Ex Parte Morris et al

Patent Trial and Appeal Board

Mar 4, 2014

12019283 (P.T.A.B. Mar. 4, 2014)

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.
12/019,283 01/24/2008 Scott Morris 030240DIV1 (9400-39DV) 9699
39072 7590 03/05/2014
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
BAUM, RONALD
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
03/05/2014 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 PATENT TRIAL AND APPEAL BOARD

____________

Ex parte SCOTT MORRIS and WILLIAM CONNER
____________

Appeal 2011-010596
Application 12/019,283
Technology Center 2400
____________

Before ROBERT E. NAPPI, BRUCE R. WINSOR, and
LINZY T. McCARTNEY, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 and 3-11. Claim 2 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-010596
Application 12/019,283

2
CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a method of handling a past
due balance for a network service account. See Spec. ¶ 0022. Claim 1 is
representative of the subject matter on appeal and recites the following:
1. A method of handling a past due balance for a network
service account, the method comprising:
receiving a request from a user for network access at an
access control point;
redirecting the user from the access control point to a
sandbox network in response to a denial of network access for
failure to pay a past due balance, wherein the user is blocked
from network access other than the sandbox network while
being redirected;
after redirecting the user to the sandbox network,
accepting user entry of verification information for payment of
the past due balance through the sandbox network; and
after accepting user entry of the verification information,
allowing network access outside the sandbox network for the
user.
REJECTION
Claims 1 and 3-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Freund (US 5,987,611; November 16, 1999) and Malik
(US 2002/0041663 A1; April 11, 2002).
ISSUE
Independent claims 1 and 7 each recite “redirecting the user from the
access control point to a sandbox network in response to a denial of network
access for failure to pay a past due balance.” Each of the remaining rejected
claims depends from either claim 1 or claim 7. Appellants contend the
combination of Freund and Malik fails to teach at least this “redirecting”
limitation. (App. Br. 4-6.)
Appeal 2011-010596
Application 12/019,283

3
ANALYSIS
We agree with Appellants. In relevant part, Freund discloses a system
that redirects a user’s Internet requests to a “sandbox” server until the
system has confirmed the user’s computer has functioning monitoring
software. See Freund, col. 21, l. 47 – col. 22, l. 41; see also Figs. 3A-5, 7A-
8A, 10-11B; col. 3, l. 50 – col. 6, l. 28. The Examiner asserts this process
teaches, among other things, “pay[ing] a past due balance” under the
broadest reasonable interpretation of this limitation. (Ans. 12-13.) In the
Examiner’s view, the “specifics of using the financial consideration of . . .
pay[ing] a past due balance” would have been obvious. (Id. at 13 (internal
quotation marks omitted).)
But as contended by Appellants, the cited passages of Freund say
nothing about “pay[ing] a past due balance,” and the Examiner’s conclusory
statements fail to adequately explain why Freund’s process teaches or
suggests this limitation. Even if the Examiner were correct that “pay[ing] a
past due balance” is encompassed by Freund’s process, Freund does not
teach or suggest redirecting a user “in response to a denial of network access
for failure to pay a past due balance.” That Freund discloses redirecting a
user until functioning monitoring software has been installed on the user’s
computer does not teach or suggest redirecting a user in response to any
condition, particularly a largely unrelated condition such as “a denial of
network access for failure to pay a past due balance.”
To the extent the Examiner asserts Malik makes up for this deficiency,
the cited passages of Malik also fail to teach or suggest any action related to
“failure to pay a past due balance.” Malik does not mention “failure to pay a
past due balance,” much less doing anything in response to such a failure.
Appeal 2011-010596
Application 12/019,283

4
We conclude the Examiner erred in rejecting independent claims 1
and 7 for the reasons discussed above. Because the remaining rejected
claims each depend from either claim 1 or claim 7, we need not address
Appellants’ arguments concerning these dependent claims.
DECISION
We reverse the Examiner’s rejection of claims 1 and 3-11 under
35 U.S.C. § 103(a) as being unpatentable over Freund and Malik.

REVERSED

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