Ex Parte Summer et al

Patent Trial and Appeal Board

Dec 22, 2017

14738807 (P.T.A.B. Dec. 22, 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.
14/738,807 06/12/2015 Robert D. Summer SUR.301CONB 4059
23581 7590 12/27/2017
KOLISCH HARTWELL, P.C.
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
docketing @khpatent.com
veronica@khpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D. SUMMER and JON M. DICKINSON
Appeal 2017-009444
Application 14/738,807
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Robert D. Summer and Jon M. Dickinson (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claim 4, the only claim pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 13, 2017) and Reply Brief (“Reply Br.,” filed June 23,
2014), and the Examiner’s Answer (“Ans.,” mailed May 26, 2017), and
Final Action (“Final Act.,” mailed November 14, 2016).
Appeal 2017-009444
Application 14/738,807
The Appellants invented a method for enhancing the operative,
transactional flow of communication-network commerce through
implementing a unique, commercial-promotional practice. Specification
1:16-18.
An understanding of the invention can be derived from a reading of sole
claim 4, which is reproduced below (bracketed matter and some
paragraphing added).
4. A network, affinity-interest-group method,
optionally step-effected by an optional within-group
manager,
for enhancing,
in the employment of an electronic-communication
computer network, such as the Internet,
affinity-interest-group network commerce in the form of
within-group-implemented commercial transactions
through limiting,
via authorized-member access-control based upon
vetted entrepreneurship linked to at least one
established affinity-interest-group member,
network-computer access to an electronic catalogue
which contains electronic representations of
affinity-interest subj ect-matter,
said method comprising[:]
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[1] creating,
in relation to a selected affinity-interest group
formed of network communicant members
having a common subject-matter affinity
interest,
and
including, optionally, a within-group
manager member,
a network-accessible, but limited-access, electronic
catalogue containing
electronic representations of affinity-interest
goods-and- services deliverables that are
associated with the group members' common
affinity interest,
[2] establishing at least one network-communicant affinity-
group member,
drawn from any of the group members,
characterized by possessing, as established by
vetting, entrepreneurship talent for promoting
commercial transactions regarding the catalogue-
contained deliverables,
to become recognized as an at least one authorized,
entrepreneurially-vetted, affinity-group network-
communicant member
having authorized control over access to
deliverables contained in the catalogue
for the purpose of promoting commercial
transactions respecting such deliverables,
and
[3] through controlled limiting of network-computer catalogue
access,
specifically limiting access to deliverables in the
catalogue to only
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(a) such an at least one vetted, network-
communicant member,
and
(b) another network-communicant member in the
group having a potential commercial-transactional
interest in a catalogue-contained deliverable,
and to whom such access is furnished
specifically, and only, by such a vetted member,
and solely for the purpose of considering, and if
desired engaging in, a vetted-communicant-
promoted commercial transaction regarding a
catalogue-contained deliverable.
The Examiner relies upon the following prior art:
Chandler US 2002/0032599 A1 Mar. 14, 2002
Bonneau US 2011/0060732 A1 Mar. 10, 2011
Claim 4 stands rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claim 4 stands rejected under 35 U.S.C. § 112(a) as not enabling a
person of ordinary skill in the art to make and use the claimed subject matter
from the original disclosure.
Claim 4 stands rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bonneau and Chandler.
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ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of enablement matter turn primarily on whether the Examiner
provided sufficient analysis to show one of ordinary skill would have been
unable to practice the invention.
The issues of indefiniteness matter turn primarily on whether one of
ordinary skill would have understood the metes and bounds of the claims.
The issues of obviousness turn primarily on whether any limitations are
undeserving of patentable weight and whether the claims are sufficiently
broad to encompass the art as combined.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Bonneau
01. Bonneau is directed to on-line catalogs. Bonneau para. 7.
02. Bonneau describes browse hierarchies that are customized in
scope to be substantially coextensive with the scope of each of a
number of customized versions of an on-line catalog, the
customized browse hierarchies being pared down in scope from a
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primary hierarchy in accordance with rules-based searches of a
central catalog database maintained by the seller. Bonneau
para. 7.
