Ex Parte Chen et al

Patent Trial and Appeal Board

Jun 22, 2017

13009976 (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.
13/009,976 01/20/2011 Xuming Chen 20100690 1817
7590 06/26/201725537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
HUANG, TSAN-YU J
ART UNIT PAPER NUMBER
3685
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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XUMING CHEN, LINDSAY NOTWELL,
PHILLIP A. RITTER, BARRY F. HOFFNER,
IMTIYAZ SHAIKH, SERGEI KARPOV,
HO YIN CHEUK, JAVIER FERRO,
and JOHN C. POWELL
Appeal 2015-003536
Application 13/009,976
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’
Final Rejection of claims 1—14 and 16—20.2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
1 Appellants identify Verizon Communications Inc. and its subsidiaries as
the real party in interest (Appeal Br. 3).
2 Claim 15 has been canceled.
Appeal 2015-003536
Application 13/009,976
Claim 1 is illustrative:
1. A method performed by a network device, the method
comprising:
receiving, at the network device, a request for a service
or an application from a user device associated with a current
service plan for a customer;
determining, by the network device, a type of service or a
type of application;
establishing, by the network device, a communication
session with the user device for providing, under the current
service plan, access to the service based on a service usage limit
or the application based on an application delivery limit;
performing, during the communication session, real-time
tracking of a current usage of the service or the application
based on the type of service or the type of application;
determining, during the communication session and
based on the real-time tracking, that the current usage is
approaching the service usage limit or the current usage of the
application is approaching the application delivery limit;
identifying, during the communication session and based
on the approaching limit, one or more recommendations
pertaining to service control options for real-time control of
further access to the service or the application under the current
service plan;
providing, via a user interface during the communication
session, the one or more recommendations to the customer via
the user device; and
receiving, during the communication session and via the
user interface in response to the one or more recommendations,
customer changes to or configuration of the current service plan
with respect to one or more of:
location-specific delivery or usage controls,
time of day-specific or day of week-specific delivery or
usage controls,
content-specific delivery or usage controls, or
party-specific delivery or usage controls.
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Application 13/009,976
Appellants appeal the following rejections3:
1. Claims 1—8 under 35U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1, 9, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Raleigh (US 2010/0188995 A1 (July 29, 2010)) and
Phillips (US 2011/0208668 A1 (Aug. 25, 2011)).
3. Claims 2, 3, 6, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Raleigh, Phillips, and Thompson (US 2002/0154751 A1
(Oct. 24, 2002)).
4. Claims 4, 5, 7, 8, 10, 11, 14, and 18—20, under 35 U.S.C.
§ 103(a) as unpatentable over Raleigh, Phillips, and Edwards (US
2008/0052206 A1 (Feb. 28, 2008)).
5. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Raleigh, Phillips, and Savolainen (US 2013/0078985 A1 (Mar. 28,
2013)).
ISSUE
Did the Examiner err in rejecting the claims under 35 U.S.C. § 101
because the Examiner has failed to set forth the requisite analysis, the claims
includes meaningful limitations rather than merely an abstract idea and
because the claimed network device cannot reasonably be interpreted as
mere software?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 103(a)
because the prior art does not disclose establishing a communication session
3 The rejections of claims 1—8 under 35 U.S.C. § 112, second paragraph, and
claims 9—14 and 16—20 under 35 U.S.C. § 102(e) have been withdrawn
(Ans. 2).
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Application 13/009,976
with the user device under the current service plan and providing, via a user
interface during the communication session, one or more recommendations?
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner held that the claims are directed to the abstract idea of
providing a service upon request, monitoring usage, and based on the
monitoring, recommending changes to services. The Appellants argue that
the Examiner failed to establish a prima facie case of abstractness.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77—78 (2012)).
In accordance with that framework, we first determine whether the claim is
“directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
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Application 13/009,976
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.8, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
In this case, the Examiner holds that independent claim 1 is directed
to the abstract idea of providing a service upon request, monitoring usage
and based on the monitoring, recommending changes to the service (Ans. 3).
Appellants do not specifically challenge this holding. Rather, the Appellants
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Application 13/009,976
argue that the Examiner has failed to set forth the requisite analysis needed
to establish that the claims are directed to an abstract idea. We do not agree.
Regarding step 1 of Alice, we conclude that the Examiner’s statement,
which Appellants acknowledge to have read, is sufficient to place Appellants
on notice as to step 1 of Alice as required under 35 U.S.C. § 132. Further,
Appellants did not respond to the rejection by asserting that they did not
understand the Examiner’s rejection. Instead, Appellants argue that the
Examiner has not provided the requisite analysis. See In re Jung, 637 F.3d
