Ex Parte Adams et al

Patent Trial and Appeal Board

Aug 23, 2018

13365947 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/365,947 02/03/2012
909 7590 08/27/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Doug Adams
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.
021677-0397151 8388
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUG ADAMS and JACKIE DALE HURSH
Appeal2016-007948 1
Application 13/365,9472
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7, 14--19, and 25-28. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on August 16, 2018.
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
January 4, 2016) and Reply Brief ("Reply Br.," filed August 17, 2016), and
the Examiner's Answer ("Ans.," mailed June 20, 2016) and Final Office
Action ("Final Act.," mailed August 3, 2015). The record includes a
transcript of the August 16, 2018 hearing.
2 Appellants identify Bass Pro Intellectual Property, LLC as the real party in
interest. App. Br. 2.
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CLAIMED INVENTION
Appellants' claimed invention "generally relate[s] to a system for
facilitating transfer of [a] firearm, and more specifically for complying with
regulations of such a transfer" (Spec. ,r 1 ).
Claims 1, 14, and 25 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for facilitating a transaction for a firearm
transfer, the method being implemented on a computer system
that includes one or more physical processors executing
computer program instructions which, when executed, perform
the method, the method comprising:
[ (a)] querying, by the computer system, a database of the
computer system to determine whether a firearm transfer needs a
response from an electronic background check system external
to the computer system, wherein the computer system database
contains information related to the firearm transfer;
[ (b)] querying, by the computer system, the external
electronic background check system for a first response based on
a determination that the firearm transfer needs a response from
the external electronic background check system;
[ ( c)] receiving, by the computer system, based on the
query for the first response, an indication of a delayed
background check decision for the firearm transfer from the
external electronic background check system;
[ ( d)] storing, by the computer system, in the computer
system database, the indication of the delayed background check
decision and a first time associated with the delayed background
check decision;
[ ( e)] querying, by the computer system, based on the
stored indication of the delayed background check decision, the
external electronic background check system for a follow up
response to the delayed background check decision;
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[(f)] determining, by the computer system, whether a
response that provides authorization or declines authorization for
the firearm transfer has been received from the external
electronic background check system by a second time;
[ (g] determining, by the computer system, whether a
time interval between the first time and the second time satisfies
a predetermined time period threshold; and
[ (h)] authorizing, by the computer system, the firearm
transfer based on a determination that (i) neither a response
providing authorization for the firearm transfer or a response
declining authorization for the firearm transfer has been received
from the external electronic background check system by the
second time, and (ii) the time interval between the first time and
the second time satisfies the predetermined time period
threshold.
REJECTIONS
Claims 1-7, 14--19, and 25-28 are rejected under 35 U.S.C. § 101 as
directed to judicially excepted subject matter.
Claims 1-7, 14--19, and 25-28 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Boutin et al. (US 2006/0242060 Al, pub. Oct. 26,
2 006) ("Boutin") and Official Notice of 2 8 Code of Federal Regulations Part
25, including Section 25.6(c)(l)(iv)(B) and Section 25.2, as set forth in the
document entitled "A NCIS Delay" (Oct. 2010) (available at
https://www.fbi.gov/about-us/cjis/nics/federal-firearms-licensees/a-nics-
delay) ("NCIS Delay").
ANALYSIS
Patent-Ineligible Subject Matter
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
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to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under § 101, the Examiner
determined that the claims are directed to "complying with a firearm transfer
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regulation regarding the transfer of a firearm by facilitating a transaction for
a firearm and by ultimately approving the transaction for the firearm," i.e., to
a method of organizing human activities and, therefore, to an abstract idea;
and that the claims do not include an element or combination of elements
that amounts to significantly more than the abstract idea itself (Final Act. 2-
8).
Appellants maintain that the § 101 rejection is improper, and should
be reversed, at least because the Examiner failed to consider each claim as a
whole in assessing whether the claim amounts to significantly more than an
abstract idea itself (App. Br 9-10; see also Reply Br. 2--4). Appellants
charge that "the Examiner merely argues why some claim features
individually do not amount to significantly more without analyzing all the
claim features as a whole" (id. at 10). Appellants also complain that "none
of the additional features of at least the dependent claims are [sic]
accompanied with some analysis as to how the features of the dependent
claims in combination with one another fail to recite patent-eligible subject
matter" (id.).
There is no dispute that the second step of the Mayo/Alice framework
requires consideration of "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." Alice
Corp., 134 S. Ct. at 2355. But, we cannot agree with Appellants that the
Examiner failed to properly apply this analysis.
