10448436 (P.T.A.B. Mar. 21, 2013)

Ex Parte Koskinen et al

Patent Trial and Appeal BoardMar 21, 2013

10448436 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEALS BOARD ____________ Ex parte JUHA-PEKKA KOSKINEN and JUHA R. VALLINEN ____________ Appeal 2011-000810 Application 10/448,436 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-000810 Application 10/448,436 2 STATEMENT OF CASE This is a decision on rehearing in Appeal No. 2011-000810. We have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision. 37 C.F.R. § 41.52. ANALYSIS We found in our Decision that claims 1, 4-26, and 28-55 were properly rejected under 35 U.S.C. § 103(a) as unpatentable over Reith in view of Justice. Decision 6. First Issue – Justice Reference In the Request for Rehearing, the Appellants argue “there is no disclosure within Justice of online billing with respect to Business Week.” Request 1 (emphasis omitted). We disagree with Appellants because Justice discloses billing $2 per story “billed at each site visit”, and thus we find that such billing or charging occurs on line. Justice specifically uses the word “at” to specify where the billing event occurs, namely “at each site visit.” Justice, col. 6, ll. 43-50. We find that a person with ordinary skill in the art would understand that visiting a web site means that the visit is part of an on-line web based action in which a web page is visited/retrieved from a web based server and presented at the user computer resulting, in this case, with the billing occurrence. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that in making the obviousness determination one “can take account of the Appeal 2011-000810 Application 10/448,436 3 inferences and creative steps that a person of ordinary skill in the art would employ”). Second Issue -"a session" versus "one session" Appellants argue error because the claim language clearly identifies “a communication session” and references back to “said communication session” throughout such that only “one communication session” is claimed. Therefore, with only one communication session claimed, the “one communication session” recited in the arguments is commensurate with the scope of the independent claims. Request 2. We disagree with Appellants because nothing in the claim requires a “single” or “one” communication session. Rather, the claim only requires “a communication session”. The use of the indefinite article “a” here refers in an unspecified manner to the word “session” which it precedes. Furthermore, our Decision found that the ordinary and customary definition of the term “session” as defined by Merriam Webster’s Dictionary is: “a meeting or period devoted to a particular activity.” Decision 3 (FF 3). Since our Decision finds that a meeting or period devoted to a particular activity can be construed to include data exchanges over a period of time, for example, a protracted communication email session tied by a continuing subject matter string, the term “a communication session” is met by the billing method of the Reith/Justice combination. Appeal 2011-000810 Application 10/448,436 4 Third Issue - Combined first and second Issues Appellants here merge the issues presented at one and two above into a combined issue three stating: “The cited references, alone or in combination, fail to teach or suggest using both online and offline billing in a session ….” Request 2 (emphasis omitted)). Appellants’ combining of two otherwise singular points of error into one as presented here fails for the same reasons stated above addressing each issue singularly. Fourth Issue- Justice with regard to Categorization of Content Appellants assert error because “Justice fails to disclose categorizing content to online/offline charging based on the content.” Request 2. However, the Appellants’ arguments “fail from the outset because . . . they are not based on limitations appearing in the claims[]” (In re Self, 671 F.2d 1344, 1348 (CCPA 1982)), and are not commensurate with the broader scope of claim 1 which merely recites “categorizing, by the device, packets to the first and second pluralities based on their content.” This is not the same as what Appellants argue which implies that categorization occurs using online/offline charging as a metric rather than content. Even still, as the Decision found, Justice categorizes content as first content packets from the Wall St. Journal and categorizes content from Business Week as second content packets (Decision (FF 4)) which we find meets the claim requirement of categorizing, by the device, packets to the first and second pluralities based on their content. Appeal 2011-000810 Application 10/448,436 5 DECISION For the reasons above, we are not convinced that Appellants have shown with particularity points believed to have been misapprehended or overlooked by the Board in rendering its earlier decision. Accordingly, Appellants’ Request for Rehearing insofar as Appellants seek an establishment error in the Decision of the Board is denied. DENIED msc