Ex Parte Tanaka et al

Board of Patent Appeals and Interferences

Jun 11, 2009

09898497 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte HIROHISA A. TANAKA, 8
GEOFFREY R. HENDREY, 9
and 10
PHILIP J. KOOPMAN, JR. 11
____________________ 12
13
Appeal 2009-000705 14
Application 09/898,497 15
Technology Center 3600 16
____________________ 17
18
Decided:1 June 12, 2009 19
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21
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH 22
A. FISCHETTI, Administrative Patent Judges. 23
24
CRAWFORD, Administrative Patent Judge. 25
26
27
DECISION ON APPEAL 28
29
STATEMENT OF THE CASE30

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 09/898,497

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Appellants appeals under 35 U.S.C. § 134 (2002) from a non-final 1
rejection of claims 1 to 33. We have jurisdiction under 35 U.S.C. § 6(b) 2
(2002). 3
Appellants invented a method and apparatus for location-sensitive 4
subsidized cell phone billing (Specification 1). 5
Claim 1 under appeal reads as follows: 6
1. A method for determining a billing rate of a 7
mobile telecommunications connection associated 8
with a mobile telecommunications unit (MU), 9
comprising the steps of: 10
determining whether a location of the MU is 11
inside or outside a predetermined subsidized zone; 12
responsive solely to a determination that the 13
location of the MU is inside the predetermined 14
subsidized zone, adjusting the billing rate for the 15
telecommunications connection to a first 16
predetermined billing rate; and 17
responsive solely to a determination that the 18
MU is outside the predetermined subsidized zone, 19
adjusting the billing rate for the 20
telecommunications connection to a second 21
predetermined billing rate. 22
23
The prior art relied upon by the Examiner in rejecting the claims on 24
appeal is: 25
Owensby US 2002/0077130 A1 Jun. 20, 2002 26
Jones US 6,411,891 B1 Jun. 25, 2002 27
28
The Examiner rejected claims 1, 2, 4, 6 to 13, 15, 17 to 24, 26, and 29
28 to 33 under 35 U.S.C. § 103(a) as being unpatentable over Owensby. 30
The Examiner rejected claims 3, 5, 14, 16, 25, and 27 under 35 U.S.C. 31
§ 103(a) as being unpatentable over Owensby in view of Jones. 32
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ISSUE 1
Have Appellants shown that the Examiner erred in holding that it 2
would have been obvious to one of ordinary skill in the art at the time the 3
invention was made to utilize the method of Owensby so that the 4
determination of a predetermined billing rate is made solely by the 5
determination of whether a mobile unit is within or without a subsidized 6
zone? 7
8
FINDINGS OF FACT 9
Owensby discloses a method for inserting messages such as 10
advertisements into a wireless mobile communication that are targeted to a 11
subscriber (Abstract). The billing rate is reduced by a subsidy that is 12
provided to the user who agrees to receive advertisements on their MU 13
(paragraph [0060]). In the Owensby system if the user agrees to receive 14
advertisements, the subsidy would be applied if (1) the location of the MU is 15
in a subsidized zone, (2) the date/time of day of the call meets certain criteria 16
(3) the attributes of the subscriber meet certain conditions and (4) certain 17
advertisement criteria are met (paragraphs [0064] to [0068]). 18
As such, the billing rate is adjusted based on the willingness of the 19
user to receive an advertisement and several other factors including the 20
location of the MU. 21
The Examiner found that Owensby discloses adjusting the billing rate 22
for the telecommunications connection to a second predetermined billing 23
rate and then added: 24
Owensby does not explicitly disclose that it is 25
responsive solely to a determination that the MU is 26
inside or outside the predetermined subsidized 27
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zone but it would have been obvious to one of 1
ordinary skill in the art at the time the invention 2
was made to utilize the method of Owensby as 3
claimed since dealing with a mobile unit and it 4
would be appropriate to determine the billing rate 5
based solely to a determination of the MU on the 6
inside or outside of the subsidized zone. That 7
would allow the system to target their ads based on 8
the location of the subscriber’s cell phone. 9
10
(Answer 4). 11
PRINCIPLES OF LAW 12
The facts underlying an obviousness inquiry include: Under § 103, 13
the scope and content of the prior art are to be determined; differences 14
between the prior art and the claims at issue are to be ascertained; and the 15
level of ordinary skill in the pertinent art resolved. Against this background 16
the obviousness or nonobviousness of the subject matter is determined. Such 17
secondary considerations as commercial success, long felt but unsolved 18
needs, failure of others, etc., might be utilized to give light to the 19
circumstances surrounding the origin of the subject matter sought to be 20
patented. Graham v, John Deere Co., 383 U.S. 1, 17-18 (1966). In 21
addressing the findings of fact, “[t]he combination of familiar elements 22
according to known methods is likely to be obvious when it does no more 23
than yield predictable results.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 416 24
(2007). As explained in KSR: 25
If a person of ordinary skill can implement a 26
predictable variation, § 103 likely bars its 27
patentability. For the same reason, if a technique 28
has been used to improve one device, and a person 29
of ordinary skill in the art would recognize that it 30
would improve similar devices in the same way, 31
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using the technique is obvious unless its actual 1
application is beyond his or her skill. Sakraida 2
and Anderson's-Black Rock are illustrative-a court 3
must ask whether the improvement is more than 4
the predictable use of prior art elements according 5
to their established functions. 6
KSR at 417. 7
On appeal, Applicants bear the burden of showing that the Examiner 8
has not established a legally sufficient basis for combining the teachings of 9
the prior art. Applicants may sustain its burden by showing that where the 10
Examiner relies on a combination of disclosures, the Examiner failed to 11
provide sufficient evidence to show that one having ordinary skill in the art 12
would have done what Applicants did. United States v. Adams, 383 U.S. 39, 13
52 (1966). 14
15
ANALYSIS 16
We will not sustain the rejections of the Examiner. Each of the claims 17
require that a second predetermined rate be used based solely on the location 18
of the MU. In each of the rejections, the Examiner relies on the teachings 19
and suggestions of Owensby for this requirement. We do not agree with the 20
Examiner that it would have been obvious to modify Owensby so that the 21
subsidy is provided solely based on the location of the MU. Owensby 22
discloses that a user receives a subsidy if the MU is in a location that 23
receives advertisements and (1) the user agrees to accept the advertisement, 24
(2) the date/time of day of the call meets certain criteria, (3) the attributes of 25
the subscriber meets certain conditions, and (4) certain advertisement criteria 26
are met. As such, a user is billed at a first predetermined rate if the user is 27
not in an area where advertisements are available. However, if the user is in 28
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an area where advertisements are available but the user has not agreed to 1
accept advertisements, the user will also be billed at a first predetermined 2
rate. In addition, even if the user is in a subsidized area and has agreed to 3
receive advertisements, the subsidy is only given if the other factors related 4
to the date and time of day, the attributes of the user, and the advertisement 5
criteria are met. We do not agree with the Examiner that a person of 6
ordinary skill in the art would be motivated to provide a subsidy if the user is 7
within an area where advertisements are available but the user does not 8
accept advertisements and the other conditions are not met. The Owensby 9
reference is directed to a system that provides advertisements to MU users 10
and such a person of ordinary skill in the art would not be motivated to 11
provide the subsidy without the tie to the advertisement and other 12
conditions. 13
14
CONCLUSION OF LAW 15
On the record before us, Appellants have shown that the Examiner 16
erred in rejecting the appealed claims. 17
18
DECISION 19
The decision of the Examiner is reversed. 20
21
REVERSED 22
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