Ex Parte Alberth et al

Patent Trial and Appeal Board

Sep 28, 2016

12489312 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/489,312 0612212009 William P. Alberth JR.
124282 7590 09/29/2016
Johnson, Marcou & Isaacs, LLC
317 A East Liberty Street
Savannah, GA 31401
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.
MOT0-6024 1357
EXAMINER
HAIDER,FAWAAD
ART UNIT PAPER NUMBER
3627
MAILDATE DELIVERY MODE
09/29/2016 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 WILLIAM P. ALBERTH JR., WILLIAM REDE,
and
SCOTT STEELE
Appeal2014-000579 1
Application 12/489,312
Technology Center 3600
Before ANTON W. PETTING, BRADLEY B. BAY AT, and
MATHEWS. MEYERS, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-12 and 14--20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Apr. 29, 2013), Reply Brief ("Reply Br.," filed Sept. 27, 2013), the
Examiner's Answer ("Ans.," mailed July 30, 2013) and Final Office Action
("Final Act.," mailed Oct. 18, 2012).
Appeal2014-000579
Application 12/489,312
CLAIMED INVENTION
Appellants ' 2 claimed "invention relates generally to wireless
communication devices, and more particularly to an obligation management
system and corresponding method suitable for use with wireless
communication devices" (Spec. i-f 1 ).
Claims 1, 4, 9, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A non-transitory computer readable medium in a portable
electronic device having a wireless communication circuit and a
user interface, the computer readable medium having
instructions stored therein for execution by a processor of the
portable electronic device to provide a method for determining
which one or more members of a group will fulfill an obligation
incurred by the group, the instructions of the non-transitory
computer readable medium comprising:
determining the obligation incurred by the group is due
by receiving data through one of the wireless communication
circuit or the user interface;
determining the one or more members to fi.1lfill the
obligation by comparing the obligation to an obligation register
having stored therein an obligation fulfillment history
comprising a plurality of past group obligations and
identification of members responsible for fulfilling each of the
plurality of past group obligations;
notifying the one or more of the members to fulfill the
obligation through one or more of the wireless communication
circuit or the user interface; and
transforming the obligation register to an updated state
by recording the obligation and the one or more members
fulfilling the obligation for the group in the obligation
fulfillment history.
2 Appellants identify "Motorola Mobility LLC" as the real party in interest.
App. Br. 2.
2
Appeal2014-000579
Application 12/489,312
REJECTIONS
I. Claims 1-8 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as
the invention. 3
II. Claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for insufficient antecedent basis.
III. Claims 1-3, 6, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Expensure
(http://webarchive.org/200805302348 l 9/http://expensure.com/h
ome/faq) and AAP A.
IV. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Expensure, Hussmann (US 7,379,975 B2, iss. May 27,
2008), and AAP A.
V. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Expensure, Davis (US 2008/0049921 Al, pub. Feb. 28,
2008), and Official Notice.
VI. Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Expensure, AAP A, and Olliphant
(US 7,343,335 Bl, iss. Mar. 11, 2008, hereinafter
Olliphanf 335).
VII. Claims 9, 10, 14, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Expensure and Lin
(US 2010/0082481 Al, pub. Apr. 1, 2010).
3 The Examiner's omission of claim 8, which depends from independent
claim 1, in the statement of the rejection is considered to be harmless error.
3
Appeal2014-000579
Application 12/489,312
Vlll. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Expensure, Lin, and Thomas (US 2008/0010194 Al,
pub. Jan. 10, 2008).
IX. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Expensure, Lin, Thomas, and Davidson (US 6,785,690 Bl,
iss. Aug. 31, 2004).
X. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Expensure, Lin, and Olliphant '335.
XI. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Expensure, Olliphant (US 2008/0195510 Al,
pub. Aug. 14, 2008, hereinafter Olliphant' 510), and AAP A. Id.
at 11-12.
XII. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Expensure, Olliphanf 510, and Fletcher
(US 2009/0265252 Al, pub. Oct. 22, 2009). Id. at 12-13.
XIII. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Expensure, Olliphanf510, Miyuki (US 2006/0229984 Al,
pub. Oct. 12, 2006), and AAPA. Id. at 13-14.