03. Bonneau describes generating a plurality of custom browse
hierarchies for each of a unique subset of items in a catalog
database, a primary hierarchy is established that is representative
of the items in the catalog database. Then, for each leaf node of
the primary hierarchy, a search rule is derived that comprises an
aggregation of constraints specified by the leaf node and its
ancestors. In one embodiment, the rule is an “include” rule that
defines all items in the database that meet the aggregation of
constraints. The constraints are one or more attributes having
predefined permissible values. The search rule is then used to
identify, for each leaf node in the primary hierarchy, all of the
unique subsets that contain at least one of the items meeting the
aggregation of constraints. Bonneau para. 18.
04. Bonneau describes a web server providing access to the
database to users by means of a browser over the Internet, and the
browse hierarchy customized for a particular user is provided to
that user for purposes of browsing the unique subset of the
database to which the user has been assigned as the user’s custom
catalog. Bonneau para. 21.
05. Bonneau describes a seller’s catalog database as centrally
managed and maintained, as is the primary browse hierarchy
representing the items stored in the catalog database. The seller’s
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Application 14/738,807
catalog database consists of data representing items offered for
sale by the seller. Bonneau para. 34.
06. Bonneau describes users authorized by the seller as being given
access to the database through an application program. Seller-
authorized users are charged with maintaining the database and
setting up buyer accounts. Bonneau paras. 50-52.
Chandler
07. Chandler is directed to a web-based venture matching
accelerator. Chandler para. 3.
08. Chandler describes a web-based application system for the
entrepreneurial and venture capital community that acts as a
beacon of interactive knowledge-bases, business tools, databases
and smart connectivity tools for a local community, and with
connection to a series of other local communities whereas to
create a virtual network. Chandler para. 9.
09. Chandler describes formulating one or a series of individual
virtual local communities that may be connected to one another.
Chandler para. 54.
10. Chandler describes a web-based application for venture
incubation and acceleration, resource and information. A user, for
example, an entrepreneur in a start-up company, accesses the web­
site from a suitable terminal having an Internet access. The
program provides the entrepreneur with a unique login/password.
The program prompts the entrepreneur to complete an online
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questionnaire of business planning and management tools (e.g.,
executive business summary, business plan, typical slide road
show, strengths weaknesses opportunities and threats analysis).
Chandler para. 55.
11. Chandler describes rating the entrepreneurial user from the
input data. The data entered on the questionnaire is used to give
the entrepreneur a score determined by a set of algorithms stored
on the server or via an on-line interactive human review and
scoring process. The score may include the strength of the start­
up business with respect to product, resources, and business
opportunity. Also, the system is designed to allow for peer review
recommendations to facilitate input regarding opportunities to
enhance the entrepreneurial companies business. The
questionnaire is made available for viewing by another user
accessing the web-site to further analyze and review the score.
Chandler para. 56.
12. Chandler describes placing the company on a list of companies
with comparable scores upon determination of the score. For
example, a high score may place the company on a list with other
companies that are ready to be matched with capital and a low
score may place the company on a review and consulting list.
Chandler para. 57.
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ANALYSIS
Claim 4 rejected under 35 U.S.C. § 101 as directed to non-statutory subject
matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First,. . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(alterations in original) (citations omitted) (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claim at issue
are directed to a patent-ineligible concept. The Examiner finds the claim
directed to abstract, unspecified vetting of a person for entrepreneurship
talent. Final Act. 6.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claim itself and the Specification
provide enough information to inform one as to what they are directed to.
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The preamble to claim 4 recites that it is a method for enhancing affmity-
interest-group network commerce. The steps in claim 4 result in recognizing
someone as having and granting control authority in an affinity-group. The
Specification at page 1, lines 16-18, recites that the invention relates to
enhancing the operative, transactional flow of such commerce through
implementing a unique, commercial-promotional practice. Thus, all this
evidence shows that claim 4 is directed to enhancing transaction flow by
recognizing authority in some party, i.e., delegating authority.
It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappos,
561 U.S. 593 (2010)) in particular, that the claim at issue here is directed to
an abstract idea. Like the risk hedging in Bilski, the concept of delegating
authority is a fundamental business practice long prevalent in our system of
commerce. The use of delegating authority is also a building block of
management. Thus, delegating authority, like hedging, is an “abstract idea”
beyond the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. 134 S. Ct. at 2357. It
is enough to recognize that there is no meaningful distinction in the level of
abstraction between the concept of risk hedging in Bilski and the concept of
delegating authority at issue here. Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
Both are squarely within the realm of “abstract ideas” as the Court has used
that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
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1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 4, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
generation, and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 4 is directed to the abstract idea of retrieving,
analyzing, and generating data.
