Ex Parte Minear et alDownload PDFPatent Trial and Appeal BoardJul 20, 201610222678 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/222,678 08/15/2002 23696 7590 07/22/2016 QUALCOMM INCORPORATED 5775 MOREHOUSE DR. SAN DIEGO, CA 92121 FIRST NAMED INVENTOR Brian Minear 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. 010460 6615 EXAMINER PRASAD, NANCY N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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): 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, GERALD HOREL, JULIE YU, MAZEN CHMAYTELLI, MICHELLE KLEIN, VICKI MEALER, and MITCHELL B. OLIVER Appeal2014-002176 Application 10/222,678 1 Technology Center 3600 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 19-22, 24--34, 36-46 and 48---69. Final Action 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, the real party in interest is QUALCOMM Incorporated. Appeal Br. 3. Appeal2014-002176 Application 10/222,678 ILLUSTRATIVE CLAIM 19. A method of managing the distribution of applications via a wireless network, the method comprising: receiving, at a server, one or more transactions associated with one or more customers from a carrier system; receiving, at the server, business metadata from a unified application manager, wherein the unified application manager comprises a first carrier-specific or server-specific version of a catalog and a second carrier-specific or server-specific version of the catalog, the first carrier specific or server-specific version of the catalog including a first set of applications for distribution via the wireless network by a first carrier or server, and the second carrier-specific or server-specific version of the catalog including a second set of applications for distribution via the wireless network by a second carrier or server that is different from the first carrier or server; receiving, at the server, event data defining one or more events associated with the one or more customers and occurring external to the one or more transactions, wherein the one or more events include mobile identification number update events; generating, by a processor at the server, carrier billing extract files based on the one or more transactions and the business metadata and including the one or more events external to the one or more transactions; and sending the carrier billing extract files to the carrier for customer billing. CITED REFERENCES The Examiner relies upon the following references: Seiderman Reeder us 5,608, 781 us 5,852,812 Mehta et al. US 2002/0128984 Al (hereinafter "Mehta '984") 2 Mar. 4, 1997 Dec. 22, 1998 Sept. 12, 2002 Appeal2014-002176 Application 10/222,678 Mehta et al. US 2002/0131404 Al Sept. 19, 2002 (hereinafter "Mehta '404") Shupe et al. (hereinafter "Shupe") US 6,941,139 Bl REJECTIONS Sept. 6, 2005 I. Claims 31-34, 36-42, 59, 60, and 64 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 that the Appellants regard as the invention.2 Final Action 3-5. II. Claims 19-22, 24--34, 36-46, 48---62, and 66---69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mehta '404, Reeder, and Shupe. 3 Final Action 6-20. III. Claims 63---65 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mehta '984, Reeder, Shupe, and Seiderman. Final Action 20-23. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 2 The Examiner's omission (see Final Action 3) of claims 36, 37, 59, and 60 (each depending directly or indirectly from rejected claim 31) from the list of claims rejected as indefinite under 35 U.S.C. § 112, second paragraph, is treated as inadvertent error. 3 The Final Action (page 6) mistakenly includes claim 4 7 as part of what is identified herein as Rejection II. Claim 47 is cancelled. See Appeal Br. 32, Claims App. 3 Appeal2014-002176 Application 10/222,678 ANALYSIS Rejection I Claims 31-34, 38--42, and 64 stand rejected on account of several limitations, which are means-plus-function limitations that invoke 35 U.S.C. § 112, sixth paragraph. Final Action 3. The limitations identified in the Final Action (id.), and the claims in which they appear, are set forth below: 4 "means for receiving ... " "means for generating . .. " "means for sending . .. " (claim 31 (three distinct limitations), claim 38, claim 39); (claim 3 1, claim 64); (claim 31 ); "means/or consolidating ... " (claim 32); "means for converting . .. " "means for rating ... " (claim 33); and (claim 34 ). According to the Final Action, "[t]he written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function." Final Action 4. Such a deficiency- i.e., a failure to provide the supporting disclosure for a means-plus-function limitation, under 35 U.S.C. § 112, sixth paragraph - would render the associated claims indefinite, in violation of 35 U.S.C. § 112, second paragraph. