Ex Parte ChevalierDownload PDFPatent Trial and Appeal BoardMay 31, 201611113844 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111113,844 0412512005 45095 7590 HOFFMAN WARNICK LLC 540 Broadway 4th Floor ALBANY, NY 12207 06/02/2016 FIRST NAMED INVENTOR Denis Chevalier 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. FR920040021US1 9087 EXAMINER FISHER, PAUL R ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DENIS CHEV ALIER Appeal2013-007233 Application 11/113,8441 Technology Center 3600 Before HUBERT C. LORIN, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 from the final rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM. 1 The Appellant identifies International Business Machines Corporation as the real party in interest. App. Br. 1. Appeal2013-007233 Application 11/113,844 SUMMARY OF DECISION THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. Method for obtaining a quota of service time or service volume requested by a user in a system wherein a service provider is adapted to provide a plurality of services to the user having pre-paid an amount of money on a user account in order to access a first service of the plurality of services provided by the service provider; the method including the steps of: - determining, by at least one computing device, whether a product of an amount of money (AMOUNT) and a first part (PART) corresponding to a predetermined percentage of money reserved for the first service is greater than a predetermined minimum reserve of money (MIN-RESERVE), the first part being proportional to a cost of the first service; - requesting, via a server, computation of the quota, which is equal either to a minimum (MIN 1) of the product and a maximum quantity of service (MAX-FLAT) that the user may reserve while being in a fiat rate interval divided by a cost of one unit of the first service (RA TE) if the product is greater than or equal to the predetermined minimum reserve of money (MIN-RESERVE), or to a minimum (MIN2) of the amount of money (AMOUNT), the maximum quantity of service (MAX- FLAT) and the predetermined minimum reserve of money (MIN-RESERVE), divided by the cost of one unit of the first service (RA TE) if the product is less than the predetermined minimum reserve of money (MIN-RESERVE); - receiving the computed quota using at least one computing device; and - reserving, in service time or service volume requested by the user, the computed quota from the pre-paid amount. 2 Appeal2013-007233 Application 11/113,844 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Myatt et al. ("ADC"2) Panson ("HP"3) WO 03/025870 A2 WO 01/86933 A2 Mar. 27, 2003 Nov. 15, 2001 The following rejections before us for review: 1. Claims 1-13 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-13 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 3. Claims 1-13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over ADC in view of HP. ISSUES Did Examiner err in rejecting claims 1-13 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement? Did Examiner err in rejecting claims 1-13 under 35 U.S.C. § 112, second paragraph, as indefinite? Did Examiner err in rejecting claims 1-13 under 35 U.S.C. § 103(a) as being unpatentable over ADC in view of HP? 2 Applicant is ADC Telecommunications, Inc., hereinafter "ADC". 3 Applicant is Hewlett-Packard Company, hereinafter "HP". 3 Appeal2013-007233 Application 11/113,844 FINDINGS OF FACT We rely on the Examiner's factual findings stated in the Answer. Additional findings of fact may appear in the analysis below. ANALYSIS The rejection of claims 1-13 under 35 U.S.C. § 112,firstparagraph, as failing to comply with the written description requirement. Claims 1 and 6 The Examiner begins by stating that [i]n claims 1 and 6 the applicant recites "requesting, via a server, computation of the quota, which is equal either to a minimum (MIN 1) of the product and a maximum quantity of service (MAX-FLAT) that the user may reserve while being in a flat rate interval divided by a cost of one unit of the first service (RA TE) if the product is greater than the predetermined minimum reserve of money (MIN-RESERVE), or to a minimum (MIN2) of the amount of money (AMOUNT), the maximum quantity of service (MAX-FLAT) and the predetermined minimum reserve of money (MIN-RESERVE) divided by the cost of one unit of the first service (RATE) if the product is less than the predetermined minimum reserve of money (MINRESERVE)," but follows this with "while the passage appears in the applicant's originally filed specification." Final Act. 2. Compliance with the written description requirement is a question of fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985). According to the Examiner, the Specification does in fact disclose said claim limitation. Accordingly, it would appear that the Examiner concedes that, in fact, the original Specification provides written descriptive support for said claim limitation at issue. 