The introduction of a computer into the claim does not alter the analysis
at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to create data describing a catalog, identify the name of someone,
identify an attribute representing control authority and limiting data access
to only that person amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claim
simply recites the concept of delegating authority as performed by a generic
computer. To be sure, the claim recites doing so by advising one to create a
catalog and delegate and execute control authority over that catalog and data
related to it. But this is no more than abstract conceptual advice on the
parameters for such delegating authority and the generic computer processes
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necessary to process those parameters, and does not recite any particular
implementation.
The method claim does not, for example, purport to improve the
functioning of the computer itself. Nor do it effect an improvement in any
other technology or technical field. The 30 pages of the Specification spell
out different generic equipment and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of delegating authority under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, the claim at issue amounts to nothing significantly more
than an instruction to apply the abstract idea of delegating authority using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellants’ argument that
this claim[] is not directed to an abstract idea or concept. As
claim 4 clearly states, the invented methodology steps recited
therein are directed into and toward the world of electronic-
communication-networked computers, such as those which
populate the Internet. The claimed invention is, therefore,
plainly and unequivocally aimed, inter alia, into the world of
computer technology, and because it offers and proposes . . .
certain unique and unobvious advantages in this world, it
functions effectively in a manner directing attention to an
improvement in computer-related technology. Unique and
unobvious technologic advantages, in addition to other
advantages, such as vetted entrepreneurial enhancement of
catalogue-based network commerce, and steps aimed at
minimizing copyright infringement of catalogue contained,
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commercially deliverable copyrighted subject matter, flow from
the methodologic cooperative relationship existing between the
created limited-access catalogue, and the controlled computer-
network-access gating of entry into that catalogue, which entry
is definitively limited/confined to the actions of a special,
entrepreneurially vetted network communicant. Technically,
such gating to effect limited catalogue access functions directly,
in a computer network, as a technologic filter, necessarily
electronic in nature, respecting (1) data-flow, and (2) associated
network bandwidth, managing of networked-computer network
communication operation. Such filtering is definitively ... an
improvement in networked computer- related operation and
technology by eliminating, through “access” filtering, certain
catalogue-communication activities that could/would otherwise
take place in a nonfiltered, networked-computer, catalogue-
access environment — thus (1) minimizing, through filtering,
network-data-flow communication traffic, and thereby (2)
improving bandwidth availability for other network activities —
two distinct improvements in networked-computer-related
technology.
The technological improvements thus offered (by what is
set forth in claim 4) in computer-related technology are not
therein defined, and do not need to be defined, by reference to
“physical” components or in relation to “particular physical
features” (May 19 Memorandum). Rather, they are defined by
“logical processes” as such are expressed in claim-4’s unique
and unobvious, central (a) limited-access catalogue creation,
(b) vetted entrepreneurial communicant establishing, and
(c) networked computer, catalogue access limiting, steps.
App. Br. 24-25 (emphasis omitted). This contention essentially is that the
claim is directed to a data filter and that such a filter is both non-abstract and
a technological solution to a technological problem. The problem for
Appellants is they conflate the idea of using a filter with the technical
implementation of such a filter. The guidelines and case law Appellants
refer to all support the proposition that a particular implementation of
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technology, such as a data filter, is non-abstract. We must agree, but that is
not this case. The claim instead recites advice to use a filter. As such, the
claim recites a concept, the advice to use a filter.
In this regard, the Supreme Court and the Federal Circuit have held that
a wide variety of well-known and other activities constitute abstract ideas.