ANALYSIS
Indefiniteness
Re} ections I & II
The Examiner maintains that claim 1 is indefinite because it is unclear
whether Appellants are claiming "the subcombination computer readable
medium, or the combination of a computer readable medium and a portable
4
Appeal2014-000579
Application 12/489,312
electronic device (having a wireless communication circuit and a user
interface" (Final Act. 3; Ans. 2--4).
Appellants argue that the rejection is in error because claim 1 recites
"hardware components of the electronic device, namely, a wireless
communication circuit and a user interface" (App. Br. 12) and one of
ordinary skill would understand that a user interface is not a component of a
computer readable medium, but rather, an apparatus component of the
electronic device (App. Br. 14 (citing Spec. i-f 27, describing a user interface
as a keypad)). Appellants describe the claimed portable electronic device as
wireless communication device 100, such as a mobile telephone (see App.
Br. 8 (citing Spec. i-f 21, Fig. 1 )).
During examination, an applicant must "clearly and precisely set out
the metes and bounds of the claimed [subject matter]." Ex parte Miyazaki,
89 USPQ2d 1207, 1211-13 (BPAI 2008)). An applicant "is in the best
position to resolve the ambiguity in the patent claims, and it is highly
desirable that patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during prosecution rather
than attempting to resolve the ambiguity in litigation." Halliburton Energy
Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). The Supreme
Court instructed that claims must at least "inform those skilled in the art
about the scope of the [claimed subject matter] with reasonable certainty."
Nautilus, Inc. v. Biosig Instrs., Inc., 134 S.Ct. 2120, 2129 (2014). We find
that claim 1 is not sufficiently precise to provide competitors with an
accurate determination of the "metes and bounds" of protection involved so
that an evaluation of the possibility of infringement may be ascertained with
a reasonable degree of certainty.
5
Appeal2014-000579
Application 12/489,312
lnlPXL Holdings, L.L.C v. Amazon.com, Inc., 430 F.3d 1377 (Fed.
Cir. 2005), a patent holder sought to enforce a claim reciting a "system ...
wherein the predicted transaction information comprises both a transaction
type and transaction parameters associated with that transaction type, and the
user uses the input means to either change the predicted transaction
information or accept the displayed transaction type and transaction
parameters." IPXL Holdings at 1384 (italics in original). On appeal, our
reviewing court interpreted this claim as reciting both a system and a method
step to be carried out by a user, and held that:
Id
it is unclear whether infringement ... occurs when one creates
'-'
a system that allows the user to change the predicted transaction
infonnation or accept the displayed transaction, or whether
infringement occurs when the user actually uses the input
rneans to change transaction information or uses the input
means to accept a displayed transaction. Because [the claim]
recites both a system and the method for using that system, it
More recently, in H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d
1329 (Fed. Cir. 2014), a patent holder sought to enforce a claim reciting,
inter alia, "[a] tangible computer readable medium encoded with computer
program for performing contextual searches on an Internet Phone (IP) phone
comprising the steps ... wherein said user completes a transaction with at
least one of said merchants listed without the need to generate a voice call;
wherein said information received by said user comprises a variety of
offers, wherein said user selects one of said variety of offers associated with
said one of said merchants listed." Id. (italics in original). On appeal from a
6
Appeal2014-000579
Application 12/489,312
district court decision holding the claim invalid as indefinite, the CAFC
agreed that the italicized limitations were method steps recited in an
apparatus claim. Citing the reasoning of IPXL Holdings and In
re Katz Interactive Call Processing Patent Litigation,4 the CAFC held that
the claim was indefinite because "it is unclear here when infringement
would occur." Id.
The claims here are most closely analogous to those rejected in H-W
Technology. Although the limitation "determining the obligation incurred
by the group is due by receiving data through ... the user interface" is
expressed in passive rather than active voice, one can only determine
whether this limitation is satisfied once a user enters obligation data via the
user interface. App. Br. 8 (citing Spec. i-f 32-"the user may input the details
of the obligation via the user interface 106."). In the present case, as
in IPXL Holdings and H-W Techs., one cannot tell ifthe portable electronic
device infringes claim 1 until a user inputs the details of the obligation via
the user interface. A maker or seller of the electronic device cannot
determine whether the device will infringe, directly or contributorily, at the
time of manufacture or sale. As with the limitation at issue in H-W
Technology, the apparatus of claim 1 recites a method step to be performed
4 In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1318 (Fed. Cir. 2011) (claim directed to "[a] system with an 'interface
means for providing automated voice messages ... to certain of said
individual callers, wherein said certain of said individual callers digitally
enter data" was determined to be indefinite because the italicized claim
limitation is not directed to the system, but rather to actions of the individual
callers, which creates confusion as to when direct infringement occurs).
