Ex Parte Quinn

Patent Trial and Appeal Board

Mar 23, 2017

13265208 (P.T.A.B. Mar. 23, 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.
13/265,208 10/19/2011 Thomas F. Quinn JR. ITI002 P307 7103
277 7590 03/27/2017
PRTrF HFNFVFT F) T T P
EXAMINER
695 KENMOOR SE SHANKER, JULIE MEYERS
P O BOX 2567
GRAND RAPIDS, MI 49501 ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
ptomail @priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS F. QUINN JR.
Appeal 2014-008677
Application 13/265,2081
Technology Center 3600
Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—26. We have jurisdiction under 35 U.S.C. § 6(b).
A hearing was held on December 13, 2016.
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies ITIP Development, LLC as the real party in interest.
Appeal Br. 4.
Appeal 2014-008677
Application 13/265,208
THE INVENTION
Appellant claims a “system and method for managing the filing of
legal documents in a plurality of governmental offices.” Spec. 1:5—6.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A filing manager operated on at least one computer for
managing the cost of filing legal documents in a plurality of
offices for a client, said filing manager comprising:
a database for storing legal document related data
relevant to the filing of a legal document;
a communication link adapted to communicate said legal
document related data within said database to a plurality of
service providers; and
process circuitry configured to execute a routine to
manage the filing of legal documents, said routine comprising
the steps of receiving filing order information from a client
relating to legal documents and designating a plurality of
offices where said legal documents are to be filed,
and storing the filing order information in the database,
sending at least some of the order information identifying the
legal documents to be translated to a translator requesting
translation into one or more appropriate languages, receiving a
translation of said legal documents from the translator prior to
filing said legal documents, sending at least some of the order
information and said translation to said filing agent to file said
legal documents in one of said designated plurality of offices,
and thereafter communicating said translated and filed legal
documents to a prosecution agent other than said filing agent
for prosecuting said translated and filed legal documents in said
one of said designated plurality of offices, and communicating
a confirmation of filing to the client.
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Application 13/265,208
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Grainger
Simske
Simpson
Lee
US 2002/0161733 A1
US 2003/0210249 A1
US 2004/0030673 A1
US 2006/0173705 A1
Oct. 31,2002
Nov. 13, 2003
Feb. 12, 2004
Aug. 3, 2006
Translation Quote Request, Linguistic Systems, Inc., http:/
/web.archive.org/web/20081023085255/http://www.linguist.com/
services-request-quote. htm (last visited June 17, 2013) (hereinafter
“Linguistics”).
The following rejections are before us for review.2
Claims 1, 21,3 and 24 are rejected under 35U.S.C.§ 112, second
paragraph for failing to point out and distinctly claim the subject matter
which the Appellant regards as the invention.
Claims 1—3, 6—12, 14—22, and 24—26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Linguistics, and Grainger.
2 Although the 35 U.S.C. § 112, second paragraph rejection on page 2 of the
Final Action only lists claims 1,18 and 20 as being rejected, the body of the
rejection also addresses claims 22 and 24. Because claim 22 recites the
same limitation as recited in claim 18, we treat the two claims as grouped
together. Thus, because the Examiner withdraws the rejection of claim 18 in
the Answer on page 2, the rejection of claim 22 is also deemed withdrawn.
3 Although the rejection groups claim 20 with claim 1 (Final Act. 2), it is
independent claim 21, and not claim 20, which recites “filing a legal
document.” Thus, we assume it was an inadvertent error on the part of the
Examiner to list claim 20, instead of claim 21, as containing this phrase.
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Application 13/265,208
Claims 4, 5, and 13 are rejected under 35 U.S.C. § 103(a) over Lee,
Linguistics, Grainger, and Simske.
Claim 23 is rejected under 35 U.S.C. § 103(a) over Lee, Linguistics,
Grainger, and Simpson.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 2—20 of the
Answer.
2. Lee discloses, “As will be described in greater detail below,
intellectual property filing portal 110 supplies transaction specific fee
information, target jurisdiction- and associate- specific form documents and,
in some configurations, target jurisdiction filing requirements to originating
filers.” Para. 35.
3. Lee discloses, “In typical configurations, at least a portion of the
set of filing documents is forwarded electronically by intellectual property
filing portal 110 to information systems of the selected associates (e.g.,
associate systems 131, 132, 133 and/or 134).” Para. 37.
4. Lee discloses
As illustrated in FIG. 1, a particular associate and
hence a networked information server for such an
associate (see e.g., associate system 132) may
service filings for more than one target
jurisdiction. Similarly, more than one associate
and hence more than one networked information
server may service a given target jurisdiction. For
example, in the illustration of FIG. 1, associate
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system 132 offers filing services for the United
Kingdom through UKPO 151 and for European
Patent Convention filings through EPO 141. In
contrast, associate 131 offers filing services only
for the United Kingdom.
Para. 42.
5. The Examiner found,
Lee describes a system that comprises process
circuitry configured to send at least some of the
filing instruction information to a third party.