For example, in BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, the Federal Circuit held that a claim reciting a “content
filtering system for filtering content retrieved from an Internet computer
network[, e.g., to prevent users from accessing certain websites,]... is
[directed to] an abstract idea.” 827 F.3d 1341, 1348 (Fed. Cir. 2016)
(internal quotation marks and citation omitted). Additionally, in Content
Extraction & Transmission LLC v. Wells Fargo Bank, National Ass ’n, the
Federal Circuit found the claims directed to an abstract idea where they
claimed, inter alia, “collecting data” and “recognizing certain data
within the collected data set.” 776 F.3d at 1347. In FairWarning IP,
LLC v. Iatric Systems, Inc., the Federal Circuit held that an automated
system for “detecting fraud and/or misuse in a computer environment
based on analyzing data” according to “one of several rules” was directed
to an abstract idea. 839 F.3d 1089, 1093 (Fed Cir. 2016) (internal
quotation marks omitted). Finally in CyberSource Corp. v. Retail
Decisions, Inc., the Federal Circuit found claims that could be “performed
in the human mind[] or by a human using a pen and paper” were
directed to patent-ineligible mental processes. 654 F.3d 1366, 1372 (Fed.
Cir. 2011).
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We are not persuaded by Appellants’ argument that “[tjhere is no
predecessor or model anywhere in the known prior art for such a vetted-
entrepreneurial-controlled, limited-access catalogue, gated/filtered network
catalogue-access behavior; and, it is in relation to this herein claimed,
limited-catalogue access control methodology.” App. Br. 26.
Eligibility is a separate issue from novelty. “While the claims may not
have been anticipated or obvious because the prior art did not disclose
[the selection criteria], that does not suggest that the idea of [‘selecting’
errant files] is not abstract.” Intellectual Ventures ILLC v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016); see Diamond v. Diehr,
450 U.S. 175, 188-89 (1981) (“The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possible patentable subject matter.”).
Claim 4 rejected under 35 U.S.C. § 112(a) as not enabling a person of
ordinary skill in the art to make and use the claimed subject matter from the
original disclosure
The Examiner rejects claim 4 because
the claim[] or Spec[.] do not state how entrepreneurship talent
is identified or how a user or member or party is vetted. No
metrics or quantifiable criteria or examples are provided. No
functional steps for how entrepreneurship talent identification
or member vetting would occur are found in Applicant’s
Spec[.] or claimed
Final Act. 8.
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We are persuaded by Appellants’ argument that the Examiner did not
present a proper analysis. The Examiner did not provide a Wands analysis.
In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988). In In re Wands, the
court set forth eight factors to consider when determining whether undue
experimentation is needed. In any event, the three steps are creating a
catalogue, establishing someone as one having control, and limiting access
to data. All three steps are relatively primitive operations that a novice
programmer, much less one of ordinary skill, could easily perform. The
limitations Examiner refers to characterize the data that are operated upon,
not the steps performed. As such, it is sufficient that one interpret the data
as recited to be enabled.
Claim 4 rejected under 35 U.S.C. § 112(b) as failing to particularly point
out and distinctly claim the invention
The Examiner rejects claim 4 for the same reason as the enablement
rejection supra. Final Act. 8-9. Aside from the Wands factors not required
here, our findings are the same.
The Examiner further rejects claim 4 because the limitation of
“characterized as possessing, as established by vetting, entrepreneurship
talent” is a relative term. Id. As with the enablement rejection, it is
sufficient that one interpret the data as such, and so one of ordinary skill
would understand that this is broad but not indefinite. The claim does not
recite vetting per se but characterizing data as having been vetted. Thus, any
data characterizing such a person in any manner would fall within the scope
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because that data could be perceived as characterizing prior vetting, if one so
chose.
Claim 4 rejected under 35 U.S.C. § 103(a) as unpatentable over Bonneau
and Chandler
Claim 4 recites three steps, viz., creating X; establishing Y, and limiting
access to Z, where X is labeled as a network-accessible, but limited-access,
electronic catalogue containing electronic representations of affinity-interest
goods-and- services deliverables that are associated with the group
members’ common affinity interest; Y is labeled as at least one network-
communicant affinity-group member, drawn from any of the group
members, characterized by possessing, as established by vetting,
entrepreneurship talent for promoting commercial transactions regarding the
catalogue- contained deliverables, to become recognized as an at least one
authorized, entrepreneurially-vetted, affinity-group network-communicant
member having authorized control over access to deliverables contained in
the catalogue for the purpose of promoting commercial transactions
respecting such deliverables; and Z is labeled as deliverables in the
catalogue. Thus, the claim is really to creating a catalog, identifying an
individual, and limiting access to data generated as a result of the catalog.
