Ex Parte Durand et al

Patent Trial and Appeal Board

Jul 31, 2014

12035523 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JULIAN DURAND and TOMMY ARNBERG
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Appeal 2012–002954
Application 12/035,5231
Technology Center 3600
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Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 2–37. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, “[t]he real party in interest is Nokia
Corporation” (App. Br. 1).
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Claimed Subject Matter
Claim 2, reproduced below, is illustrative of the appealed subject
matter.
2. A method comprising:
determining, by a processor, to provide an electronic
voucher to a mobile terminal using point to point
communication at a point of sale, wherein the electronic
voucher is configured to enable a first content to be rendered at
the mobile terminal;
receiving a session request from the mobile terminal via a
radio communications channel, the session request comprising
data included in the electronic voucher;
determining, by the processor, to authenticate the
electronic voucher; and
determining, by the processor, to enable the rendering of
the first content at the mobile terminal if a condition associated
with the mobile terminal satisfies a restriction condition
associated with the first content.

App. Br., Clm. App. B.

Rejections2
I. Claims 28–32 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.3

2 To facilitate our analysis, we set forth the rejections in a different order
than the order presented in the Examiner’s Answer.
3 Claims 2–13 also were rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter (Ans. 4–6). However, in response to an
Administrative Remand, mailed November 14, 2011, instructing the
Examiner to consider Appellants’ Amendment After Final filed May 9,
2011, the Examiner entered the Amendment After Final, in a Miscellaneous
Communication to Applicant, mailed December 1, 2011, wherein the
Examiner stated, on page 2, “that the amendment to claim 2 is sufficient to
overcome the rejection under U[.]S[.]C[.§] 101.” Thus, we understand the
rejection of claims 2–13 under 35 U.S.C. § 101 to be withdrawn.
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II. Claims 2–37 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
III. Claims 2–37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stefik (US 6,236,971 B1, iss. May 22, 2001) and Mäkipää
(US 6,394,341 B1, iss. May 28, 2002).
IV. Claims 14–25 are rejected under 35 U.S.C. § 102(b) as
anticipated by Stefik.

ANALYSIS
Rejection I
The Appellants do not present any argument in the Appeal Brief in
response to the Examiner’s rejection of claims 28–32 under 35 U.S.C. § 101,
and although the Appellants assert in the Reply Brief that “non-amended
independent claim 28 recites a method including the step of ‘receiving at a
mobile terminal,’ [that] clearly indicate[s] that the[] claim[] would be
directed to statutory subject matter,” those assertions are waived, as they
were not set forth in the Appeal Brief. See 37 C.F.R. § 41.37(c)(1)(vii)
(second sentence); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting
that an argument not first raised in the brief to the Board is waived on
appeal); Ex parte Atsuhisa Nakashima, 93 USPQ2d 1834, 17 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
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by the Examiner, absent a showing of good cause.”). We note that the
Appellants did not amend claims 28–32 in their Amendment After Final
filed May 9, 2011, in a manner similar to the amendments made at that time
to independent claim 2 to address the Examiner’s rejection under 35 U.S.C.
§ 101.
Therefore, in the absence of any reason why arguments were not made
earlier with respect to the Examiner’s rejection of claims 28–32 under
35 U.S.C. § 101, we summarily affirm the Examiner’s rejection of claims
28–32 under 35 U.S.C. § 101.

