Ex Parte Schubert et al

Patent Trial and Appeal BoardDec 19, 2014

11398041 (P.T.A.B. Dec. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL M. SCHUBERT JR. and SCOTT T. SCHUBERT ____________ Appeal 2012-007462 Application 11/398,0411 Technology Center 2100 ____________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to an electronic information management system and process for abstracting and reporting contract information. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real parties in interest are Daniel M. Schubert Jr. and Scott T. Schubert. App. Br. 3. Appeal 2012-007462 Application 11/398,041 2 STATEMENT OF THE CASE Background “This invention relates to an electronic information management system for abstracting and reporting document information . . . . [T]he invention provides a globally-accessible electronic system applicable for contract abstracting, centralized data warehousing, customized information reporting, and electronic data conversion.” Spec. ¶ 1. The Claims Claims 1–16 are on appeal. Claim 1 is representative and reads as follows. 1. An electronic information management system for abstracting and reporting contract information contained in existing executed contracts, comprising: (a) an electronic database for storing contract information of said existing executed contracts; (b) a plurality of electronic indexing tags at predetermined locations within the stored contract information and operating to identify selected sections of the contract information; and (c) a section summary comprising a customized reconstruction of the contract information in layman's terms chosen by an abstractor, said summary being prepared for an associated indexed contract section, and said summary being recorded in a field electronically linked to at least one of said indexing tags, whereby a user viewing said section summary can drill down into the stored contract information of said existing executed contracts to retrieve the contract section corresponding to said at least one electronically linked indexing tag. App. Br. 14. Claim 9, the only other independent claim, is directed to a process related to the system set forth in claim 1. Id. at 16. Appeal 2012-007462 Application 11/398,041 3 The Rejection The Examiner maintains that claims 1–16 are unpatentable under 35 U.S.C. § 103(a) over Hoyt.2 DISCUSSION Appellants argue only that this rejection should be reversed because the Examiner ignored the claim limitation “existing executed contracts” in claims 1 and 9 and “[t]he system and method describe in Hoyt is unrelated and inapplicable to executed contracts, and would be inoperable relative to contracts or agreements which were already finalized and executed.” App. Br. 10. Thus, the dispositive issue is whether the Examiner has made a prima facie showing that it would have been obvious to one of ordinary skill in the art to modify the system of Hoyt for use with executed contracts. Principles of Law To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the combination of prior art references or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Analysis The Examiner finds that “Hoyt describes a system for the creation, editing, negotiating, and maintaining of new and existing contracts.” Ans. 5. The Examiner acknowledges that Hoyt does not expressly disclose that the system includes executed or signed contracts and concludes that “one of ordinary skill in the art at the time of invention would have concluded that a 2 Hoyt et al., US 6,067,531, issued on May 23, 2000. Appeal 2012-007462 Application 11/398,041 4 system such as Hoyt’s would have allowed a user to annotate a contract at any point during its lifetime, regardless of whether the contract was ‘executed’ or ‘signed.’” Id. The Examiner also finds that although Hoyt does not expressly disclose the use of executed contracts, Hoyt teaches all of the functionality provided in claim 1. Id. at 6–7. Appellants argue that “the system and method of Hoyt relating to non- binding, non-executed statements are irrelevant and inoperable as to contractual ‘terms’ contained in existing executed contracts.” App. Br. 12 (emphasis omitted). Appellants also argue that one of ordinary skill in the art would not look to the teachings of a prior system for negotiating/generating a contract when dealing with the management of executed contracts. Reply Br. 5. We find Appellants’ arguments unpersuasive. First, we note that Appellants do not appear to dispute the Examiner’s findings regarding the functionality of the system disclosed in Hoyt. We adopt those findings here. See Ans. 5–11. Second, to support their arguments, Appellants focus on the distinction between a document with no legal effect, such as those used in Hoyt’s system, and a legally binding contract. See App. Br. 11–12. While such a distinction may exist, Appellants have not explained how it leads to the ultimate conclusion that Hoyt’s system would be inoperable as to executed contracts or that one of ordinary skill in the art would not find it obvious to look to a system for managing contract negotiations for management of executed contracts. The rejection is for obviousness, not anticipation (see Ans. 4-5). In this context, we agree with the Examiner’s conclusion that one of ordinary skill in the art would have concluded that Hoyt’s system could be used to manage contracts and renders the claimed Appeal 2012-007462 Application 11/398,041 5 contract management system obvious regardless of whether the contract has been executed or is still being negotiated. We see no reason why one of ordinary skill in the art would either ignore Hoyt when looking to design a system to manage signed contracts or conclude that the functionality of Hoyt’s system is inapplicable to a signed contract. Accordingly, we conclude that the Examiner has established a prima facie case of obviousness, which Appellants have failed to rebut. Thus, we affirm this rejection. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1–16 as obvious. 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. § 41.50(f). AFFIRMED msc