[0037] (describes “In typical configurations, at
least a portion of the set of filing documents is
forwarded electronically by intellectual property
filing portal 110 to information systems of the
selected associates (e.g., associate systems 131,
132, 133 and/or 134).”). Lee further recognizes
that translation requirements and translations are
involved in the filing of patent applications, and
mentions the presence of translation requirements
and the use of a translation facility.
Answer 4.
6. Lee discloses:
In some configurations, originating filer
systems 121, 122 and/or 123 may retrieve matter
specific information, technical documents, etc. in
computer readable form from data stores (e.g., data
stores 124, 125 and/or 126) to at least partially
complete a set of filing documents. In general,
such information and documents may be retrieved
from local and/or remote stores, network
information services, file servers, and/or
applications with callable interfaces such as
database management systems, docket systems,
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Application 13/265,208
document management systems, etc. In addition,
in some configurations (not specifically shown), at
least some of such information and documents
may be stored by intellectual property filing portal
110. For example, in one implementation,
intellectual property filing portal 110 is integrated
with a docket system and target jurisdiction- and
associate-specific form documents are supplied
already populated with matter specific information.
Para. 36.
7. Lee discloses
Accordingly, the act of filing an international,
regional or national intellectual property
application is typically dominated by logistical
challenges such as proper formatting of an
application, preparation of filing papers required
by a national or regional intellectual property
office, legalization of documents in accordance
with national requirements, translation
requirements, establishment of authority or agency
in accordance with national requirements, and fee
calculation and transaction issues.
Para. 8.
8. The Examiner also found concerning Linguistics,
Linguistics describes receiving a translation by
patent translators prior to filing the legal
documents in the foreign patent offices. [Page 4]
(describes patent translators providing translations
for filing in foreign offices);sending at least some
of said translation to individuals. Linguistics
describes delivering patent translation work to
clients. [Page 3] (describes delivering accurate
translation work to clients). Linguistic further
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Application 13/265,208
describes sending at least some of the translation
work to post-edit the translation or perform a new
human translation. [Page 4],
Answer 4—5.
ANALYSIS
35 U.S.C. § 112 REJECTION
We will not sustain the rejection of claims 1 and 21 under 35 U.S.C.
§112, second paragraph. The Examiner asserts that because it is unclear
“whether the communicating of a filing confirmation to a client ever even
occurs” (Answer 3), the claims are indefinite. We disagree with the
Examiner because the Examiner’s concerns are a matter of claim breadth,
not indefmiteness. “Breadth is not indefmiteness.” In re Gardner, 427 F.2d
786, 788 (1970).
We will sustain the rejection of claim 24 because the Examiner
maintains this rejection (Answer 2) and Appellant does not argue it in the
Brief.
35 U.S.C. § 103 REJECTION
Concerning independent claim 1, Appellant argues,
With translation being one of the most critical and
costly processes in foreign filing, Appellant
believes it is very important to note that Lee and
Grainger only mention the word translation one
time in their respective applications and Simpson
does not mention translation at all. The Examiner
was forced to combine Linguistics with various
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Application 13/265,208
combinations of these three references in order to
reject Appellant’s claims. Note, Linguistics is
simply a website for submitting a request for a
translation price quote.
Appeal Br. 14—15.
The Examiner, however, found,
It would have been obvious to one having
ordinary skill in the art, at the time of the
invention, to modify Lee, which relates to a
method and system for filing foreign patent
applications, to include the teachings of
Linguistics, which teaches the use of a translation
partner to translate legal documents into one or
more languages according to an order form and
providing the translations for foreign filings. It
would have been obvious to one of ordinary skill
in the art to include in the foreign filing system of
Lee the ability to request a translation of legal
documents and receive the translation, as taught by
Linguistics, since the claimed invention is merely a
combination of old elements, and in the
combination each element merely would have
performed the same function as it did separately,
and one of ordinary skill in the art would have
recognized that the results of the combination were
predictable [i.e., leading to a more comprehensive,
streamlined foreign filing system and method].
Moreover, such combination would have been
obvious to one having ordinary skill in the art
since Lee recognizes the need to partner with a
translation facility and file foreign filings
according to the designated “translation
requirements” set forth by the individual foreign
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Application 13/265,208
patent offices. Thus, the combination would
streamline the foreign filing process.
Answer 5.
We agree with the Examiner that one having ordinary skill in the art
would have understood from at least Lee to send the translated and filed
legal documents to a prosecution agent other than the filing agent for
prosecution in a designated accepting office. This is because we find that
Lee explicitly discloses: “the act of filing international, regional, or national
intellectual property application includes, inter alia, translation
requirements, establishment of authority or agency in accordance with
national requirements, and transaction issues” (LL. 7); using “more than one
associate and hence more than one networked information server may
service a given target jurisdiction” (LL. 4); and “an intellectual property
filing portal 110 connecting to information systems of the selected associates
(e.g., associate systems 131, 132, 133 and/or 134)” (LL. 2, 3,5). Based on
these findings, we find one having ordinary skill in the art looking at Lee’s
option to use multiple agents in a target jurisdiction, each having its own
transaction cost, would have known to use one agent for filing if the filing
fee was less expensive than the filing costs of the prosecuting agent.
