Ex Parte Minear et al

Patent Trial and Appeal Board

Jun 22, 2017

11349380 (P.T.A.B. Jun. 22, 2017)

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.
11/349,380 02/06/2006 Brian Minear 010240C1 6606
23696 7590 06/26/2017
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EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
HAQ, NAEEM U
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN MINEAR, RICHARD WAYNE GARDNER III,
STEPHEN A. SPRIGG, PHIL TIEN NGUYEN, MITCHELL B. OLIVER,
and ERIC J. LEKVEN1
Appeal 2016-005419
Application 11/349,380
Technology Center 3600
Before JOHN A. EVANS, JOHN D. HAMANN, and JASON M. REPKO,
Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Rejection of Claims 26-45 and 51—59, all claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2
1 According to Appellants, the real party in interest is QUALCOMM
Incorporated. See Appeal Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 30, 2015, “App. Br.”), the Reply
Appeal 2016-005419
Application 11/349,380
STATEMENT OF THE CASE
The claims relate to systems and methods for provisioning
downloadable subscription-based software to a wireless device. See
Abstract.
INVENTION
Claims 26, 33, 37, 38, 42, 51, 57, 58, and 59 are independent. An
understanding of the invention can be derived from a reading of Claim 26,
which is reproduced below with some formatting added:
26. A method of operating a computer system that is
configured to provide downloadable subscription-based
software applications across a wireless network, comprising:
receiving a subscription-based application download data
at the computer system from an application download server
corresponding to a download from the application download
server to a wireless device of a subscription-based software
application;
receiving, at the computer system over the wireless
network, a subscription-based application deletion data
passively transmitted in response to a deletion from the wireless
device of a corresponding subscription-based software
application;
calculating at the computer system a subscription fee
associated with a usage of said corresponding subscription-
Brief (filed April 26, 2016, “Reply Br.”), the Examiner’s Answer (mailed
March 28, 2016, “Ans.”), the Non-Final Action (mailed July 24, 2015,
“Non-Final Act.”), and the Specification (filed February 6, 2006, “Spec.”)
for their respective details.
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Appeal 2016-005419
Application 11/349,380
based software application between said download and said
deletion; and
transmitting said subscription fee from the computer
system to a billing module of said computer system.
Rejections
Claims 26-45 stand rejected under 35 U.S.C. § 112 as failing the
written description requirement. Non-Final. Act. 2—3.
Claims 26-45 and 51—59 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to statutory subject matter. Non-Final. Act.
3-5.
ANALYSIS
We have reviewed the rejections of Claims 26-45 and 51—59 in light
of Appellants’ arguments that the Examiner erred. We consider Appellants’
arguments seriatim, as they are presented in the Appeal Brief, pages 7—16.
Claims 26-45: Written Description
The Examiner finds the Specification fails to disclose an algorithm as
to how the subscription fee is calculated which questions whether Appellants
truly possessed this feature at the time of filing. Non-Final Act. 3.
Appellants refer to the Specification which discloses:
In downloading the application, the wireless device 12, 18, 20,
22 has subscribed to the application and the user/owner of the
wireless device will be billed under whatever terms the
subscription entails, which is typically a recurrent periodic fee.
App. Br. 8 (citing Spec., 135).
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Appeal 2016-005419
Application 11/349,380
The Examiner finds Appellants’ disclosure goes to enablement, but
not to written description, i.e., whether Appellants possessed the invention.
Ans. 3.
We agree with Appellants that an “objective standard for determining
compliance with the written description requirement is, ‘does the description
clearly allow persons of ordinary skill in the art to recognize that he or she
invented what is claimed’.” Reply Br. 2 (quoting In re Gosteli, 872 F.2d
1008, 1012 (Fed. Cir. 1989)). We find the claimed calculation, in light of
the Specification disclosure, even without an explicit arithmetic algorithm,
“reasonably conveys to the artisan that the inventor had possession at [the
time of the invention] of the later claimed subject matter.” Id. (quoting
Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985)).
Claims 26-45 and 51-59: Novel and Non-Obvious
The present Application has been allowed as novel and non-obvious
over the prior art. See App. Br. 14; Application 11/349,380 File History.
Claims 26-45 and 51-59: Non-statutory, Abstract Idea
