Ex Parte Edgett et al

Patent Trial and Appeal Board

Sep 22, 2014

10843790 (P.T.A.B. Sep. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFF STEVEN EDGETT, MICHELLE LYNN BRAHM,
DMITRIY A. SOLOVEY, JULIE HOLDING, and RAGHU KONKA
____________

Appeal 2012-004489
Application 10/843,7901
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, 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 43–45.2 We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is iPass,
Incorporated. (App. Br. 1).
2 Our decision refers to the Appellants’ Appeal Brief (“App. Br.,” filed
July 28, 2011) and Reply Brief (“Reply Br.,” filed Dec. 27, 2011) and the
Examiner’s Answer (“Ans.,” mailed Oct. 25, 2011).
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Introduction
Appellants’ disclosure relates to a method for determining the price
for access to a network, e.g., from an internet service provider (ISP), based
on the time, location, and volume of use (Spec. ¶ 66).
Claim 43, reproduced below, is the independent claim on appeal and
is representative of the subject matter on appeal:
43. A computer-implemented method for configuring a
network service system and processing network service
transactions in the network service system, the computer-
implemented method comprising:
receiving, via one or more computer-generated graphical
user interfaces presented by the network service system, pricing
map information indicating access points that provide access to
a network service, wherein access points are owned by different
service providers;
receiving, via the one or more computer-generated
graphical user interfaces presented by the network service
system, location information indicating a geographic area
associated with the access points;
receiving, via the one or more computer-generated
graphical user interfaces presented by the network service
system, pricing information indicating pricing for accessing the
network service at the access points, wherein the pricing
changes based on one or more of usage time of the network
service, and volume of data transmitted via the network service;
receiving, via the one or more computer-generated
graphical user interfaces presented by the network service
system, payment information indicating payment arrangements,
between the service providers, for providing access to the
network service at the group of access points;
processing the network service transactions, wherein for
each one of the network service transactions, the processing
includes,
determining that the one of the network service
transactions involves accessing the network service at
one of the access points;
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determining, based on the pricing information, a
price for the one of the network service transactions;
designating, based on the payment information,
one of the service providers as payer for the one of the
network service transactions; and
designating, based on the payment information,
another of the service providers as payee for the one of
the network service transactions.

App. Br. 10–11, Claims App’x.

Prior Art Relied Upon
Keeler US 2007/0220596 A1 Sept. 20, 2007

Rejections on Appeal
1) Claims 43 and 45 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Keeler; and
2) Claim 44 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Keeler.

