Ex Parte Morris

Board of Patent Appeals and Interferences

Aug 22, 2012

10845693 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/845,693 05/13/2004 Robert P. Morris I224/US 9302
49278 7590 08/23/2012
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
TODD, GREGORY G
ART UNIT PAPER NUMBER
2457
MAIL DATE DELIVERY MODE
08/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT P. MORRIS
____________
Appeal 2010-002502
Application 10/845,693
Technology Center 2400
____________

Before KALYAN K. DESHPANDE, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-26. Br. 5.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse and enter a new ground of rejection.
Appellant’s Invention
Appellant invented a method, computer readable medium, and system
for associating a portable electronic device with an existing service account
with minimal user input on the device. If the device is not associated with
either a gateway or temporary account, a gateway server creates a temporary
account for the device. When the gateway server receives an association of
the device to an existing account with a service site, the gateway server
converts the temporary account to a gateway account associated with the
device and the existing account, and transfers any data from the temporary
account to the existing account. According to Appellant, the claimed
invention allows the portable electronic device to use certain services
without first requiring the user to associate the device to an existing account.
That is, the user need not enter addressing or authentication information on
the device to access the service, but rather can enter such information from
an input friendly device. Abstract.
Illustrative Claim
1. A method for associating a portable electronic
device with an existing account associated with a service
provided by a service site, comprising:

1 All references to the Brief are to the Brief filed March, 19, 2009, which
replaced the Briefs filed February 13, 2009, August 22, 2008, and August 6,
2008.
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connecting the portable electronic device to a gateway
server;
creating a temporary account usable by the portable
electronic device for the service, the temporary account created
by the gateway server when the portable electronic device is not
associated with the existing account, regardless of the existence
of the existing account;
receiving an association of the portable electronic device
to the existing account associated with the service by the
gateway server; and
converting the temporary account to a gateway account
that associates the portable electronic device and the existing
account.

Prior Art Relied Upon
Ertel US 2004/0116115 A1 June 17, 2004
(filed Dec. 5, 2003)
Mohsenin US 2005/0075895 A1 Apr. 7, 2005
(filed Oct. 6, 2003)

Rejections on Appeal2
Claims 1, 13, and 25 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Ans. 3.3

2 The Examiner withdrew the objection to the Specification as failing to
provide proper antecedent basis for the claimed subject matter—namely
creating a temporary account regardless of the existence of the existing
account. Ans. 2.
3 We note that by virtue of their dependency to independent claims 1, 13,
and 25, claims 2-12, 14-24, and 26 incorporate by reference the same
disputed claim feature—“regardless of the existence of the existing
account.” As a result, we will treat the Examiner’s incorrect statement of the
rejection as a typographical error and, therefore, presume that the Examiner
intended to reject claims 1-26 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
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Claims 1-26 stand rejected under 35 U.S.C. § 112, second paragraph
for failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention. Ans. 3-5.
Claims 1-5, 7-17, and 19-26 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Mohsenin. Ans. 5-11.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mohsenin and Ertel. Ans. 11-12.
Examiner’s Findings and Conclusions
1. The Examiner finds that upon reviewing Appellant’s Figure 2
and the accompanying description, there is always an existing account and,
therefore, the claimed phrase “regardless of the existence of the existing
account” recited in independent claims 1, 13, and 25 is not supported by the
Specification. Ans. 13. Therefore, the Examiner finds that Appellant’s
disclosure does not comply with the written description requirement under
35 U.S.C. § 112, first paragraph. Id.
2. The Examiner finds that since independent claim 1 recites “the
portable electronic device is not associated with the existing account,” and
then recites “an association of the portable electronic device to the existing
account[,]” it is unclear how the device can and cannot be simultaneously
associated with the existing account. Ans. 4. Therefore, the Examiner finds
that independent claims 1, 13, and 25 are indefinite under 35 U.S.C. § 112,
second paragraph. Id.
3. The Examiner finds that Mohsenin’s disclosure of creating a
temporary account for a device using the device’s unique identification
information, in conjunction with reconciling an existing account with the
temporary account if it is determined that the user has an existing account,
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describes creating the temporary account regardless of the existence of an
existing account, as required by independent claims 1, 13, and 25. Ans. 15
(citing ¶¶ [0024] and [0028]).
Appellant’s Contentions
1. Appellant contends that support for “regardless of the existence
of the existing account” recited in independent claims 1, 13, and 25 can be
found in Appellant’s Figure 2 and its accompanying description in the
Specification. Br. 14. Appellant argues that the determination as to whether
the device is associated with an existing account is only made after the
temporary account has been created. Br. 14-15 (citing Fig. 2—blocks 204
and 207). Therefore, Appellant asserts that since the temporary account is
clearly created regardless of the existence of the existing account,
independent claims 1, 13, and 25 comply with the written description
requirement under 35 U.S.C. § 112, first paragraph. Br. 15.
2. Appellant disagrees with the Examiner’s position that “it is
unclear how the device can and cannot simultaneously be associated with the
existing account” because there is no requirement in the claims that the
device simultaneously be associated and not associated with the existing
account. Br. 15. Appellant reiterates that the temporary account is created
prior to receiving the association of the portable electronic device to the
existing account. Id. Therefore, Appellant alleges that independent claims
1, 13, and 25 are not indefinite under 35 U.S.C. § 112, second paragraph.
Br. 15-16.
3. Appellant contends that Mohsenin does not disclose creating a
temporary account useable by the portable electronic device for the service
regardless of the existence of the existing account, as required by
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independent claims 1, 13, and 25. Br. 16. Appellant argues that Mohsenin
only describes creating a temporary account for using a mobile photo service
if an account for using the mobile photo service does not exist. Br. 16-17.
Further, Appellant alleges that Mohsenin’s paragraphs [0024] and [0028]
describe different events that occur at different times for different purposes.
Br. 17. Appellant asserts that Mohsenin’s paragraph 24 is directed to
creating a temporary account if no account exists, whereas Mohsenin’s
paragraph 28 describes what occurs when trying to view the images
previously uploaded. Id.

