Ex Parte Comstock et al

Patent Trial and Appeal Board

Oct 10, 2012

09871111 (P.T.A.B. Oct. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH D. COMSTOCK, YOON K. WONG,
JASON L. HERTZBERG, and STEVEN C. LEMKE
____________________

Appeal 2010-008297
Application 09/871,111
Technology Center 2600
____________________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
2-7, 9-13, 15-22, 29, 30, 32-34, 37-40, 43, 45-49, and 60-69. (App. Br. 2.)
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a system and method for crediting an
account associated with a network access node. Claim 7, reproduced below,
is illustrative of the claimed subject matter:
7. A method of crediting an account of a network access
node, comprising:

receiving a data signal wirelessly at the network access
node;

forwarding the data signal wirelessly to a network user
node;

providing account crediting information to an accounting
system, wherein the account crediting information represents a
credit to be recorded for an account associated with the network
access node; and

providing second account crediting information to the
accounting system, wherein the second account crediting
information represents a second credit to be recorded to an
account associated with an Internet service provider, wherein
the Internet service provider provides access to the Internet via
a fixed access point and the data signal is provided by the
Internet service provider;

wherein the network access node is a portable, handheld
device having a display.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bahl US 744,669 Nov. 17, 1903
Carlson US 2002/0071416 A1 June 13, 2002

REJECTIONS
Claims 2-7, 9, 10, 12, 13, 15-19, 21, 22, 29, 30, 32-34, 37, 38, 40, 43,
45-47, 49, and 60-69 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Carlson. (Ans. 3-25.)
Claims 11, 20, 39, and 48 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Carlson and Bahl. (Ans. 26.)

ANALYSIS
Claim 7
Appellants contend that Carlson does not teach the claim limitation:
"providing second account crediting information to the
accounting system, wherein the second account crediting
information represents a second credit to be recorded to an
account associated with an Internet service provider, wherein
the Internet service provider provides access to the Internet via
a fixed access point," as provided by independent claim 7.
(Reply Br. 2-3; See also App. Br. 9-11).
Appellants further contend that:
In Carlson, the second wireless device is also referred to as a
"connection provider" or "service provider." Carlson, ¶ ¶ 0033,
0043. The billing and payment negotiations in Carlson all
appear to be limited to negotiations between the first wireless
device and second wireless device. Carlson does not disclose
providing two different credits to an accounting system, as
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provided by claim 1. Rather, Carlson discloses that the second
wireless device may charge the first device for access to a
WAN. There is no accounting system disclosed or suggested in
Carlson that receives both a credit for an account associated
with the network access node and a credit for an account
associated with an Internet service provider, as provided by
claim 7.
(Reply Br. 3). While we agree with Appellants that Carlson does not
expressly identify to different credits, we find that Carlson clearly evidences
an accounting of the Internet Service Provider (ISP) usage by the first
wireless device. Additionally, we note that representative independent claim
7 is drafted as "a method of crediting an account . . . " and that there are no
details of the "accounting system" recited in the language of representative
independent claim 7 which would differentiate or materially limit the scope
of the method of claim 7. Therefore, we find Appellants' argument to be
unpersuasive of error in the Examiner's showing of obviousness based upon
the Carlson reference. We find the scope of independent claim 7 to be broad
enough to encompass a distributed accounting system which takes into
account the various usages by system components.
Appellants contend that paragraph [0052] of Carlson does not teach or
suggest providing two different credits to an accounting system as provided
in claim 7. (Reply Br. 3). We disagree with Appellants and find that
paragraph [0052] of the Carlson reference clearly evidences a suggestion of
crediting an accounting system for ISP usage. Therefore, Appellants’
argument is not persuasive of error in the Examiner's showing of
obviousness.
Appellants further contend that the Examiner's rejection is based upon
hindsight relying upon Appellants a disclosure in the rejection of
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independent claim 7. (Reply Br. 3-4; App. Br. 11). We disagree with
Appellants as discussed above where the Carlson reference clearly suggests
accounting for both usages.
Additionally, we note that both of the "providing…" steps in
representative independent claim 7 are directed to statements of intended use
and nonfunctional descriptive material where the content of the crediting
information and what the crediting information necessarily represents does
not functionally change the claimed method.
"[O]ur reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art." Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative) (citing In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004)), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006)). "[W]hen
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." Id. (citing In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983)).
"Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious." Ex parte Curry,
84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (citing In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004)) (Federal Circuit Appeal No. 2006-1003)
aff’d, Rule 36 (June 12, 2006).
Furthermore, "[a]n ] intended use or purpose usually will not limit
the scope of the claim because such statements usually do no more than
define a context in which the invention operates.'' Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
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2003). Although ''[s]uch statements often . . . appear in the claim's
preamble,'' In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of
intended use or purpose can appear elsewhere in a claim. Id.
Therefore, we do not find Appellants’ arguments to this claim
language to be persuasive of error in the Examiner's showing of obviousness
of claim 7 based upon the Carlson reference.
Claim 6
With respect to dependent claim 6, the Examiner maintains that:
"Carlson teaches providing account debiting information to the accounting
system, wherein the account debiting information represents a debit to be
recorded for an account associated with the network user node (i.e. the first
user device item 114 figure 1 -- see paragraphs 0051-0057 wherein the first
wireless device pays for the requested Internet Service by using credit card
number)." (Ans. 8-9; see generally Ans. 28). Appellants maintain that
"t]he feature of providing accounting information (e.g., credits and/or
debits) for three separate entities is completely missing from Carlson. Thus,
claim 6 is believed to be further patentable over Carlson." (App. Br. 12).
Yet, Appellants do not address the specific citations and merits of the
Examiner's rejection. Therefore, Appellants argument does not show error
in the Examiner's showing of obviousness of dependent claim 6.
Claim 12
Appellants contend that "Carlson does not teach or suggest 'wherein
the step of forwarding includes transmitting the data signal using a wireless
local area network (WLAN) protocol' ".
The Examiner maintains that:
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Appellants argue that Carlson does not teach using a wireless
local area network (brief page 12).
The Examiner notes that Applicants originally filed
specification at page 6 lines 1- 26 discloses wireless local area
network protocol is defined to be inclusive of IEEE 802.11
standard protocol, 802.5 token ring, carrier sense multiple
access, mesh networks, and personal area networks (PAN),
Bluetooth, and other ad hoc.
Carlson teaches wherein the step of forwarding includes
transmitting the data signal using a wireless local area network
(WLAN) protocol (see 802.11 in paragraph 0005, see figure 1
wherein portable handheld device (item 124 figure 1)
communicates wirelessly with Internet Service Provider).
Carlson teaches wherein the network access node (portable
handheld device (item 124 figure 1)) is further part of an ad hoc
network (see figure 1 and paragraph 0016 wherein hand-held
PDA or cell phone forms a shortrange network which reads on
ad-hoc, see paragraph 0032 and figure 1 wherein shortrange and
network is defined as a Personal Area Network).