Addressing step two of the Mayo/Alice framework, the Examiner
determined that the additional elements in the claims, other than the abstract
idea per se, amount to no more than a generic computer system that is
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recited as performing conventional computing functions (i.e., that the only
other elements, other than the abstract idea, "are the recitation that the steps
of the claimed process are performed 'by the computer system "'), and that
"[ u ]sing a 'computer system' to perform well understood, routine, and
conventional activities [ e.g., receiving, storing, and processing information]
that are well understood in the computing field does not serve to impart
patent eligibility to the claims" (Final Act. 5).
Pointing to claim 2 of the USPTO's Example 21 in the "July 2015
Update Appendix 1: Examples,"3 Appellants argue that generic computer
3 Exemplary claim 2, which appears at pages 2-3 of Appendix 1 of the
July 2015 Update (available at https://www.uspto.gov/sites/default/
files/documents/ieg-july-2015-app 1.pdf), reads:
2. A method of distributing stock quotes over a network to a remote
subscriber computer, the method comprising:
providing a stock viewer application to a subscriber for installation on
the remote subscriber computer;
receiving stock quotes at a transmission server sent from a data source
over the Internet, the transmission server comprising a microprocessor
and a memory that stores the remote subscriber's preferences for
information format, destination address, specified stock price values, and
transmission schedule, wherein the microprocessor
filters the received stock quotes by comparing the received stock
quotes to the specified stock price values;
generates a stock quote alert from the filtered stock quotes that
contains a stock name, stock price and a universal resource locator
(URL), which specifies the location of the data source;
formats the stock quote alert into data blocks according to said
information format; and
transmits the formatted stock quote alert over a wireless
communication channel to a wireless device associated with a
subscriber based upon the destination address and transmission
schedule,
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components that individually perform merely generic computer functions are
able in combination to perform functions that are not generic computer
functions and that amount to significantly more (App. Br. 9). Yet, we find
no parallel between the present claims and claim 2 of Example 21. Claim 2
was deemed patent-eligible because it addressed an Internet-centric
challenge, i.e., alerting a subscriber with time sensitive information, i.e.,
stock quote information, when the subscriber's computer is offline. This
was addressed by transmitting the alert over a wireless communication
channel to activate a stock viewer application, which causes the alert to
display and enables the connection of the remote subscriber computer to a
data source over the Internet when the remote subscriber computer comes
online. Appellants have not demonstrated that the present claims address
any comparable Internet-centric challenge. Nor, have Appellants otherwise
explained how the present claims include generic computer components that,
in combination, perform functions that are not generic computer functions.
It also is significant here that claim 2 is a hypothetical claim, not an
actual claim at issue in Google Inc. v. Simpleair, Inc., CBM 2014-00170,
2015 WL 331089 (PTAB Jan. 22, 2015). The Board did not hold that a
claim like claim 2 of Example 21, or any claim in US 7,035,914 Bl for that
matter, was patent-eligible as a matter of law. Instead, the Board found that
the Petitioner had not "shown sufficiently that claims 1-3, 7, and 22-24
wherein the alert activates the stock viewer application to cause the
stock quote alert to display on the remote subscriber computer and to
enable connection via the URL to the data source over the Internet when
the wireless device is locally connected to the remote subscriber computer
and the remote subscriber computer comes online.
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[of US 7,035,914 Bl] are more likely than not unpatentable as being
directed to patent-ineligible subject matter under 35 U.S.C. § 101." Id.
at * 10 ("Petitioner's generalized arguments, not directed to the specific
language of the challenged claims, are insufficient to show that the claims
more likely than not are directed to a patent-ineligible abstract idea.").
Turning to the dependent claims, the Examiner determined, "[ f]or the
dependent claims, nothing is recited that amounts to reciting significantly
more than the abstract idea" (Final Act. 7). And the Examiner explained,
"Claims 2, 15, [and] 26, recite that the querying step is performed by
communicating with a website server," i.e., "nothing more than an attempt to
link the performance of the judicial exception to a particular technological
environment," which "does not transform the invention into a patent eligible
one"; "Claims 3, 4, 16, 27,[and] 28 recite the well understood and well-
known fact that background checks are performed by using the NICS
system," which "does not represent significantly more than the abstract
idea"; "Claims 5 [ and] 17 recite a further embellishment of the abstract
idea," which "is not sufficient to transform the recited abstract idea into a
patent eligible one"; "Claims 6 [ and] 18, recite non-functional descriptive
material that is part of the claimed judicial exception and does not represent
a limitation that amounts to reciting significantly more than the abstract
idea"; and "[f]or claims 7 [and] 19, the establishing of secure connections
and the re-establishment of a connection is something that is appending the
judicial exception with a well understood and routine activity in the
computing field" and "is not a meaningful limit on the claim scope and
represents conventional activities well understood in the computing field"
(id. at 7-8). Aside from summarily asserting that the Examiner failed to
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provide a proper analysis (App. Br. 10), Appellants present no persuasive
argument or technical reasoning to demonstrate that the dependent claims
are patent-eligible.
