Ex Parte Bulleit et al

Board of Patent Appeals and Interferences

Mar 9, 2012

10858366 (B.P.A.I. Mar. 9, 2012)

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.
10/858,366 06/01/2004 Douglas A. Bulleit 9400-93 5297
39072 7590 03/09/2012
AT&T Legal Department - MB
Attn: 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
03/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte DOUGLAS A. BULLEIT and STANLEY K. YEATTS
___________

Appeal 2010-007026
Application 10/858,366
Technology Center 3600
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2010-007026
Application 10/858,366

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STATEMENT OF THE CASE
1

Douglas A. Bulleit and Stanley K. Yeatts (Appellants) seek review under
35 U.S.C. § 134(a) (2002) of a final rejection of claims 1-2, 4-16, 18-22, and
24-30, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).
The Appellants invented a system and method for managing Quality of
Service (QoS) in communications networks. Specification ¶ 0002.
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 7, which is reproduced below [bracketed matter and
some paragraphing added].
1. A network communication method comprising:
[1] displaying on a user device at least one link to at least one
sponsor site of at least one sponsor that subsidizes a higher Quality of
Service network connection compared to a standard Quality of Service
network connection in response to user selection of the subsidized higher
Quality of Service network connection at the user device; and
[2] linking to a sponsor site of a sponsor of the subsidized higher
Quality of Service network connection in response to user selection of a
corresponding link at the user device.

7. A method according to Claim 1 wherein the network comprises the
Internet, and wherein displaying on a user device comprises displaying a
series of links to a plurality of sponsored Web sites of a plurality of
sponsors that subsidize a higher Quality of Service network connection in
a persistent browser interface at the user device as the user device
navigates the Internet to a plurality of Web pages and that supercede
indicia of sponsorship that are associated with the plurality of Web pages.

1
Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 22, 2009) and Reply Brief (“Reply Br.,” filed April 28,
2010), and the Examiner’s Answer (“Ans.,” mailed April 13, 2010), and
Final Rejection (“Final Rej.,” mailed August 28, 2009).
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The Examiner relies upon the following prior art:
Cloonan US 2001/0044845 A1 Nov. 22, 2001
Mondragon US 2002/0103879 A1 Aug. 1, 2002
Haitsuka US 6,983,311 B1 Jan. 3, 2006

REJECTIONS
Claims 1-2, 4, 9-16, 18, 20-22, 24, and 28-30 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Cloonan and Mondragon.
Claims 5-8, 19, and 25-27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cloonan, Mondragon, and Haitsuka.

ISSUES
The issue of whether the Examiner erred in rejecting claims 1-2, 4, 9-
16, 18, 20-22, 24, and 28-30 under 35 U.S.C. § 103(a) as unpatentable over
Cloonan and Mondragon turns on whether the combination of Cloonan and
Mondragon teaches or suggests “subsidized higher Quality of Service
network connection,” “at least one sponsor,” “at least one sponsor site,” “at
least one link” to a sponsor site, “user selection of a [sponsor] link,” and
“linking to a sponsor site” and whether a person with ordinary skill in the art
would have been motivated to combine the cited references.
The issue of whether the Examiner erred in rejecting claims 5-8, 19,
and 25-27 under 35 U.S.C. § 103(a) as unpatentable over Cloonan,
Mondragon, and Haitsuka turns on whether Haitsuka describes “displaying a
series of links to a plurality of sponsored Web sites…in a persistent browser
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interface …that supersede indicia of sponsorship that are associated with the
plurality of Web pages.”

