Inre: Dorothy Hartman , 513 F. App'x 955 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE DOROTHY M. HARTMAN
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2013-1070
(Serial No. 11/003,123)
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Appeal from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board.
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Decided: March 8, 2013
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DOROTHY M. HARTMAN, of Philadelphia, Pennsylva-
nia, pro se.
RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, for appellee. With him on the brief were
NATHAN K. KELLEY, Deputy Solicitor, BENJAMIN T.
HICKMAN, Associate Solicitor and SYDNEY O. JOHNSON,
JR., Associate Solicitor.
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Before NEWMAN, DYK, and PROST, Circuit Judges.
PER CURIAM.
Dorothy M. Hartman filed Patent Application No.
2 IN RE DOROTHY HARTMAN
11/003,123 for a business method called the “Accessing
Accessibility Process.” In essence, Hartman claimed to
have invented the Internet. The examiner rejected all
thirty-five claims of Hartman’s amended application as
indefinite under 35 U.S.C. § 112, ¶ 2. The Board of Patent
Appeals and Interferences (“Board”) 1 affirmed. We affirm.
BACKGROUND
Section 112 of title 35 requires that a patent “conclude
with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant
regards as his [or her] invention.” 35 U.S.C. § 112, ¶ 2
(2006). “The statutory requirement of particularity and
distinctness in claims is met only when [the claims]
clearly distinguish what is claimed from what went before
in the art and clearly circumscribe what is foreclosed from
future enterprise.” United Carbon Co. v. Binney & Smith
Co., 317 U.S. 228, 236 (1942). Indefiniteness is a question
of law, which we review de novo. Exxon Research & Eng’g
Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001).
In December 2004, Hartman filed a patent application
entitled “Accessing Accessibility Process.” The specifica-
tion described the invention as “a new and revolutionary
business process in which the computer by way of a
modem is used to access, retrieve, and exchange goods,
services, and information.” Supp’l App. 85. Hartman
asserted that her “introduction of this invention in 1990
. . . led to the formation of the INTERNET [sic].” Id. at 91.
1 The Leahy-Smith America Invents Act renamed
the Board the Patent Trial and Appeal Board. See Pub. L.
No. 112-29, § 7(a)(1), 125 Stat. 284, 313 (2011). The Act
also amended paragraph 2 of section 112 and redesignat-
ed it as subsection 112(b). See id. § 4(c)(a)(A), 125 Stat. at
296. No substantive changes were made of relevance to
this appeal. For consistency with the decisions on review,
we use the prior designations.
IN RE DOROTHY HARTMAN 3
In May 2011, Hartman replaced the original claims
with thirty-five new claims, of which the first (designated
claim 26) is representative:
Claims a novel business method whereby the
computer with its communicable devices is the fo-
cal point of the business and transactions occur
online or in cyberspace. Herein cyberspace is re-
ferred to as that virtual space within which trans-
actions and exchanges occur and that exists
between the interconnection(s) of the communica-
ble devices with remote websites. Cyberspace is
infinite and thus an infinite number of transac-
tions or interactions is possible. A website(W) is
herein referred to as pages that are received from
the host or recipient computer and that display on
the monitor of the user’s computer once the con-
nection is established. See Figs[.] 1-6.
Supp’l App. 1818.
The examiner rejected all thirty-five claims in a June
2011 final action, concluding that each claim was indefi-
nite under paragraph 2 of section 112. The examiner
observed that the claims “fail[] to define the invention in
the manner required by” the statute, “are narrative in
form and replete with indefinite and functional or opera-
tional language,” and are not limited to a single sentence
per claim. Supp’l App. 1966.
Hartman appealed to the Board, which affirmed the
examiner’s indefiniteness rejection. The Board found that
Hartman had failed to address the substance of the
examiner’s rejection in her brief on appeal, and therefore
had not “contest[ed]” the rejection sufficiently to allow the
Board to review it. See Ex Parte Hartman, No. 2012-8681,
at *5-6 (B.P.A.I. July 25, 2012).
DISCUSSION
Hartman makes no effort to distinguish between the
4 IN RE DOROTHY HARTMAN
claims in her briefs on appeal, or to address individually
the grounds on which the examiner rejected each of the
claims. Nonetheless, we have reviewed each of the thirty-
five claims, and we conclude that each one is indefinite.
The majority of the claims are denominated as meth-
od claims. 2 Many of these method claims (specifically,
claims 26, 30, 33, 35, 37, 39, 43, 44, 48, 51, 52, and 57) fail
to recite any specific steps, instead merely stating the
existence of a “novel business method” (or an “innovative
business method”) and describing the benefits that flow
from its use. Supp’l App. 1818-28. Hartman’s failure to
recite any required steps renders these claims indefinite,
since it leaves the claims without any meaningful limita-
tions. The remaining method claims (claims 27, 28, 29, 31,
32, 34, 40, 41, 42, 45, 46, 47, 49, 50, 53, 54, 56, 58, 59, and
60) fare no better. These claims recite what appear to be
individual steps of a method, in various permutations.
The specification discloses that these steps are similar to
those taken by users of prior-art online databases. Be-
cause Hartman has not “clearly distinguish[ed] what is
claimed from what went before in the art and clearly
circumscribe[d] what is foreclosed from future enterprise,”
see Union Carbon Co., 317 U.S. at 236, the examiner
properly rejected these claims as indefinite.
We have considered Hartman’s other arguments, in-
2 The few claims that defy classification as method
claims appear to consist of nothing more than descriptions
of benefits allegedly flowing from Hartman’s invention.
These claims recite “a revolutionary way of doing business
wherein the term cyberspace is used interchangeably as a
‘marketplace,’ ‘warehouse,’ [and] ‘clearinghouse,’” claim
36; “teaching the concept of the infinity of cyberspace as a
tool to improve commerce and to grow the economy,”
claim 38; and “aiding small businesses and entrepreneurs
[by] mak[ing] startups easier and more affordable,” claim
55. See Supp’l App. 1821, 1826.
IN RE DOROTHY HARTMAN 5
cluding her allegations of misconduct by the Patent and
Trademark Office, and find them to be without merit.
AFFIRMED