Ex Parte Schaefer et al

Patent Trial and Appeal Board

Aug 31, 2016

13035525 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/035,525 02/25/2011
100597 7590 09/02/2016
KILPATRICK TOWNSEND & STOCKTON LLP
ECHOSTAR TECHNOLOGIES L.L.C.
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Germar Schaefer
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.
P2010-10-18 (838001) 3011
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERMAR SCHAEFER and JOHN T. KENNEDY
Appeal2015-003538
Application 13/035,525
Technology Center 2600
Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify EchoStar Technologies, L.L.C. as the real party in
interest. App. Br. 3.
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Application 13/035,525
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
receiving billing information at a television receiver and communicating that
information to a user's mobile device. Abstract. 2
Claim 1 is representative of the claims on appeal and reads as follows
(with the disputed limitations emphasized):
1. A billing method, comprising:
receiving billing information at a television receiver from
a service provider for content for which a user has previously
authorized the service provider to bill the user;
creating at least one two-dimensional barcode using the
billing information received from the service provider; and
outputting the two-dimensional barcode from the
television receiver for display on a display device;
wherein, when the two-dimensional barcode is scanned
from the display device into a mobile device, the two-
dimensional barcode conveys the billing information to the
mobile device such that a user may submit a payment to the
service provider through the mobile device.
App. Br. 17 (Claim App'x.).
2 Our Decision refers to the Final Office Action mailed Sept. 12, 2013
("Final Act."); Appellants' Appeal Brief filed May 13, 2014 ("Brief' or
"Br."); the Examiner's Answer mailed Aug. 1, 2014 ("Ans."); and, the
Specification filed Feb. 25, 2011 ("Spec.").
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Application 13/035,525
Rejections on Appeal
Claims 1, 2, 4--8, 10-17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hogyoku (US
2009/0031373 Al, published Jan. 29, 2009) and Ludvig et al. (US
2006/0064700 Al, published Mar. 23, 2006) ("Ludvig").
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination ofHogyoku, Ludvig, and McNair (US
2001/0037297 Al, published Nov. 1, 2001).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hogyoku, Ludvig, and Spinnell et al.
(US 2009/0157511 Al, published June 18, 2009) ("Spinnell").
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hogyoku, Ludvig, and Tamayama (US
2006/0071076 Al, published Apr. 6, 2006).
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Brief and are not persuaded the Examiner erred. Unless
otherwise noted, we agree with, and adopt as our own, the findings and
reasons set forth by the Examiner in the Final Action from which this appeal
is taken (Final Act. 4--14), and in the Answer in response to Appellants'
Appeal Brief (Ans. 4--12), and we concur with the conclusions reached by
the Examiner. For emphasis, we consider and highlight specific arguments
as presented in the Brief.
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Application 13/035,525
Rejection of Claim 1under§103(a)
Appellants argue that the Examiner concedes in the Final Office
Action that Hogyoku fails to teach or suggest receiving billing information
from a service provider for content for which a user has previously
authorized the service provider to bill the user and that Ludvig does not
remedy the deficiencies of Hogyoku. Br. 5-9. In particular, Appellants
argue Hogyoku is related to pay-per-view content in which the user does not
authorize any billing until after scanning the barcode and, therefore, the
barcode cannot include preauthorized billing information. Id. 6-7.
According to Appellants, modifying Hogyoku from a current or future
authorization model to a past authorization model changes the principle of
operation of the pay-per-view system and, thus, there can be no proper
suggestion or motivation to make the proposed modification of Hogyoku.
Id. Appellants also argue Ludvig merely discusses providing notifications to
a user for past-due payments and cannot properly be combined with
Hogyoku. Id. at 8-9.
We are not persuaded by Appellants' arguments that the Examiner has
erred. First, Appellants' arguments are not convincing because they attack
the references individually, whereas the Examiner relies on the combination
of Hogyoku and Ludvig as teaching or suggesting the disputed limitations.
Final Act. 5; Ans.4--7. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
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Application 13/035,525
combined teachings of the references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Second, the Examiner finds, and we agree, Ludvig remedies the
deficiency of Hogyoku because it teaches "content [for] which a user has
previously authorized the service provider to bill the user." Ans. 6-7 (citing
Ludvig i-fi-f 16, 24, 29, 35). In particular, contrary to Appellants' argument
that Ludvig merely discloses providing notifications to users for past-due
payments, Ludvig teaches the pre-authorization for the provider to bill the
user, which is a necessary prerequisite to the past-due notifications of
Ludvig.
Third, the Examiner finds, and we agree, modifying Hogyoku based
on Ludvig would not change the principle of operation of Hogyoku because
"combining [past and current/future authorization] models would be perfect
and giv[e] the user the freedom to enjoy the programming anytime." See
Ans. 6. We also conclude that this rationale constitutes "some articulated
reasoning with some rational underpinning" to combine the known elements
taught by Hogyoku and Ludvig in the manner required by the claim. See
KSR Int'! Co. v. Teleflex Co., 550 U.S. 398, 418 (2007).
Thus, based on this record, we do not find error in (1) the Examiner's
findings that the combination of Hogyoku and Ludvig teaches or suggests
the disputed limitations of claim 1 or (2) the Examiner's conclusion that the
combination of these references renders claim 1 obvious under 35 U.S.C.
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Application 13/035,525
§ 103(a). Accordingly, we sustain the Examiner's rejection of claim 1. We
also sustain the Examiner's rejection of claims 5-12, 14--17, 19, and 20,
which are not argued separately. 3 See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection of Claims 2-4, 13, and 18 under§ 103 (a)
Appellants argue the Examiner erred in rejecting claims 2--4, 13, and
18 for obviousness under§ 103(a). Br. 9-15. In the Answer, the Examiner
provided a detailed and comprehensive response, supported by sufficient
evidence based on the teachings of Hogyoku, Ludvig, Tamayama, and
McNair, to each of the arguments raised by Appellants concerning these
claims. See Ans. 7-12. Appellants did not file a Reply Brief and have not
provided persuasive evidence or arguments to rebut the Examiner's findings.
Accordingly, for the reasons set forth by the Examiner, we adopt the
Examiner's findings relating to claims 2--4, 13, and 18 as our own and
concur with the conclusions reached by the Examiner. Thus, we sustain the
Examiner's rejection of claims 2--4, 13, and 18.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under 35
U.S.C. § 103(a).
3 In the arguments relating to dependent claims 13 and 18, Appellants note
claim 13 depends from claim 12, and claim 18 depends from claim 1 7, and
argue claims 12 and 17 are "believed allowable at least for the reasons as
discussed above with respect to [each] claim." See Br. 13. There are,
however, no arguments in the Brief specifically addressing claims 12 and 17.
To the extent Appellants rely on the arguments relating to claim 1 for claims
12 and 17, we sustain the Examiner's rejection of claims 12 and 17 for the
same reasons discussed supra regarding claim 1.
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Application 13/035,525
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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