1356 (Fed. Cir. 2011). On tl re issue of prima facie notice, particularly to
anticipation but also generally, our reviewing court was clear in Jung that:
There has never been a requirement for an examiner to
make an on-the-record claim construction of every term in
every rejected claim and to explain every possible difference
between the prior art and the claimed invention in order to
make out a prima facie rejection. . . . “[Section 132] does not
mandate that in order to establish prima facie anticipation, the
PTO must explicitly preempt every possible response to a
section 102 rejection. Section 132 merely ensures that an
applicant at least be informed of the broad statutory basis for
the rejection of his claims, so that he may determine what the
issues are on which he can or should produce evidence.”
Chester [v. Miller], 906 F.2d [1574,] 1578 [(Fed. Cir. 1990)]
(internal citation omitted). As discussed above, all that is
required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of § 132. As the 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 the propriety of continuing
prosecution of his application.” 35 U.S.C. § 132.
637 F.3d at 1363.
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Examiner’s discussion was more than sufficient to meet this
burden as to Alice step 1.
In our view, independent method claim 1, based on its express
limitations, is directed to providing recommendations to a user for further
use of the service when the user reaches a service usage limit. The
Specification discloses that providers provide various services to users based
on a pre-paid pricing scheme (Specification 11). A customer pays a fee for
a service that may allow the customer limited use of the service and once the
customer approaches the limit, the user is provided recommendations for
further access {id.). The idea of tracking a customer’s usage of a service and
notifying the customer of options for continued usage when the customer
approaches the usage limit is a fundamental economic practice. For
example, it has long been the practice of notifying a user of a public
telephone that the minutes paid for is about to be reached and prompting the
user, during the conversation, to insert more corns if the user wishes to
continue the phone call. Therefore, we agree with the Examiner that the
claims are directed to an abstract idea.
In regard to the second step of the Alice analysis, we are not
persuaded of error on the part of the Examiner by Appellants’ argument that
the claims include meaningful limitations rather than merely an abstract
idea. The Appellants argue that the limitations of receiving at the network
device a request for a service or an application from a user device associated
with a current service plan for a customer are meaningful limitations rather
than merely an abstract idea (Appeal Brief. 12).
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The second step of Alice requires that we determine whether the claim
must include an element or a combination of elements that amounts to
significantly more than the abstract idea itself.
We find that nothing in claim 1, nor in dependent method claims 2—8,
which purports to improve computer functioning or “effect an improvement
in any other technology or technical field.” Alice, 134 S. Ct. at 2359. Nor
do the claims solve a problem unique to the Internet. See DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). The claims
also are not adequately tied to “a particular machine or apparatus.” Bilski,
561 U.S. at 601 (2010). As noted by the Examiner, independent claim 1
appears to be “no more than a mere instruction to apply the abstract idea on
a computer” (Ans. 3).
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain this rejection as it is directed to claims 2—8
because these claims stand or fall with claim 1 (Appeal Br. 13).
Rejections under 35 U.S.C. § 103(a)
The Appellants argue that neither of the relied on references discloses
establishing a communication session with the user device under the current
service plan, and providing via a user interface during the communication
session one or more recommendations. In the Final Rejection, the Examiner
relies on Phillips at paragraphs 96, 99, and 104 (Final Act. 10). In the
Answer, the Examiner additionally relies on Raleigh at paragraphs 71—73 for
teaching a network establishing a communication session with a subscriber
device and providing access to a service based on a service plan. What is
missing in these findings is a finding that a recommendation is provided
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during a communication session under a current service plan as required by
claim 1. In this regard, we find that Phillips teaches in paragraph 96 that the
recommendation server receives a service request from a user, in paragraph
99 that the recommendation server provides a service, and in paragraph 104
that the recommendation is based on certain factors such as average data
transfer rate and coverage area. There is no disclosure that this
recommendation is done during a communication session under a current
service plan. We find that Raleigh at paragraphs 71—73 discloses that in
keeping with the needs of users and communications services there is a need
to more deeply manage levels of services and provide new service plans
tailored to new device usage models. There is no disclosure in the relied on
portions of Phillips or Raleigh of providing a recommendation during a
communication session under a current service plan. Therefore, we will not
sustain the rejection as it is directed at claim 1 and claims 2—8 dependent
therefrom.
We will also not sustain the rejections of the remaining claims
because each of these claims contain similar subject matter
DECISION
We affirm the Examiner’s rejection of claims 1—8 under 35 U.S.C.
§101.
We reverse the Examiner’s rejections of claims 1—14 and 16—20 under
35 U.S.C. § 103(a).
ORDER
AFFIRMED-IN-PART
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