7
Appeal2014-000579
Application 12/489,312
that requires an action by a user, and not merely the capability of the
apparatus.
For the foregoing reasons, we conclude that claim 1, and claims 2-8
dependent thereon, are indefinite. Additionally, we find that dependent
claims 2-8 are indefinite for improperly referencing "[ t ]he computer
readable medium of claim 1," whereas claim 1 is directed to a portable
electronic device (machine), rather than an article of manufacture.
Therefore, we sustain the rejection of claims 1-8 under 35 U.S.C. § 112,
second paragraph.
We do not sustain the supplemental rejection of claim 4 under 35
U.S.C. § 112, second paragraph, as lacking sufficient antecedent basis for
the reasons stated by Appellants. See App. Br. 15.
Obviousness
Rejections IIL IV, V, and VI
The prior art rejections of claims 1-8 must fall, proforma, because
they necessarily are based on speculative assumption as to the meaning of
the claims. See Ans. 3 ("The claims were reasonably interpreted for the
purpose of examination as covering only the medium."). Thus, we do not
sustain Rejections III-VI under§ 103(a). It should be understood, however,
that our decision in this regard is based solely on the indefiniteness of the
claimed subject matter and does not reflect on the adequacy of the prior art
evidence applied in support of the rejections.
Rejections VII, VIII, IX, and X
Regarding independent claim 9, we are not persuaded of Examiner
error by Appellants' argument that Lin fails to teach "receiving an
acceptance from one or more members of a group who fulfill an obligation
8
Appeal2014-000579
Application 12/489,312
incurred by two or more members of the group." App. Br. 20. The
Examiner does not rely solely on Lin, but rather on the combination of Lin
and Expensure to teach this disputed limitation. See Final Act. 5.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Rather, the Examiner is arguing that it would have been obvious to
receive an acceptance from one or more obligated parties who fulfill an
obligation incurred by two or more parties, given what Expensure and Lin
disclose. According to the Examiner, "Lin has been applied only as it
teaches that it is known to receive an acceptance from a payor (obligated
party) of fulfillment of an obligation." Ans. 7 (citing Lin i-fi-1324, 329-331).
Lin discloses:
For example, the presently illustrated transaction 1170 may
occur in the context in which one party (e.g., the initiator)
initially pays for a group invoice containing amounts owed by
each of the illustrated parties, and in which the remaining
parties, later provide a payment to the initiating party.
Lin i1324. The Specification indicates that "[w]here this offer is accepted,
the obligation manager 101 can, in response, record the accepted offer as a
fulfillment in the obligation register." Spec. i-f40. "For instance, even
though the obligation manager 101 selects one or more members to fulfill a
current obligation, another member may volunteer to pay." Id. i141.
Initially paying for the group as taught by Lin and volunteering to pay for
the group at least suggest receiving an acceptance because the accepted offer
is recorded as a fulfillment in the obligation register.
9
Appeal2014-000579
Application 12/489,312
The Appellants' argument seeks to challenge the Examiner's
characterization of the scope and content of the cited prior art. But there
appears to be no dispute about that. The Examiner did not find that the cited
references disclose the claim limitation expressly in Lin or Expensure.
Rather, the Examiner is taking the position that the combination of the cited
prior art disclosures would have led one of ordinary skill in the art to the
claimed subject matter, including "receiving an acceptance from one or more
members of a group who fulfill an obligation incurred by two or more
members of the group." Appellants have not addressed the position the
Examiner is in fact taking. For these reasons, the Appellants' argument is
unpersuasive as to Examiner error.
Therefore, we sustain the rejection of independent claim 9. We also
sustain Rejections VU---X under 35 U.S.C. § 103(a), which are not argued
separately.
Rejection XI, XIL and XIII
Our treatment is different with respect to independent claim 18,
which, unlike independent claims 9, is an apparatus claim. Claim 18 recites
a wireless communication device, inter alia, "a processor and memory
operable therewith; a user interface and a wireless communication circuit,
each operable with the processor; and an obligation manager .... and a
communication module .... " It is permissible, as Appellants do in claim 1, to
recite features of an apparatus using functional language. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart, 439
F.2d 210, 212-213 (CCP A 1971 )). But functional language may not be
relied on for patentability if the prior art discloses or suggests structure
10
Appeal2014-000579
Application 12/489,312
capable of performing the recited function. See Schreiber, 128 F.3d at
1478-1479.
