Ex Parte Victor

Patent Trial and Appeal Board

Dec 27, 2017

13424049 (P.T.A.B. Dec. 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.
13/424,049 03/19/2012 David W. Victor 1818.0005 1590
24033 7590 12/29/2017
KONRAD RAYNES DAVDA & VICTOR, LLP
350 S. Beverly Dr.
Suite 360
Beverly Hills, CA 90212
EXAMINER
DWIVEDI, MAHESH H
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
12/29/2017 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):
krvu spto @ ipmatters .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID W. VICTOR
Appeal 2017-007214
Application 13/424,049
Technology Center 2100
Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-007214
Application 13/424,049
BACKGROUND
The Invention
According to Appellant, “[t]he present invention relates to a computer
program product, system, and method for inviting participants in an online
document sharing community to accept terms of a non-disclosure agreement
(NDA) to access a document.” Spec. ^ 1.
Exemplary independent claim 1 is reproduced below.
1. A computer program product for implementing an
online document sharing community in a network environment
including a plurality of participant computers operated by
participants in the online document sharing community and a
storage system, wherein the computer program product is
implemented in a nontransitory computer readable storage
medium having a computer program that when executed
performs operations, the operations comprising:
generating, by a manager implementing the online
document sharing community, document information in a
database identifying documents in the storage system and owners
of the documents, wherein at least one of the documents includes
content comprising content subject to protection under
intellectual property laws;
in response to processing a request to create a group of
invitees to one of the documents for which there is document
information in the database, performing, by the manager,
operations comprising:
generating, in the database, group information for a group
created by the owner of the document indicating at least one
document associated with the owner and a plurality of invitees,
wherein each invitee comprises one of the participants in the
online document sharing community operating an invitee
computer comprising one of the participant computers;
generating a join message including a description of the
document that does not include all the content of the document,
a non-disclosure agreement (NDA) requesting the invitee to
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accept terms of the NDA in order to access all of the content of
the document, and code embedded in the join message
implementing an accept graphical element that when selected
causes the invitee computer to transmit an acceptance message
indicating acceptance of the terms of the NDA;
sending the join message to at least one invitee computer
for each of the invitees;
in response to receiving the acceptance message from one
of the invitee computers operated by one of the invitees,
indicating in the document information in the database the
invitee that has accepted the terms of the NDA, wherein content
of the document is only provided to the at least one invitee
computer of at least one invitee that has accepted the NDA; and
providing access to the content of the document to the at
least one invitee computer operated by at least one of the invitees
that have received the join message and accepted the NDA.
References and Rejections
1. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 2-5.
2. Claim 1-3, 5, 8-9, 11, 14-16, and 18 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Woollcombe (US 2010/0211887
Al, published, Aug. 19, 2010), Chanpman (US 7,584,250 Bl, published
Sept. 1, 2009), Britton (US 2008/0300933 Al, published Dec. 4, 2008) and
van Os (US 2009/0228322 Al, published Sept. 10, 2009). Final Act. 5-24.
3. Claims 4, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woollcombe, Chapman, Britton, van Os, and Chebiyyam
(US 2012/0191792 Al, published July 26, 2012). Final Act. 25-30.
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4. Claims 6, 12 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woollcombe, Chapman, Britton, van Os, and Nguyen (US
2005/0033615 Al, published Feb. 10, 2005). Final Act. 31-33.
5. Claims 7, 13 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woollcombe, Chapman, Britton, van Os, Nguyen, and
Farrell (US 2008/0250332 Al, published Oct. 9, 2008). Final Act. 33-35.
DISCUSSION
Rejection Under 35 U.S.C. § 101
Relevant Case Law
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception for certain patent ineligible
concepts: laws of nature, natural phenomena, and abstract ideas. Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014); see also
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012). To determine patentable subject matter, the Supreme Court has set
forth a two part test: (1) whether the claims are directed to a patent-
ineligible concept and, if so, (2) whether, when the claim elements are
considered “individually and ‘as an ordered combination,’” there is an
inventive concept present, 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, 134 S. Ct. at 2355
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
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Findings and Contentions
Under the first prong of the two-step framework laid out in
Alice/Mayo the Examiner finds “[t]he claim(s) is/are directed to the abstract
idea of requiring the agreement to an NDA in order to view a document
subject to protection under Intellectual Property laws (i.e. a Basic Legal
Concept).” Final Act. 3. The Examiner further finds, under the second
prong of the Alice/Mayo framework, that the additional elements amount to
no more than generic computer structure performing functions that are well-
understood, routine and conventional and do not transform the abstract idea
into a patent eligible application that is significantly more than the abstract
idea. Final Act. 3.