OPINION
Claims 43 and 45
Appellants argue that Keeler fails to disclose operations for
“configuring a network service system,” as recited by claim 43 (App. Br. 6).
Appellants argue that Keeler (¶¶ 113–14) instead discloses operations for
connecting to a “roaming” network (Id.). The Examiner states that the
recitation of “for configuring a network service system” in the preamble is
not a claim limitation because it is merely an intended use and the structure
and steps of the body of the claim do not depend on the preamble for
completeness (Ans. 7 (citing, inter alia, In re Hirao, 535 F.2d 67 (CCPA
1976)).
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We agree with the Examiner that “for configuring,” in the preamble of claim
43, is not a claim limitation because the clauses in the body of the claim are
not dependent on “for configuring,” which recites an intended use. Field of
use recitations are typically found in the preamble of claims, and the weight
given them largely depends on how the recitation is subsequently used in the
body of the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305, 1306 (Fed. Cir. 1999) (a preamble statement is more than a
statement describing the invention’s intended field of use where it is
“intimately meshed with the ensuing language in the claim”); see also Rowe
v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v.
Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (An
element initially recited in the preamble, is thereafter fully incorporated into
the body of the claim so as to breathe life and breath into it by setting forth
the complete combination). Because the steps of the body are independent
of the “for configuring” preamble statement, we agree that “for configuring”
is an intended use rather than a claim limitation.
Further, even if “for configuring a network service system,” were a
limitation, the Examiner (Ans. 8) correctly finds that Keeler (Abstract)
discloses the provision of network access through network providers (see
also Keeler ¶¶ 40–56).
Appellants also argue that Keeler fails to disclose “receiving, via the
one or more computer-generated graphical user interfaces presented by the
network service system, location information indicating a geographic area
associated with the access points,” as recited by claim 43 (App. Br. 6).
Specifically, Appellants argue that Keeler discloses the use of geographic
information to determine what services it provides particular users rather
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than a method for configuring a network service system where the system is
configured by receiving location information about access points through
one or more graphical user interfaces (Id. at 6–7). The Examiner finds that
the disclosure of Keeler taken as a whole teaches the limitation (Id. at 10).
The Examiner finds that Keeler (¶¶ 61, 65) discloses that geographic
information may be used to select service providers and Keeler (¶ 12)
discloses that “pricing and service information may be displayed to the
customer in a web-browser or in client software to select the type of service
. . . ” (Id.).
We agree with the Examiner. Keeler (¶ 12) explains that service
information is displayed to the customer. Service information includes
location information (¶ 65). Further, Keeler (¶ 61) discloses that the user
may have limited privileges, and Keeler (¶ 69) explains that where there is
limited access, the system provides local access (e.g., “coffee shops,
bookstores, and advertising on the local LAN at the airport”) or a more
expensive external Internet provider. The system of Keeler is thus within
the meaning of “receiving, via the one or more computer-generated
graphical user interfaces presented by the network service system, location
information indicating a geographic area associated with the access points,”
as recited by claim 43.
Appellants argue that Keeler fails to disclose “receiving, via one or
more computer-generated graphical user interfaces presented by the network
service system, pricing map information indicating access points that
provide access to a network service, wherein access points are owned by
different service providers,” as recited by claim 43 (App. Br. 6).
Specifically, Appellants argue that Keeler fails to disclose receiving price
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map information through a graphical user interface. The Examiner finds that
the disclosure as a whole teaches the limitation (Ans. 9). The Examiner
finds that Keeler (¶ 112 and Table 1) discloses that a web browser may
display pricing information to a user and Keeler (¶ 45) discloses that
roaming partners, i.e., other network providers, allow the user to roam on
other networks. Appellants argue that Keeler (¶ 112 and Table 1) does not
disclose access points, and that Keeler (¶ 45) does not disclose “price map
information” (Reply Br. 3). Appellants further argue that the Examiner’s
reliance on the disclosure “taken as a whole” is a “tacit admission that the
Examiner has cobbled together disjointed sections of Keeler in a feeble
rejection” (Id.).
We agree with the Examiner that Keeler discloses “receiving, via one
or more computer-generated graphical user interfaces presented by the
network service system, pricing map information indicating access points
that provide access to a network service, wherein access points are owned by
different service providers,” as recited by claim 43. Table 1 of Keeler shows
pricing information that is displayed, i.e., through a graphical user interface,
either to the roaming partner or the user (Keeler ¶ 112), indicating access
points. Keeler (¶ 45) explains that networks (which provide access) may be
maintained by third parties. Further, as above, the embodiment of Keeler
(¶¶ 61, 65, 69) illustrates a variety of access points available at the airport.
Appellants also argue that Keeler fails to disclose “receiving, via the
one or more computer-generated graphical user interfaces presented by the
network service system, pricing information indicating pricing for accessing
the network service at the access points, wherein the pricing changes based
on one or more of usage time of the network service, and volume of data
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transmitted via the network service,” as recited by claim 43 (App. Br. 7).
Specifically, Appellants argue that Table 1 of Keeler discloses that the client
software obtains account information, may show the pricing information to
the user, and may ask the user whether the user accepts charges, but does not
disclose how to enter price information via a graphical user interface and
does not teach a method for configuring a network service system based on
receiving pricing information (Id.).
We disagree with Appellants. We have construed claim 43 not to
include the “configured” term which Appellants have again argued here and
thus Appellants’ argument is not persuasive. Moreover, the Examiner finds
that Keeler (¶¶ 112, 113 and Table 1) displays pricing information in a
graphical user interface. We agree with the Examiner that Table 1 offers a
choice of pricing information based on usage time.
Therefore, we sustain the rejection of claims 43 and 45 under 35
U.S.C. § 102(e) as anticipated by Keeler.

Claim 44
Appellants do not argue the patentability of claim 44 separately from
claim 43. Accordingly, we sustain the rejection of claim 44 under 35 U.S.C.
§ 103(a) as unpatentable over Keeler for similar reasons as for claim 43.

DECISION
The decision of the Examiner to reject claims 43–45 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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