Ex Parte Wren

Patent Trial and Appeal Board

May 30, 2013

12124027 (P.T.A.B. May. 30, 2013)

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.
12/124,027 05/20/2008 Stephen Corey Wren case F 1958
62250 7590 05/30/2013
Stephen C. Wren
1616 S. Voss Rd.Suite 125
Houston, TX 77057
EXAMINER
ZURITA, JAMES H
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
05/30/2013 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 STEPHEN COREY WREN
____________________

Appeal 2011-000832
Application 12/124,027
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000832
Application 12/124,027

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 7-26. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF THE DECISION
We affirm-in-part.

BACKGROUND
Appellant’s invention is directed to a system for facilitating
transactions between central and remote facilities utilizing electronic
communications devices and computing equipment (Spec., p. 1, ll. 21-26).
Claim 7 is illustrative:
7. An apparatus for providing marketing and/or sales
information relating to goods and/or services comprising:
a computerized central communications facility;
a database of marketing and/or sales information relating
to goods and/or services at said computerized central
communications facility, and;
a communications device at said computerized central
communications facility;
wherein said computerized central communications
facility is operable to be linked to a plurality of other
computerized central communications facilities and to a
plurality of computerized remote communications facilities;
wherein said database of marketing and/or sales
information relating to goods and/or services is accessible to a
customer at one or more of said computerized remote
communications facilities;
wherein said communications device at said
computerized central communications facility is operable to
transmit at least a portion of said marketing and/or sales
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information relating to said goods and/or services to at least one
of said computerized remote communications facilities;
wherein said computerized central communications
facility is operable to provide at least a portion of said
marketing and/or sales information relating to said goods and/or
services to one or more of said computerized remote
communications facilities upon request;
wherein at least one of said other computerized central
communications facilities enables said customer at one or more
of said computerized remote communications facilities to select
and contact a computerized central communications facility of a
different provider, and;
wherein said computerized central communications
facility of a different provider is equipped with:
a database of marketing and/or sales information relating
to goods and/or services accessible to said customer at one or
more of said computerized remote communications facilities,
and;
a communications device adapted to transmit at least a
portion of said marketing and/or sales information relating to
said goods and/or services to at least one of said computerized
remote communications facilities, whereby said customer has
access to information at multiple computerized central
communications facilities of different providers.

Appellant appeals the following rejections:
Claims 23-26 are rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter.
Claims 8-11 and 21 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 17-20 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
Claims 7-23 and 26 are rejected under 35 U.S.C. § 102(e) over
Bernard (US 5,918,213, iss. Jun. 29, 1999).
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Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bernard and Woolston (US 5,845,265, iss. Dec. 1, 1998).
Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bernard and Belknap (US 5,586,264, iss. Dec. 17, 1996).

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. The original Specification of application 08/268,309, to which this
application claims priority, describes, “the present invention would with
central storage permit each remote facility or location to communicate
with an array of central facilities ....” (Spec., pg. 5, ll. 4-11).
2. The original Specification of application 08/268,309, to which this
application claims priority, describes, “[f]or auction houses a number of
the remote locations may be concurrently linked with one or more
central facilities or auction houses so that groups of customers at each
remote or local auction facility may participate in the actual auction at
one or more distant central facilities or houses.” (Spec., pg. 6, l. 31 to
pg. 7, l. 3).
3. The original Specification of application 08/268,309, to which this
application claims priority, describes,
[i]n that sense an electronic phone book may be
stored at the remote facility or instead upon
pressing or utilizing the touch screen, keyboard or
input device the customer may activate the system
causing it to retrieve from a central facility a
directory of goods and services available and thus
permitting the customer to select another central
facility from a displayed list or catalogue and
establish contact with it and thus have access to
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numerous central facilities and a myriad of goods
and services. [(Spec., pg. 9, l. 32 to pg. 10, l. 7)].

