Ex Parte Valin

Patent Trial and Appeal Board

Nov 14, 2016

12459353 (P.T.A.B. Nov. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/459,353 0612912009
37476 7590 11/14/2016
WHITE-WELKER & WELKER, LLC
P.O. BOX 199
CLEAR SPRING, MD 21722-0199
FIRST NAMED INVENTOR
David Valin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Valin-RP Al 7512
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
MAILDATE DELIVERY MODE
11/14/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID VALIN
Appeal2014-002851
Application 12/459,353
Technology Center 3600
Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 59, 60, 63---66, 69, 71, 72, 74--78, 80-103, 105-110, 112,
and 114--121, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2014-002851
Application 12/459,353
THE INVENTION
The Appellant's claimed invention is directed to protection, sharing,
and tracking content (Abstract, lines 1, 2). Claim 59, reproduced below, is
representative of the subject matter on appeal.
59. A method for interacting and collaborating to perform
exchanges and sharing, the method comprising:
connecting to a networked computer system;
authenticating access to secure access every time a user
connects to the system;
creating one or more electronic files representing a user's
property;
allowing users to protect, share, or exchange property through a
computer network;
protecting, sharing, storing, accessing, authenticating,
certifying, the electronic files in the networked computer system;
attaching the electronic files to one or more other files;
tracking the electronic files in the networked computer system;
providing a network collaborative mechanism;
sharing a first protected or unprotected property between one or
more users by a property owner;
creating a second, altered property based on the first protected
or unprotected property by another user;
changing the second, altered property with permission and
protection of the property owner; or
creating a third subsequent altered properties with permission
and protection of the property owner;
determining the market value of a property;
determining the value of an intellectual property;
determining ownership and control of a subsequent properties;
calculating an ownership percentage that is protected between
two or more owners in relation to a shared and protected property;
calculating advertising rates and valuations of a property;
arbitrating a deal;
suggesting and negotiating a deal between a two or more users;
requesting proposals and prices;
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Application 12/459,353
providing an advert1smg system for buying, selling, targeting,
and placing advertisements, individually, in groups, or through the
automatic digital semantic agent;
establishing advertisement rates;
connecting a mobile or portable network device with the
networked system to stream in real-time or upload electronic files;
providing a group based marketplace for buying and selling;
providing a rating and voting system;
providing product development feedback;
providing an automatic digital semantic agent making a group
or cooperative purchase or sale; and
using the shared payment platform system to perform the
buying or selling actions.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Miller us 5,801,685 Sept. 1, 1998
George US 7,849,411 Bl Dec. 7, 2010
Coco tis US 2002/0112162 Al Aug. 15, 2002
Malackowski US 2002/0138384 Al Sept. 26, 2002
Kwei US 2004/0148228 Al July 29, 2004
Reisman US 2004/0186738 Al Sept. 23, 2004
Barney US 2004/0220842 Al Nov. 4, 2004
McCleskey US 2005/0021398 Al Jan.27,2005
Thomas US 2005/0108153 Al May 19, 2005
Koningstein US 2005/0114198 Al May 26, 2005
Gizewski US 2008/0162352 Al July 3, 2008
Ben-Zvi US 2008/0228614 Al Sept. 18, 2008
Hoyt US 2009/0259594 Al Oct. 15, 2009
Sal wan US 2010/0030580 Al Feb.4,2010
Aslanian US 2010/0299192 Al Nov. 25, 2010
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Application 12/459,353
r-T""i1 " 11 • • ,• 1 " " • 1
l ne rouowmg reJecuons are oerore us ror review':
1. Claims 59, 60, 63---66, 69, 71, 72, 74--78, 80-103, 105-110, 112
and 114--121 are rejected under 35 U.S.C. § 112, first paragraph, for failure
to show possession of the invention.
2. Claims 59, 60, 63---66, 69, 71, 72, 74--78, 80-103, 105-110, 112
and 114--121 are rejected under 35 U.S.C. § 112, second paragraph.
3. Claims 59, 60, 63---66, 69, 71, 72, 74--78, 80-103, 105-110, 112
and 114--121 are rejected under 35 U.S.C. § 101.
4. Claims 59, 76, 82-87, 106-108, 117, 119, and 120 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Resiman, McClesky and
Kwei.
5. Claim 60 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reisman, McClesky, K wei, and Aslanian, Jr.
6. Claims 64, 65, 69, 71, 72, and 75 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Reisman, McClesky, Kwei, and Ben-Zvi.
7. Claim 66 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reisman, McClesky, Kwei, Ben-Zvi, and Aslanian, Jr.
8. Claim 74 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reisman, McClesky, Kwei, Ben-Zvi, Gizewski, Salwan, Aslanian, Jr.
and Official Notice.
1 The Final Rejection and Answer make rejections with regard to claims
59-120, but the claims Appendix lists claims 61, 62, 67, 68, 70, 73, 79, 104,
111, and 113 as being cancelled. The rejections of record under 35 U.S.C.
§ 112 (first and second paragraphs) and 35 U.S.C. § 101 do not list claim
121 as being included in the rejection, but this omission is considered a