II. ISSUES
1. Did the Examiner err in finding that claims 1-26 fail to comply
with the written description requirement? In particular, the issue turns on
whether Appellant’s original disclosure supports “regardless of the existence
of the existing account[,]” as recited in independent claims 1, 13, and 25.
2. Did the Examiner err in concluding that claims 1-26 are
indefinite? In particular, the issue turns on whether an ordinarily skilled
artisan, having read Appellant’s Specification, would be apprised of the
scope of “the temporary account created by the gateway server when the
portable electronic device is not associated with the existing account,
regardless of the existence of the existing account[,]” and “receiving an
association of the portable electronic device to the existing account [. . .][,]”
as recited in independent claims 1 and 13, and similarly recited in
independent claim 25.
3. Did the Examiner err in finding that Mohsenin describes
“creating a temporary account usable by the portable electronic device for
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the service [. . .] regardless of the existence of the existing account[,]” as
recited in independent claims 1 and 13, and similarly recited in independent
claim 25?

III. ANALYSIS
35 U.S.C. § 112, First Paragraph—Written Description
Claims 1, 13, and 25
We discern error in the Examiner’s written description rejection of
independent claims 1, 13, and 25, which recite, in relevant part, “regardless
of the existence of the existing account[.]”
We begin our analysis by first looking to Appellant’s Figure 2 and the
accompanying description in the Specification. Appellant’s Figure 2
illustrates a method for associating a portable electronic device with an
existing service account with minimal user input on the device. Spec.
¶¶ [0008] and [0015]. After the portable electronic device connects to the
gateway server (step 201), the gateway server then determines if the device
is associated with either a gateway account (step 202) or a temporary
account (step 203). Spec. ¶¶ [0015-0016]. If the device is not associated
with either a gateway or temporary account, the gateway server creates a
temporary account for the device (step 204). Spec. ¶ [0016]. At some time
later, the user associates the device with an existing account with the service
site (step 207). Spec. ¶ [0017]. This association is then communicated to
the gateway server (step 208). Id. Alternatively, the user can first create a
new account with the service site, and then associate the device with this
newly created account. Spec. ¶ [0017].
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While the Specification does not explicitly describe creating a
temporary account regardless of the existence of the existing account, we
find that an ordinarily skilled artisan4 would have readily ascertained from
Figure 2 and the accompanying description (see Spec. ¶¶ [0015-0017]) that
the determination as to whether a device is associated with an existing
account is only made after the creation of the temporary account. Put
another way, we find that an ordinarily skilled would have understood that
the temporary account is created regardless of a pre-existing account. Thus,
we find that Appellant’s original disclosure supports the claim limitation of
“regardless of the existence of the existing account[,]” as recited in
independent claims 1, 13, and 25. Therefore, we will not sustain the
Examiner’s rejection of independent claims 1, 13, and 25 as failing to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph.