We also are not persuaded of Examiner error by Appellants' further
argument that the pending claims, like the patent-eligible claims in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), for
example, are necessarily rooted in computer technology to solve a problem
specifically arising in the realm of computers (App. Br. 10-12; see also
Reply Br. 4--5). Paraphrasing the language of independent claims 1, 14, and
25, Appellants assert that the claims recite a "particular technical solution"
to the "problem of how to provide and implement a computer system that
can interact and work with an electronic background check system external
to the computer system to facilitate a transaction for a firearm transfer," and
that this particular technical solution involves a computer system that
performs the operations recited in the independent claims (App. Br. 11-12).
Yet, we are not persuaded that facilitating a transaction for a firearm transfer
is a challenge specifically arising in the realm of computers. Firearm
transfer transactions existed before, and still exist outside the realm of
computers. And although Appellants assert that the claims solve the
problem of "how to provide and implement a computer system that can
interact and work with an [external] electronic background check system,"
the purported solution here involving, at best, generic computer components,
is not "necessarily rooted in computer technology." We find no indication in
the Specification that the particular operations recited in the claims require
any specialized computer hardware or other inventive computer components,
invoke any assertedly inventive programming, or that the claimed invention
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is implemented using other than generic computer components to perform
the claimed method steps, which, as the Examiner observes (Ans. 4--5),
involve no more than querying a database, receiving data, storing data, and
comparing data ( a first time to a second time), i.e., generic computer
functions. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) ( claims held to be directed to an abstract idea where "[ t ]he
advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.");
DDR Holdings, 773 F.3d at 1256 ("After Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible."). The relevant inquiry is not whether there
is a business challenge, e.g., the problem of delay associated with firearm
transfer transactions due to issues with external background check systems,
which is resolved by the present invention, but rather whether the challenge
is one rooted in technology, or instead one where the proposed solution is
merely using computers as a tool. See Enfzsh, LLC v. Microsoft Corp.,
822 F.3d. 1327, 1335-36 (Fed. Cir. 2016).
It also is significant here that although the claims recite the use of a
computer system that includes "one or more physical processors," the
underlying processes recited in independent claims 1, 14, and 25 are all acts
that could be performed by a human, e.g., manually with pen and paper,
without the use of a computer. 4 See Spec. ,r 2 ( describing a manual process
for complying with firearm transfer regulations).
4 I.e., "querying ... the external background check system for a first
response"; "receiving ... an indication of a delayed background check
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The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)
("[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under§ 101."); Gottschalk v. Benson,
409 U.S. 63, 67 (1972) ("[p]henomena of nature ... , mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). Additionally, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F .3d
at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
Focusing specifically on step two of the Mayo/Alice framework,
Appellants argue that even if the claims are directed to an abstract idea, the
decision"; and "storing ... the indication of the delayed background check
decision and a first time associated with the delayed background check
decision"; "querying ... the external background check system for a follow-
up response to the delayed background check decision"; "determining ...
whether a response that provides authorization or declines authorization for
the firearm transfer has been received ... by a second time"; "determining ..
. whether a time interval between the first time and the second time satisfies
a predetermined ... threshold"; and "authorizing ... the firearm transfer
[if] ... (i) neither a response providing authorization ... or a response
declining authorization for the firearm transfer has been received ... by the
second time, and (ii) the time interval between the first time and the second
time satisfies the predetermined ... threshold," as recited in independent
claim 1, for example.
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claims are nonetheless patent-eligible because the claims include additional
features that constitute "significantly more" than the abstract idea itself
(App. Br. 12-13). Quoting steps (a) through (h), as recited in independent
claim 1, and the substantially similar steps recited in independent claim 25
(id. at 14--15),5 Appellants assert that "[a]t least the foregoing features
recited by the claims, individually or in combination, do not comprise well-
understood, routine, and conventional activities of a computer previously
known to the industry" and that "the foregoing features recited by the claims
are not a mere conventional use of a generic computer system" (id. at 15).
Yet, as described above, we find no indication in the record, nor do
Appellants direct us to any indication, that the claimed invention is
implemented using anything other than generic computer components.
