11290430 (B.P.A.I. Jul. 27, 2012)

Ex Parte Weiss et al

Board of Patent Appeals and InterferencesJul 27, 2012

11290430 (B.P.A.I. Jul. 27, 2012)

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. 11/290,430 12/01/2005 Burkhard Weiss 08516.0028-00 8621 60668 7590 07/27/2012 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER FIELDS, BENJAMIN S ART UNIT PAPER NUMBER 3684 MAIL DATE DELIVERY MODE 07/27/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BURKHARD WEISS and DIRK BECKER ___________ Appeal 2010-012346 Application 11/290,430 Technology Center 3600 ____________ Before HUBERT C. LORIN, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012346 Application 11/290,430 2 STATEMENT OF THE CASE Burkhard Weiss et al., (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 THE INVENTION This invention is “computer-implemented systems and methods for managing bundle pricing of services.” Spec. para. [002]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A data processing system comprising: storage means for storing account identifiers, the account identifiers each being assigned a corresponding condition reference and a corresponding result reference; a memory device configured to store: a condition rule and condition value for each condition reference, the condition rules and condition values describing conditions for maintaining or changing a status of a corresponding account, and 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Jun. 23, 2010) and Reply Brief (“Reply Br.,” filed Sep. 9, 2010), and the Examiner’s Answer (“Ans.,” mailed Jul. 30, 2010). Appeal 2010-012346 Application 11/290,430 3 a result rule and a result value for each result reference, the result rules and result values describing a result of maintaining or changing the status of the corresponding account; first program means for: grouping the account identifiers that share a common condition reference; identifying a common condition value and a common condition rule for the common condition reference of the group account identifiers; second program means for applying the common condition value to the grouped account identifiers to determine if the grouped account identifiers fulfill the common condition rule; and third program means for calculating a result for each of the grouped account identifiers by applying the result rule and the result value of each of the grouped account identifiers, upon a determination by the second program means that the grouped account identifiers fulfill the common condition rule. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Flaxer Lubars Tanaka US 2003/0033218 A1 US 2004/0158480 A1 US 7,171,401 B2 Feb. 13, 2003 Aug. 12, 2004 Jan. 30, 2007 Appeal 2010-012346 Application 11/290,430 4 Savage US 7,236,950 B2 Jun. 26, 2007 The following rejections are before us for review: 1. Claims 10-14 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1-3, 6, 7, and 10-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lubars and Tanaka. 3. Claims 4, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Flaxer. 4. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Savage. ANALYSIS The rejection of claims 10-14 under 35 U.S.C. § 101 as being directed to non-statutory subject matter In the Final Office Action, mailed December 8, 2009, the Examiner, on pages 2-4, rejects claims 10-14 under 35 U.S.C. § 101 and states that this rejection is being maintained despite the Appellants’ amendment to these claims. However, the Examiner has not included this rejection in the Examiner’s Answer and provides no response to the Appellants’ arguments. We can only assume that the Examiner means to withdraw the rejection, though the Examiner does not expressly state so. See Reply Br. 3. Accordingly, the rejection of claims 10-14 under 35 U.S.C. § 101 as being direct to non-statutory subject matter is summarily reversed. Appeal 2010-012346 Application 11/290,430 5 The rejection of claims 1-3, 6, 7, and 10-19 under § 103(a) as being unpatentable over Lubars and Tanaka We are persuaded by the Appellants’ argument on pages 14-17 of the Appeal Brief and pages 1-3 of the Reply Brief that the Examiner erred in rejecting claims 1-3, 6, 7, and 10-19 under § 103(a) as being unpatentable over Lubars and Tanaka. We agree with the Appellants that the Examiner has failed to show, with sufficient specificity, how the cited prior art corresponds to and renders obvious the first program means and second program means, as recited in independent claim 1. Thus, the Examiner fails to establish a prima facie showing of obviousness for independent claim 1. See App. Br. 14-17 and Reply Br. 1-3. Independent claims 10 and 15 recite similar limitations and are rejected for the same reasons used to reject claim 1 (Ans. 6). Accordingly, the rejection of claims 1-3, 6, 7, and 10-19 under § 103(a) as being unpatentable over Lubars and Tanaka is reversed. The rejection of claims 4, 8, and 9 under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Flaxer and the rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Savage These rejections are directed to claims dependent on claims 1 and 10, whose rejection we have reversed above. For the same reasons, we will not sustain the rejections of claims 4, 5, 8, and 9 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”) Appeal 2010-012346 Application 11/290,430 6 DECISION The decision of the Examiner to reject claims 1-19 is reversed. REVERSED JRG UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BURKHARD WEISS and DIRK BECKER ___________ Appeal 2010-012346 Application 11/290,430 Technology Center 3600 ____________ Before HUBERT C. LORIN, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012346 Application 11/290,430 2 STATEMENT OF THE CASE Burkhard Weiss et al., (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 THE INVENTION This invention is “computer-implemented systems and methods for managing bundle pricing of services.” Spec. para. [002]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A data processing system comprising: storage means for storing account identifiers, the account identifiers each being assigned a corresponding condition reference and a corresponding result reference; a memory device configured to store: a condition rule and condition value for each condition reference, the condition rules and condition values describing conditions for maintaining or changing a status of a corresponding account, and 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Jun. 23, 2010) and Reply Brief (“Reply Br.,” filed Sep. 9, 2010), and the Examiner’s Answer (“Ans.,” mailed Jul. 30, 2010). Appeal 2010-012346 Application 11/290,430 3 a result rule and a result value for each result reference, the result rules and result values describing a result of maintaining or changing the status of the corresponding account; first program means for: grouping the account identifiers that share a common condition reference; identifying a common condition value and a common condition rule for the common condition reference of the group account identifiers; second program means for applying the common condition value to the grouped account identifiers to determine if the grouped account identifiers fulfill the common condition rule; and third program means for calculating a result for each of the grouped account identifiers by applying the result rule and the result value of each of the grouped account identifiers, upon a determination by the second program means that the grouped account identifiers fulfill the common condition rule. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Flaxer Lubars Tanaka US 2003/0033218 A1 US 2004/0158480 A1 US 7,171,401 B2 Feb. 13, 2003 Aug. 12, 2004 Jan. 30, 2007 Appeal 2010-012346 Application 11/290,430 4 Savage US 7,236,950 B2 Jun. 26, 2007 The following rejections are before us for review: 1. Claims 10-14 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1-3, 6, 7, and 10-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lubars and Tanaka. 3. Claims 4, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Flaxer. 4. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Savage. ANALYSIS The rejection of claims 10-14 under 35 U.S.C. § 101 as being directed to non-statutory subject matter In the Final Office Action, mailed December 8, 2009, the Examiner, on pages 2-4, rejects claims 10-14 under 35 U.S.C. § 101 and states that this rejection is being maintained despite the Appellants’ amendment to these claims. However, the Examiner has not included this rejection in the Examiner’s Answer and provides no response to the Appellants’ arguments. We can only assume that the Examiner means to withdraw the rejection, though the Examiner does not expressly state so. See Reply Br. 3. Accordingly, the rejection of claims 10-14 under 35 U.S.C. § 101 as being direct to non-statutory subject matter is summarily reversed. Appeal 2010-012346 Application 11/290,430 5 The rejection of claims 1-3, 6, 7, and 10-19 under § 103(a) as being unpatentable over Lubars and Tanaka We are persuaded by the Appellants’ argument on pages 14-17 of the Appeal Brief and pages 1-3 of the Reply Brief that the Examiner erred in rejecting claims 1-3, 6, 7, and 10-19 under § 103(a) as being unpatentable over Lubars and Tanaka. We agree with the Appellants that the Examiner has failed to show, with sufficient specificity, how the cited prior art corresponds to and renders obvious the first program means and second program means, as recited in independent claim 1. Thus, the Examiner fails to establish a prima facie showing of obviousness for independent claim 1. See App. Br. 14-17 and Reply Br. 1-3. Independent claims 10 and 15 recite similar limitations and are rejected for the same reasons used to reject claim 1 (Ans. 6). Accordingly, the rejection of claims 1-3, 6, 7, and 10-19 under § 103(a) as being unpatentable over Lubars and Tanaka is reversed. The rejection of claims 4, 8, and 9 under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Flaxer and the rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Lubars, Tanaka, and Savage These rejections are directed to claims dependent on claims 1 and 10, whose rejection we have reversed above. For the same reasons, we will not sustain the rejections of claims 4, 5, 8, and 9 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”) Appeal 2010-012346 Application 11/290,430 6 DECISION The decision of the Examiner to reject claims 1-19 is reversed. REVERSED JRG