Ex Parte Sewell et alDownload PDFPatent Trial and Appeal BoardMar 27, 201712003288 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 2 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. 3 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 4 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). 5 Appeal 2014-007060 Application 12/003,288 AFFIRMED 6 Copy with citationCopy as parenthetical citation