Ex Parte Berus

Patent Trial and Appeal Board

Mar 15, 2018

13076809 (P.T.A.B. Mar. 15, 2018)

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.
13/076,809 03/31/2011 Bernard BERUS P7127US00 4458
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
03/19/2018 EXAMINER
DETWEILER, JAMES M
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD BERUS
Appeal 2016-002300
Application 13/076,8091
Technology Center 3600
Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Nokia Corporation as the real party in interest. Appeal
Br. 1.
Appeal 2016-002300
Application 13/076,809
THE INVENTION
Appellant’s claims cover processing and/or facilitating a processing of
one or more messages of one or more applications, one or more services, or
a combination thereof for presentation in at least one ring-back media file.
Specification 13.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
processing, by a processor, of one or more messages of
one or more applications, one or more services, or a
combination thereof for presentation in at least one ring-back
media file based, at least in part, on one or more concurrent user
interactions at a device;
determining, by the processor, to associate the at least
one ring-back media file to at least one communication channel
associated with (a) the one or more applications, (b) the one or
more services, (c) at least one user of the one or more
applications or the one or more services, or a combination
thereof,
wherein a request to initiate a communication session
over the at least one communication channel causes, at least in
part, a presentation, by the processor, of the at least one
ringback media file pending an establishment of the
communication session, and wherein the request includes
tracking information presented in the one or more messages;
and
determining an interaction with the at least one ring-back
media file based, at least in part, on one or more user interface
options.
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Garrison
Raju
US 2007/0274485 A1 Nov. 29, 2007
US 2008/0075236 A1 Mar. 27, 2008
US 2008/0120186 A1 May 22, 2008
US 2009/0041227 A1 Feb. 12, 2009
US 2010/0121697 A1 May 13, 2010
US 2010/0285820 A1 Nov. 11,2010
US 2011/0213657 A1 Sept. 1,2011
US 2013/0308767 A1 Nov. 21, 2013
Jokinen
Altberg
Lin
Jozwiak
O’Malley
Manley
The following rejections are before us for review:
Claims 1—20 are rejected under 35 U.S.C. § 101 because the claims
are directed to non-statutory subject matter. Final Act. 9.
Claims 1 and 11 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 11.
Claims 1 and 11 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 the inventor or a joint inventor, or
for pre-AIA the applicant regards as the invention. Final Act. 12.
Claims 1, 5, 9, 11—15, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jozwiak, Raju, and further in view of Altberg. Final
Act. 14.
Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jozwiak, Raju, in view of Altberg as applied to claims 5
and 15 above, and further in view of Jokinen. Final Act. 27.
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Claims 7, 8, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jozwiak, Raju, in view of Altberg as applied to claims 5
and 15 above, and further in view of Lin. Final Act. 29.
Claims 10 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jozwiak, Raju, in view of Altberg as applied to claims 1
and 10 above, and further in view in view of Garrison. Final Act. 34.
Claims 1—5 and 11—15 are rejected under 35 U.S.C. § 103 (a) as being
unpatentable over O’Malley in view of Altberg. Final Act. 37.
Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over O’Malley in view of Altberg as applied to claims 5 and 15
above, and further in view of Jokinen. Final Act. 45.
Claims 7, 8, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over O’Malley in view of Altberg as applied to claims 5 and 15
above, and further in view of Lin. Final Act. 47.
Claims 9, 10, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over O’Malley in view of Altberg as applied to claims 1
and 11 above, and further in view of Manley. Final Act. 51.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 9-10 and
37—55 of the Final Action.
2. Altberg discloses:
In one embodiment, an advertisement is presented in a media
channel for a group of advertisers, such as a group of mortgage
brokers. The advertisement contains an encoded target phone
number which is reachable to the group of mortgage brokers.
When the encoded target phone number is selected or used, the
selection of a particular advertiser is performed at the
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connection server.
Altberg 1165.
