Ex Parte Volnak

Patent Trial and Appeal BoardJul 10, 2018

12422055 (P.T.A.B. Jul. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/422,055 04/10/2009 31824 7590 07/12/2018 MCDERMOTT WILL & EMERY LLP The McDermott Building 500 North Capitol Street, N.W. Washington, DC 20001 FIRST NAMED INVENTOR Will Volnak 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. 091113-0011 5825 EXAMINER ELCHANTI, TAREK ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 07/12/2018 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): mweipdocket@mwe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExparteWILL VOLNAK Appeal2017-004350 Application 12/422,055 1 Technology Center 3600 Before ERIC S. FRAHM, NORMAN H. BEAMER, and JASON M. REPKO, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-37. We have jurisdiction over the pending rejected claims under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellant identifies Copernican Technologies, Inc. as the real party in interest. (App. Br. 3.) Appeal2017-004350 Application 12/422,055 THE INVENTION Appellant's disclosed and claimed invention is directed to an online library marketplace. (Abstract.) Independent claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A computer-implemented method for providing an online library marketplace, comprising: receiving a first user input from a first user, the first user input providing for publication of a non- modifiable data object in a publishing library, wherein the publication of the non-modifiable data object makes the non-modifiable data object available to a second user for purchase; receiving a second user input from the first user, the second user input providing a first fee for the second user to pay to access the non-modifiable data object; granting, by a computer or by a processor, access to the non-modifiable data object to the second user upon payment of the first fee; polling the publishing library to determine whether a new entry has been created; and importing the new entry as a non-modifiable data object into a second user's library when it is determined that the new entry has been created. As further discussed below, after the May 9, 2016 Final Action, Appellant submitted, on July 8, 2016, an Amendment After Final Rejection Under 3 7 C.F .R. Â§ 1.116, including the following amended claim 1: 1. A computer-implemented method for providing an online library marketplace, comprising: receiving a first user input from a first user, the first user input providing for publication of a non- modifiable data object in a publishing library, wherein the publication of the non-modifiable data object makes 2 Appeal2017-004350 Application 12/422,055 the non-modifiable data object available to a second user for purchase; receiving a second user input from the first user, the second user input providing a first fee for the second user to pay to access the non-modifiable data object; granting, by a computer or by a processor, access to the non-modifiable data object to the second user upon payment of the first fee; polling the publishing library to determine whether a new entry has been created; synchronizing a second user's library with the publishing library when the second user accesses the publishing library; and importing the new entry as a non-modifiable data object into [[a]] the second user's library when it is determined that the new entry has been created and the second user's library is synchronized with the publishing library. REJECTIONS The Examiner rejected claims 1-37 under 35 U.S.C. Â§ 101 as being directed to ineligible subject matter. (Final Act. 2-3.) The Examiner rejected claims 1, 2, 7, 8, 11-22, 36, and 37 under 35 U.S.C. Â§ I03(a) as being unpatentable over Chaganti et al. (US 2011/0004943 Al, pub. Jan. 6, 2011) and Hendricks et al. (US 2009/0216623 Al, pub. Aug. 27, 2009). (Final Act. 3-7.) The Examiner rejected claims 3-5 under 35 U.S.C. Â§ I03(a) as being unpatentable over Chaganti, Hendricks, and Pauker (US 2012/0143770 Al, pub. June 7, 2012). (Final Act. 7-8.) 3 Appeal2017-004350 Application 12/422,055 The Examiner rejected claims 6 and 25-35 under 35 U.S.C. Â§ I03(a) as being unpatentable over Chaganti, Hendricks, Pauker, and Britt (US 2008/0092181 Al, pub. Apr. 17, 2008). (Final Act. 8-10.) The Examiner rejected claims 9 and 10 under 35 U.S.C. Â§ I03(a) as being unpatentable over Chaganti, Hendricks, and Bhogal (US 2009/0249412 Al, pub. Oct. 1, 2009). (Final Act. 10-11.) The Examiner rejected claims 23 and 24 under 35 U.S.C. Â§ I03(a) as being unpatentable over Chaganti, Hendricks, and Valin (US 2010/0332404 Al, pub. Dec. 30, 2010). (Final Act. 11.) ISSUES ON APPEAL Appellant's arguments in the Appeal Brief present the following dispositive issues: 2 Issue One: Whether claims 1-37 are directed to ineligible subject matter. (App. Br. 11-13.) Issue Two: Whether the Examiner erred in finding the combination of Chaganti and Hendricks teaches or suggests the limitations of independent claims 1, 36, and 37. (App. Br. 14--16.) 