Ex Parte Chevalier

Patent Trial and Appeal Board

May 31, 2016

11113844 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111113,844 0412512005
45095 7590
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
06/02/2016
FIRST NAMED INVENTOR
Denis Chevalier
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.
FR920040021US1 9087
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENIS CHEV ALIER
Appeal2013-007233
Application 11/113,8441
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the final
rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We AFFIRM.
1 The Appellant identifies International Business Machines Corporation as
the real party in interest. App. Br. 1.
Appeal2013-007233
Application 11/113,844
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. Method for obtaining a quota of service time or service
volume requested by a user in a system wherein a service
provider is adapted to provide a plurality of services to the user
having pre-paid an amount of money on a user account in order
to access a first service of the plurality of services provided by
the service provider; the method including the steps of:
- determining, by at least one computing device, whether
a product of an amount of money (AMOUNT) and a first part
(PART) corresponding to a predetermined percentage of money
reserved for the first service is greater than a predetermined
minimum reserve of money (MIN-RESERVE), the first part
being proportional to a cost of the first service;
- requesting, via a server, computation of the quota,
which is equal either to a minimum (MIN 1) of the product and
a maximum quantity of service (MAX-FLAT) that the user may
reserve while being in a fiat rate interval divided by a cost of
one unit of the first service (RA TE) if the product is greater
than or equal to the predetermined minimum reserve of money
(MIN-RESERVE), or to a minimum (MIN2) of the amount of
money (AMOUNT), the maximum quantity of service (MAX-
FLAT) and the predetermined minimum reserve of money
(MIN-RESERVE), divided by the cost of one unit of the first
service (RA TE) if the product is less than the predetermined
minimum reserve of money (MIN-RESERVE);
- receiving the computed quota using at least one
computing device; and
- reserving, in service time or service volume requested
by the user, the computed quota from the pre-paid amount.
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Application 11/113,844
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Myatt et al. ("ADC"2)
Panson ("HP"3)
WO 03/025870 A2
WO 01/86933 A2
Mar. 27, 2003
Nov. 15, 2001
The following rejections before us for review:
1. Claims 1-13 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1-13 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
3. Claims 1-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over ADC in view of HP.
ISSUES
Did Examiner err in rejecting claims 1-13 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement?
Did Examiner err in rejecting claims 1-13 under 35 U.S.C. § 112,
second paragraph, as indefinite?
Did Examiner err in rejecting claims 1-13 under 35 U.S.C. § 103(a)
as being unpatentable over ADC in view of HP?
2 Applicant is ADC Telecommunications, Inc., hereinafter "ADC".
3 Applicant is Hewlett-Packard Company, hereinafter "HP".
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Application 11/113,844
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the analysis below.
ANALYSIS
The rejection of claims 1-13 under 35 U.S.C. § 112,firstparagraph, as
failing to comply with the written description requirement.
Claims 1 and 6
The Examiner begins by stating that
[i]n claims 1 and 6 the applicant recites "requesting, via a
server, computation of the quota, which is equal either to a
minimum (MIN 1) of the product and a maximum quantity of
service (MAX-FLAT) that the user may reserve while being in
a flat rate interval divided by a cost of one unit of the first
service (RA TE) if the product is greater than the predetermined
minimum reserve of money (MIN-RESERVE), or to a
minimum (MIN2) of the amount of money (AMOUNT), the
maximum quantity of service (MAX-FLAT) and the
predetermined minimum reserve of money (MIN-RESERVE)
divided by the cost of one unit of the first service (RATE) if the
product is less than the predetermined minimum reserve of
money (MINRESERVE),"
but follows this with "while the passage appears in the applicant's originally
filed specification." Final Act. 2. Compliance with the written description
requirement is a question of fact. Ralston Purina Co. v. Far-Mar-Co, Inc.,
772 F.2d 1570, 1575 (Fed. Cir. 1985). According to the Examiner, the
Specification does in fact disclose said claim limitation. Accordingly, it
would appear that the Examiner concedes that, in fact, the original
Specification provides written descriptive support for said claim limitation at
issue.