Rejection II
The Appellants argue that the rejection of claims 2–37 as being
indefinite is improper. App. Br. 8–9; Reply Br. 3.
The Examiner has determined that independent claims 2, and its
dependent claims, are indefinite because the “determining to provide” and
“determining to authenticate” steps, recited by claim 2, “do not positively
state a claim limitation[, and thus,] the scope of the claimed invention is
unclear.” Ans. 7, 14–15. The Examiner finds independent claims 14, 26,
28, and 33 contain similar limitations, and concludes that independent
claims 14, 26, 28, and 33, and their dependent claims are indefinite for the
same reasons. Ans. 6–7, 14–15.
We agree with the Appellants. Here, the alleged indefiniteness of the
independent claims raised by the Examiner at pages 6 through 7 of the
Answer are not issues of indefiniteness, but rather just directed to claim
breadth. So even though independent claims 2, 14, 26, 28, and 33 do not
recite what the “determining to provide” and “determining to authenticate”
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steps are based on, this is a matter of breadth, not indefiniteness. Merely
that a claim is broad does not mean that it is indefinite. See e.g., In re
Miller, 441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788
(CCPA 1970). Here, those skilled in the art would understand what is
claimed when the claim is read in light of the Specification.
For this reason, the Examiner’s rejection is not sustained.

Rejection III4
Claims 2, 4–8, 10, 11, 13, 14, 16–20, 22, 23, 25–28, 30, 31, 33, 35, and 36
We are not persuaded by the Appellants’ argument that a combination
of Stefik and Mäkipää fails to disclose or suggest “determining to provide an
electronic voucher to a mobile terminal using point to point communication
at a point of sale, wherein the electronic voucher is configured to enable a
first content to be rendered at the mobile terminal,” as recited by
independent claim 2, because Stefik does not teach or suggest a mobile
terminal and “merely describes the storage of digital works in repositories,
which enforce the usage rights of digital works.” App. Br. 12–14; Reply Br.
4–6.
Instead, we agree with the Examiner that the combination of Stefik
and Mäkipää discloses the argued limitation. Stefik is directed to a system
for controlling the distribution and use of digital works using digital tickets

4 The Appellants do not present any separate arguments for independent
claims 14, 26, 28, and 33, and dependent claims 4–8, 10, 11, 13, 16–20, 22,
23, 25, 27, 30, 31, 35, and 36, apart from the arguments presented for
independent claim 2. See App. Br. 15–16. Thus, we decide the appeal of
this rejection on the basis of independent claim 2, with respect to these
claims. Claims 4–8, 10, 11, 13, 14, 16–20, 22, 23, 25–28, 30, 31, 33, 35,
and 36 stand or fall with claim 2. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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(col. 4:7–8). The digital ticket disclosed in Stefik is an indicator that the
ticket holder is entitled to some specified usage right defining how a digital
work may be used or distributed (col. 4:8–14; see also col. 31:4–15). Stefik
discloses that transactions occur over any commercially available
communication channel between two repositories, where one repository acts
as a server and the other a platform for executing or viewing the digital work
(col. 26:24–38). Stefik also discloses that billing transactions are carried out
when all other conditions are satisfied, and a usage fee is required for
granting the request (col. 29:35–42).
Although Stefik does not explicitly disclose utilizing a mobile
terminal, we agree with the Examiner that the “mobile terminal” recited in
claim 2, reads on the hardware embodiment of the repository described in
Stefik (col. 14:5–25). See Ans. 17. We also note that the Examiner relies on
Mäkipää to teach different types of communication (e.g., low power wireless
communication, cellular) between a mobile terminal and a point of sale
system (col. 3:4–28, col. 9:7–18, col. 10:26–34). Thus, one of ordinary skill
in the art would appreciate that the combination of Stefik and Mäkipää
teaches, determining to provide an electronic voucher to a mobile terminal
using point to point communication at a point of sale, wherein the electronic
voucher, i.e., digital ticket, is configured to enable a first content, i.e., digital
work, to be rendered at the mobile terminal.
We also are unpersuaded by the Appellants’ argument that the
Examiner’s asserted combination is unsupported by any facts and based on
impermissible hindsight because Mäkipää does nothing to suggest the
introduction of its features into the system disclosed by Stefik. App. Br. 14;
Reply Br. 6. To the extent Appellants seek an explicit suggestion or
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motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). The Examiner has provided an articulated reasoning with rational
underpinning for why a person with ordinary skill in the art would modify
the digital works distribution system disclosed by Stefik to include the
different communication capabilities between a mobile terminal and a point
of sale system, as taught in Mäkipää. Ans. 10. Specifically, the Examiner
articulates a rationale based on being able to authenticate users of media.
See Ans. 10.
We agree with the Examiner and conclude that the proposed
modification of Stefik’s system to include Mäkipää’s various methods of
communication between a mobile terminal and a point of sale would have
been an obvious, predictable combination of familiar elements to allow
proper authentication of media on any type of system. In KSR, the Court
stated that when considering obviousness that “the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR 550 U.S. at 418. We
note that Appellants’ arguments do not address whether the modification
described by the Examiner is more than the predictable use of prior art
elements according to their established functions nor do they specifically
mention or contest the substance of the Examiner’s rationale, but rather
generally assert that the Examiner fails to provide the required “articulated
reasoning with some rational underpinnings.”
Based on the above, the Examiner’s rejection of independent claim 2
under 35 U.S.C. § 103(a), as unpatentable over Stefik and Mäkipää is
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sustained. Additionally, the Examiner’s rejection of claims 4–8, 10, 11, 13,
14, 16–20, 22, 23, 25–28, 30, 31, 33, 35, and 36, which were not separately
argued, is sustained.