Here, Expensure's mobile device has a processor, memory, user
interface, and communication circuit and is capable of setting bill reminders
for forgetful flat mates. Ans. 8. The Examiner finds that:
Although Expensure does not expressly disclose that the
obligation manager/communication module are part of a
wireless communication device, Olliphant II discloses a
wireless obligation management apparatus which has an
obligation manager/communication module configured to
notify via a user interface or wireless communication circuit.
The wireless apparatus (164) includes a processor, memory
operable with the processor, a user interface, a wireless
communication circuit, and obligation module, and
communication module (See at least Figs. 1, 9, 12; Paras. 26-
31, 50, also Claims 1-10). It would have been an obvious
expedient to a person of ordinary skill in the art at the time the
invention was made to have utilized the obligation
manager/ communication module (instructions) of modified
Expensure in a \'l1ireless communication device (i.e. platform)
such as that disclosed by Olliphant II to facilitate performance
of the process embodied by the instructions via a suitable
processor platform.
Final Act. 12.
When the prior art structure possesses all the claimed characteristics
including the capability of performing the claimed function, the burden
shifts to the Appellants to show that, in fact, the claimed function
structurally distinguishes the claimed apparatus from the prior art apparatus.
In re Ludtke, 441 F .2d 660, 664 (CCP A 1971 ).
Appellants argue that none of the cited prior art teaches "a
communication module configured to notify the one or more members to
11
Appeal2014-000579
Application 12/489,312
fulfill the obligation on behalf of the group via one or more of the wireless
communication circuit or the user interface." App. Br. 20. Appellants assert
that the combination of Expensure and the Official Notice teaches away
from this by teaching a running ledger of debts owed to individuals based
upon manually input past transactions. Id. at 20-21. "Thus, the
combination both fails to teach Appellant[ s]' determining step set forth in
claim 18, and also teaches away by teaching a completely different
accounting system. The addition of Olliphant II to Expensure and the
Official Notice, fails to correct this deficiency because Olliphant II makes
known or obvious the missing step recited in Appellant[s]' claim 18." Id. at
21.
There is no basis for a finding of a "teaching away" based on our
review of the record. Appellants do not point to any passage in Expensure
or 0 lliphant' 3 3 5 that criticizes, discredits, or otherwise discourages
providing functionality to input, record, and track transactions, which is
required to establish a "teaching away." See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) (A teaching away occurs when a reference discourages one
skilled in the art from following the claimed path, or when the reference
would lead one skilled in the art in a direction divergent from the path that
was taken by the applicant); see also In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of the alternatives
when the disclosure does not criticize, discredit, or otherwise discourage the
solution claimed). As such, using a different or alternative accounting
system does not constitute a teaching away.
12
Appeal2014-000579
Application 12/489,312
Additionally, Appellants have not offered persuasive technical
reasoning that Olliphanf 510 is not capable of performing the claimed
functions, and have not shown that the claimed notification to members to
fulfill the obligation structurally distinguishes the claimed structure from the
proposed combination. Appellants have offered no substantive arguments to
rebut the specific underlying factual findings made by the Examiner (see
supra) in support of the ultimate legal conclusion of obviousness. And we
decline to examine the claims sua sponte, looking for distinctions over the
prior art. Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) ("It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.").
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See Jung, 637 F.3d. 1356, 1365 (Fed.
Cir)("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections," citing Ex Parte Frye,
94 USPQ2d 1072 (BP AI 2010) (precedential) ("The panel then reviews the
obviousness rejection for error based upon the issues identified by appellant,
and in light of the arguments and evidence produced thereon.")).
In view of the foregoing, we sustain the rejection of claim 18 under 35
U.S.C. § 103(a). We also sustain Rejections XI-XIII, which are not argued
separately.
13
Appeal2014-000579
Application 12/489,312
DECISION
The decision to reject claims 1-8 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The decision to reject claim 4 under 35 U.S.C. § 112, second
paragraph, for insufficient antecedent basis, is reversed.
The rejections of claims 1-8 under 35 U.S.C. § 103(a) are reversed
proforma.
The decision to reject claims 9-12 and 14--20 under 35 U.S.C.
§ 103(a) is affirmed.
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
14