4 Appeal2013-007233 Application 11/113,844 The question the Examiner is raising is whether the written descriptive support for said claim limitation at issue is adequate. However, [t]he requirement is rigorous, but not exhaustive: "[I]t is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention." In re Alonso, 545 F.3d 1015, 1019 n.3 (Fed. Cir. 2008) (citing LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). In that regard, we do not see that the Examiner has made the case that a person of ordinary skill in the art reading the Specification would not find it adequate to show that the inventor was in possession of what is claimed, especially considering that, as the Examiner concedes, what is claimed is in fact disclosed. All that is required is that there be an equivalent description and, yet, the Examiner concedes the Specification provides more than that. "[T]he specification must contain an equivalent description of the claimed subject matter." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis added). The arguments the Examiner makes regarding the sufficiency of what is disclosed in the Specification go rather to questions of enablement. The Examiner argues, for example, that "the applicant has not disclosed how the variables [as claimed] are to be used to calculate the quota. While one of skill in the art might know how to utilize these variables, they would not have known the specific way the applicant has intended to utilize these variables." Final Act. 3 (emphases added). However, that sort of argument suggests a question of enablement; that is, whether the Specification would 5 Appeal2013-007233 Application 11/113,844 enable one of ordinary skill in the art to make and use what is claimed without undue experimentation. However, that is not our concern here. The question before us is one of written descriptive support and on that question, the Examiner has not presented a prima facie case of a lack of adequate written descriptive support for the subject matter of claims 1 and 6 in the Specification in the first instance by a preponderance of the evidence. Accordingly, the rejection of claims 1 and 6 is not sustained. Claims 10 and 12 The Examiner rejected newly added claims 10 and 12 on the ground that their subject matter "wherein the part (PART) is variable based on the amount of money (AMOUNT)" is not disclosed in the Specification as originally filed. Specifically, the Examiner argues that said subject matter, when coupled with the limitation "the first part being proportional to a cost of the first service" in independent claims 1 and 6, lacks adequate written descriptive support. According to the Examiner, "it is not shown in the original [S]pecification how the part is proportional to a cost and then based off of the amount of money in the users account." Final Act. 3. There are two difficulties with this rejection. First, the Examiner appears to find that there is written descriptive support for the limitation "the first part being proportional to a cost of the first service" in independent claims 1 and 6. Second, the Specification discloses the following: The quota is a part (PART) of the available amount of money, that is a percentage of the amount of free money on the account of the user that should be normally reserved to allow fairness between multiple services access and to avoid a performance 6 Appeal2013-007233 Application 11/113,844 problem. This percentage is small for services that are cheap and high for services that are expensive (the goal is to reserve a greater amount of money for expensive services). Note that the part could be defined at system level as a unique percentage for all services, but could be also defined by service as a variable percentage according to the quantity of free money on the user account. Spec. 6, 11. 11-21 (emphasis added). Yet this disclosure appears to describe the variable PART as a variable percentage to the amount of free money in the user account for a specific service and also one that is dependent on the cost of the specific service. This disclosure appears to provide written descriptive support for "wherein the part (PART) is variable based on the amount of money (AMOUNT)" (claims 10, 12). Yet the Examiner does not appear to have considered this disclosure in making the rejection. Given what appears to be a concession that the Specification discloses "the first part being proportional to a cost of the first service" (claims 1, 6) and; in light of page 6; lines 11-21; the disclosure arguably providing adequate written descriptive support for "wherein the part (PART) is variable based on the amount of money (AMOUNT)" (claims 10, 12), we find that the Examiner