Ex Parte McKerlich et al

Patent Trial and Appeal Board

Aug 22, 2016

11971544 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111971,544 01109/2008
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.USOO 5086
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
Appeal2014-003334
Application 11/971,544
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 final
rejection of claims 1--4, 6-20, 22-25, 27-29, 31-33, 37--43, and 45---62
which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-003334
Application 11/971,544
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 6). 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:
a memory storing computer-executable instructions for
generating:
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, the services accessed
through the wireless network via an application
program interface (API), and
determining a revenue sharing arrangement that
specifies a distribution of revenue 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 the cost of the identified
services utilized during the operation of the
application, wherein the cost of the identified
services is based on a complexity or value of the
identified services; and
2
Appeal2014-003334
Application 11/971,544
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 revenue sharing arrangement; and
a processor for executing the computer-executable instructions
stored in the memory.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Berkowitz
Jennings
Netanel
Kawakami
Steele
Garcia
Young
Gilbertas
Pretlove
US 2002/0095330 Al
US 2002/0099842 Al
US 2003/0166398 Al
US 6,778,836 B2
US 2006/0200425 Al
US 2007 /0073608 Al
US 2007/0299789 Al
US 2008/0153422 Al
US 2008/0275971 Al
July 18, 2002
July 25, 2002
Sept. 4, 2003
Aug. 17, 2004
Sept. 7, 2006
Mar. 29, 2007
Dec. 27, 2007
June 26, 2008
Nov. 6, 2008
Computer Dictionary Second Edition, Microsoft Press (1994) (hereinafter
"Press").
PR Newswire, VeriSign Announces Streamlined Wireless Billing and OSS
System; speedSUITE Solution Unifies Access to Multiple Applications and
Databasess Reduces Operational Costs and Complexity for Carriers (2003)
(hereinafter "News").
The following rejections are before us for review:
1. Claims 1, 3, 4, 6, 7, 10, 11, 13, 15, and 61 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Young, Jennings, and Press.
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and News.
3
Appeal2014-003334
Application 11/971,544
3. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Gilbertas.
4. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Netanel.
5. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Pretlove.
6. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Garcia.
7. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Steele.
8. Claims 17, 19, 20, 22, 23, 27, 29, 31, 32, and 62 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Young, Jennings, and Press.
9. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and News.
10. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Gilbertas.
11. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Netanel.
12. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Pretlove.
13. Claims 33, 37, 38, 41, 43, 45, and 46 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Young, Jennings, Press, and Berkowitz.
14. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, Berkowitz, and Gilbertas.
15. Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, Berkowitz, and Netanel.
4
Appeal2014-003334
Application 11/971,544
16. Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, Berkowitz, and Pretlove.
17. Claims 47--49, 51, 52, 55, 57, and 59 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Young, Jennings, and Press.
18. Claim 50 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Kawakami.
19. Claim 53 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Gilbertas.
20. Claim 54 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Netanel.
21. Claim 56 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Pretlove.
22. Claim 58 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Garcia.
23. Claim 60 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Young, Jennings, Press, and Steele.
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
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).
5
Appeal2014-003334
Application 11/971,544
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
Young does not disclose "wherein the cost of the identified services is based
on a complexity or value of the identified service," as required by claim 1
(Appeal Br. 11-13; Reply Br. 2-3).
The Examiner has, however, determined that the cited claim limitation
is disclosed by Young at paragraphs 31, 32, 43--46, 48, and 56, (Final Act. 5;
Ans. 2-3) and Jennings at paragraphs 6, 7, 8, 14, 18, 20, 23, 25, 38, 42, 43,
48, 191, 231, 232, and 323 (Final Act. 6; Ans. 4--5).
We agree with the Appellants.
Here, claim 1 requires determining revenue sharing based on two
distinct parameters ( 1) "the measured impact of the application on the
wireless network" and (2) "the cost of the identified services ... based on a
complexity or value of the identified services" (Appeal Br. 28, Claims App).
Consistent with the language of claim 1, the Specification distinguishes
between application impact, which relates to the amount of network usage
(e.g., bandwidth) (Spec. i-f 22), and complexity and/or value of the services,
which relates to the type of network services used (Spec., i-f 25).
We have reviewed the cited portions of Young and Jennings, and we
do not see any disclosure of revenue sharing based on a complexity or value
of the services used by an application. Young discloses cost allocation
based on bandwidth consumption, including specific pricing structures (e.g.,
bulk pricing) for individual application providers (see, e.g., Young i-f 46). In
other words, some application providers may pay less than others for
network bandwidth consumption, which supports the Examiner's findings
with respect to the claimed application impact, but not with respect to the
6
Appeal2014-003334
Application 11/971,544
claimed "complexity or value" of services. The Examiner also finds that
Jennings discloses that real-time media applications are typically resource
(e.g., bandwidth) intensive (Jennings i-f 6), but this finding relates to
application impact and not to service "complexity or value." The Examiner
also points to paragraph 48 of Jennings, which discloses revenue sharing
between two streaming media networks "based on what the viewer
receives," but this relates to revenue sharing based on ownership of the
media content viewed by a user, not service type. So, although Young
discloses revenue sharing based on application impact, and Jennings
discloses revenue sharing based on media ownership, we see no disclosure
of a revenue sharing determination based on "the cost of the identified
services utilized during the operation of the application, wherein the cost of
the identified services is based on a complexity or value of the identified
services" as claimed. For these reasons, the rejection of claim 1 and its
dependent claims 2--4, and 6-16 is not sustained.
Independent claims 1 7, 3 3, and 4 7 contain similar limitations, and the
rejections of claims 17, 33, and 47 suffer from the same deficiency as the
rejection of claim 1. Therefore, the rejections of claims 1 7, 3 3, and 4 7 and
their dependent claims 18-20, 22-25, 27-29, 31, 32, 37--43, 45, 46, and 48-
62 are not sustained for the same reasons.
CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.
7
Appeal2014-003334
Application 11/971,544
DECISION
The Examiner's rejections of claims 1--4, 6-20, 22-25, 27-29, 31-33,
37--43, and 45-62 are reversed.
REVERSED
8