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012). The Final Action also admonishes 4 Claim 64 includes two additional limitations drafted in "means" format - "means for associating ... "and "means for accounting for applications or subscriptions ... " (Appeal Br. 3 5, Claims App.) - that are not identified in the Final Action as bases for 35 U.S.C. § 112, second paragraph, rejection. 4 Appeal2014-002176 Application 10/222,678 that, with regard to computer-implemented means-plus-function limitations, the disclosure of a general purpose computer does not amount to sufficient structure to perform the claimed function unless the disclosure also includes an algorithm describing how the function is performed. Final Action 4 (citing Finisar Corp. v. The DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) ). The Final Action states that the Appellants' previous efforts to identify corresponding structure are deficient and recommends that the Appellants map the limitations to the particular corresponding portions of the specification or drawings and explain how the limitations are supported. Final Action 4--5. The Appeal Brief contends that the Appellants provided a "claim mapping," such as the Final Action requests, in Amendments dated April 3, 2012, and August 24, 2012. Appeal Br. 15. Both of these Amendments pre- date the Final Action, which bears an October 11, 2012, Notification Date and states that it responds to the Appellants; communication of August 24, 2012 (Final Action 1 (Office Action Summary)). The Appeal Brief also refers to the Advisory Action of December 21, 2012 (post-dating the Final Action), which the Appellants characterize as stating that particular portions of the Specification5 (i-fi-f 93, 379) "do not adequately support the 'means' recited in claims 31-34, 38--42 and/or 64." Appeal Br. 15. The Appeal Brief attempts to identify corresponding structure for only two of the means-plus-function limitations at issue in this Appeal - 5 "Specification" and "Spec." refer to the Substitute Specification filed December 25, 2007. 5 Appeal2014-002176 Application 10/222,678 claim 31 's "means for sending" and "means for generating. "6 Appeal Br. 16-17. As explained below, the Appellants' proposed corresponding structures for these two limitations fail to disclose performance of the recited functions, such that the Appellants' associated arguments for error are not persuasive. Nor is the Appeal Brief persuasive of error, in regard to the remaining means-plus-function limitations identified above, for which the Appellants propose no corresponding structure. Accordingly, we sustain the rejection of claims 31-34, 36-42, 59, 60, and 64 under 35 U.S.C. § 112, second paragraph, as being indefinite. "means/or sending ... " (claim 31) The Appellants argue that claim 31 's "means for sending the carrier billing extract files to the carrier for customer billing" (Appeal Br. 30, Claims App.) "can read upon 'QIS [QUALCOMM internet services] can have an interface mechanism with the carriers 6980"' (id. at 16 (quoting Spec. if 379)). However, the cited portion of the Specification does not address the claimed function of "sending the carrier billing extract files to the carrier for customer billing," nor does it involve either "carrier billing extract files" or "customer billing." Instead the cited disclosure relates to carriers "handl[ing] a majority of' support service inquiries from device users, but 6 Although not stated explicitly, it appears, based upon the Appellants' argument (Appeal Br. 16-17), that the Appellants are addressing claim 31 's "means for generating carrier billing extract files based on the one or more transactions and the business metadata and including the one or more events external to the one or more transactions," but not claim 64' s "means for generating at least one pseudo customer identifier corresponding to the at least one customer." 