Appellant argues that the claims recite “numerous database related
operations” (App. Br. 10) that “provide specific and detailed requirements
concerning how a database is updated and join messages generated, the
database further updated and access to the document provided in response to
receiving the acceptance message generated from the join message” (App.
Br. 11). The claimed database elements, structures, and operations,
according to Appellant, provide “a sufficient level of detail to avoid a
finding of‘abstractness.’” App. Br. 12 (citing Enfish v. Microsoft, 822 F.3d
1327, 1337-38 (Fed. Cir. 2016)). Similarly, Appellant argues that the
claimed database elements, structures, and operations “comprise
significantly more than an abstract idea of ‘requiring the agreement to an
NDA.’” App. Br. 13; see also App. Br. 14. Finally, Appellant also points
out that the use of four references in the Examiner’s obviousness rejection
“illustrates the claims provide a combination of numerous elements that is
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more than a simple generic operation, such as accepting an agreement.”
App. Br. 11.
Analysis
We are unpersuaded by Appellant’s arguments. Instead, we agree
with and adopt the Examiner’s findings and concur with the Examiner’s
conclusion as set forth in the Answer and in the Action from which this
appeal was taken. Final Act. 2-5; Ans. 3-12. We provide the following for
emphasis.
Turning to the first prong of the Alice/Mayo framework we agree with
the Examiner that the claims are directed to an abstract idea. Referring, for
example, to claim 1, the steps of generating document information in a
database, generating group information, generating and sending a join
message requesting invitees in the group to accept an NDA, updating the
document information indicating that invitees have accepted the NDA, and
providing access to the document to the invitees who have accepted the
NDA, are all steps directed to providing an NDA to invitees so that those
invitees can access a protected document. The claimed document
information and group information simply keeps track of information
regarding the document (such as its owner) and the group of invitees who
need to be sent an NDA for acceptance and those invitees from the group
who have accepted the NDA. Thus, we agree with the Examiner that the
claims are directed to the abstract idea of requiring the agreement to an NDA
in order to view a document. See buy SAFE, Inc. v. Google, Inc., 765 F. 3d
1350, 1355 (Fed. Cir. 2014) (finding claims relating to creating a contractual
relationship to be directed to an abstract idea).
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Turning to the second prong of the Alice/Mayo framework we agree
with the Examiner that the database elements, structures and operations that
Appellants emphasize, such as “generating . . . document information,”
“generating . . . group information,” “generating a join message . . . [with]
code embedded in the join message implementing an accept graphical
element,” “indicating in the document information in the database the invitee
that has accepted the terms of the NDA,” are not enough to transform the
claim to something significantly more than the abstract idea. The document
information and group information are elements directed to record keeping
in a database. The claimed database itself is used in its well-understood and
conventional manner. The claimed graphical elements are also used in a
well-known and conventional manner to provide invitees a way of indicating
that they have accepted the NDA. These database and interface elements are
generic computer components and have been held to not satisfy the inventive
concept requirement of the second prong of the Alice/Mayo framework. See
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324-
25 (Fed. Cir. 2016).
Appellant’s argument that the use of four references in the Examiner’s
obviousness rejection “illustrates the claims provide a combination of
numerous elements that is more than a simple generic operation, such as
accepting an agreement” (App. Br. 11) is unpersuasive. As explained above,
the elements that Appellant emphasizes are generic computer elements and
are not enough to transform the claims to something significantly more than
the abstract idea of requiring the acceptance of an NDA to view protected
documents. Appellant has not provided any authority for the contention that
the number of prior art references used in a rejection under 35 U.S.C.
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§ 103(a) bears relevance to the analysis under 35 U.S.C. § 101, nor do we
know of any.
Conclusion
Appellant argues claims 1-20 as a group. See App. Br. 10-14. We,
therefore, sustain the Examiner’s rejection of claims 1-20 under 35 U.S.C.
§101 for the aforementioned reasons.
Rejection Under 35 U.S.C. § 103(a)
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
arguments, and adopt as our own: (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 5-35);
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 3-29), and concur with the
conclusions reached by the Examiner. We emphasize the following.
Claim 1
The Examiner finds Woollcombe discloses an online document
sharing community having a computer program that generates document
information for a document protected under intellectual property laws,
generating group information, generating a join message including a
description of the document but not all the content of the document, sending
the join message to an invitee, indicating in the document information that
an invitee has accepted the terms of the NDA, and providing access to the
content of the document to the invitees that accept the terms of the NDA.
Final Act. 6-7.
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The Examiner acknowledges, however, that Woollcombe does not
send the join message to multiple invitees (Final Act. 10, 15), does not
include the NDA along with the join message (Final Act. 18), and does not
include an accept graphical element with the join message (Final Act. 19).