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Cloonan
01. Cloonan is directed to a method and apparatus for providing
user-changeable service level changes in a cable data system.
Cloonan ¶ 0001. A subscriber granted a relatively high-priority
data transfer rate will have his data carried across the system in
advance of, or sooner than, other subscribers having lower priority
service levels. Cloonan ¶ 0020. A subscriber that who wishes to
increase the service level priority can do so by customer-
originated requests to a service level/billing processor. Cloonan ¶
0020. A request to upgrade service is made to the cable head end
and the Cable Modem Termination System (CMTS) by the user’s
computer by the user logging into what appears to be a web page.
Cloonan ¶ 0025.
Mondragon
02. Mondragon is directed to a method of advertising on the Internet
where users of the Internet are provided with services and/or
applications free of charge in return for accepting a condition to
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receive advertisements from those entities providing the free
services and/or application. Mondragon ¶ 0002. Once a user has
access to the web site of an internet service provider (ISP), the
user is provided with a menu of services free of charge along with
a menu listing of those companies that are the sponsors of the free
services. Mondragon ¶ 0013. The user may access the web page
of the sponsor company, which also informs the users of all of the
services offered by the sponsoring company. Mondragon ¶ 0015.
Haitsuka
03. Haitsuka is directed to display advertisements to a user of online
services. Haitsuka 1:55-56. The display includes a client window
and a browser window. Haitsuka 7:35-38. The client window is
generated and controlled by the client application. Haitsuka 7:38-
40. The browser window is generated and controlled by the
browser application. Haitsuka 7:40-42.

ANALYSIS
Claims 1-2, 4, 9-16, 18, 20-22, 24, and 28-30 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cloonan and Mondragon
The Appellants first contend that Cloonan fails to describe a “subsidized
higher Quality of Service network connection,” “at least one sponsor,” “at
least one sponsor site,” “at least one link” to a sponsor site, “user selection
of a [sponsor] link,” and “linking to a sponsor site.” App. Br. 7-8. The
Appellants also contend that Mondragon fails to describe offering a
“subsidized higher Quality of Service network connection.” App. Br. 9.
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We disagree with the Appellants. The Examiner relied on Cloonan to
describe a system that allows a user to change quality of service levels and
relied on Mondragon to describe a sponsor company that subsidizes a
service or application. Ans. 3-4. As such, the Examiner’s rejection of a
“subsidized higher Quality of Service network connection” is based on the
combination of Cloonan and Mondragon. Therefore, the Appellants’
contention that Cloonan alone fails to describe limitations and Mondragon
alone fails to describe limitations does not persuade us of error on the part of
the Examiner because the Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Appellants contend that a person with ordinary skill in the art would
not have been motivated to combine the cited reference. App. Br. 8. The
Appellants specifically argue that Cloonan does not operate as a sponsorship
program and teaches against subsidizing services because Cloonan allows a
user to have lower costs by having a lower bandwidth service. App. Br. 7-8.
The Appellants further argue that introducing a sponsorship program to
Cloonan would fundamentally alter its principle of operation because
Cloonan relies on the subscribers’ ability to “order faster or slower internet
service on an as-needed basis.” App. Br. 8 and Reply Br. 2-3.
We disagree with the Appellants. The Examiner found that Cloonan and
Mondragon are both concerned with solving the same problem of providing
additional and better services to Internet users and a person with ordinary
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skill in the art would have been motivated to combine Cloonan and
Mondragon in order to increase revenue by providing subsidized services.
Ans. 15. We agree with the Examiner and accordingly adopt the Examiner’s
findings and conclusions as our own. Additionally, Cloonan does not
preclude providing subsidized services. While Cloonan’s system requires
subscribers to pay extra for priority service, there is nothing in Cloonan that
precludes a business model where priority service can be provided to
subscribers through sponsoring companies that would require subscribers to
agree to other terms. As such, we do not find the Appellants’ argument
persuasive.
Furthermore, we find no evidence that a person with ordinary skill in the
art would not have been motivated to modify Mondragon’s subsidized
services to include the higher priority internet service, as described by
Cloonan. The ordering of references in the rejection is insignificant in the
Examiner's obviousness determination. See In re Bush, 296 F.2d 491, 496
(CCPA 1961) (“[W]e deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B instead of B in
view of A, or to term one reference primary and the other secondary.”). As
such, we specifically note that a person with ordinary skill in the art would
have recognized to look to Cloonan from Mondragon in order to determine
additional services to provide to users and such a combination would have
yielded predictable results.
The Appellants additionally contend that the Examiner has failed to cite
to any passage in Cloonan and Mondragon that describes “wherein user
selection of the subsidized higher Quality of Service network connection is
performed by the higher Quality of Service network connection launching
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interface on the user interface display of the user device,” as per claims 9,
20, and 28. App. Br. 10. The Examiner found that Cloonan describes a user
interface display and the user selection of a higher QoS is performed by a
higher QoS launching interface. Ans. 17. The Examiner further found that
Mondragon further describes a user interface displaying subsidized services
and the user selection of the subsidized services is performed by a launching
interface. Ans. 17. The Appellants contend that the passages cited by the
Examiner only describe that a user is connected to a network and is viewing
a particular web page and therefore fail to describe a network connection
launching interface. Reply Br. 4.
We disagree with the Appellants. Cloonan describes a separate user
interface that appears to be a web page that is used to upgrade the user’s
service. FF 01. As such, the combination of Cloonan and Mondragon teach
or suggests the features of claims 9, 20, and 28.

