Ex Parte Ross et al

Board of Patent Appeals and Interferences

Jun 20, 2012

10187694 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID J. ROSS, JASON KENAGY, MAZEN CHMAYTELLI,
and SAMIR K. KHAZAKA
____________________

Appeal 2009-014300
Application 10/187,694
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, DAVID M. KOHUT and
ERIC B. CHEN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 13, 21-23, 40-47, 49, 51, 53, 55, and 82-98. We have jurisdiction
under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claims 1, 13, and 40 under appeal reads as follows
(emphasis added):
Claim 1. A system for providing an application catalog for
served applications on a wireless network, comprising:
a wireless device; and
one or more application download servers, each application
download server operable to selectively download an application
catalog to the wireless device across a wireless network;
wherein the application catalog comprises an optimized listing
of a plurality of applications relatively ordered based upon a
predetermined criterion comprising an advertising factor.

Claim 13. A method for providing an application catalog for
served applications for wireless devices on a wireless network, the
method comprising the steps of:
optimizing an application catalog comprising a list of a plurality
of applications downloadable to wireless devices, the optimizing
based upon a predetermined criterion such that a preferred
application is listed initially in an arrangement of the plurality of
applications comprising the application catalog;
receiving a request from a wireless device for the application
catalog; and
transmitting the application catalog to the wireless device;
wherein said predetermined criterion comprises an
advertising factor.
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Claim 40. A computer readable medium including instructions
stored thereon, comprising:
a first set of instructions for optimizing an application catalog
comprising a plurality of applications downloadable to wireless
devices, the optimizing comprising generating an ordered list of the
plurality of applications based upon a predetermined criterion;
a second set of instructions for receiving a request from a
wireless device for the application catalog; and
a third set of instructions for transmitting the application
catalog to the wireless device;
wherein said predetermined criterion comprises an
advertising factor.

Rejections
1

The Examiner rejected claims 1, 13, 21-23, 40-47, 49, 51, 53, 55, and
82-98 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Huang (US 6,553,375 B1) and Adduci (US 7,343,334 B1).

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting the claims
because Huang and Adduci do not disclose or suggest the recited system,
methods, computer-readable medium, wireless device, and apparatus having
an application catalog that is optimized to include a listing of a plurality of
applications relatively ordered or arranged based upon a predetermined
criterion, nor that the predetermined criterion comprises an advertising
factor. (App. Br. 12-18).

1
Separate patentability is not argued for claims 13, 21-23, 40-47, 49, 51, 53,
55, and 82-98. Except for our ultimate decision, these claims are not
discussed further herein.
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2. Appellants contend that the Examiner erred in rejecting the claims
because the Examiner has not articulated a sufficient reason to combine
Huang and Adduci. (App. Br. 18-20).

Issue on Appeal
Did the Examiner err in rejecting claims 1, 13, 21-23, 40-47, 49, 51,
53, 55, and 82-98 because Huang and Adduci fail to teach the argued
“advertising factor” limitation?
Did the Examiner err in rejecting claims 1, 13, 21-23, 40-47, 49, 51,
53, 55, and 82-98 because the Examiner has not articulated a sufficient
reason to combine Huang and Adduci?

FINDINGS OF FACT (FF)
Appellants’ Specification Statements
1. “The application download server further optimizes the application
catalog based upon predetermined criteria, such as overhead
concerns, financial criteria, or the like . . .” (Appellants‟ Spec. 2,
¶[0005])(emphasis added).
2. “The application catalog can be optimized based on one or a
number of predetermined criteria, such as end-user ratings,
download rates, application server overhead, marketing,
advertising costs, application download costs to the end-user, and
bandwidth constraints.” (Appellants‟ Spec. 2, ¶[0006]) (emphasis
added).
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3. “In regard to performance aspects, the predetermined criteria can
be based upon the overhead of the server to download the
application, or the most commonly downloaded applications
(wherein the most commonly download applications appear first to
the end-user). And other marketing and advertising concerns can
be accounted for at the carrier side to determine application catalog
87 presentation, such as if the applications are sold to wireless
devices and the predetermined criteria can application sales data,
wherein the greatest profit making applications for the carrier can
be first listed on the application catalog 87. Other fiscal
predetermined criteria can be advertising time sales, simple slot
(list placement) purchase, or other criteria that inure a benefit to
the carrier in arranging the application catalog 87.”
(Appellants‟ Spec. 7, ¶[0026]) (emphasis added).
4. “[T]he step of optimizing an application catalog 87 can include
optimizing the application catalog 87 based upon, at least,
application sales data.” (Appellants‟ Spec. 10, ¶[0035]) (emphasis
added).
5. “The term „application‟ as used herein is intended to encompass
executable and nonexecutable software files, raw data, aggregated
data, patches, and other code segments.” (Appellants‟ Spec. 4,
¶[0016]) (emphasis added).
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6. “The computer readable medium can be the memory of the
application download server 16, or can be in a connective database,
such as database 28. Further, the computer readable medium can
be in a secondary storage media that is loadable onto a wireless
device computer platform, such as a magnetic disk or tape, optical
disk, hard disk, flash memory, or other storage media as is known
in the art.” (Appellants‟ Spec. 11, ¶[0036]).
7. In the context of Figs. 5 and 6, the method may be implemented,
for example, by operating portion(s) of the wireless .network 14 to
execute a sequence of machine-readable instructions, such as
wireless platform 50, the application download server 16, and
stand-alone server 32. The instructions can reside in various types
of signal-bearing or data storage primary, secondary, or tertiary
media. The media may comprise, for example, RAM (not shown)
accessible by, or residing within, the components of the wireless
network 14. Whether contained in RAM, a diskette, or other
secondary storage media, the instructions may be stored on a
variety of machine-readable data storage media, such as DASD
storage (e.g., a conventional "hard drive" or a RAID array),
magnetic tape, electronic read-only memory (e.g., ROM, EPROM,
or EEPROM), flash memory cards, an optical storage device (e.g.
CD-ROM, WORM, DVD, digital optical tape), paper "punch"
cards, or other suitable data storage media including digital and
analog transmission media.” (Appellants‟ Spec. 11, ¶[0037])
(emphasis added).

