans. 7). But that
interpretation cannot reasonably be sustained.
The Specification states, at paragraph 2, that "[ c ]lient generation and
retention is a primary focus for many law firms and other businesses" and
further that "many law firms aim to retain current clients as long as possible
and increase the work performed for those clients." The Specification, thus,
makes clear that the term "client" refers to the entities, i.e., the customers,
for whom law firms and other businesses perform work, and not to their
employees, as the Examiner suggests.
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The Examiner erred in interpreting the term "client" to refer to an
employee, and, in doing so, erred in rejecting claim 8 as obvious over the
combination of Carden and Kisin. Therefore, we do not sustain the
Examiner's rejection of claim 8 under 35 U.S.C. § 103(a). We also do not
sustain the Examiner's rejection of dependent claims 9 and 11-14. Cf In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious").
Independent claims 21and28 and dependent claims 22, 24-27, 29, and 31-
33
The Examiner's rejection of independent claims 21 and 28 is based on
the same flawed interpretation described above with respect to claim 8.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claims 21 and 28, and claims 22, 24--27, 29, and
31-33, which depend therefrom, for the same reasons set forth above with
respect to claim 8.
Dependent claims 10, 23, and 30
Claims 10, 23, and 30 depend from independent claims 8, 21, and 28,
respectively. The Examiner's rejection of claims 10, 23, and 30 based on
Whitacre, in combination with Carden and Kisin, does not cure the
deficiency in the Examiner's rejection of independent claims 8, 21, and 28.
Therefore, we do not sustain the Examiner's rejection of claims 10, 23, and
30 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to the independent claims.
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DECISION
The Examiner's rejection of claims 21-27 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejections of claims 1--4, 11-14, and 16-19 under
35 U.S.C. § 103(a) are reversed.
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-IN-PART
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