6 Appeal2014-002176 Application 10/222,678 "escalat[ing]" "a fraction of those inquiries" to QIS, hence the role of the "interface mechanism with the carriers." Spec. i-f 3 79. Therefore, paragraph 379 does not describe "structure, material, or acts" (per 35 U.S.C. § 112, sixth paragraph) corresponding to the recited function of "sending the carrier billing extract files to the carrier for customer billing" in claim 31. Accordingly, the Appellants have not shown error in the rejection of claim 31, on the ground that the "means for sending" limitation renders the claim indefinite under 35 U.S.C. § 112, second paragraph. "means for generating . .. " (claim 31) The Appellants argue that claim 31 's "means for generating carrier billing extract files based on the one or more transactions and the business metadata and including the one or more events external to the one or more transactions" finds support (in accord with 35 U.S.C. § 112, sixth paragraph) in the following recitation: "[a]t the MTXN [master transaction manager] 110, carrier billing extract files, e.g., in the form of extensible markup language (XML) file extracts, can be generated periodically (e.g., every 30 minutes) and sent to the carrier billing system 126 for consumer billing." Appeal Br. 16 (quoting Spec. i-f 93). The Appellants also point to Appendix VII of the Specification, as an example of a carrier billing extract file. Appeal Br. 17. Yet, the identified portions of the Specification do not describe how the carrier billing extract files are generated, or how such generation might be "based on the one or more transactions and the business metadata and including the one or more events external to the one or more transactions," as set forth in claim 31. Therefore, the Appellants have not identified "structure, material, or acts" (per 35 U.S.C. § 112, sixth paragraph) 7 Appeal2014-002176 Application 10/222,678 corresponding to the recited function of the "means for generating" limitation of claim 31. Accordingly, the Appellants have not demonstrated error in the rejection of claim 31, on the ground that the "means for generating" limitation renders the claim indefinite under 35 U.S.C. § 112, second paragraph. Rejection II Claims 19-22, 24--34, 36-46, 48---62, and 66---69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mehta '404, Reeder, and Shupe. Final Action 6-20. We do not reach the merits of the rejection of claims 31-34, 36-42, 59, and 60 under 35 U.S.C. § 103(a) at this time. Before a proper review of a rejection under§ 103(a) can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Because, as explained above, we sustain the rejection of claims 31--'34, 36-42, 59, and 60 as indefinite under 35 U.S.C. § 112, second paragraph, we are constrained to reverse, proforma, the Examiner's rejection of these claims under§ 103(a). See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious -the claim becomes indefinite."); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.). It should be understood that our decision to reverse the obviousness rejection is based solely on the indefiniteness of claims 31-34, 36-42, 59, and 60, and does not reflect on the merits of the underlying rejection. 8 Appeal2014-002176 Application 10/222,678 The Appellants argue independent claims 19, 43, 57, and 66---68 together (Appeal Br. 18-19) and make additional separate arguments regarding independent claims 67 and 68 (id. at 19-21 ). In regard to the group of independent claims 19, 43, 57, and 66---68, claim 19 is selected for analysis. See 37 C.F.R. § 41.37(c)(l)(iv). The Appellants argue that claim 19 was rejected erroneously, because Mehta '404 does not teach different versions of an application "catalog" (e.g., for use with either different carriers or different servers). Appeal Br. 18. According to the Specification, a "catalog" is a database structure that houses applications assigned to categories, such that a carrier can create multiple catalogs (for various groups of users). Spec. i-f 150. Users may download catalog applications, to their personal devices, through an application download server ("ADS"). Id. i-fi-188 (Table 2), 150. The relevant part of claim 19 recites first and second versions of a catalog: receiving, at the server, business metadata from a unified application manager, wherein the unified application manager comprises a first carrier-specific or server-specific version of a catalog and a second carrier-specific or server-specific version of the catalog, the first carrier specific or server-specific version of the catalog including a first set of applications for distribution via the wireless network by a first carrier or server, and the second carrier-specific or server-specific version of the catalog including a second set of applications for distribution via the wireless network by a second carrier or server that is different from the first carrier or server. As the Reply Brief points out, the Appellants are not arguing that Mehta '404 fails to show "a catalog"; rather, the Appellants contend simply that Mehta '404 lacks a first version and a second version of the catalog, as required by claim 19. Reply Br. 4. 