Nothing in the claim depends on or enforces the perceptual labels the claim
suggests. Mental perceptions of what data represent are non-functional and
given no weight. King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any new
and unobvious functional relationship between the printed matter and the
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substrate.’” (quotingIn re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983));
see also In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing
printed matter as “useful and intelligible only to the human mind” (quoting
In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969))). Data labels are just
examples of such mental perceptions. Data, being a succession of binary
digits, are just those digits, not perceptual labels of those digits. The binary
digits may impose some functional consequence, but absent some recitation
of how so, such consequence is not an issue.
Thus, the claim is really to receiving information and using that
information to limit access to data. This process, as such without regard to
the particular labels, is anticipated by Bonneau, and, for that matter, any
online shopping catalog maintained by someone having write permission
access that others do not. It is only in the data labels that novelty is argued.
But labels cannot distinguish over the art. In re Bode, 550 F.2d 656, 660
(CCPA 1977) (“The specific limitation need not be disclosed in haec verba
in the reference”). Also there is no structural or functional difference
imparted by labels; they only serve to apply a known process/structure to a
specific perceptual context. The art applied, however, is within the scope of
even the recited labels.
Further, labels pass the King Pharmaceuticals test for non-functional
limitations undeserving of weight because none of the labels depends on or
affects the functions of creating, establishing, and limiting access, and none
of those operations affects or depends on the perceptual labels. The court in
King held that the policy for giving printed matter no patentable weight
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should be extended to other areas meeting the same tests. See King Pharms.,
id.
Although Bonneau anticipates claim 4 when the non-functional
limitations are given no weight, the Examiner nevertheless applies Chandler
for those non-functional limitations that Bonneau does not describe. The
Examiner finds that Chandler describes the motivation for combining the
references as better selecting authorized sellers. Final Act. 10-12.
We are not persuaded by Appellants’ argument that “the commerce
enhancing vetted-entrepreneurship, authorized-access-only-catalogue
landscape which underpins appellants’ invention, as expressed in claim 4, is
completely absent from these two references.” App. Br. 15. First, the only
part of this limitation deserving of patentable weight is an authorized-access-
only-catalogue which Bonneau describes. Second, Chandler describes the
equivalent of commerce enhancing vetted-entrepreneurship in using a
questionnaire to rate (vet) the entrepreneurial capacity of users, and the
claim does not recite any form of landscape.
We are not persuaded by Appellants’ argument that “neither reference
teaches or suggests the claimed step of creating appellants’ special limited-
network-computer-access type electronic catalogue that will lie under the
access control of an entrepreneurially vetted, network-communicant party”;
“neither reference teaches or suggests the claimed step of establishing at
least one network-communicant affinity-group member, and in particular
one such member characterized by possessing, as established by vetting,
entrepreneurship talent for promoting commercial transactions regarding the
catalogue-contained deliverables”; and “neither reference teaches or
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Application 14/738,807
suggests the claimed step of limiting access to deliverables in the catalogue
whereby that ‘such a vetted communicant party’ holds the important
commercial-transactional-access key to the recited limited-access
catalogue.” App. Br. 17 (emphasis omitted).
Appellants only argue procedure, and do not respond to the Examiner’s
findings of fact. The arguments simply recite the added limitations and
allege they are not found in the cited references. This is insufficient to act as
a separate argument under 37 C.F.R. § 41.37. As our reviewing court held,
we hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). In any event, as we find
supra, Bonneau describes a network-computer-access type electronic
catalogue that will lie under the access control of a user. The remainder of
the first limitation is non-functional and undeserving of weight. Bonneau
describes identifying the user to access control. The remainder of the second
limitation is non-functional and undeserving of weight. Bonneau describes
limiting access to an electronic catalogue to that of control of a user. The
remainder of the third limitation is non-functional and undeserving of
weight.
CONCFUSIONS OF FAW
The rejection of claim 4 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
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The rejection of claim 4 under 35 U.S.C. § 112(a) as not enabling a
person of ordinary skill in the art to make and use the claimed subject matter
from the original disclosure is improper.
The rejection of claim 4 under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention is improper.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Bonneau and Chandler is proper.
DECISION
The rejection of claim 4 is affirmed.
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) (2011).
AFFIRMED
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