Ex Parte McKerlich et al

Patent Trial and Appeal Board

Aug 22, 2016

12482423 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/482,423 06/10/2009
25096 7590 08/24/2016
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Ian McKerlich
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
031419-8044.US02 7156
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN McKERLICH, WARREN McNEEL,
VENETIA ESPINOZA-DAWSON, MARVIN E. STOREY, and
JAMES S. ZERBE
Appeal 2016-000006
Application 12/482,423
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the rejection
of claims 1--42 which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-000006
Application 12/482,423
THE INVENTION
The Appellants' claimed invention is directed to sharing revenue
associated with third-party software applications operating on mobile
devices over a network operator's wireless network (Spec. i-f 7). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A system for sharing revenue between an application
provider associated with an application that operates on a
mobile device and a network operator that operates a wireless
telecommunications network that is utilized by the mobile
device, the system comprising:
memory storing computer-executable instructions; and
one or more processors that execute the stored instructions to
generate:
a monitoring module configured to monitor the operation of an
application that is created by an application provider and
resides on a mobile device, the mobile device utilizing a
wireless telecommunications network operated by a network
operator, the monitoring module:
measuring an impact on the wireless network by the
operation of the application,
assessing the operation of the application to identify one
or more services utilized during the operation of the
application, and
determining a revenue sharing arrangement between the
application provider and the network operator for
operation of the application on mobile devices, wherein
the revenue sharing arrangement is based on the
measured impact of the application on the wireless
network and a cost of the identified services utilized
during the operation of the application, wherein the cost
of the identified services is based on the complexity or
value of the identified services;
an audit module configured to:
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Application 12/482,423
assess the application and identify non-performance-
related features or consequences of the application that
impact the network operator or a user of the application
on a mobile device; and
modify the revenue sharing arrangement in accordance
with the identified non-performance-related features or
consequences; and
a reconciliation module configured to direct the distribution of
revenue associated with the application to the application
provider and the network provider in accordance with the
modified revenue sharing arrangement.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Snelgrove US 2003/0112933 Al June 19, 2003
Latona US 2005/0028188 Al Feb.3,2005
Burchfield US 2005/0102176 Al May 12, 2005
Cohrs US 2007/0074167 Al Mar. 29, 2007
l-f o;J 1 f'Tf"\UT TT'! ')()()7 /()1 h717L1 A 1 T11 hr 1 0 ')()()7
_.L..LlA-..LV_I_'-.J' yy '-...lk..J' ._,VV//V_I_V/ _I_ I I 11_.L VU-..Lj _.__,,,, ._,VV I
Young US 2007 /0299789 Al Dec. 27, 2007
Wing US 2008/0147789 Al June 19, 2008
Bhandari US 2008/0300974 Al Dec. 4, 2008
The following rejections are before us for review:
1. Claims 1--42 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1-6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young and Burchfield.
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Snelgrove.
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Application 12/482,423
4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Wing.
5. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Cohrs.
6. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Halcrow.
7. Claims 11, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Young, Burchfield, and Bhandari.
8. Claims 15, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Young and Burchfield.
9. Claims 16, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Young, Burchfield, and Latona.
10. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Snelgrove.
11. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Wing.
12. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Cohrs.
13. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Halcrow.
14. Claims 25-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Bhandari.
15. Claims 28-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young and Burchfield.
16. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Wing.
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Application 12/482,423
17. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Cohrs.
18. Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Halcrow.
19. Claims 36-38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Bhandari.
20. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young and Burchfield.
21. Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Wing.
22. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Cohrs.
23. Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Burchfield, and Halcrow.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
ANALYSIS
Rejections under 35 USC§ 101
The Examiner has rejected the claims under 35 U.S.C. § 101 as being
drawn to ineligible subject matter (Non-Final Act. 12-14). The Examiner
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/482,423
has determined that the claims are directed to an abstract idea of performing
cost analysis which determines value in order to share revenue between
participants (Non-Final Act. 13).
In contrast, the Appellants have argued that this rejection is improper
(Appeal Br. 11-23; Reply Br. 5-11).
We agree with the Examiner. Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty Ltd. v. CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014).