Claims 3, 9, 12, 15, 21, 24, 29, 32, 34, and 37
The Appellants’ argument that the Examiner improperly relied on
Official Notice to address claims 3, 9, 12, 15, 21, 24, 29, 32, 34, and 37
(App. Br. 14–15; Reply Br. 7) is unpersuasive. The Appellants argue that
the Examiner “fails to provide any specific factual findings as to why one of
ordinary skill in the art would modify the teachings of Stefik . . . as alleged”
(App. Br. 15; Reply Br. 7); however, we can find no indication in this record
that Appellants have come forth with any information or argument that, on
its face, casts reasonable doubt regarding the justification of the Official
Notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971). “To adequately
traverse such a finding [of Official Notice], an applicant must specifically
point out the supposed errors in the [E]xaminer’s action, which would
include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” MPEP § 2144.03(C). See also 37
C.F.R. § 1.111(b); In re Chevenard, 139 F.2d 711, 713 (CCPA 1943). “If
applicant does not traverse the [E]xaminer’s assertion of [O]fficial [N]otice
or applicant’s traverse is not adequate, . . . the common knowledge or well-
known in the art statement is taken to be admitted prior art . . . .” MPEP
§ 2144.03(C).
Here, the Appellants have not set forth any information or arguments
as to why the Officially Noticed facts were not well-known. We note that
the Examiner provides Spagna (US 6,859,791 B1, iss. Feb. 22, 2005) to
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support the Examiner’s taking of Official Notice. Ans. 17. In particular, the
Examiner finds Spagna teaches techniques for determining the location of an
Internet user. Ans. 17. The Appellants do not address the Examiner’s
reliance on Spagna, but instead assert that they “do not agree that the
requisite basis for the asserted motivation has been established.” App. Br.
15; Reply Br. 7. However, the Appellants have not provided any persuasive
argument or reasoning as to why the Examiner has failed to provide the
requisite basis, and as such, the Appellants’ argument is unpersuasive to
show Examiner error.
Thus, the Examiner’s rejection of claims 3, 9, 12, 15, 21, 24, 29, 32,
34, and 37 under 35 U.S.C. § 103(a) as unpatentable over Stefik and
Mäkipää is sustained.

Rejection IV
We do not reach the rejection of claims 14–25, under 35 U.S.C.
§ 102(b) as anticipated by Stefik, because it is cumulative with respect to the
obviousness rejection.

DECISION
We summarily affirm the rejection of claims 28–32 under 35 U.S.C.
§ 101.
We reverse the rejection of claims 2–37 under 35 U.S.C. § 112,
second paragraph.
We affirm the rejection of claims 2–37 under 35 U.S.C. § 103(a).
We do not reach the rejection of claims 14–25 under 35 U.S.C.
§ 102(b).
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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)(1)(iv).

AFFIRMED

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