3. Altberg further discloses:
In FIG. 6, a phone number (207) without an extension is
assigned for the generation a particular version (213) of an
advertisement (209). In the database (201), the assigned phone
number (207) is associated with the media channel (203) and
the advertiser’s phone number (205) (and/or other parameters to
be tracked). Thus, the parameters to be tracked can be identified
based at least partially on the assigned phone number (207).
The particular version (213) of the advertisement (209) that has
the assigned phone number (207) is provided to the customer
(217) via the media channel (215). The advertisement may
instruct or suggest the customer to call the assigned phone
number (207) to reach the advertiser.
Altberg till.
ANALYSIS
35 U.S.C. §101 REJECTION
We will sustain the rejection of claims 1—20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First,. . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
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Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1 result in:
wherein a request to initiate a communication session
over the at least one communication channel causes, at least in
part, a presentation, by the processor, of the at least one
ringback media file pending an establishment of the
communication session, and wherein the request includes
tracking information presented in the one or more messages;
and
determining an interaction with the at least one ring-back
media file based, at least in part, on one or more user interface
options.
The Specification states,
[o]ne area of interest has been the development of services that
facilitate marketing promotions or discounts (e.g., coupons or
other similar discount offers) provided from retailers and/or
service providers to users. As a result, coupons and related
discount offers have proliferated and delivered to users via
many different delivery solutions.
Spec. 14. The Specification further describes:
[traditionally, coupons often have limitations or other
conditions with respect to, for instance, which merchants will
accept the coupons, method of requesting/receiving, validity
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period, applicable products, etc. One popular method for
requesting/receiving the coupon information is to utilize a user
device (e.g., a phone) to connect to a communications network
for calling and/or connecting to related internet sites; however,
users can incur costs for connecting via one or more
communication networks, which sometimes require additional
service plans such as a data plan with additional costs and/or
airtime (e.g., minutes used). Thus, users and merchants can
benefit from a method whereby the coupon information can be
delivered to the user without any additional costs to the user.
Spec. 124. Thus, all this evidence shows that claim 1 is directed to at least
one ring-back media file having coupon information and associating it with a
communication channel based on current user interactions at the device and
generating a request to initiate a communication session to present the at
least one ring-back media file to the device user. It follows from prior
Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in
particular, that the claims at issue here are directed to an abstract idea.
Disseminating coupon information is a fundamental economic practice of a
transaction because promoting sales of a product or services is the
cornerstone to business. The patent-ineligible end of the 35 U.S. C. § 101
spectrum includes fundamental economic practices. See Alice, 134 S. Ct. at
2355—57; see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16
(Fed. Cir. 2014) (“offering media content in exchange for viewing an
advertisement,’ along with ‘routine additional steps’ amount to nothing
more than an abstraction”). Thus, associating at least one ring-back media
file having coupon information, with a communication channel based on
current user interactions at the device and generating a request to initiate a
communication session to present the at least one ring-back media file to the
device user is an “abstract idea” beyond the scope of § 101.
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As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
an intermediated settlement in Alice and the concept of associating at least
one ring-back media file having coupon information with a communication
channel based on current user interactions at the device, at issue here. Both
are squarely within the realm of “abstract ideas” as the Court has used that
term. That the claims do not preempt all forms of the abstraction or may be
limited to ring—back advertising, does not make them any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—61 (Fed. Cir.
2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
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“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval—some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of associating at least one ring-back media file having
coupon information with a communication channel based on current user
interactions at the device and generating a request to initiate a
communication session to present the at least one ring-back media file to the
device user. The claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than instructions to associate at least one ring-
back media file having coupon information with a communication channel
based on current user interactions at the device and generating a request to
initiate a communication session to present the at least one ring-back media
file to the device user. Under our precedents, that is not enough to transform
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an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at
2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 134 S. Ct._at 2360 (alterations in original).
We have reviewed all the arguments (Appeal Br. 4—15) Appellant has
submitted concerning the patent eligibility of the claims before us which
stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues,
Appellant’s claim 1 includes features which are both new and
useful, for example ‘determining, by the processor, to associate
the at least one ring-back media file to at least one
communication channel associated with (a) the one or more
applications, (b) the one or more services, ( c) at least one user
of the one or more applications or the one or more services, or a
combination thereof’ is not ‘conventional’ nor ‘specified at a
high level of generality’ under the Alice holding, is not ‘simply
an implementation of a mathematical principle’ (see Benson),
and solves ‘a technological problem in ‘industry practice’” (see
Diehr).