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ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellants‟
contentions (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants‟ above contention 2, we concur with Appellants.
However, as discussed below this is not sufficient to convince us that the
Examiner‟s ultimate conclusion of unpatentability was erroneous.
As to Appellants‟ above contention 1, we conclude that given the
notoriously well-known nature of purchasing advertising placement, it is
unnecessary for Huang or Adduci to explicitly teach this limitation.
We reason as follows:
1) Appellants admit that lists are known by stating that Huang
“discloses providing a list of authorized applications.” (App.
Br. 15).
2) List optimization by factors such as alphabetically or by size is
notoriously well-known. (See for example Mitchell (US
5,799,273) which teaches an option list in alphabetical order).
3) The “advertising factor” claimed by Appellants includes
purchasing the list placement. (See FF 3).
4) Purchasing the placement of an advertisement is notoriously
well-known (examples include purchasing the specific placement
of an advertisement within a newspaper, within a TV program, or
on a NASCAR vehicle).
Given the teachings of Huang and Adduci cited by the Examiner and
our above reasons 1-4, we conclude that providing an application catalog by
optimizing a list of a plurality of the applications based upon a purchase of
the listing placement is unpatentable under 35 U.S.C. § 103(a).
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Since our rationale in support of our conclusion of obviousness differs
from the rationale of the Examiner, we designate this analysis as new ground
of rejection.

ADDITIONAL NEW GROUND OF REJECTION
We reject claims 40-46, 53, 83, and 87-89 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 40-46, 53, 83, and 87-89 are all directed to “computer readable
medium including instructions stored thereon.” By the terms of Appellants‟
Specification, Appellants claimed “computer readable medium including
instructions stored thereon” must be construed to include “paper punch
cards” and “digital storage media including digital and analog transmission
media.” (FF 7).
These claims are not directed to computer-readable program code per
se. However, this is not the end of the inquiry. Appellants expressly define
the scope and meaning of the term computer-readable medium so as not to
be limited to statutory articles of manufacture (e.g., various types of
computer memories and disks). Rather, Appellants expressly define a
computer-readable medium as including paper punch cards onto which
software instructions are punched (i.e., printed in a machine readable form).
The Board of Patent Appeals and Interferences has previously held
that a printing on a piece of paper constitutes non-statutory subject matter.
See, e.g., Ex parte Shealy, No. 2006-1601, at 36 (BPAI Apr. 23, 2007)
(informative) (An expanded panel of this tribunal sustained the Examiner‟s
rejection of the claims under 35 U.S.C. § 101 as being directed to
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non-statutory subject matter because the Specification expressly stated that
“the computer-readable medium could even be paper.”).
Appellants also state that the computer readable-medium could
constitute “other suitable data storage media including digital and analog
transmission media” (FF 7). The Board of Patent Appeals and Interferences
has also previously held that carrier waves propagated on a carrier medium
constitute non-statutory subject matter. See Ex Parte Casazza, No. 2006-
2228, at 4 (BPAI Sept. 6, 2007) (non-precedential) (An expanded panel of
this tribunal sustained the Examiner's rejection of claims reciting “computer-
readable signal bearing media” because, as Appellant Casazza
acknowledged, the claimed media was not limited to tangible media, but
may also include intangible media such as a carrier wave.). See also In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (holding that “[a] transitory,
propagating signal . . . is not a „process, machine, manufacture, or
composition of matter.‟ Those four categories define the explicit scope and
reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal
cannot be patentable subject matter”).
We therefore, reject claims 40-46, 53, 83, and 87-89 under 35 U.S.C.
§ 101 for being directed to non-statutory subject matter.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that 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 the appeal 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, 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 § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 13, 21-23,
40-47, 49, 51, 53, 55, and 82-98 as being unpatentable under 35 U.S.C.
§ 103(a).
(2) Claims 1, 13, 21-23, 40-47, 49, 51, 53, 55, and 82-98 are not
patentable.

DECISION
The Examiner‟s rejection of claims 1, 13, 21-23, 40-47, 49, 51, 53, 55,
and 82-98 is affirmed.

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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).

AFFIRMED
37 C.F.R. § 41.50(b)

ELD