In judging whether claim 1 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., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
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. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id. at 2358.
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Here, the claim is directed to the abstract idea of sharing revenue
among parties based on the economic value of services provided. We next
consider whether additional elements transform the nature of the claim into a
patent-eligible application of the abstract idea, e.g., whether the claim does
more than simply instruct the practitioner to implement the abstract idea
over the Internet, using generic computer components. We conclude that it
does not. The recited system elements of claim 1 fail to transform the nature
of the claim as they are directed to generic computer structures for storing
and transferring information. For this reason, this rejection of claim 1 is
sustained. The Appellants have provided the same arguments for the
remaining claims, and the rejection of these claims is sustained as well.
Rejections under 35 USC§ 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the Examiner has not shown that the prior art discloses "wherein the cost of
the identified services is based on a complexity or value of the identified
services" as required by claim 1 (Appeal Br. 23-25). According to the
Appellants, "the Examiner cannot rely on Burchfield" because "it is directed
to physical services such as installing computer software, memory, and other
hardware components" (Appeal Br. 25-26). The Appellants also contend
that "the Examiner has failed to show a revenue sharing arrangement that
specifies a distribution of revenue between an application provider and a
network operator" (Appeal Br. 26).
The Examiner has however determined that the rejection is proper and
finds the disputed limitations in cited portions of Young and Burchfield
(Non-Final Act. 14--20; Ans. 8-15).
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Application 12/482,423
We agree with the Examiner. We first note that claim l does not
exclude "physical services" and the Appellants' arguments in this regard are
not commensurate with the scope of the claims. The Examiner finds the
"complexity or value" limitation of claim 1 in Burchfield in Figure 1, and in
paragraphs 6, 7, 11, 17, 18, 21-24, 39, 48, and 49 (Non-Final Act. 17-20;
Ans. 11-14). Burchfield discloses a process to determine pricing (e.g., fair
market price) for computer and network services by service providers under
a service contract (Burchfield i-fi-f l, 39, 48). As shown in Figure 1,
Burchfield discloses that the complexity of services is used to determine a
price adjustment. See also Burchfield i-fi-155----67.
The Examiner finds that Young discloses the claimed "revenue
sharing arrangement" (Non-Final Act. 15-17). Young discloses, in
paragraph 46, that "[a Jn application provider may provide a multitude of
applications to the content provider and in exchange may possibly have
negotiated a better bulk pricing rate for the bandwidth used by those
applications as compared to application providers whom only develop a
small number of applications." In other words, the content provider and the
application provider share revenue according to a negotiated pricing rate.
One of ordinary skill in the art would readily have inferred that the
pricing rate of Young should be adjusted based on the complexity of
services provided as taught by Burchfield to find a more appropriate pricing
rate and here such a modification would have been obvious. In KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Court stated that when
considering obviousness "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
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ordinary skill in the art would employ." Id. at 418. For these reasons the
rejection of claim 1 is sustained. Appellants' arguments are generally the
same for independent claims 15, 28, and 39 (Appeal Br. 23-26), and the
Examiner's rejection of these claims is sustained for the same reasons.
The Appellants have not provided separate arguments for dependent
claims 3-14, 18-27, 29, 31-38, and 40-42, and these rejections are
sustained for the same reasons set forth above.
Dependent claims 2, 17, and 30
The Appellants argue that the rejection of these claims is improper
because the Examiner has failed to show adjusting the cost of services based
on "non-performance-related features or consequences" as required by
dependent claims 2, 17, and 30. According to the Appellants, "the cited
sections of Young are again directed to bandwidth considerations" and not
"non-performance-related features or consequences" (Appeal Br. 28-30).
The Examiner has however determined that the rejection is proper and
finds the disputed limitations in Young (Ans. 15-20).
We agree with the Appellants. We have reviewed the cited portions
of Young and we see no disclosure of adjusting the cost of services based on
non-performance-related features; only bandwidth. The Examiner's findings
regarding adjusting the price of an application (charged to consumers) are
not relevant to the revenue sharing agreement between the content provider
and the application provider and the argued claim limitations have not been
shown in the prior art. Accordingly, the rejection of claims 2, 17, and 30 as
being unpatentable over Young and Burchfield is not sustained.
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CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 101.
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1, 3-16, 18-29, and 31--42 under 35 U.S.C.
§ 103(a).
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 2, 17, and 30 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision to reject claims 1--42 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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