Appeal Br. 14.
We disagree with Appellant. The question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
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technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case,
claim 1 as a whole is focused on the effect of associating content with the
concurrent interactions of a user at a device. “Adding one abstract idea . . .
to another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (2017).
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law
demands more” than claim language that “provides only a
result-oriented solution, with insufficient detail for how a
computer accomplishes it”); Elec. Power Grp., 830 F.3d at
1354 [Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016)]; (explaining that claims are directed to
an abstract idea where they do not recite “any particular
assertedly inventive technology for performing [conventional]
functions”).
Appellant also argues “that ‘abstract’ under Alice means something
related to technologies that are old and very well known, and thus, not
‘new,’ unlike the claimed subject matter in the instant application.” Appeal
Br. 11.
We are not persuaded by Appellant’s argument because the standard
for patentability under 35 U.S.C. § 103(a) is obviousness, the standard for
patentability under 35 U.S.C. § 102 is novelty, and the standard for patent
eligibility under 35 U.S.C. § 101 is abstract idea. Each of these standards is
separately required to be met before patentability can be conferred on
invention, which is not the case here based on the latter standard. The
question in step two of the Alice framework is not whether an additional
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feature is novel but whether the implementation of the abstract idea involves
“more than the performance of ‘well-understood, routine, [and] conventional
activities previously known to the industry. Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347—
48 (quoting Alice, 134 S. Ct. at 2359). Here, we find that the claimed,
associating at least one ring-back media file with a communication channel
based on current user interactions at the device and, generating a request to
the device to initiate a communication session, are well-understood, routine,
conventional activities previously known to the industry. Appellant has not
shown otherwise.
35 U.S.C. § 112 REJECTIONS
We will not sustain the rejection of claims 1 and 11 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, based on written
description. FinalAct.il.
The Examiner rejects claims 1 and 11 because
claims 1 and 11 recite the limitation ‘wherein the request
includes tracking information presented in the one or more
messages,’ which is not supported by the originally-filed
disclosure. The disclosure suggests that coupon/message
redemption may be tracked ([0068]), however the mechanism
for tracking redemption is not disclosed, and any information
presented in a message (e.g. coupon) used for tracking
redemption cannot be said to be ‘included in the request.’
Final Act. 11.
Appellant, however, argues:
Specifically, and for example, paragraph [0024] as filed recites
‘a user may be more inclined to request and utilize coupon
information if the process for requesting and receiving the
coupon information is simplified and at no cost to the user.’
Further, for example, paragraph [0025] as filed recites ‘In one
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embodiment, the system 100 supports network operators and
users in delivering and receiving, respectively, coupon
information via ring-back signal in a communication network,
which is effectively unused network time. In one embodiment,
the coupon information (e.g., a product, a discount amount, a
merchant information, etc.) is provided to the user once the user
initiates a call to a service provider.’ Further, paragraph [0039]
as filed recites:
[0039] In one embodiment, if the communication network
105 supports data exchange prior to communication
establishment (e.g., during the ring-back signal period,
access channel, control channel, etc.), each UE lOla-lOln
in the system 100 may transmit context information
associated with the user of each respective UE lOla-lOln to
the coupon services platform 103. An application 113 (e.g.,
a coupon application) executing on one of the UEs 101
associated with a user can then utilize the information stored
on the coupon services platform 103 to initiate coupon
information delivery. The application 109 can receive an
input specifying one or more criteria (e.g., attribute-
condition pairs) to determine a context-based group from
among a plurality of UEs 101 for coupon information
delivery. This information can be transmitted via a
communication network 105 to/from the coupon services
platform 103. The coupon services platform 103 receives the
input and may associate the input as a request to initiate
coupon information delivery. The criteria can include one or
more context attributes associated with UEs 101 along with
one or more other parameters or conditions, (emphasis
added)
Appellant urges at least these portions of the [Specification
provide support for this claimed subject matter in the
application as filed.
