Ex Parte Delia et al

Patent Trial and Appeal Board

Oct 8, 2014

12018505 (P.T.A.B. Oct. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WAYNE M. DELIA, EDWARD E. KELLEY, and
FRANCO MOTIKA
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Appeal 2012-0022051
Application 12/018,5052
Technology Center 2400
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Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, 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 1–4, 7–12, 15, and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
July 18, 2011) and Reply Brief (“Reply Br.,” filed November 14, 2011), and
the Examiner’s Answer (“Ans.,” mailed September 14, 2011).
2 The real party in interest, identified by Appellants, is International
Business Machines, Inc. App. Br. 1.
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CLAIMED INVENTION
Appellants’ claimed invention “relates generally to communications
systems and, more particularly, to an in-flight passenger information system
for communicating customized, detailed air travel information to passengers
prior to departing an aircraft” (Spec. ¶ 1).
Claim 9, reproduced below, is illustrative of the subject matter on
appeal:
9. A computer program product, comprising:
a non-transitory computer readable storage medium
containing computer program code for implementing a method
of accessing and operating an in-flight passenger information
system, the code including:
instructions for causing a computer to implement a
method, the method comprising:
receiving a request for one or more of
airport infrastructure information and passenger
transactional information specific to a passenger
onboard an airplane, the request being input by the
passenger via one or more passenger accessible
input/output devices;
accessing, through one or more ground-
based servers in network communication with an
airplane-based server, a database containing the
airport infrastructure information and the
passenger transactional information; and
communicating information to the onboard
passenger, through the one or more passenger
accessible input/output devices, the information
being based on the passenger’s travel itinerary and
including information related to availability the
passenger’s baggage at an airport terminal.

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REJECTIONS
Claims 1–4, 7, 9–12, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over O’Donnell (US 2003/0046438 A1, pub. Mar. 6, 2003) and
Nishimura (US 6,003,009, iss. Dec. 14, 1999).3
Claims 8 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over O’Donnell, Nishimura, and Bertram (US 2007/0043598 A1,
pub. Feb. 22, 2007)

ANALYSIS
Appellants argue independent claims 1 and 9 together (App. Br. 3–4).
We select claim 9 as representative. Claim 1 stands or falls with claim 9.
37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants argue that the Examiner erred in rejecting claim 9 under
35 U.S.C. § 103(a) because Nishimura, on which the Examiner relies, does
not disclose or suggest “communicating information to the onboard
passenger . . . including information related to availability the passenger’s
baggage at an airport terminal,” as recited in claim 9 (App. Br. 3–4; see also
Reply Br. 2). Appellants’ argument is not persuasive because the feature
that the Appellants contend is not disclosed in the cited reference is non-
functional descriptive material that may not be relied for patentability.
The rationale underlying the “printed matter” cases has been extended
to the analysis of the patentability of method claims. King Pharmaceuticals
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278–79 (Fed. Cir. 2010) (applying

3 We treat, as inadvertent error, the Examiner’s inclusion of claims 8 and 16
in the statement of this rejection (Ans. 5) inasmuch as the only articulated
rationale for the rejection of claims 8 and 16 is based on a combination of
O’Donnell, Nishimura, and Bertram (Ans. 13–14).
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the “printed matter” reasoning to method claims containing an “informing”
step that could be either printed or verbal instructions). In this case, the
relevant question is whether the recitation that the information
communicated to the on-board passenger includes information “related to
[the] availability of the passenger’s baggage at an airport terminal,” rather
than some other type of information, has a “new and unobvious functional
relationship” with the method. Id. at 1279.
There is no objective evidence of record that there is a functional
distinction in providing an on-board passenger with information regarding
the availability of the passenger’s baggage at an airport terminal as
compared to providing the passenger with some other type of in-flight
information. Regardless of the nature of the information communicated to
the on-board passenger, the underlying method, i.e., receiving a request for
one or more of airport infrastructure information and passenger transactional
information specific to a passenger onboard an airplane; accessing a
database containing the airport infrastructure information and the passenger
transactional information; and communicating information to the onboard
passenger, through the one or more passenger accessible input/output
devices, is the same. The nature of the information communicated to the on-
board passenger does not depend on the method, and the method does not
depend on the nature of the information communicated to the on-board
passenger. As such, it constitutes non-functional descriptive material that
may not be relied on for patentability. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(when descriptive material is not functionally related to the substrate, the
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descriptive material will not distinguish the invention from the prior art in
terms of patentability).
To conclude otherwise would mean that the mere recitation of a novel
item of information would be sufficient to warrant a separate patent even if
the remainder of the claim remained unchanged. This would result not only
in Appellant’s baggage availability distinguishing over the prior art, but
equally would every unique text message. To give effect to Appellant’s
argument, we would need to ignore our reviewing court’s concerns with
repeated patenting. See King Pharmaceuticals, 616 F.3d. at 1279 (“The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations”). We decline to do so.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 9 under 35 U.S.C. § 103(a), and the rejection of claim 1, which falls
with claim 9.
Each of claims 2–4, 7, 8, 10–12, 15, and 16 depends from one of
claims 1 and 9. Appellants do not present any argument for the separate
patentability of the dependent claims except to assert that the claims are
allowable for the same reasons as set forth with respect to independent
claims 1 and 9. We are not persuaded that the Examiner erred in rejecting
claims 1 and 9 under 35 U.S.C. § 103(a); therefore we sustain the
Examiner’s rejection of claims 2–4, 7, 8, 10–12, 15, and 16 for the same
reasons.

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DECISION
The Examiner’s rejections of claims 1–4, 7–12, 15, and 16 under
35 U.S.C. § 103(a) are 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)(1)(iv).

AFFIRMED

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