has not established that the Specification fails to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the Applicant was in possession of the claimed PART variable as claimed. Accordingly, the rejection of claims 10 and 12 is not sustained. The rejection of claims 1-13 under 35 U.S. C. § 112, second paragraph, as indefinite. Claims 1 and 6 7 Appeal2013-007233 Application 11/113,844 According to the Examiner, In claims 1 and 6, the limitation of "requesting, via a server, computation of the quota, which is equal either to a minimum (MIN 1) of the product and a maximum quantity of service (MAX-FLAT) that the user may reserve while being in a flat rate interval divided by a cost of one unit of the first service (RA TE) if the product is greater than the predetermined minimum reserve of money (MIN-RESERVE), or to a minimum (MIN2) of the amount of money (AMOUNT), the maximum quantity of service (MAXFLAT) and the predetermined minimum reserve of money (MIN-RESERVE) divided by the cost of one unit of the first service (RATE) if the product is less than the predetermined minimum reserve of money (MIN-RESERVE)", renders the claim indefinite. Final Act. 4. In so finding, the Examiner finds that claims are insufficiently clear. For example, the Examiner finds that [i]t is unclear what is required to formulate the quota. That is to say the language suggests that either a minimum (MINI) of the product and a maximum of quantity of the service (MAX- FLA T) that the user may reserve while being in a flat rate interval divided by a cost of one unit of the first service (RATE). Final Act. 4. Upon reviewing the record before us, we do not agree that the claims are indefinite. Independent claim 1, for example, discloses that a minimum (MIN 1) of either the product or MAX-FLAT or is used when divided by RA TE to generate the quota if the product is greater than or equal to the predetermined minimum reserve of money. In other words, the lowest value between the product variable and the MAX-FLAT variable is selected and then divided by RATE. The claim also discloses that a minimum (MIN2) of 8 Appeal2013-007233 Application 11/113,844 eitherthe amount of money, MAX-FLAT, or MIN-RESERVE is used when divided by RA TE to generate the quota if the product is greater than or equal to the predetermined minimum reserve of money. In other words, the lowest value between the amount of money variable, MAX-FLAT variable, and MIN-RESERVE variable is selected and then divided by RATE. The Examiner's arguments go to the breadth of the claims, not indefiniteness. Cf In re Robins, 429 F .2d 452, 458 (CCP A 1970) ("Giving the language its broadest possible meaning, as we are bound to do in the absence of special definitions by appellant, the breadth of the claims insofar as the catalyst is concerned is indeed immense. However, '[b ]readth is not indefiniteness.' In re Gardner, 427 F.2d 786, 57 CCPA (1970).)" For the foregoing reasons, the rejection is not sustained. Claims 10 and 12 The Examiner separately rejected claims 10 and 12 for different reasons than those used to reject claims 1 and 6 as discussed above. See Final Act. 5---6. The Appellant does not appear to present any arguments addressing the Examiner's position in rejecting dependent claims 10 and 12. Accordingly, the rejection of claims 10 and 12 is sustained. The rejection of claims 1-13 under 35 U.S.C. § 103(a) as being unpatentable over ADC and HP. The Appellant argues claims 1-13 as a group (App. Br. 6-9). We select claim 1 as the representative claim for this group, and the remaining claims 2-13 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014). The Examiner takes the position that ADC discloses 9 Appeal2013-007233 Application 11/113,844 determining, by at least one computing device, whether a product of an amount of money (AMOUNT) and a first part (PART) corresponding to a predetermined percentage of money reserved for the first service is greater than a predetermined minimum reserve of money (MIN-RESERVE), the first part being proportional to a cost of the first service (claim 1 ) . According to the Examiner, ADC page 12; discloses CreditPerCaliPercentage which is a fixed percentage in which will be multiplied by the available credit or account balance of the user. In the Example given on page 12, the set value is 50% and the available credit is $20, thus the maximum amount reserved for a single call is $10 or 50% of the total available balance. Page 14, lines 10-22; disclose that a determination is then made to determine if the reserved amount is greater than the MinDurationToken, which is the minimum required amount to utilize the service as defined by ADC on page 12. If it is less that there is insufficient credit in the account to utilize the service and the request for service fails. However if it is greater than the service is allowed to be carried out. Further ADC page 11, lines 3-9; discloses that the constants such as CreditPerCaliPercentage can change based on the service itself such as a local versus long distance verse international, as such the first part or predetermined percentage is proportional to a cost of service since there is different costs between local, long distance and international. Page 8, lines 1-6; .... Final Act. 8. The Appellant argues that ADC requires, first, that an amount be reserved, second, that a determination be made as to whether the reservation amount exceeds an available balance of a pre-paid account, and third, a duration, etc. for a service is determined based on the reservation amount. 