ANALYSIS
Patentable subject matter
Appellant argues that claims 23-26 are tied to a computer because the
database is computerized, and the method claims are therefore patent-
eligible subject matter. App. Br. 2. The Examiner rejected these method
claims as not being “tied to another statutory class (such as an apparatus) or
transform[ing] underlying subject matter....” Ans. 4. The Examiner also
reasoned that the undefined term “database” was interpreted as “software.”
Ans. 8.
However, we find that merely stating what the test and conclusion
under that test is, and separately stating that the database is construed as
software, does not adequately analyze the issue or articulate the reasoning
for the conclusion the Examiner has reached. For example, we do not find
an analysis of recited terms in claim 23, such as “database,” “accessed by a
customer at [a] remote location[],” or “access said first and [an] other
database[] of another provider,” to explain how the stated (and no longer
applicable) test leads to the Examiner’s conclusion. The Examiner also does
not explain how an element being software, in a method claim, renders the
claim ineligible for patent protection. As such, the Examiner has failed to
set forth a prima facie case of patent ineligibility, so we will not sustain the
rejection of claims 23-26 under 35 U.S.C. § 101.
Written Description – Claims 8 and 21
We are persuaded of error by Appellant’s argument that support exists
for claims 8 and 21 at page 14, lines 1-2 of the originally-filed Specification,
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which states, “customer requests their product information or is shown it
involuntarily based on a customer’s profile.” App. Br. 2-3. This is in
response to the Examiner’s rejection on the basis that these amended claims
contain new matter unsupported by the original disclosure, specifically the
recited term “involuntarily.” Ans. 4-5. The “test for sufficiency is whether
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (quoting Ralston Purina Co. v. Far-Mar-
Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Because the term
“involuntarily” appears in the original Specification, describing what one of
ordinary skill in the art would recognize as an automatic display of content,
we reverse the rejection under 35 U.S.C. § 112, first paragraph, for lack of
written description support of claims 8 and 21.
Written Description – Claims 9-11
We are persuaded of error by Appellant’s argument that support exists
in the original disclosure for the subject matter of current claims 9-11. App.
Br. 2-3. First, the Examiner only objects to “recommendations based on a
history of multiple customers,” citing to page 14, lines 20-27 of the
Specification, as supporting profiles for a “single customer.” Ans. 4-5, 9.
Therefore, the Examiner’s own argument indicates support is found for the
subject matter of claims 9 and 10 in the Specification, because claim 9
recites a “profile based on said customer’s use of said apparatus” and claim
10 recites “a profile from a single customer’s use.” Next, we note that claim
11 recites “build a profile from multiple customers’ use.” We find support
for this claim in originally-filed claim 6, which recites, “wherein a profile is
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built from multiple customers’ use,” because originally-filed claims are part
of the original disclosure.
For these reasons, we reverse the rejection of claims 9-11 under 35
U.S.C. § 112, first paragraph, for lack of written description support.
Indefiniteness – Claims 17-20
We are not persuaded of error by Appellant’s argument that claims
17-20 are not indefinite, because the word “‘customer’ should not be read as
part of ‘entertainment-based programing’, but rather by itself.” App. Br. 4.
The Examiner rejected claims 17-20 as indefinite because of the phrase “said
customer entertainment-based programming” had no antecedent basis. Ans.
5. We find the claim leaves open at least two possible interpretations. First,
the term “adapted to provide said customer entertainment-based
programming” could mean a type of programming. Second, the clause could
instead mean “adapted to provide said customer [with] entertainment-based
programming.”
The Examiner argues that the word “customer” is without antecedent
basis, because parent claim 15 does not refer to any particular customer in
singular form, but only a groups of “customers” in plural form. Ans. 9. We
agree with the Examiner, because the lack of antecedent basis means it is not
clear whether claims 17-20 refer to one customer or all customers recited in
parent claim 15.
Because the claim language is ambiguous, we sustain the rejection of
claims 17-20 as indefinite under 35 U.S.C. § 112, second paragraph.

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Anticipation and Obviousness
We are persuaded of error by Appellant’s argument that Bernard is
not available as prior art for use in the rejection under 35 U.S.C. § 102(e) of
independent claims 7, 15, and 23. App. Br. 5.
The Examiner notes that Bernard is available as prior art under 35
U.S.C. § 102(e) based on the filing date of December 22, 1995. Ans. 5. The
Examiner also argues that he finds “no support for the claimed limitations in
Appellant’s (chart section v),” which refer to “different [(claims 7 and 15)]”
and “another [(claim 23)] provider.” Ans. 10. The Examiner repeats from
the Final Rejection that “central facilities #2...#n first appear in Fig. 1 as
amended on 03/29/1996 in application 08/268309 .... Claims that refer to a
‘...computerized central communications facility of a different provider ...’
receive a priority date of 03/29/1996.” Ans. 11. That is, the Examiner finds
the term “central facilities” is first present in a drawing upon amendment in
1996, but not in the originally-filed disclosure.
However, the originally-filed Specification of application 08/268,309
discloses an array of central facilities that communicate with each other and
a remote facility. The ‘309 application therefore does provide written
description support for multiple central communications facilities, for
example, at page 5, lines 8-10 (FF 1), page 6, line 31 through page 7 line 3
(FF 2), and page 9 line 33 through page 10 line 7 (FF 3). We find the
effective filing date for the aforementioned features of claims 7, 15, and 23
is at least as early as the June 29, 1994 filing date of the ‘309 application, to
which this application claims priority in the originally filed declaration. As
a result, Bernard is not available as prior art for a rejection under 35 U.S.C. §
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102(e), because Bernard’s 102(e) date of December 22, 1995 is after the
priority date of June 29, 1994 of this application.
Therefore, we cannot sustain the rejection of claims 7-23 and 26 under
35 U.S.C. § 102(e) over Bernard, nor of dependent claims 24 and 25, each
rejected under 35 U.S.C. § 103(a) on Bernard in combination with other
references.
DECISION
We reverse the rejection of claims 23-26 under 35 U.S.C. § 101.
We reverse the rejection of claims 8-11 and 21 under 35 U.S.C. § 112,
first paragraph.
We reverse the rejection of claims 7-23 and 26 are rejected under 35
U.S.C. § 102(e).
We reverse the rejection of claims 24 and 25 separately rejected under
35 U.S.C. § 103(a).
We affirm the rejection of claims 17-20 under 35 U.S.C. § 112,
second paragraph, as indefinite.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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