4 “To fulfill the written description requirement [under 35 U.S.C. § 112], the
patent specification must describe an invention in sufficient detail that one
skilled in the art can clearly conclude that the inventor invented what is
claimed.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967-968 (Fed.
Cir. 2006) (quoting Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352,
1364 (Fed. Cir. 2003)). Our reviewing court has cautioned, however, that
“[t]he disclosure as originally filed does not … have to provide in haec
verba support for the claimed subject matter at issue.” Cordis Corp., 339
F.3d at 1364 (internal citation omitted). “Although [the applicant] does not
have to describe exactly the subject matter claimed, the description must
clearly allow persons of ordinary skill in the art to recognize that [he or she]
invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989) (citations omitted). Put another way, “the applicant must … convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
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Claims 2-12, 14-24, and 26
Since both Appellant’s Figures 2 and the accompanying description
support the disputed claim limitation set forth supra, we cannot sustain the
Examiner’s rejection of dependent claims 2-12, 14-24, and 26 as failing to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph.
35 U.S.C. § 112, Second Paragraph Rejection
Claims 1, 13, and 25
We discern error in the Examiner’s indefiniteness rejection of
independent claims 1 and 13, which recite, in relevant part, “the temporary
account created by the gateway server when the portable electronic device is
not associated with the existing account, regardless of the existence of the
existing account[,]” and “receiving an association of the portable electronic
device to the existing account [. . .][.]” We also do not discern error in the
Examiner’s indefiniteness rejection of independent claim 25, which recites
similar claim limitations.
At the outset, we agree with Appellant that there is no requirement in
independent claims 1, 13, and 25 that the portable electronic device be
simultaneously associated and not associated with the existing account. See
Br. 15 (emphasis added). The Examiner’s stated position with respect to the
indefiniteness rejection—namely the simultaneous association (see Ans.
4)—is not commensurate in scope with the claims. Nonetheless, in light of
our contextual review of Appellant’s Specification set forth supra, we find
that an ordinarily skilled artisan5 would have been apprised of the scope of

5 A claim is indefinite if, when read in light of the specification, it does not
reasonably apprise those skilled in the art of the scope of the invention. See
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the disputed method steps. That is, we find that an ordinarily skilled artisan
would have readily appreciated that the claimed invention first creates a
temporary account for the portable electronic device regardless if an account
exists before the portable electronic device is associated with any pre-
existing account. As a result, we find that an ordinarily skilled artisan would
be able to interpret the metes and bounds of these disputed method steps so
as to understand how to avoid infringement. Therefore, we will not sustain
the Examiner’s rejection of independent claims 1, 13, and 25 as being
indefinite under 35 U.S.C. § 112, second paragraph.
Claims 2-12, 14-24, and 26
Since an ordinarily skilled artisan would have been apprised of the
scope of the disputed method steps recited in independent claims 1, 13, and
25, we cannot sustain the Examiner’s rejection of dependent claims 2-12,
14-24, and 26 as being indefinite under 35 U.S.C. § 112, second paragraph.

Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir.
2003). In particular, our reviewing court held that the claim as a whole must
be considered to determine whether the claim apprises one of ordinary skill
in the art of its scope, and therefore serves the notice function required by 35
U.S.C. § 112, second paragraph, by providing clear warning to others as to
what constitutes the infringement of the patent. Solomon v. Kimberly-Clark
Corp., 216 F.3d 1372, 1379 (Fed. Cir 2000). If the language of the claim is
such that a person of ordinary skill in the art could not interpret the metes
and bounds of the claims so as to understand how to avoid infringement, a
rejection of the claim under 35 U.S.C. § 112, second paragraph, is deemed
appropriate. Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470
(Fed. Cir. 1993). During prosecution, the threshold standard of ambiguity
for indefiniteness is lower than it might be during litigation of an issued
patent. Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (BPAI 2008)
(precedential).
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35 U.S.C. § 102(e) Rejection—Mohsenin
Claim 1, 13, and 25
Based on the record before us, we discern error in the Examiner’s
anticipation rejection of independent claims 1 and 13, which recite, inter
alia, “creating a temporary account usable by the portable electronic device
for the service [. . .] regardless of the existence of the existing account[.]”
We also discern error in the Examiner’s anticipation rejection of
independent claim 25, which recites a similar claim limitation.
We find that the Examiner improperly relies upon two mutually
exclusive embodiments in Mohsenin to describe the disputed claim
limitation. See Ans. 15. Mohsenin discloses two embodiments—the first
embodiment is directed to creating a temporary account with an image
service provider if an account does not already exist (see ¶ [0024]), whereas
the second embodiment is directed to reconciling an existing account with a
temporary account such that a user, at a later time, can access the
downloaded images at the image service provider using the Internet (see
¶ [0028]). The Examiner’s reference to the disparate features within
Mohsenin’s mutually exclusive embodiments falls short of proving that such
features are necessarily used together, let alone that they collectively meet
the disputed claim limitation. For anticipation, Mohsenin “must not only
disclose all elements of the claim within the four corners of the document,
but must also disclose those elements arranged as in the claim”—which it
does not. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed.
Cir. 2008) (citation and internal quotation marks omitted). See also In re
Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must
clearly and unequivocally disclose the claimed [invention] or direct those
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skilled in the art to the [invention] without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference.”).
Since the Examiner improperly combines disparate features from two
mutually exclusive embodiments in Mohsenin to describe the disputed claim
limitation, we need not reach the merits of Appellant’s other arguments. It
follows that the Examiner has erred in finding that Mohsenin anticipates
independent claims 1, 13, and 25.
Claims 2-5, 7-12, 14-17, 19-24, and 26
Since dependent claims 2-5, 7-12, 14-17, 19-24, and 26 incorporate by
reference the same disputed claim limitation as their underlying base claim,
the Examiner erred in rejecting these claims for the same reason set forth in
our discussion of independent claims 1, 13, and 25.
35 U.S.C. § 103(a) Rejection—Combination of Mohsenin and Ertel
Claims 6 and 18
We find that Ertel does not remedy the above-noted deficiency in the
Examiner’s anticipation rejection of independent claims 1, 13, and 25. As a
result, the Examiner has erred in concluding that the combination of
Mohsenin and Ertel renders dependent claims 6 and 18 unpatentable for the
same reason set forth in our discussion of independent claims 1, 13, and 25.

IV. NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
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PRINCIPLES OF LAW
Transitory propagating signals are unpatentable under 35 U.S.C.
§ 101. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to
U.S. Patent & Trademark Office (USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.
U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at
2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf (“Interim Instructions”).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent. . . .
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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ANALYSIS
35 U.S.C. § 101 Rejection
Claim 13
Independent claim 13 recites, in pertinent part, “[a] computer readable
medium [. . . .]”
Upon reviewing Appellant’s Specification for context, we fail to find
any support for what constitutes the claimed “computer readable medium.”
Therefore, since Appellant’s Specification is silent in this regard, we find
that the claimed “computer readable-medium” can be broadly, but
reasonably construed to encompass both non-transitory tangible media and
transitory propagating signals per se. Since the independent claim 13 covers
both statutory and non-statutory embodiments, we find that it embraces
subject matter that is not eligible for patent protection and, therefore, is
directed to non-statutory subject matter under 35 U.S.C. § 101.
Claims 14-24
For the same reason set forth supra, we find that dependent claims 14-
24 are also directed to non-statutory subject matter under 35 U.S.C. § 101.

V. CONCLUSIONS
1. The Examiner has erred in rejecting claims 1-26 as failing to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph.
2. The Examiner has erred in rejecting claims 1-26 as being
indefinite under 35 U.S.C. § 112, second paragraph.
3. The Examiner has erred in rejecting claims 1-5, 7-17, and 19-26
as being anticipated under 35 U.S.C. § 102(e).
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4. The Examiner has erred in rejecting claims 6 and 18 as being
unpatentable under 35 U.S.C. § 103(a).
5. We enter a new ground of rejection against claims 13-24 as
being directed to non-statutory subject matter under 35 U.S.C. § 101.

VI. DECISION
1. We reverse the Examiner’s decision to reject claims 1-26 as
failing to comply with the written description requirement under 35 U.S.C.
§ 112, first paragraph.
2. We reverse the Examiner’s decision to reject claims 1-26 as
being indefinite under 35 U.S.C. § 112, second paragraph.
3. We reverse the Examiner’s decision to reject claims 1-5, 7-17,
and 19-26 as being anticipated under 35 U.S.C. § 102(e).
4. We reverse the Examiner’s decision to reject claims 6 and 18 as
being unpatentable under 35 U.S.C. § 103(a).
5. We newly reject claims 13-24 as being directed to non-statutory
subject matter under 35 U.S.C. § 101.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
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or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

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