We agree with the Examiner that the operations recited in claims 1,
14, and 25 involve nothing more than querying a database, receiving data,
storing data, and comparing data (Final Act. 5-7). Appellants cannot
reasonably deny that these activities are well-understood, routine, and
conventional activities of a computer, i.e., generic computer functions. The
Federal Circuit, in accordance with Alice, also has "repeatedly recognized
the absence of a genuine dispute as to eligibility" where claims have been
defended as involving an inventive concept based "merely on the idea of
using existing computers ... to carry out conventional processes, with no
alteration of computer functionality." Berkheimer v. HP, Inc., 890 F.3d
1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted).
5 Appellants note that independent claim 14 includes similar recitations
(App. Br. 15).
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Appellants argue that even if the components recited in the claims
might arguably be considered generic computer components that
individually perform generic computer functions, the claimed components in
combination perform functions that are not generic computer functions and
that amount to significantly more than the alleged abstract idea "by
providing a technical solution different from the manner suggested by well-
understood, routine, and conventional activities previously known in the
industry" (App. Br. 14). Yet, to the extent Appellants, thus, maintain that
the claims are patent-eligible, i.e., that the claims amount to "significantly
more" than an abstract idea, and/or that the recited functions are not "well-
understood, routine, and conventional activities," because the claims are
allegedly novel and/or non-obvious in view of the prior art, Appellants
misapprehend the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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., 134 S. Ct. at 2355 (citation omitted). "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90;
see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of
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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 possibly patentable subject matter.").
Alluding to In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994),
Appellants also ostensibly maintain that claims are patent-eligible because
the claims are directed to "a 'special purpose computer,"' i.e., "a general
purpose computer programmed to perform particular functions pursuant to
instructions from program software" (id. at 14 n.1 ). However, the Federal
Circuit, in Eon Corp. v. AT&T Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015),
explicitly noted that "Alappat has been superseded by Bilski and Alice." Id.
at 623 ( citations omitted). And, as the Court made clear in Alice, the
recitation of generic computer limitations is not enough to transform an
otherwise patent-ineligible abstract idea into a patentable invention.
See Alice Corp., 134 S. Ct. at 2358.
Responding to the Examiner's Answer in the Reply Brief, Appellants
argue that the claims are patent-eligible because they provide "a particular
useful application that improves another technology or technical field"
(Reply Br. 5; see also App. Br. 16-17). Appellants explain that the claimed
computer system, via the recited queries of its own database and the external
background check system, may authorize a firearm transfer if
(i) neither a response providing authorization for the firearm
transfer [nor] a response declining authorization for the firearm
transfer has been received from [the] external electronic
background check system by a second time, and ... (ii) the time
interval between the first time . . . and the second time satisfies
the predetermined time period threshold.
(Reply Br. 6) ( emphasis omitted). And Appellants assert that this improves
the computer system by reducing the effect of external system delays (id.).
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But, even accepting Appellants' argument, there is a fundamental difference
between computer functionality improvements, on the one hand, and uses of
existing computers as tools to perform a particular task, on the other.
Indeed, the Federal Circuit, in Enfish, applied this distinction in
rejecting a § 101 challenge at the step one stage in the Alice analysis because
the claims at issue focused on a specific type of data structure, i.e., a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data, and
not merely on asserted advances in uses to which existing computer
capabilities. Id. at 1335-36. The alleged improvement that Appellants tout
does not concern an improvement to computer capabilities but instead
relates to an alleged improvement in complying with firearm transfer
regulations for which a computer is used as a tool in its ordinary capacity.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-7, 14--19, and 25-28 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Obviousness
Independent Claims 1, 14, and 25 and Dependent Claims 2-6, 15-18, and
26-28
In rejecting independent claims 1, 14, and 25 under 35 U.S.C.
§ 103(a), the Examiner cites Boutin as disclosing substantially all of the
limitations of claims (Final Act. 9-11 ). But, the Examiner acknowledges
that Boutin does not disclose (1) that a response is received that is a delayed
background check decision for the firearm transfer; (2) that the background
check system is queried for a follow up response to the delayed background
check decision; and (3) that it is determined whether or not a decision has
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been received, and based on a determination that neither an authorization or
a denial has been received, and based on a certain time interval satisfying a
predetermined threshold, the firearm transfer is authorized, i.e., limitations
( c) through (h), as recited in claim 1, and similarly recited in independent
claims 14 and 25 (id. at 11 ).