Instead, Woollcombe sends an email invite message to one invitee, and
rather than including the NDA and accept graphical elements with the email,
sends a link to a webpage that includes the NDA and an accept graphical
element (see Woollcombe Figs. 9, 11). The Examiner relies on Chapman as
teaching sending a join message to multiple invitees (Final Act. 15), on
Britton as teaching sending an NDA along with the join message (Final Act.
18), and on van Os as teaching a join message that includes an accept
graphical element (Final Act. 18-19).
Appellant makes a series of arguments that largely attack the
references individually and do not account for the Examiner’s rejection as a
whole. For, example, referring to Woollcombe, Appellant argues
Woollcombe “does not teach the claimed database driven technique . . .
including generating the group information, generating the join message
with embedded code that when selected transmits an acceptance message,
and sending the join message to multiple of the invitees in the group.” App.
Br. 15-16. Instead, according to Appellant, “Woolcombe [sic] mentions
sending an email to one user with a username and password, not a join
message to multiple invitees in the group having code which allows the
invitee to transmit an acceptance message to accept the terms of the
NDA . . . .” App. Br. 16. Appellant continues “with Woolcombe [sic] a
single user is invited with a username and password to be used to log in to
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an NDA gallery, at which point they will be prompted to accept the NDA.”
App. Br. 16.
Referring to Chapman, Appellant argues “sending an email to a co-
inventor in response to creating an invention disclosure does not teach or
suggest the claim requirements of in response to processing a request to
create a group of invitees, generating the group information, generating the
join message with embedded code that when selected transmits an
acceptance message, and sending the join message to multiple of the invitees
in the group.” App. Br. 16.
Appellant contends the “message described in Britton is not a message
including an active mechanism ... to accept the NDA and drive a database
to indicate . . . the invitee as accepting the NDA to allow the invitee
accepting the NDA to access the content of the document. Instead, the
message includes information confirming whether they accepted an NDA to
attend a sourcing event, not to accept the NDA in order to access all the
content of the document.” App. Br. 16-17.
Finally, as to van Os, Appellant argues “[ajlthough the cited van Os
discusses having an accept or decline button for a calendar invite, there is no
teaching of the claim requirements that accepting causes the transmission of
an accept message that triggers a series of events as claimed, including
indicating in the document information the invitee that has accepted the
terms for the NDA.” App. Br. 17.
Appellant’s arguments are unpersuasive of Examiner error. As far as
Appellant’s argument that the references do not teach a database driven
technique, we note that the Examiner finds Woollcombe teaches that the
agreement (i.e. document information) and the identity of the users that have
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entered into the agreement, are stored in computer memory. We find this
sufficient to suggest storing such information in a database. Further, the
Examiner also finds Chapman discloses an employee database that stores the
names of the inventor and co-inventors that are part of the group of invitees
to the invention disclosure. Ans. 19 (citing Chapman 6:33 42). Thus,
Chapman, in combination with Woollcombe, also teaches or suggests the
use of a database to track the information necessary for requiring the
acceptance of an NDA to gain access to protected documents.
We agree with the Examiner that Woollcombe’s email invitation
teaches or suggests the claimed join message. Appellant’s argument that
Woollcombe sends the email to one invitee rather than multiple invitees
attacks Woollcombe individually and fails to address the Examiner’s finding
regarding Chapman, which the Examiner relies upon as teaching sending a
join message to multiple invitees. See Final Act. 15. Appellant’s argument
that Woollcombe’s email does not include code for an accept graphical
element fails to address the Examiner’s finding regarding van Os as teaching
sending an invitation that includes an accept graphical element. See Final
Act. 18-19. Appellant’s argument that Chapman does not teach generating
group information, or a join message with embedded code is addressed by
the Examiner’s finding regarding Woollcombe (relied upon as teaching
generating group information) and van Os (relied upon for teaching code for
an accept graphical element). Appellant’s argument that Britton’s message
does not include an active element is, as explained above, addressed by van
Os, which is relied upon as teaching code for an accept graphical element.
And finally, Appellant’s argument that van Os’s accept graphical element
does not cause the transmission of an accept message that triggers indicating
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in document information that the invitee has accepted the terms of the NDA
is addressed by the Examiner’s finding regarding Woollcombe, which is
relied upon as teaching sending an email with a link to a webpage where the
invitee can accept the terms of an NDA to gain access to the content of a
protected document. Final Act. 6.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 and of claims 8 and 14 which were argued together as a group. See
App. Br. 18. We also sustain the Examiner’s rejection of dependent claims
2,5,7, 11, 13, 15, 18, and 20 for which Appellant makes no arguments for
separate patentability. See App. Br. 18, 20, 21.