2 Rather than reiterate the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed Sep. 19, 2016) (herein, "App. Br."); the Reply Brief (filed Jan. 18, 2017) (herein, "Reply Br."); the Final Office Action (mailed May 9, 2016) (herein, "Final Act."); and the Examiner's Answer (mailed Nov. 18, 2016) (herein, "Ans.") for the respective details. 4 Appeal2017-004350 Application 12/422,055 ANALYSIS As stated above, Appellant submitted Amendment After Final on July 8, 2016. A July 20, 2016 Interview Summary indicates a discussion of claim 1, and states: Based on the amendments made it will not overcome the 101 rejection. More consideration needed to determine if the amendment would overcome the prior art. Also, a copy of the amendment is marked "OK TO ENTER: /T.E.[the Examiner's initials]/ (07/20/2016)." However, in the July 28, 2016 Advisory Action, signed by the Primary Examiner, Box 3.a is checked, which states: 3. The proposed amendments filed after a final rejection, but prior to the date of filing a brief, will not be entered because a) They raise new issues that would require further consideration and/or search (see NOTE below) .... The Examiner also checked Box 7, but did not check either Box 7(a), ( amendments will not be entered), or 7 (b) ( amendments will be entered). In addition, the Examiner checked Box 12 indicating consideration of the request for reconsideration, and provided in the Continuation Sheet: [The request] does NOT place the application in condition for allowance because: The amendment entered because it makes the claim rejection eligible for apea [sic]. 3 In the Appeal Brief, Appellant included the amended version of claim 1 in the claim appendix and based arguments on the "synchronizing" 3 We understand "apea" is an internal document code for the Examiner's Answer. See httQs://www.usnto.gov/ sites/ defauH/files/natents/Qrocess/status/ton 40 eO A doc codes.x1s. 5 Appeal2017-004350 Application 12/422,055 claim limitations added by the amendment. (App. Br. 12, 14--19, 21.) In the Answer, the Examiner noted this reliance and stated: Synchronizing a second user's library with the publishing library was never entered. Applicant is arguing a limitation that was amended and never entered. (Ans. 3.) In reply, Appellant argues: The [Examiner] contends ... that the feature "synchronizing a second user's library with the publishing library" was allegedly "never entered" in the claims. Appellant respectfully submits that this contention is erroneous, as the Examiner explicitly states in the [Answer] the "amendment [ submitted on July 8, 2016 in response to the FOA] entered because it makes the claim rejection eligible for [appeal]" .... The entry of the claim amendments was further confirmed by the Examiner during a telephone conversation with Appellant's representative (Ricardo Claps, Reg. No. 65, 796) on December 22, 2016. (Reply Br. 6.) There is no other record of the telephone conversation referred to. As discussed above, Appellant's assumption that the Examiner's reference to "apea" was meant to be "appeal" is not necessarily correct. Nor would a statement that "an amendment makes a claim rejection eligible for appeal" be meaningful. Under this contradictory record, the proposed amendments cannot be assumed to have been entered, and therefore Appellant's arguments are directed to claims that are not before us. The proper course of action for clarification of the status of the July 8, 2016 amendments would have been 6 Appeal2017-004350 Application 12/422,055 via Petition under 37 CPRÂ§Â§ 1.181, 1.182,4 if necessary. In the present case, Appellant has not filed a petition to resolve the Examiner's non-entry of the after-final amendment prior to the matter reaching the Board. We therefore summarily affirm the Examiner's rejections. DECISION We affirm the Examiner's decision rejecting claims 1-37. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 4 See also MPEP Â§ 1002.02(c) Petitions and Requests Decided by the Technology Center Directors; MPEP Â§ 1201, 8th ed., rev. 2017 ("Some matters which have been detennined to be petitionable and not appea1ab1e include: a requirement for restriction or election of species, finality1 non- enu:v q(amendments, and holdings of abandonment") (emphases added). 7