The Examiner takes Official Notice that "Federal Law allows for a
background check decision to be a 'delayed' decision," and explains that this
is known in the art as being a decision that requires more research to
determine whether or not the prospective transferee is disqualified from
possessing a firearm by federal or state law (id. at 12). Citing NICS Delay,
the Examiner asserts that it also is known in the art that "if the NICS returns
a decision of a delayed background check decision, after a predetermined
time period has elapsed the transfer of the firearm is authorized to occur"
(id.). And, the Examiner concludes that "[p ]roviding Boutin with the ability
to handle a delayed background check decision[,] as set forth by official
notice[,] would have been obvious to one of ordinary skill in the art" (id.
at 13).
Appellants argue that the Examiner's rejection appears based on an
assumption that the features that the Examiner acknowledges are not
disclosed in Boutin are "inherent features given the Official Notice of the
Federal Law" and that this inherency assumption is misguided because
"there are a number of ways to comply with the [Federal firearm transfer]
regulation[ s] or to implement the authorization of a firearm transfer based on
the 3-day expiration rule via a computer without all of the claim features"
(App. Br. 19). Appellants, thus, assert that rather than "querying ... based
on the stored indication of the delayed background check decision, the
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external electronic background check system for a follow up response to the
delayed background check decision," as called for in claim 1, one could
implement "the alleged delayed decision authorization allowed by the
Federal Law by always following up in 3 days regardless of whether a
delayed decision has been obtained ( or without storing an indication of such
delay at a database of the computer system performing the follow up query)"
(id.). And, according to Appellants, in that situation, "this follow-up query
need not be based on the stored/obtained indication of a delayed background
check decision" (id.).
NICS Delay, on which the Examiner relies, explicitly discloses
providing notification of a delayed background check decisions, and also
explicitly discloses that if a final determination has not been received after
three business days have elapsed since the delay notification, the firearm
may be lawfully transferred. As the Examiner observes, in the instance
where a delayed decision is received, one of ordinary skill in the art would
reasonably be motivated to check back to see if the firearm transfer was
denied or not (Ans. 9). And we agree with the Examiner that, in this
situation, "any follow up query is inherently and necessarily going to be
based on the stored or obtained initial delayed background check decision"
(id.).
We are not persuaded that the Examiner erred in rejecting independent
claims 1, 14, and 25 under 35 U.S.C. § 103(a). Therefore, we sustain the
Examiner's rejection of independent claims 1, 14, and 2 5; we also sustain
the rejection of dependent claims 2-6, 15-18, and 26-28, which are not
argued separately.
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Dependent Claims 7 and 19
Claim 7 depends from claim 5, which, in tum, depends from
independent claim 1. Claim 7 recites that the claimed method, as recited in
claim 5, further comprises:
establishing, by the computer system, a first secure
connection with the external electronic background check
system, wherein the at least part of the information related to the
firearm transfer is communicated to the external electronic
background check system via the first secure connection;
terminating, by the computer system, the first secure
connection subsequent to communicating the at least part of the
information related to the firearm transfer and prior to querying
the external electronic background check system for the first
response; and
establishing, by the computer system, a second secure
connection with the external electronic background check
system, wherein the external electronic background check
system is queried for the first response via the second secure
connection.
Claim 19 depends from claim 1 7, which depends from independent
claim 14. And claim 19 includes language substantially similar to the
language of claim 7.
In rejecting claims 5, 7, 17, and 19 under 35 U.S.C. § 103(a), the
Examiner states, "[ c ]laim 5 is claiming a situation that one of ordinary skill
in the art could easily face if they happen to lose their connection to the
Internet or lose connection to the NICS system itself' (Final Act. 13). And
the Examiner concludes that "[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made ... in the
situation where a partial transmission to the NICS system occurs because
connection was lost (terminated) ... to establish a subsequent connection so
that the query could be re-submitted" (id.).
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Appeal2016-007948
Application 13/365,947
We agree with Appellants that the mere loss of a computer system's
connection to the external electronic background check system does not
disclose or suggest that the computer system itself terminates the connection
to the external electronic background check system subsequent to
communicating information related to a firearm transfer and prior to
querying the external electronic background check system for a first
response related to the firearm transfer, as recited in claims 7 and 19 (App.
Br. 20). Indeed, as Appellants point out, it is clear, when claims 7 and 19
are read in context with claims 5 and 1 7, that the computer system, as recited
in claims 7 and 19, terminates the first secure connection after successfully
communicating information related to the firearm transfer to the external
electronic background check system; a second secure connection is then
established via which the external electronic background check system is
queried for the first response (Reply Br. 8-9).
Therefore, we do not sustain the Examiner's rejection of claims 7 and
19 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-7, 14--19, and 25-28 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1-6, 14--18, and 25-28 under
35 U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 7 and 19 under 35 U.S.C. § 103(a)
is reversed.
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Appeal2016-007948
Application 13/365,947
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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