Appeal Br. 16—17.
We agree with Appellant that at least paragraph 39 of the
Specification describes the claimed subject matter at the coupon services
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platform 103 with sufficient detail to convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
We will sustain the rejection of claims 1 and 11 under 35 U.S.C.
§ 112(b)or35U.S.C. § 112 (pre-AIA), second paragraph,
The Examiner finds that claims 1 and 11:
recite the limitation “wherein the request includes tracking
information presented in the one or more messages,” and one of
ordinary skill in the art would not be reasonably apprised of the
scope of the invention. The disclosure suggests that
coupon/message redemption may be tracked ([0068]), however
the mechanism for tracking redemption is not disclosed, and
any information presented in a message (e.g. coupon) used for
tracking redemption cannot be said to be “included in the
request.”
Final Act. 13.
Appellant does not argue this rejection in the Answer. We, thus,
summarily affirm the rejection under 35 U.S.C. § 112(b) of claims 1 and 11.
35 U.S.C. § 103 REJECTION
Jozwiak, Raju and Altberg
Each of independent claims 1 and 11 recites in pertinent part
(emphasis added),
processing, by a processor, of one or more messages of one or
more applications, one or more services, or a combination
thereoffor presentation in at least one ring-back media file
based, at least in part, on one or more concurrent user
interactions at a device', ....
Appellant argues,
that JOZWIAK does not disclose the claimed subject matter,
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inter alia, “based, at least in part, on one or more concurrent
user interactions at a device” (claim 1, lines 4-5) as JOZWIAK
relates to (as noted above), and discloses, “distributing coupons
and other targeted content messages to mobile devices such as
mobile phones based on the location of a femtocell base station
utilized by those mobile devices.” (emphasis added) (JOZWIAK,
paragraph [0001]) Thus, JOZWIAK bases its interactions with
“the location of a femtocell base station” and not the claimed
subject matter, inter alia, “on one or more concurrent user
interactions at a device”.
Appeal Br. 20.
The Examiner, however, finds
Jozwiak teaches processing the messages (‘processing. . .one or
more messages. . .’ based on a caller calling the phone
number/system (‘processing. . .based on one or more concurrent
user interaction at a device’). In other words, the user calling a
phone number associated with the femtocell base station using
their phone is a ‘concurrent user interaction at the device,’ and
the processing of coupons/advertisements in response to the
user calling the phone number/system is ‘processing. . .one or
more messages. . .based on one or more concurrent user
interaction at a device.’
Answer 15.
We disagree with the Examiner’s claim interpretation of claim 1 and,
hence, find that the Examiner’s rejection is improper.
The ordinary and customary definition of “concurrent” is, “operating
or occurring at the same time.”2 Appellant cites to paragraph 56 of the
Specification and step 401 of Figure 4A (Appeal Br. 2) to describe a
“concurrent interaction.” Here the Specification states: “[t]he input can be
received from the coupon services 103 and/or service platform 111.” Spec.
2 Merriam-Webster, https ://www.merriam-
webster.com/dictionary/concurrent (last visited 2/25/2018).
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| 56. The Specification describes current interactions in the context of:
The context processing module 215 may be utilized in
determining context information from the data collection
module 117 and/or applications 113 executing on the runtime
module 209. This information may be caused to be transmitted,
via the communication interface 213 to the coupon services
platform 103.
Spec. 1 53. Thus, according to the Specification, determining context
information and/or applications running on the device constitute “concurrent
interactions.” In contrast, the Examiner’s cited one time “calling a phone
number associated with [a] femtocell base station” (Answer 15) of Jozwiak
does not constitute concurrent, or same time, interactions at a device, but
rather a single, one time connection protocol. Thus, will not sustain the
rejection of independent claims 1 and 11 under 35 U.S.C. § 103(a). Since
claims 2—10 and 12—20 depend from claims 1 and 11, respectively, and since
we cannot sustain the rejection of claims 1 and 11, the rejection of claims 2—
10 and 12—20, likewise, cannot be sustained.