The Examiner finds Claims 26-45 are directed to calculating a fee for
the use of a product or service. Non-Final Act. 3. The Examiner finds
calculating a fee is an abstract idea because it can be performed manually
and is similar to the fundamental economic activity at issue in Alice Corp.
Id. The Examiner finds Claims 29, 36, 41, and 45 are directed to the abstract
concept of billing for a subscription. Id. at 4. The Examiner finds Claims
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Application 11/349,380
51—59 are directed to the abstract concept of terminating the billing for a
subscription. Id.
Appellants contend the claims recite further limits that do not “tie-up”
the alleged abstract ideas of “calculating a fee for a product or service,”
“billing for a subscription,” or “terminating a subscription billing.” App. Br.
10. Appellants argue “[1]imitations that may be enough to qualify as
‘significantly more; when recited in a claim with a judicial exception include
. . . Adding a specific limitation other than what is well-understood, routine
and conventional in the field.” Id. at 11 (quoting Interim Eligibility
Guidance § l.B.l). Appellants further argue in view of the claims allowance
over the prior art, they cannot be considered “well-understood, routine and
conventional.” Id. at 14.
The Examiner finds, under Step 2A of the Alice analysis, “the claims
are directed to an abstract idea without adding significantly more to the idea
itself.” Ans. 5. The Examiner finds, under Step 2B of the Alice analysis,
“[cjlaims 26—36 recite the additional limitations of a computer system,
wireless network, server, and wireless device. These limitations are generic
computer components that are recited at a high level of generality to perform
their basic functions of processing, storing, receiving, transmitting, and
displaying data through a program that implements the abstract idea.” Id.
Appellants reply the generic components of their claims are
insufficient to demonstrate that it is “well-known, routine and conventional”
to transfer specific information in response to specific triggers between two
particular network end-points, such as a wireless device transmitting a
notification of an application deletion event to a billing system.” Reply Br.
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Application 11/349,380
18.3 Appellants further argue the Examiner has not demonstrated a nexus
between software deletion and billing. Appellants maintain that individual
claim elements cannot simply be parsed out to show that each component is
well-known individually when the combination is not well-known. Id. We
agree with Appellants.
The Supreme Court has established a two-part test to distinguish
patents that claim one of the patent-ineligible exceptions to statutory subject
matter from those that claim patent-eligible applications of those concepts.
Alice Corp. v. CLSBanklnt’l., 134 S. Ct. 2347, 2354 (2014) (citingMayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294,
1296-97 (2012). As directed by the Federal Circuit, we begin with Step 1
whether the claims are “directed to” a patent-ineligible concept. Rapid
Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir.
2016).
The Examiner finds the claims are directed to calculating a fee for the
use of a product or service, an abstract idea. Non-Final Act. 3. However,
the Examiner’s finding merely refers to a gist of the invention. However,
the Supreme Court “has made it clear . . . that there is no legally
recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the
invention in a combination patent.” Aro Mfg. Co. v. Convertible Top
Replacement Co., 365 U.S. 336, 344-45 (1961). Claim 26 does more than
merely calculate a fee. Rather, Claim 26 recites a server receives a wireless
notification from a remote location when subscription software is
3 Appellants’ Reply Brief is unpaginated. The cited page numbers refer to
the electronic Record.
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Application 11/349,380
downloaded and when the subscription software is deleted. Based on the
time differential between the two notifications, the server then calculates a
usage fee. Thus, Claim 26 is not “directed to” a patent-ineligible abstract
idea. If, as here, the answer to the Step 1 question is no, “the inquiry is over:
the claim falls within the ambit of § 101.” CellzDirect, 827 F.3d at 1047.
Independent Claims 33, 37, 38, 42, 51, 57, 58, and 59 recite
limitations commensurate with those of Claim 26. We find the claims are
not “directed to” a patent-ineligible abstract idea and thus, fall within the
ambit of patent-eligible subject matter of 35 U.S.C. § 101.
DECISION
The rejection of Claims 26-45 under 35 U.S.C. § 112 is REVERSED.
The rejection of Claims 26-45 and 51—59 under 35 U.S.C. § 101 is
REVERSED.
REVERSED
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