Claim 3
Claim 3 depends from claim 1 and recites “indicating the invitee as a
member of the group in response to receiving the accept message from the
invitee computer agreeing to the NDA.”
Appellant argues “indicating that a work is available through a gallery
does not teach indicating an invitee as a member of the group in response to
receiving the accept message transmitted from a join message sent to the
invitees.” App. Br. 18.
We are unpersuaded of Examiner error. The Examiner finds that
Woollcombe teaches or suggests the limitations of claim 3 by disclosing that
“[t]he identities of the first and the second user, such as their names or social
security numbers, or some other user identity indication may be stored in
computer memory as an indication or indications that the first and the
second user have entered into the agreement.” Ans. 25 (citing Woollcombe
HI 29-30). We agree with the Examiner that by storing the identities of the
parties who have entered into an agreement and accept the terms of the
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NDA, Woollcombe teaches or suggests indicating the invitee is a member of
the group with access to the protected document in response to receiving the
accept message.
Accordingly, we sustain the Examiner’s rejection of claim 3 and of
claims 9 and 16, which were argued together with claim 3 as a group, under
35 U.S.C. § 103(a). See App. Br. 18-19.
Claim 4
Claim 4 depends from claim 1 and recites “wherein the group
information indicates whether an NDA is required to access the document,
wherein the NDA is included in the join message in response to the group
information indicating that the NDA is required, and wherein the join
message does not include the NDA in response to the group information not
indicating that the NDA is required.”
Appellant argues “[t]he cited para. 47 discusses how a user may
indicate a document as not accessible, open access or pro access, where the
open access or Pro Members access options indicate the accessibility of the
document on a web site, or gallery. However, the cited para. 47 does not
recite that indication of access to the document, such as whether an NDA is
required, controls whether an NDA is included in the join message or not.”
App. Br. 19.
The Examiner finds Woollcombe discloses that a “first user (i.e.
owner) selecting ‘no access’ results in an NDA being required because that
first user intends to create a legal relationship with a second user (i.e.
invitee). Moreover, a first user (i.e. owner) selecting ‘open access’ or ‘pro
members access’ results in no NDA being required.” Ans. 27-29. The
Examiner further finds that Britton also teaches the limitations of claim 4 by
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disclosing that “[t]he invitation process may include confirming that each
supplier has signed a Non-Disclosure Agreement (NDA). If no agreement
has been signed by one or more suppliers, then a non-disclosure agreement
should be sent along with the invitation.” Ans. 29.
We agree with the Examiner that by selecting “no access”
Woollcombe indicates that an NDA is required and that therefore an NDA
should be displayed to the user for acceptance. Woollcombe’s teachings
combined with Britton teaching that an NDA will be sent with the join
message if an NDA has not been signed by the invitee (i.e. an NDA is
required) teaches or suggests the limitations of claim 4. Similarly, we agree
that by teaching that no NDA is required when a user selects “open access,”
Woollcombe teaches or suggests “wherein the join message does not include
the NDA in response to the group information not indicating that the NDA is
required.”
Accordingly, we sustain the Examiner’s rejection of claim 4 and of
claims 10 and 17, which were argued together as a group, under 35 U.S.C.
§ 103(a). See App. Br. 19.
Claim 6
Claim 6 depends from claim 1 and recites “indicating in the document
information a number of times the NDA for the document was accepted by
the at least one invitee computer; and indicating in the document information
a number of times the NDA for the document was declined by the at least
one invitee computer.”
The Examiner finds Nguyen, combined with the other prior art
references, teaches of suggests the limitations of claim 6. Final Act. 31-33.
In particular, the Examiner finds “the display of the total number of invitees
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who have registered (i.e. accepted) and declined an invitation teaches the
concept of storing the total number of acceptances and declines to an
invitation.” Final Act. 33; see also Nguyen 66.
The Appellant argues “The cited para. 100 mentions inviting guests to
an event, and an RSVP status display area displays a max number of
attendees for the event, the total number invited, and the total number of
invitees that have accepted to the event. Applicant submits that indicating
invitees that have accepted an event does not teach or suggest indicating a
number of times the NDA for a document was accepted by the at least one
invitee.” App. Br. 20.
We are unpersuaded by Appellant’s argument. Nguyen teaches
keeping track of the number of invitees that have accepted an invitation to an
event and the number that have declined. See Nguyen]} 100. Combined
with the teachings of Woollcombe, Chapman, Britton, and van OS, we agree
with the Examiner that Nguyen teaches “indicating ... a number of times
the NDA for the document was accepted . . . and indicating ... a number of
times the NDA for the document was declined . . .” as required by claim 6.
Accordingly, we sustain the Examiner’s rejection of claim 6 and of
claims 12 and 19, which were argued together as a group, under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) is
affirmed.
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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
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