Ex Parte Durand et alDownload PDFPatent Trial and Appeal BoardJul 31, 201412035523 (P.T.A.B. Jul. 31, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JULIAN DURAND and TOMMY ARNBERG ____________ Appeal 2012–002954 Application 12/035,5231 Technology Center 3600 ____________ 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). Appeal 2012–002954 Application 12/035,523 2 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. Appeal 2012–002954 Application 12/035,523 3 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 Appeal 2012–002954 Application 12/035,523 4 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” Appeal 2012–002954 Application 12/035,523 5 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). Appeal 2012–002954 Application 12/035,523 6 (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 Appeal 2012–002954 Application 12/035,523 7 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 Appeal 2012–002954 Application 12/035,523 8 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 Appeal 2012–002954 Application 12/035,523 9 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). Appeal 2012–002954 Application 12/035,523 10 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 Klh Copy with citationCopy as parenthetical citation