O ’Malley, Altberg
Appellant argues claims 1—5 and 11—15 as a group. (Appeal Br. 42—
44). We select claim 1 as the representative claim for this group, and the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Appellant argue,
The Examiner admits that O ’MALLEY does not disclose
the claimed subject matter of claim 1 “wherein the request
includes tracking information presented in the one or more
messages” (claim 1, lines 11-12). Thus, the Examiner cites
ALTBERG as disclosing “wherein the request includes tracking
information presented in the one or more messages” and cites
paragraphs [0111], [0124], [0165], [0039], [0104], [0113],
Appellant urges that ALTBERG does not disclose this claimed
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subject matter. As argued above in the rejection of claims 1,5,
9, 11-15 and 19, ALTBERG instead uses the telephone number,
itself, that is dialed by a user to determine how the call is
directed, what is provided to the caller, or what is provided to
the callee.
Appeal Br. 43.
The Examiner finds concerning the limitation, “wherein the request
includes tracking information presented in the one or more messages”,
Altberg discloses a method and system for providing content to
a caller via ring-back media file ([0228]-[00311]). Altberg
further discloses,
• wherein the request includes tracking information
presented in the one or more messages ([0111],
[0124], [0165], [0039], [0104], [01131])
Altberg demonstrates that it is advantageous to include wherein
the request includes tracking information presented in the one
or more messages because it can facilitate enhanced contextual
targeting of appropriate messages/advertisements and to track
advertisement provisioning and performance which is valuable
to advertisers ([0111], [0039], [0124], [0165], [0039], [0104],
[01131]).
Therefore, it would have been obvious to one of ordinary skill
in the art at the time the invention was made to modify the
method taught by Jozwiak to include wherein the request
includes tracking information presented in the one or more
messages, as taught by Altberg, because it can facilitate
enhanced contextual targeting of appropriate
messages/advertisements and to track advertisement
provisioning and performance which is valuable to advertisers.
Final Act. 16—17.
In light of the breadth of the claim, the Appellant’s argument is not
persuasive as to error in the rejection. Appellant maintains that Altberg’s
disclosure of using the “telephone number, itself that is dialed by a user to
determine how the call is directed, what is provided to the caller, or what is
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provided to the callee,” does not meet the claimed, “wherein the request
includes tracking information presented in the one or more messages.”
Appeal Br. 25.
We disagree with Appellant. We find that Altberg discloses that a
phone number can be assigned for the generation of a particular version of
an advertisement (209), and the assigned phone number is used to track
parameters, e.g., the media channel, and the advertiser's phone number.
FF. 3. Thus, the phone number in Altberg being used as a tracking
parameter, constitutes “tracking information.”
Alternatively, we find that Altberg discloses “encoded target phone
number which is reachable to the group of mortgage brokers. When the
encoded target phone number is selected or used, the selection of a particular
advertiser is performed at the connection server.” FF. 2. Thus, we find the
encoded target phone number meets the claimed “tracking information.”
Also, because the claim fails to recite any utilization of the recited tracking
information, we construe “tracking” to be non-functional descriptive matter
which cannot render nonobvious an invention that would have, otherwise,
been obvious. In reNgai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is
not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability); see
also In re Jie Xiao, 462 Fed. App’x 947, 950-52 (Fed. Cir. 2011) (non-
precedential).
CLAIMS 6 AND 16
Representative claim 6 recites in pertinent part, “causing, at least in
part, selection of one or more words from a predetermined set of words to
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represent the coupon information, wherein the one or more messages
include, at least in part, the one or more words’ '' (emphasis added).
Appellant respectfully does not discern wherein this
discloses the claimed subject matter of claim 6. The Examiner
attempts to equate a mathematical calculation to the claimed
subject matter a “selection of one or more words from a
predetermined set of words to represent the coupon
information; wherein the one or more messages include, at least
in part, the one or more words.” Appellant respectfully
disagrees with the Examiner’s interpretation of JOKINEN as it
applies to the claimed subject matter of dependent claim 6.
