Ex Parte OU et alDownload PDFPatent Trial and Appeal BoardSep 5, 201312418430 (P.T.A.B. Sep. 5, 2013) Copy Citation 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. 12/418,430 04/03/2009 CANHUI OU 7785-137-1_2006-0450DIV 8440 92384 7590 09/05/2013 AT&T Legal Department - G&G Attention: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER SORKOWITZ, DANIEL M ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 09/05/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CANHUI OU, J. BRADLEY BRIDGES, CHARLES R. KALMANEK JR., RAGHVENDRA G. SAVOOR, ALBERT GREENBERG, STEPHEN A. SPOSATO, ZHI LI, JEROLD D. OSATO, ALEXANDRE GERBER, OLIVER SPATSCHECK, and SUN-UK PARK ____________________ Appeal 2011-010770 Application 12/418,430 Technology Center 3600 ____________________ Before ANTON W. FETTING, NINA L. MEDLOCK, and THOMAS F. SMEGAL, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010770 Application 12/418,430 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We REVERSE.1 BACKGROUND Appellants’ invention relates generally to communication services and more specifically to a method and apparatus for presenting advertisements (Spec., para. [0002]). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A non-transitory computer-readable storage medium, comprising computer instructions to: monitor packet traffic associated with an end user from one or more network elements of a communication system providing communication services to a messaging device of the user causing the packet traffic, the communication services being provided to the messaging device by a first entity; determine a behavioral profile of the end user from the monitored packet traffic; and submit to an advertisement element the behavioral profile, wherein the advertisement element is operated by a second entity different from the first entity. 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed April 7, 2011) and Reply Brief (“Reply Br.,” filed June 13, 2011) and the Examiner’s Answer (“Ans.,” mailed May 23, 2011). Appeal 2011-010770 Application 12/418,430 3 THE REJECTIONS The following rejections are before us for review: Claims 10-20 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Roker (US 2008/0040224 A1, pub. Feb. 14, 2008). ANALYSIS Non-Statutory Subject Matter Independent claim 10 and dependent claims 11-16 We are persuaded that the Examiner erred in rejecting claim 10 under 35 U.S.C. § 101 (App. Br. 6 and Reply Br. 2-6). Claim 10 recites a system comprising a network interface device that interfaces with a communication system and a controller that manages the operations of the network interface device. The Examiner maintains that claim 10 is directed to non-statutory subject matter because “the ‘controller,’ and the ‘network interface device’ are not clearly structural and is [sic] seen as functional descriptive material (software per se) and not clearly tied to a computer readable medium” (Ans. 3; see also Ans. 12). We cannot agree. The Specification discloses an exemplary embodiment, with reference to Figure 4, and describes that the computer system 400 includes a controller (i.e., data processor 402) and a network interface device 420. In doing so, the Specification plainly distinguishes between the system hardware (i.e., the processor 402 and the network interface device 420) and system software, describing that software instructions 424 may reside in processor 402 and that the software instructions may be transmitted and received over a Appeal 2011-010770 Application 12/418,430 4 network 426 via network interface device 420 (see Spec., paras. [0030] and [0033]). The term “device” also is generally understood to refer to a piece of equipment or mechanism designed to serve a particular purpose or perform a particular function, which also is consistent with Appellants’ use of that term in the Specification (see, e.g., Spec., paras. [0027] and [0028]). We are persuaded that claim 10 is directed to patent-eligible subject matter. Therefore, we will not sustain the Examiner’s rejection of claim 10 under 35 U.S.C. § 101. We also will not sustain the Examiner’s rejection of claims 11-16, which depend from claim 10. Independent claim 17 and dependent claims 18-20 Claim 17 recites a method comprising, inter alia, “determining a behavioral profile of an end user from monitored packet traffic initiated by the end user, the behavioral profile being determined by a controller operated by a first entity.” Appellants argue that the rejection of claim 17 under 35 U.S.C. § 101 is improper because claim 17 “does not seek to patent a law of nature, physical phenomena, or abstract idea” (App. Br. 6, emphasis omitted) and further because the claim is tied to a particular machine, i.e., a controller (App. Br. 6-7 and Reply Br. 6). In contrast, referencing the machine-or- transformation test, the Examiner maintains that the rejection is proper because the controller “is not clearly structural and is seen as functional descriptive material (software per se)” (Ans. 4). The Supreme Court clarified in Bilski that the machine-or- transformation test “is not the sole test for deciding whether an invention is a patent-eligible ‘process’ [under § 101].” Yet the Court explained that this Appeal 2011-010770 Application 12/418,430 5 test remains a “useful and important clue [or] investigative tool.” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). We are persuaded of error on the part of the Examiner by Appellants’ argument that the “determining” step in claim 1 explicitly requires the use of a controller and, therefore, ties the claim to a particular machine (App. Br. 6-7). As set forth above with respect to claim 10, in our view, one of ordinary skill in the art would understand from Appellants’ Specification that the controller is a structural element. We, of course, are mindful that the machine-or-transformation test is not determinative of whether an invention is a patent-eligible process. However, we agree with Appellants that claim 17 does not recite purely mental steps, i.e., steps that can be performed in the human mind; nor, in our view, does claim 17 merely describe an abstract idea or concept (App. Br. 6). For these reasons, we conclude that claim 17 is directed to patent- eligible subject matter. Therefore, we will not sustain the Examiner’s rejection of claims 17-20 under 35 U.S.C. § 101. Anticipation Independent claim 1 and dependent claims 2-9 We are persuaded that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(e) by Appellants’ argument that Roker does not disclose “submit[ing] to an advertisement element the behavioral profile [that has been determined from monitored packet traffic of a messaging device, where communication services are provided to the messaging device by a first entity] wherein the advertisement element is operated by a second entity Appeal 2011-010770 Application 12/418,430 6 different from the first entity,” as recited in claim 1 (App. Br. 7-12 and Reply Br. 6-9). The Examiner cites paragraphs [0089] through [0092], [0100], [0108], and [0110] through [0113] of Roker as disclosing this feature (Ans. 5-6). However, we agree with Appellants that there is nothing in any of the cited paragraphs, on which the Examiner relies, that discloses that a behavioral profile is submitted to an “advertisement element [that] is operated by a second entity different from the first entity,” as recited in claim 1 (App. Br. 7-12 and Reply Br. 6-9). The Examiner asserts in the Response to Argument section of the Answer that: Roker (para 108) anticipates the claim language of “a first entity and where the advertisement element is operated by a second entity different from the first entity,” by disclosing one entity’s computer information system tied to 3rd party systems for targeting marketing and promotional messages. Further, the claim limitation “operated by a second entity different from the first entity” would be anticipated by an entity using the business method of Rokker [sic] using a marketing department and a statistics or sales department within the same corporation, or one corporation owned by another corporation. (Ans. 13). However, paragraph [0108] merely describes that messages may be tied to 3rd party systems. We do not see why, nor does the Examiner explain why, a statement that messages may be tied to 3rd party systems somehow discloses submitting a behavioral profile to “advertisement element [that] is operated by a second entity different from the first entity,” as recited in claim 1. Appeal 2011-010770 Application 12/418,430 7 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We find nothing in paragraph [0108] of Roker that expressly discloses submitting a behavioral profile to “advertisement element [that] is operated by a second entity different from the first entity,” as recited in claim 1. And to the extent that the Examiner’s rejection is based on a view that Roker inherently describes the claim limitation, i.e., that the claim limitation “would be anticipated by an entity using the business method of Rokker [sic] using a marketing department and a statistics or sales department within the same corporation, or one corporation owned by another corporation” (Ans. 13), more than speculation is required. In particular, the Examiner must provide evidence and/or technical reasoning that makes “clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). “Inherency. . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). The Examiner has not established on this record that Roker discloses the claimed method recited in claim 1, either expressly or inherently. Therefore, we will not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(e). We also will not sustain the Examiner’s rejection of claims 2-9, which depend from claim 1. Appeal 2011-010770 Application 12/418,430 8 Independent claims 10 and 17 and dependent claims 11-16 and 18-20 Independent claims 10 and 17 include language substantially similar to the language of claim 1. Therefore, we will not sustain the Examiner’s rejection of claims 10 and 17 under 35 U.S.C. § 102(e) for the same reasons as set forth above with respect to claim 1. We also will not sustain the rejections of claims 11-16 and claims 18-20, which depend from claims 10 and 17, respectively. DECISION The Examiner’s rejection of claims 10-20 under 35 U.S.C. § 101 is reversed. The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 102(e) is reversed. REVERSED msc Copy with citationCopy as parenthetical citation