9 Appeal2014-002176 Application 10/222,678 The Examiner's finding to the contrary (Final Action 6-7) is not supported by a preponderance of the evidence. The Final Action and the Answer posit that Mehta '404 can restrict a particular subscriber's download access to particular versions of content, thus satisfying the limitation at issue. Final Action 6-7 (citing Mehta '404, i-fi-16-7, 44, 47); Answer 31 (citing Mehta '404, i-fi-144, 135-142, Fig. 16). Yet, selectively blocking the downloading of particular versions of content (e.g., particular versions of an application), as shown in Mehta '404, e.g., i-fi-f 136-139 (concerning the authorizations on the basis of carrier, subscriber, and device), does not disclose the claimed first and second versions of a catalog. Rather, as the Appellants argue, Mehta '404 is consistent with the use of a single catalog that all carriers and their subscribers use. See Reply Br. 5---6 (citing Mehta '404, i-fi-f 62, 83, 137, 138, Figs. 1, 5, 16, 17). Therefore, the Examiner has not established a prima facie case of obviousness, such that the rejection of claim 19 as obvious under 35 U.S.C. § 103(a), is not sustained. The rejection of independent claims 43, 57, and 66---68, which stand or fall with claim 19, is also not sustained. Accordingly, we need not address the Appellants' additional separate arguments regarding independent claims 67 and 68. Appeal Br. 19-21. Further, the rejection of dependent claims 20-22, 24--30, 44--56, 58, 61, 62, and 69 is not sustained. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). The Appellants' comments on pages 21-24 of the Appeal Brief concern arguments presented to the Office prior to the Final Rejection, including what appear to be instances of misunderstanding, between the 10 Appeal2014-002176 Application 10/222,678 Appellants and the Examiner, as to the language of then-pending claims and whether the source of certain reference citations was Mehta '404 or Mehta '984. Yet, the Appellants' comments here do not present any argument that any claim involved in this Appeal is rejected erroneously. Therefore, pages 21-24 of the Appeal Brief do not address any decision by the Examiner and do not present any issue for review on Appeal. See 35 U.S.C. § 134(a); see also 37 C.F.R. § 41.37(c)(l)(iv). Rejection III Claims 63---65 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mehta '984, Reeder, Shupe, and Seiderman. Final Action 20-23. Because we determine that claim 64 is indefinite under§ 112, second paragraph, the rejection of claim 64 under § 103 must fall proforma because it is necessarily based on a speculative assumption as to the scope of the claim. See Wilson, 424 F.2d at 1385; Steele, 305 F.2d at 862---63. Accordingly, the rejection of claim 64 under§ 103 as unpatentable over Mehta '984, Reeder, Shupe, and Seiderman is reversed, proforma. Our decision to reverse this rejection is based solely on the indefiniteness of claim 64, and does not reflect on the merits of the underlying rejection. The Appellants do not present any argument in support of the patentability of claims 63 and 65 except to assert that "Seiderman is insufficient to cure the deficiencies of Mehta [' 404], 7 Reeder and/ or Shupe ... with respect to [their] independent claims." Appeal Br. 25. The 7 The Appeal Brief refers to the discussion of the references "noted above" (Appeal Br. 24), thus confirming the Appellants' identification of Mehta '404 - as opposed to Mehta '984 (the latter not being mentioned in the Appeal Brief). 11 Appeal2014-002176 Application 10/222,678 difficulty with Appellants argument is that independent claims 19 (from which claim 63 depends) and 43 (from which claim 65 depends) are rejected based on a different combination of references. That Seiderman might not cure the deficiencies of Mehta '404, Reeder, and Shupe with respect to independent claims 19 and 43 is not persuasive of error in the rejection of claims 63 and 65 as unpatentable over Mehta '984, Reeder, Shupe, and Seiderman. The Appellants do not present a proper argument for alleged error in the rejection of claims 63 and 65. Accordingly, the rejection is summarily sustained. DECISION We AFFIRM the Examiner's decision rejecting claims 31-34, 36-42, 59, 60, and 64, as being indefinite under 35 U.S.C. § 112, second paragraph. We REVERSE, proforma, the Examiner's decision rejecting claims 31--'34, 36-42, 59, 60, and 64, as being obvious under 35 U.S.C. § 103(a). We REVERSE the Examiner's decision rejecting claims 19-22, 24-- 30, 43--46, 48-58, 61, 62, and 66-69, as being obvious under 35 U.S.C. § 103(a). We AFFIRM the Examiner's decision rejecting claims 63 and 65 as being obvious under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation