Ex Parte Sewell et al

Patent Trial and Appeal Board

Mar 27, 2017

12003288 (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.
12/003,288 12/21/2007 Peter L. Sewell 2007.0002.US 9622
68242 7590 03/29/2017
FIALA & WEAVER P.L.L.C.
C/O CPA GLOBAL
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
MOONEYHAM, JANICE A
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):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER L. SEWELL and DAVID K. YOUNG
Appeal 2014-007060
Application 12/003,288
Technology Center 3600
Before MURRIEL E, CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—18. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a system and methods that reduce
risks for law firms and corporations that are involved with the tracking and
payment of renewal fees on intellectual property such as patents and
trademarks (Spec. 12).
Appeal 2014-007060
Application 12/003,288
Claim 1 is illustrative:
1. A system for reducing risk of intellectual property
renewals management, comprising:
an intellectual property database for storing data related
to renewals information for granted cases and pending cases of
intellectual property, the database comprising fields of data
identifying specific intellectual property cases;
a client computer that owns one or more of the
intellectual property cases;
a law firm server, in communication with and working
for the client computer, that uses the database to transmit
renewals information between the law firm server and the client
computer;
and a service provider server, in communication with the
client computer and the law firm server, wherein the law firm
server transfers risk and responsibility for renewals of the cases
to the service provider server under supervision of the client
computer, and wherein transferring of risk and responsibility
comprises transmitting reminders for paying a renewal to the
client computer, receiving instructions for paying a renewal
from the client computer, submitting invoices for services and
fees to the client computer, and paying renewals to a patent and
trademark office (PTO) server.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Helms US 2007/0112672 A1 May 17, 2007
Franks GB 2 380 006 A Mar. 26,2003
Appellants appeal the following rejections:
Claims 1—18 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Claims 1—18 under 35 U.S.C. § 112, second paragraph, as indefinite.
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Appeal 2014-007060
Application 12/003,288
Claims 1—6, 8—15, 17 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Franks and Helms.
Claims 7 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Franks, Helms and Official Notice.
ISSUE
Did the Examiner err in rejecting the claims under 35 U.S.C. § 112,
first paragraph, because paragraph 31 of the Specification discloses that the
transferring of risks and responsibility comprises transmitting reminders,
paying renewals and submitting invoices and fees?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 112,
second paragraph, because the Specification discloses clearly that the risks
and responsibilities are transferred by the steps of transmitting reminders,
paying renewals and submitting invoices and fees?
FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Ans. 5—7.
Additional findings of fact may appear in the Analysis that follows.
ANALYSIS
Written Description
The Examiner holds that the recitation that transferring of risk and
responsibility comprises transmitting reminders, submitting invoices and
paying renewals was not described in the Specification (Final Act. 2). The
Appellants argues that this subject matter is described in paragraph 31 of the
Specification.
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Appeal 2014-007060
Application 12/003,288
We find that Appellants’ Specification describes that a law firm
transfers the risk and responsibility of renewals to the service provider. The
transfer is done pursuant to a contract between the service provider and the
law firm (Spec. Tflf 23, 31). When a law firm chooses to transfer all the risks
and responsibilities to the service provider, the service provider interacts
directly with the client for reminders, instructions, invoicing and payments
of renewals. The responsibilities and risks are those related to actions that
accompany renewals.
Claim 1 recites that the transfer comprises the actions that accompany
renewals. There is no disclosure in Appellants’ Specification of transferring
risks and responsibilities by the actions that accompany renewals. Rather,
paragraph 23 indicates that the risk of missing a renewal is passed to the
service provider pursuant to a contract between the service provider and the
law firm and paragraph 24 discloses that a letter is sent from the law firm to
the clients notifying the client of the law firm’s intent to exit the renewal
business and turn over the responsibility for the renewal activities to the
service provider. As such, the Appellants’ disclosure indicates that the
transferring of risk and responsibility comprises a contract between the law
firm and the service provider. The transmitting of reminders, etc. relates to
the responsibilities that are transferred but are not the transfer itself
In view of the foregoing, we will sustain this rejection of the
Examiner.
Indefiniteness
The Examiner holds that a person’s risks and responsibility is not a
functional step such as the steps that accompany renewal that are recited in
claim 1 and therefore recitation of the transfer of risks and responsibility for
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Appeal 2014-007060
Application 12/003,288
renewals comprising the functional steps recited in claim 1 is unclear. We
agree that it is not clear how a transfer of risks and responsibility can
comprise the steps recited in claim 1. This is especially unclear in view of
the teaching in the Specification that the transfer of risks and responsibilities
is done pursuant to a contract between the service provider and the law firm,
as we discussed in relation to the written description rejection. In addit ion as
risk is a perceptual rather than physical phenomenon, literally an abstraction
in the mind of the beholder, it is not been clear how the performance of
functional steps can be the actual transfer of risk. .In view of the foregoing,
we will sustain this rejection.
Obviousness
Because we determine that claims 1—18 are indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventors regard as the invention, we pro forma reverse the rejection of
claims 1—18 under 35 U.S.C. § 103(a) as an analysis would be based on a
speculative interpretation of these claims. See In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)
(determinations as to obviousness cannot be made for indefinite claims).
DECISION
We affirm the Examiner’s rejections of claims 1—18 under 35 U.S.C.
§112, first and second paragraphs.
We do not affirm the Examiner’s § 103(a) rejections of claims 1—18.
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)(1) (2009).
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Appeal 2014-007060
Application 12/003,288
AFFIRMED
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