Even, arguendo, such an interpretation what is the, for example,
the “predetermined set of words to represent the coupon
information” in JOKINEN.
Appeal Br. 47.
The Examiner finds,
Jokinen explains it is advantageous to dynamically select one or
more words from a predetermined set of words and wherein the
message includes the one or more words because it provides
advertisers greater control over the targeted coupon message
being sent to the user (abstract, [0039], [0049]).
Final Act. 45.
We disagree with Appellant because we find that Jokinen at paragraph
49 explicitly discloses selecting a different coupon value based on a
specified budget, e.g., “Pizza Shop specifies a budget for this particular
promotion of $1,000.” As such, we find Jokinen’s causing a difference in
value of each coupon equates selection of one or more words from a
predetermined set of words because in Jokinen, each different coupon set
includes different content, and hence different words, which is what
selection of one or more words from a predetermined set of words entails.
CLAIMS 7, 8 AND 17, 18
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Representative claim 7 recites in pertinent part, “receiving a request
to validate the coupon information; and processing of the coupon
information for validation, redemption, or a combination thereof based, at
least in part, on the one or more messages” (emphasis added).
Appellant respectfully disagrees that, as best is
understood in the rejection, that the ‘codes’ of LIN disclosed the
claimed subject matter ‘one or more messages’ (claim 7, line 5)
{‘([0045] system processes the coupon information using the
message (e.g. code). . .’ (Final Office Action, pages 47-48).
For example, at paragraph [0022] of LIN ‘[cjoupon codes may,
in various implementations, comprise one or more
alphanumeric codes, barcodes, matrix codes, images, audio
and/or video codes, and/or the like.’
Appeal Br. 50-51.
The Examiner finds,
Lin further teaches processing of the coupon information for
validation, redemption, or a combination thereof based, at least
in part, on the one or more messages ([0045] system processes
the coupon information using the message (e.g. code) in order
to validate the coupon and allow it to be redeemed, [0022]-
[0024], [0036]). In other words, the ‘one or more messages’
comprises the coupon and associated coupon information (e.g.
coupon code). LIN teaches wherein the coupon is processed for
validation based, at least in part, on the one or more messages
(i.e. based, at least in part, on the coupon code portion of the
‘one or more messages’).
Answer 31.
We disagree with Appellant. We construe the term “based on” to
mean “as a result of.” Thus, because the Examiner is mapping the code to
the message specifically, the claim requirement is deemed met by virtue of
the operation of the message incorporating coupon information. See Answer
31.
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CLAIMS 9, 10, 19 AND 20
Representative claim 9 recites in pertinent part (emphasis added),
determining to terminate the pending establishment of the
communication session based, at least in part, on the
interaction with the at least one ring-back media file,
wherein the at least one ring-back media file is a ring-
back signal, and the at least one communication channel is a
telephony network configured to support the ring-back signal.
“Appellant respectfully disagrees that a user hanging up is the claimed
subject matter ‘the interaction with the at least one ring-back media file.’”
Appeal Br. 54.
We are unpersuaded by Appellant’s argument because it merely
repeats the Examiner’s findings. Against this backdrop, the Examiner has
made a specific finding of fact identifying that Manly discloses the claimed
limitation stating:
The Examiner finds:
Manly further discloses,
• determining to terminate the pending establishment of the
communication session based, at least in part, on the interaction
with the at least one ring-back media file ([0031]-[0032] user
may hang up the phone (an interaction with the media file) in
which case the communication session is terminated).
Final Act. 52. As the 35 U.S.C. § 132 statute itself instructs, the Examiner
must “notify the applicant,” “stating the reasons for such rejection,”
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of his application” —which
has been done here.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—20 under
35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1 and 11 under
35 U.S.C. § 112(a); the Examiner did not err in rejecting claims 1 and 11
under 35 U.S.C. § 112(b).
We conclude the Examiner did not err in rejecting claims 1—20 under
35 U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1—20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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