10 Appeal2013-007233 Application 11/113,844 App. Br. 7. According to the Appellant, ADC functions in a manner opposite the method claimed. App. Br. 7 (emphasis added). We disagree. Claim 1 is worded in such a way that, first, a determination is made as to whether, broadly-speaking, there is sufficient money in a user's account to pay for a first service requested. Next, according to the claim, a quota based on variables to determine service time or service volume requested by the user is calculated. And then subsequently, the service time or volume for the user is reserved. We do not see how the method claimed is opposite to what ADC discloses as the Appellant has argued it. Both the Appellant's claim and ADC appear to describe reserving an amount against a pre-paid account, calculating a quota for service time, and reserving the service time for the user. Accordingly, we find the argument unpersuasive as to error in the rejection. The Appellant also argues that ADC's CreditPerCallPercentage is not a predefined percentage of credit allocated to a particular service and thus does not equate with "PART" as claimed. According to the Appellant, ADC's CreditPerCallPercentage is directed to a percentage of a user's Available Credit that can be reserved for a single event. App. Br. 8 (emphasis added). The difficulty with the Appellant's argument is that the claimed PART variable is characterized in the claim as "corresponding to a predetermined percentage of money reserved for the first service" (emphasis added). However, the "the first service" is not defined in the claim itself. Nor does the Specification limit the service. Rather, the Specification discloses: 11 Appeal2013-007233 Application 11/113,844 Today, service providers on a data transmission network want to offer their customers data and content services such as Internet access, location services, content services (e.g., news, real time football results, etc.), ring tones, game downloads, etc. Spec. 1, 11. 9-12. In light of the Specification, the broadest reasonable construction of the claim limitation "first part (PART) corresponding to a predetermined percentage of money reserved for the first service," as it would be interpreted by one of ordinary skill in the art at the time of the invention, is that the PART variable corresponds to a predetermined percentage of money reserved for any type of service. The Examiner points to ADC as disclosing constants that the CreditPerCallPercentage is based on that can change based on the service provided, such as local vs. long distance service, and that the single event that is reserved in ADC is a "first service." Answer 13. We agree. Given the broadest reasonable construction of the phrase "first service" as covering any type of service; the single call event that ADC's CreditPerCallPercentage is based upon satisfies the "first service" as claimed. The remaining arguments are unpersuasive as to error in the rejection. For the foregoing reasons, the rejection of claim 1 is sustained. Claims 2-13 depend from claim 1. Their rejection is sustained for the same reasons. 12 Appeal2013-007233 Application 11/113,844 CONCLUSIONS The rejections of claims 1-13 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement and the rejections of claims 1-9, 11, and 13 under 35 U.S.C. § 112, second paragraph, as indefinite are not sustained. The rejections of claims 10 and 12 under 35 U.S.C. § 112, second paragraph, as indefinite and the rejections of claims 1-13 under 35 U.S.C. § 103(a) as being unpatentable over ADC in view of HP are sustained. DECISION We REVERSE the rejection of claims 1-13 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. We REVERSE the rejections of claims 1-9, 11, and 13 under 35 U.S.C. § 112, second paragraph, as indefinite. We AFFIRM the rejections of claims 10 and 12 under 35 U.S.C. § 112, second paragraph, as indefinite. We AFFIRM the rejections of claims 1-13 under 35 U.S.C. § 103(a) as being unpatentable over ADC in view of HP. 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 13 Copy with citationCopy as parenthetical citation