typographical error.
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Application 12/459,353
9. Claim 77 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reisman, McClesky, Kwei, George, and Official Notice.
10. Claims 78, 90, and 118 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reisman, McClesky, Kwei, and Official Notice.
11. Claims 80, 81 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reisman, McClesky, K wei, and Aslanian.
12. Claims 88 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reisman, McClesky, K wei, and Hoyt.
13. Claims 89, 91-103, 109, and 110 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Reisman, McClesky, Kwei, and Thomas.
14. Claim 105 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reisman, McClesky, Kwei, Barney, and Official Notice.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Rejection under 35 US.C. § 112,first paragraph
The rejection made under 35 U.S.C. § 112, first paragraph, was
maintained in the Final Rejection mailed April 17, 2013, and not withdrawn
in the Answer (Final Rej. 3--4). The Appellant has not provided any
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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arguments for this rejection. As no arguments have been provided, this
rejection of record is summarily sustained.
Rejection under 35 USC§ 112, second paragraph
The Examiner has determined that in claim 5 9 that the claim term
"automatic digital semantic agent" is confusing and indefinite, and also that
the claim term lacks antecedent basis (Final Rej. 5, Ans. 2-3).
In contrast, the Appellant argues that the cited claim limitation is not
indefinite (App. Br. 29-30).
We agree with the Appellant. Here, the claim term "automatic digital
semantic agent" is described in the Specification, for example, at pages 1
and 2. Here, the cited claim term is not indefinite in light of the
Specification. For these reasons, this rejection is not sustained.
Rejection under 35 USC§ 101
The Appellant has argued that the rejection made under 35 U.S.C.
§ 101 is improper (App. Br. 30-32).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 3--4; Final Rej. 5-10).
We agree with the Examiner.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "laws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
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In judging whether claim 59 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine assess whether the additional elements
"transform the nature of the claim" into a patent-eligible application of the
abstract idea. Id. This is a search for an "inventive concept" an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. The Court also stated
that "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Id at 2358.
Here, we find that the claim is directed to the concept of creating
intellectual property and then creating a marketplace for buying and selling
that intellectual property. This is a fundamental economic practice long
prevalent in our system of commerce, and is an abstract idea beyond the
scope of§ 101.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea over using generic computer components. We conclude that it
does not.
Considering each of the claim elements in tum, the function
performed by the computer system elements at each step of the process is
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Application 12/459,353
purely conventional. Each step of the claimed method does no more than
require a generic computer to perform a generic computer function. Thus,
the additional recited elements fail to transform the nature of the claim into a
patent-eligible application of the abstract idea, and the rejection of record is
sustained.
Rejection under 35 US.C. § 103(a)
The Appellant's has argued that the rejection of claim 59 is improper
because the cited prior art fails to disclose the claim limitations for:
protecting, sharing, storing, accessing, authenticating,
certifying, the electronic files in the networked computer
system;
(App. Br. 35).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Riesman at paras. 82, 83, and 113, (Final Rej. 13, 14).
We agree with the Appellant. Here, Riesman at the above cited
portions fail to specifically disclose the cited claim limitation for
"protecting, sharing, storing, accessing, authenticating, certifying, the
electronic files in the networked computer system" in the manner claimed
with the cited claim limitations. For example, paragraph 113 generically
discloses "workflow" but discloses nothing specific to the authentication or
certifying of the electronic files specifically in the manner claimed. For this
reason, the rejection of claim 59 and its dependent claims is not sustained.
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CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the cited claims under 35 U.S.C. § 112, first paragraph, for failure
to show possession of the invention; and 35 U.S.C. § 101, as listed in the
Rejections section above.
We conclude that Appellant has shown that the Examiner erred in
rejecting the cited claims under 35 U.S.C. § 112, second paragraph, and
35 U.S.C. § 103(a), as listed in the Rejections section above.
DECISION
The Examiner's rejection of claims 59, 60, 63---66, 69, 71, 72, 74--78,
80-103, 105-110, 112 and 114--121 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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