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Application 11/113,844
The question the Examiner is raising is whether the written descriptive
support for said claim limitation at issue is adequate. However,
[t]he requirement is rigorous, but not exhaustive: "[I]t is
unnecessary to spell out every detail of the invention in the
specification; only enough must be included to convince a
person of skill in the art that the inventor possessed the
invention."
In re Alonso, 545 F.3d 1015, 1019 n.3 (Fed. Cir. 2008) (citing LizardTech,
Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005).
In that regard, we do not see that the Examiner has made the case that a
person of ordinary skill in the art reading the Specification would not find it
adequate to show that the inventor was in possession of what is claimed,
especially considering that, as the Examiner concedes, what is claimed is in
fact disclosed. All that is required is that there be an equivalent description
and, yet, the Examiner concedes the Specification provides more than that.
"[T]he specification must contain an equivalent description of the claimed
subject matter." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (emphasis added).
The arguments the Examiner makes regarding the sufficiency of what
is disclosed in the Specification go rather to questions of enablement. The
Examiner argues, for example, that "the applicant has not disclosed how the
variables [as claimed] are to be used to calculate the quota. While one of
skill in the art might know how to utilize these variables, they would not
have known the specific way the applicant has intended to utilize these
variables." Final Act. 3 (emphases added). However, that sort of argument
suggests a question of enablement; that is, whether the Specification would
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Application 11/113,844
enable one of ordinary skill in the art to make and use what is claimed
without undue experimentation. However, that is not our concern here.
The question before us is one of written descriptive support and on
that question, the Examiner has not presented a prima facie case of a lack of
adequate written descriptive support for the subject matter of claims 1 and 6
in the Specification in the first instance by a preponderance of the evidence.
Accordingly, the rejection of claims 1 and 6 is not sustained.
Claims 10 and 12
The Examiner rejected newly added claims 10 and 12 on the ground
that their subject matter "wherein the part (PART) is variable based on the
amount of money (AMOUNT)" is not disclosed in the Specification as
originally filed.
Specifically, the Examiner argues that said subject matter, when
coupled with the limitation "the first part being proportional to a cost of the
first service" in independent claims 1 and 6, lacks adequate written
descriptive support. According to the Examiner, "it is not shown in the
original [S]pecification how the part is proportional to a cost and then based
off of the amount of money in the users account." Final Act. 3.
There are two difficulties with this rejection.
First, the Examiner appears to find that there is written descriptive
support for the limitation "the first part being proportional to a cost of the
first service" in independent claims 1 and 6.
Second, the Specification discloses the following:
The quota is a part (PART) of the available amount of money,
that is a percentage of the amount of free money on the account
of the user that should be normally reserved to allow fairness
between multiple services access and to avoid a performance
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Application 11/113,844
problem. This percentage is small for services that are cheap
and high for services that are expensive (the goal is to reserve a
greater amount of money for expensive services). Note that the
part could be defined at system level as a unique percentage for
all services, but could be also defined by service as a variable
percentage according to the quantity of free money on the user
account.
Spec. 6, 11. 11-21 (emphasis added). Yet this disclosure appears to describe
the variable PART as a variable percentage to the amount of free money in
the user account for a specific service and also one that is dependent on the
cost of the specific service. This disclosure appears to provide written
descriptive support for "wherein the part (PART) is variable based on the
amount of money (AMOUNT)" (claims 10, 12). Yet the Examiner does not
appear to have considered this disclosure in making the rejection.
Given what appears to be a concession that the Specification discloses
"the first part being proportional to a cost of the first service" (claims 1, 6)
and; in light of page 6; lines 11-21; the disclosure arguably providing
adequate written descriptive support for "wherein the part (PART) is
variable based on the amount of money (AMOUNT)" (claims 10, 12), we
find that the Examiner has not established that the Specification fails to
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, the Applicant was in possession of the claimed PART variable
as claimed.
Accordingly, the rejection of claims 10 and 12 is not sustained.