Claims 5-8, 19, and 25-27 rejected under 35 U.S.C. § 103(a) as
unpatentable over Cloonan, Mondragon, and Haitsuka
The Appellants contend that the Examiner has failed to point to any
passage in Cloonan, Mondragon, and Haitsuka that describes the use of a
persistent web browser interface, as per claims 7-8, 19, and 27. App. Br. 9.
The Examiner found that Haitsuka describes displaying a series of links in a
persistent browser. Ans. 16. The Examiner specifically found that Haitsuka
describes indicia of sponsorship that is displayed in a persistent browser.
Ans. 16. The Appellants contend that Haitsuka fails to teach or suggest both
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displaying links in a persistent browser and displaying links that supersede
indicia of sponsorship associated with a Web page. Reply Br. 3.
We agree with the Appellants. As noted by the Appellants, claim 7
requires “displaying a series of links to a plurality of sponsored Web
sites…in a persistent browser interface …that supercede [sic] indicia of
sponsorship that are associated with the plurality of Web pages.” While
Haitsuka describes a client window that is independent of the application
browser and is controlled by the client application (FF 03), we find no
evidence that the client window is a persistent browser that supersedes
indicia of sponsorship of Web pages. The Examiner points out that in
Haitsuka Fig. 3, sponsor indicia “NetZero” 220 is in client window 230.
Ans. 16. However, the Examiner fails to provide any persuasive rationale or
evidence to illustrate how this description by Haitsuka teaches or suggests
“displaying a series of links to a plurality of sponsored Web sites…in a
persistent browser interface …that supercede [sic] indicia of sponsorship
that are associated with the plurality of Web pages.” As such, we do not
sustain the Examiner’s rejection of claim 7.
Claims 19 and 27 recite the same subject matter as claim 7 and claim 8
depends from claim 7. Therefore, we will not sustain the rejection of claims
8, 19, and 27.
The Appellants have not presented separate arguments in support of
claims 5-6 and 25-26. As such, we summarily sustain the Examiner’s
rejections of these claims.

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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-2, 4, 9-16, 18, 20-22, 24,
and 28-30 under 35 U.S.C. § 103(a) as unpatentable over Cloonan and
Mondragon.
The Examiner did not err in rejecting claims 5-6 and 25-26 under 35
U.S.C. § 103(a) as unpatentable over Cloonan, Mondragon, and Haitsuka.
The Examiner erred in rejecting claims 7-8, 19, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Cloonan, Mondragon, and Haitsuka.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-2, 4, 9-16, 18, 20-22, 24, and 28-30 under
35 U.S.C. § 103(a) as unpatentable over Cloonan and Mondragon is
sustained.
 The rejection of claims 5-6 and 25-26 under 35 U.S.C. § 103(a) as
unpatentable over Cloonan, Mondragon, and Haitsuka is sustained.
 The rejection of claims 7-8, 19, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Cloonan, Mondragon, and Haitsuka is not
sustained.

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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)(1)(iv) (2007).

AFFIRMED-IN-PART

ELD