(Answer 28-29). We agree with the Examiner and find that the wireless
ethernet protocol supports the use of 802.11 protocol to connect a laptop to a
Local Area Network (LAN) which clearly teaches and suggests of the use of
a WLAN. Therefore, Appellants' argument does not show error in the
Examiner's showing of obviousness of claim 12.
Claim 17
With respect to independent claim 17, Appellants present further
arguments in the Reply Brief at page 4, but Appellants grouped independent
claim 17 with representative claim 7 (relying on the same arguments) in the
principal Appeal Brief at page 13. Therefore, Appellants have waived these
later submitted arguments with respect to independent claim 17.
Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us
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nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367
(Fed. Cir. 2004) ("[I]t is important that the applicant challenging a decision
not be permitted to raise arguments on appeal that were not presented to the
Board.")
"[I]t is inappropriate for appellants to discuss in their reply brief
matters not raised in . . . the principal brief[ ]. Reply briefs are to be used to
reply to matter[s] raised in the brief of the appellee." Kaufman Co. v.
Lantech, Inc., 807 F.2d 970, 973 n* (Fed. Cir. 1986). "Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
an appellee but also entails the risk of an improvident or ill-advised opinion
on the legal issues tendered." McBride v. Merrell Dow & Pharms., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted).
There are cogent reasons for not permitting an appellant
to raise issues or arguments in a reply brief. Among them are
the unfairness to the appellee who does not have an opportunity
to respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief "would be
unfair to the court itself, which without the benefit of a
response from appellee to an appellant's late-blooming
argument, would run the risk 'of an improvident or ill-advised
opinion, given [the court's] dependence . . . on the adversarial
process for sharpening the issues for decision.'" Headrick [v.
Rockwell Int'l Corp.], 24 F.3d [1272,] 1278 [(10th Cir. 1994)],
(quoting Herbert v. Nat'l Academy of Sciences., 974 F.2d 192,
196 (D.C. Cir. 1992)).
Carbino v. West, 168 F.3d 32, 34-35 (Fed. Cir. 1999). "Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative); see also Optivus Tech., Inc. v. Ion Beam Applications S.A.,
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469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in
its opening brief . . . is waived.") (citations and quotation marks omitted).
Therefore, Appellants' argument does not show error in the
Examiner's showing of obviousness of claim 17.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting representative claims 6, 7, 12,
and 17 under obviousness.

DECISION
For the above reasons, the Examiner’s rejection of claims 2-7, 9-13,
15-22, 29, 30, 32-34, 37-40, 43, 45-49, and 60-69 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)(1)(iv).

AFFIRMED

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