The rejection of claims 1-13 under 35 U.S. C. § 112, second paragraph, as
indefinite.
Claims 1 and 6
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Application 11/113,844
According to the Examiner,
In claims 1 and 6, the limitation of "requesting, via a
server, computation of the quota, which is equal either to a
minimum (MIN 1) of the product and a maximum quantity of
service (MAX-FLAT) that the user may reserve while being in
a flat rate interval divided by a cost of one unit of the first
service (RA TE) if the product is greater than the predetermined
minimum reserve of money (MIN-RESERVE), or to a
minimum (MIN2) of the amount of money (AMOUNT), the
maximum quantity of service (MAXFLAT) and the
predetermined minimum reserve of money (MIN-RESERVE)
divided by the cost of one unit of the first service (RATE) if the
product is less than the predetermined minimum reserve of
money (MIN-RESERVE)", renders the claim indefinite.
Final Act. 4.
In so finding, the Examiner finds that claims are insufficiently clear.
For example, the Examiner finds that
[i]t is unclear what is required to formulate the quota. That is to
say the language suggests that either a minimum (MINI) of the
product and a maximum of quantity of the service (MAX-
FLA T) that the user may reserve while being in a flat rate
interval divided by a cost of one unit of the first service
(RATE).
Final Act. 4.
Upon reviewing the record before us, we do not agree that the claims
are indefinite. Independent claim 1, for example, discloses that a minimum
(MIN 1) of either the product or MAX-FLAT or is used when divided by
RA TE to generate the quota if the product is greater than or equal to the
predetermined minimum reserve of money. In other words, the lowest value
between the product variable and the MAX-FLAT variable is selected and
then divided by RATE. The claim also discloses that a minimum (MIN2) of
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Application 11/113,844
eitherthe amount of money, MAX-FLAT, or MIN-RESERVE is used when
divided by RA TE to generate the quota if the product is greater than or equal
to the predetermined minimum reserve of money. In other words, the lowest
value between the amount of money variable, MAX-FLAT variable, and
MIN-RESERVE variable is selected and then divided by RATE.
The Examiner's arguments go to the breadth of the claims, not
indefiniteness. Cf In re Robins, 429 F .2d 452, 458 (CCP A 1970) ("Giving
the language its broadest possible meaning, as we are bound to do in the
absence of special definitions by appellant, the breadth of the claims insofar
as the catalyst is concerned is indeed immense. However, '[b ]readth is not
indefiniteness.' In re Gardner, 427 F.2d 786, 57 CCPA (1970).)"
For the foregoing reasons, the rejection is not sustained.
Claims 10 and 12
The Examiner separately rejected claims 10 and 12 for different
reasons than those used to reject claims 1 and 6 as discussed above. See
Final Act. 5---6. The Appellant does not appear to present any arguments
addressing the Examiner's position in rejecting dependent claims 10 and 12.
Accordingly, the rejection of claims 10 and 12 is sustained.
The rejection of claims 1-13 under 35 U.S.C. § 103(a) as being
unpatentable over ADC and HP.
The Appellant argues claims 1-13 as a group (App. Br. 6-9). We
select claim 1 as the representative claim for this group, and the remaining
claims 2-13 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
The Examiner takes the position that ADC discloses
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Application 11/113,844
determining, by at least one computing device, whether a
product of an amount of money (AMOUNT) and a first part
(PART) corresponding to a predetermined percentage of money
reserved for the first service is greater than a predetermined
minimum reserve of money (MIN-RESERVE), the first part
being proportional to a cost of the first service
(claim 1 ) .
According to the Examiner,
ADC page 12; discloses CreditPerCaliPercentage which is a
fixed percentage in which will be multiplied by the available
credit or account balance of the user. In the Example given on
page 12, the set value is 50% and the available credit is $20,
thus the maximum amount reserved for a single call is $10 or
50% of the total available balance. Page 14, lines 10-22;
disclose that a determination is then made to determine if the
reserved amount is greater than the MinDurationToken, which
is the minimum required amount to utilize the service as
defined by ADC on page 12. If it is less that there is
insufficient credit in the account to utilize the service and the
request for service fails. However if it is greater than the
service is allowed to be carried out. Further ADC page 11,
lines 3-9; discloses that the constants such as
CreditPerCaliPercentage can change based on the service itself
such as a local versus long distance verse international, as such
the first part or predetermined percentage is proportional to a
cost of service since there is different costs between local, long
distance and international. Page 8, lines 1-6; ....