We are not persuaded by Appellant’s argument to claims 7 and 15
concerning the claim requirement of a document checklist. Appeal Br. 18—
19, 21. We find that the disclosed computerized completion of target
jurisdiction- and associate-specific form documents disclosed in
paragraph 35 of Lee (LL. 2) constitutes a check list because the associate-
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specific forms are completed to the satisfaction of the information required
by the form, thereby completing a check list set forth by the form’s required
data.
The Examiner found concerning claim 11, “Grainger describes a
system that is configured to calculate and determine a plurality of dates
serving as deadlines, such as filing deadline and deadline dates for tasks
communicated to practitioners. [0087].” Answer 12.
Appellant’s argument to claim 11 is,
Even if Linguistics was combined with Lee and
Grainger, a user would only be able to receive
price quotes for translation of legal documents
from the Examiner’s contemplated system.
Nowhere does Linguistics contemplate providing a
translation instruction with a translation deadline
date prior to the filing deadline date, nor does it
suggest some type of motivation to combine itself
with systems such as Lee or Grainger.
Appeal Br. 20.
That argument is not well taken because the Appellant is attacking the
Linguistics reference individually when the rejection is based on a
combination of references and the Examiner relies on Grainger for
disclosing deadline due date instructions and Lee for disclosing
consideration of translation requirements (LL. 7; Answer 11-12). See In re
Keller, 642 L.2d 413, 426 (CCPA 1981); In re Young, 403 L.2d 754, 757-58
(CCPA 1968). Lor the same reasons, we find no error with the Examiner’s
finding concerning the legal document deadline of claim 18.
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Concerning claim 16, Appellant argues,
Even if Linguistics was combined with Lee, a user
of such a method would only be able to receive
price quotes for translation of legal documents
from the Examiner’s contemplated method.
Linguistics simply does not teach a method for
managing the cost of filing legal documents by
managing all aspects of the foreign filing process
as recited in claim 16.
Appeal Br. 22.
Again, that argument is not well taken because Appellant is attacking
the Linguistics reference individually when the rejection is based on a
combination of references and the Examiner relies on Lee to show
designation of plural agents to prepare, file and prosecute applications in
foreign countries (final Act. 27—31) and, for the reasons set forth above
concerning claim 1, we find no error with this finding.
We are also not persuaded of error in the rejection of claim 21 by
Appellant’s argument that “Lee’s mention of ‘translation facility’ once, and
Grainger’s mention of ‘translation companies’ once, in their respective
lengthy applications, should not be grounds for combining these references
and claiming that such combination taught the features of claim 21”
(Appeal Br. 25), because one having ordinary skill in the art would
understand the hard deadline requirement in filing foreign applications
requires notice of this due date to all parties involved in processing the
application to the foreign jurisdiction. Lor the same reason, we affirm the
rejection of claim 22, which also covers legal document deadlines.
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Concerning the rejection of claim 24, we are not persuaded by
Appellant’s argument that “Lee in no way teaches or suggests a filing
system that can provide an instruction to limit the amount an agent can
charge for performing legal services” (Appeal Br. 27), because we find that
Lee discloses an obvious variant of instructions that limit the amount an
agent can charge. That is, we find that the client’s pre-approval of a fee
quote, as disclosed by Lee at paragraph 53 (Answer 14), is an obvious
variant of a limiting instruction, in that each is a condition precedent
requiring authorization by the client before a binding agreement occurs.
Concerning claim 25, Appellant argues that, “Nowhere in Grainger is
it taught that a translation deadline is calculated, and therefore it is certainly
not taught that a translation deadline is calculated based upon calculating a
filing deadline first.” Appeal Br. 28.
The Examiner, however, found that because Grainger at paragraph 85
discloses “the date a patent application is filed in a first patent office triggers
deadlines for filing the application in foreign patent offices” (FF. 8,
Answer 15—16), calculating translation based upon said filing deadline
would have been obvious.
We agree with the Examiner. We find that one having ordinary skill
in the art knowing that a translation is required for filing an application in a
given foreign country, and knowing the involved foreign filing date is
triggered by the original filing in the country of origin, would have known to
calculate a deadline date for the translation before the due date for the
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Application 13/265,208
foreign filing.
Concerning claims 4, 5, and 13, we adopt as our own the Examiner’s
findings as set forth in the Answer on pages 16—17 for claim 4, and on
pages 17—18 for claims 5 and 13, and will sustain the rejection of these
claims for the reasons set forth in these findings. In addition, Appellant’s
arguments only point out what the prior art discloses, without argument to
differences between the claimed features and the prior art.
We also affirm the rejections of dependent claims 2, 3, 6, 8,-10, 12,
14, 17, 19, 20, 23, 24 and 26 because Appellant has not challenged such with
any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).
CONCFUSIONS OF FAW
We conclude the Examiner did err in rejecting claim 1 and 21 under
35 U.S.C. § 112, second paragraph.
The Examiner did not err in rejecting claim 24 under 35 U.S.C. § 112,
second paragraph.
We conclude the Examiner did err in rejecting claims 1—26 under 35
U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1—26 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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