Ex Parte Shah et alDownload PDFPatent Trial and Appeal BoardAug 10, 201812641896 (P.T.A.B. Aug. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/641,896 12/18/2009 83719 7590 08/10/2018 AT & T Legal Department - FKM AT & T LEGAL DEPARTMENT, ATTN: PATENT DOCKETING ROOM 2A-207 BEDMINSTER, NJ 07921 FIRST NAMED INVENTOR Saryu Shah 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. 2008-1378 (40147/15301) 1505 EXAMINER SWARTZ, STEPHENS ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 08/10/2018 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 SARYU SHAH, CHRISTIAN KOLMODIN, JACKSON LIU, DAQIN LIU, SANJEETA MOHAPATRA, GLENN MOHESKY, TIMOTHY PLATTNER, JASON TOLBERT, and MICHAEL ZINNIKAS 1 Appeal2017-004631 Application 12/641,896 Technology Center 3600 Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and JUSTIN BUSCH, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1 through 16. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is AT&T Intellectual Property I, L.P. App. Br. 2. Appeal2017-004631 Application 12/641,896 INVENTION Appellants disclosed invention is directed to a system and method for receiving a service ticket, determining a likelihood of success of re-testing the service ticket and performing additional steps, if the likelihood of success is greater than a predetermined re-testing threshold. See Spec., Abstract. Claim 1 is representative of the invention and reproduced below. 1. A computer readable storage medium storing a set of instructions executable by a processor, the set of instructions being operable to: receive a service ticket; determine a likelihood of successfully completing an automated re-test of the service ticket without user interaction, wherein the likelihood of success is determined based on a required amount of data, a number of testable points, an existence of a manual re-test, and a number of pending orders on a facility corresponding to the service ticket; perform, when the likelihood of success is greater than a predetermined re-testing success threshold, the steps of: determine a waiting time of the service ticket; add the service ticket to a service ticket queue containing a plurality of service tickets, the service ticket queue being sorted by a waiting time of each of the plurality of service tickets; initiate performance of the service ticket, after an expiration of the waiting time; remove the ticket from the queue, when the performance of the service ticket is successful; and re-start the waiting time, when the performance of the service ticket is unsuccessful. REJECTIONS AT ISSUE2 The Examiner has rejected claims 1 through 16 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Ans. 2. 2 Throughout this Decision we refer to the Appeal Brief ("App. Br.") filed September 7, 2016, Reply Brief ("Reply Br.") filed January 25, 2017, Final Office Action ("Final Act.") mailed March 24, 2016, Appellants' 2 Appeal2017-004631 Application 12/641,896 The Examiner has rejected claims 1, 7, 9, and 15 under 35 U.S.C. § 103 as unpatentable over Benedetti (US 2007/0016907 Al; Jan. 18, 2007) and Ashiri (US 2006/0053136 Al; Mar. 9, 2006). Ans. 3. The Examiner has rejected claims 2, 3, 4, 5, 6, and 10 through 14 under 35 U.S.C. § 103 as unpatentable over Benedetti, Ashiri, and Nishikado (US 7,130,912 B2; Oct. 31, 2006). Ans. 3. The Examiner has rejected claims 8 and 16 under 35 U.S.C. § 103 as unpatentable over Benedetti, Ashiri, Brevik et al., ( "Predicting Bounds on Queuing Delay for Batch Scheduled Parallel Machines, "UCSB Technical Report CS2005-26, Computer Science Department, University of California, pp. 1-11 (Oct. 2006)), and Hill (US 2010/0088141 Al; Apr. 8, 2010). Ans. 3. ANALYSIS We have reviewed Appellants' arguments in the Briefs, the Examiner's rejections, and the Examiner's response to Appellants' arguments. In construing the claims to consider Appellants' arguments directed to the rejections under 35 U.S.C. § 103 and under 35 U.S.C. § 101, we determine that the claims are ambiguous. Accordingly, we reverse the Examiner's rejections under 35 U.S.C. § 103 and under 35 U.S.C. § 101 as we are unable to ascertain the scope of the claims. Our reviewing court has said that it is wrong to rely upon speculative assumptions as to the meaning of claims when considering a prior art rejection. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Specification ("Spec.") submitted December 18, 2009, and the Examiner's Answer ("Ans.") mailed November 25, 2016. 3 Appeal2017-004631 Application 12/641,896 New rejection under 35 U.S.C. § 112 Independent claims 1 and 9 recite "receiving a service ticket," "completing an automated re-test of the service ticket," "adding the service ticket to a ticket queue," and "performance of the service ticket." It is unclear as to what is the scope of the term "service ticket," as it is not apparent what item described as a "service ticket" can be received, re-tested, queued, and performed. The definiteness requirement "secure[ s] to the patentee all to which he is entitled" and "apprise[ s] the public of what is still open to them." Markman v. Westview Instruments, Inc., 517 U.S. 370,373 (1996) ( quotation and brackets omitted). The Office "determines the scope of claims . . . not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art."' Phillips v. A WH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); see also Zietz, 893 F.2d 319,321. Applying the broadest reasonable interpretation of a claim, then, the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam). Appellants' Specification does not provide a definition of what constitutes a service ticket. Appellants' Specification in paragraph 1 discusses a service ticket as something that exists in large numbers when there is a network outage, leading to the inference that a "service ticket" is a complaint about service or indication of service outage. However, if the 4 Appeal2017-004631 Application 12/641,896 term is construed in this manner, it is not clear how a received complaint or indication is re-tested or performed as claimed. The term "service ticket" could also be construed as an identifier that a person is requesting service (similar to a ticket for an airline). In which case the claimed performance of the service ticket is clear ( the performance of service). However, the re-test of the service ticket is still not clear and it is not clear how this relates to network outages as discussed in Appellants' Specification. Given that we are not able to ascertain the scope of the term "service ticket," we now reject independent claims 1 and 9, as well as dependent claims 2 through 8 and 10 through 16, under 35 U.S.C. § 112 second paragraph. Additionally, we also reject claims 1 through 16 under 35 U.S.C. § 112 first paragraph as not being enabled by Appellants' disclosure. As discussed above, there are several possible interpretations of the term service ticket. Applying either of the interpretations discussed above, it is not clear from Appellants' Specification how the "service ticket" would be re-tested, and thus the Specification does not enable the claimed re-testing of a service ticket. "[E]nablement requires that the specification teach those in the art to make and use the invention without 'undue experimentation.' That some experimentation may be required is not fatal; the issue is whether the amount of experimentation required is 'undue."' In re Vaeck, 947 F.2d 488,495 (Fed. Cir. 199 1) (citation omitted). Appellants' Specification discusses re-testing service tickets, however Appellants' Specification does not identify what constitutes a service ticket and how they are tested or re-tested. Thus, the skilled artisan has no guidance as to what level of experimentation would yield the claimed 5 Appeal2017-004631 Application 12/641,896 invention. Accordingly, Appellants' disclosure does not provide an enabling disclosure of re-testing a service ticket as claimed. New rejection under 35 U.S.C. § 101 We also enter a new ground of rejection against claims 1 through 8 under 35 U.S.C. § 101. The claims recite a computer readable storage medium. Appellant's Specification does not identify what comprises a machine-readable storage medium. We do not consider the term computer readable storage medium to be limited to non-transitory media, and thus, we consider the claim broad enough to encompass a transitory signal. A signal is not within one of the four categories of patentable subject matter as defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential); Manual of Patent Examining Procedure ("MPEP") § 2106(1), ed. 8, Rev. 9 (Aug. 2012). Accordingly, we now reject claims 1 through 8 under 35 U.S.C. § 101 as being drawn to subject matter that is not eligible for patent protection under 35 U.S.C. § 101. DECISION We reverse the Examiner's rejections of claims 1 through 16 under 35 U.S.C. § 103 and under 35 U.S.C. § 101. We enter new grounds of rejection of claims 1 through 16 under 35 U.S.C. § 112 first and second paragraph. We enter a new ground of rejection of claims 1 through 16 under 35 U.S.C. § 101 as not being directed to a patentable subject. This Decision contains new grounds of rejection pursuant to 37 C.F.R. § 4I.50(b). This section provides that "[a] new ground of rejection ... shall not be considered final for judicial review." 6 Appeal2017-004631 Application 12/641,896 37 C.F.R. § 4I.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 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 prosecution 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. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 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). See 37 C.F.R. § 41.50(±)(2016). REVERSED; 37 C.F.R. § 4I.50(b) 7 Copy with citationCopy as parenthetical citation