Final Act. 8.
The Appellant argues that ADC requires, first, that an amount be
reserved, second, that a determination be made as to whether the reservation
amount exceeds an available balance of a pre-paid account, and third, a
duration, etc. for a service is determined based on the reservation amount.
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App. Br. 7. According to the Appellant, ADC functions in a manner
opposite the method claimed. App. Br. 7 (emphasis added). We disagree.
Claim 1 is worded in such a way that, first, a determination is made as
to whether, broadly-speaking, there is sufficient money in a user's account to
pay for a first service requested. Next, according to the claim, a quota based
on variables to determine service time or service volume requested by the
user is calculated. And then subsequently, the service time or volume for the
user is reserved.
We do not see how the method claimed is opposite to what ADC
discloses as the Appellant has argued it. Both the Appellant's claim and
ADC appear to describe reserving an amount against a pre-paid account,
calculating a quota for service time, and reserving the service time for the
user. Accordingly, we find the argument unpersuasive as to error in the
rejection.
The Appellant also argues that ADC's CreditPerCallPercentage is not
a predefined percentage of credit allocated to a particular service and thus
does not equate with "PART" as claimed. According to the Appellant,
ADC's CreditPerCallPercentage is directed to a percentage of a user's
Available Credit that can be reserved for a single event. App. Br. 8
(emphasis added).
The difficulty with the Appellant's argument is that the claimed
PART variable is characterized in the claim as "corresponding to a
predetermined percentage of money reserved for the first service" (emphasis
added). However, the "the first service" is not defined in the claim itself.
Nor does the Specification limit the service. Rather, the Specification
discloses:
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Today, service providers on a data transmission network want to
offer their customers data and content services such as Internet
access, location services, content services (e.g., news, real time
football results, etc.), ring tones, game downloads, etc.
Spec. 1, 11. 9-12. In light of the Specification, the broadest reasonable
construction of the claim limitation "first part (PART) corresponding to a
predetermined percentage of money reserved for the first service," as it
would be interpreted by one of ordinary skill in the art at the time of the
invention, is that the PART variable corresponds to a predetermined
percentage of money reserved for any type of service.
The Examiner points to ADC as disclosing constants that the
CreditPerCallPercentage is based on that can change based on the service
provided, such as local vs. long distance service, and that the single event
that is reserved in ADC is a "first service." Answer 13. We agree. Given
the broadest reasonable construction of the phrase "first service" as covering
any type of service; the single call event that ADC's
CreditPerCallPercentage is based upon satisfies the "first service" as
claimed.
The remaining arguments are unpersuasive as to error in the rejection.
For the foregoing reasons, the rejection of claim 1 is sustained.
Claims 2-13 depend from claim 1. Their rejection is sustained for the same
reasons.
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CONCLUSIONS
The rejections of claims 1-13 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement and the
rejections of claims 1-9, 11, and 13 under 35 U.S.C. § 112, second
paragraph, as indefinite are not sustained.
The rejections of claims 10 and 12 under 35 U.S.C. § 112, second
paragraph, as indefinite and the rejections of claims 1-13 under 35 U.S.C.
§ 103(a) as being unpatentable over ADC in view of HP are sustained.
DECISION
We REVERSE the rejection of claims 1-13 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
We REVERSE the rejections of claims 1-9, 11, and 13 under
35 U.S.C. § 112, second paragraph, as indefinite.
We AFFIRM the rejections of claims 10 and 12 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We AFFIRM the rejections of claims 1-13 under 35 U.S.C. § 103(a)
as being unpatentable over ADC in view of HP.
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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