Ex Parte Eschenauer et al

Patent Trial and Appeal Board

Dec 30, 2015

12836910 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/836,910 07/15/2010 Laurent Eschenauer
69590 7590 01/04/2016
International IP Law Group
P.O. BOX 691927
HOUSTON, TX 77269-1927
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.
11690-PT-EP(2)-US-JOST009 3175
EXAMINER
BUGG, GEORGE A
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
01/04/2016 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):
docketing@iiplg.com
barry.blount@iiplg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENT ESCHENAUER, ALARD WEISSCHER,
and SEBASTIAAN HOEKSEL
Appeal2014-002565
Application 12/836,910
Technology Center 2600
Before JEFFREYS. SMITH, MICHAEL J. STRAUSS, and
AMBER L. HAGY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002565
Application 12/836,910
STATE~v1ENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-7 and 9-14, which constitute all claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The claims are directed to a tag-based service using a broker server.
Spec., Title. Claim 1, reproduced below, is representative of the claimed
subject matter:
1. A method for providing a tag-based service, comprising:
registering in a broker server an allocation between at
least one application server and a tag;
reading an identification code included in the tag using a
reader device;
transmitting the identification code from the reader
device to the broker server via a communication network;
determining, in the broker server, the application server
using the allocation;
sending from the broker server to the application server a
notification that the tag has been read; and
instructing upon receipt of the notification by means of
the application server the broker server to send a response to the
reader device, the response comprising information to be
presented at the reader device and/ or at least one command for
instructing the reader device to execute a predetermined action.
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Application 12/836,910
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Waris
Kang
Saros
et al.
US 2007/0011087 Al Jan. 11, 2007
US 2008/0004985 Al Jan. 3, 2008
US 2012/0044059 Al Feb. 23, 2012 (priority claimed to Int'l
Appl PCT/SE2009/050433 filed April 24,
2009)
REJECTIONS 1
The Examiner made the following rejections:
Claims 1-7 and 9-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waris and Saros. Final Act. 2-11.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waris, Saros, and Kang. Final Act. 11-12.
APPELLANTS' CONTENTIONS
1) "Waris does not disclose a device that may take over the functionality of
the broker server." Br. 6.
2) Waris fails to specify the place of tag registration as in a broker server as
required by claim 1. Id.
3) "[Because] Waris does not disclose that there may be other applications
needing a user interface stored on the client/partner terminal," there is no
1 Appellants argue the rejection of independent claims 1 and 12 collectively.
Separate patentability is not argued for dependent claims 2-7, 9-11, 13, and
14. Therefore we deicide the appeal of claims 1-7 and 9-14 based on claim
1 alone. See 37 C.F.R. § 41.37(c)(l)(iv).
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motivation for combining the teachings of \Varis and Saras thereby
rendering the combination is improper. Br. 7.
ISSUES ON APPEAL
Based on Appellants' arguments in the Appeal Brief (Br. 4--9), the
issues presented on appeal are:
1. Whether the Examiner erred in finding the combination of Waris and
Saros teaches or suggests the disputed limitations of claim 1.
2. Whether the Examiner erred in combining the teachings ofWaris and
Saros in rejecting claim 1 under 35 U.S.C. § 103(a).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2-13,
Ans. 3-14) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief (Ans. 14--17) and concur
with the conclusions reached by the Examiner. We highlight the following
for emphasis.
In connection with contention 1, Appellants argue Waris's description
of "an auction server brokering transactions between a client terminal and a
partner terminal" fails to "disclose a device that may take over the
functionality of the broker server." Br. 6. The Examiner responds by
finding Waris's auction server 330, when modified to provide the additional
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functionality disclosed by Saras, teaches or suggests the disputed broker
server of claim 1. Final Act. 2-5, Ans. 15.
Appellants' contention 1 is unpersuasive of Examiner error,
amounting to little more than a naked assertion the disputed broker server of
claim 1 is not found in the prior art. See 37 C.F.R. § 41.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
The Examiner has pointed to portions of Waris and Saros teaching the
elements of the disputed limitation. Final Act. 2-5, Ans. 15. In contrast,
Appellants have failed to provide sufficient evidence or technical reasoning
explaining why the Examiner's findings and conclusions are erroneous.
In connection with contention 2, Appellants argue "[Waris's
p ]aragraph [0007], cited by the Examiner, generally refers to registered tags
without specifying the place of registration." Br. 6. The Examiner responds
by finding Waris's auction server, which matches requests and responses
created by the terminal client from "registered tags," teaches "registering in
a broker server an allocation between at least one application server and a
tag." Final Act. 2-3, Ans. 16.
Waris discloses a web-based auction system using "registered tags" as
descriptors of auctioned products and services (Waris i-f 7) and an auction
server 330 that matches requests from client terminals 310 with partner
terminals 320 based on the information scanned from a tag 340 (Waris
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111141--42.) Figure 4 of\Varis depicts auction server 330 providing
connectivity between client terminal 310 (and tag 340) and transaction
partner terminals 320. Other than the naked assertion that Waris fails to
specify the place of registration, Appellants do not address the Examiner's
findings, e.g., explain why use of the information from tag 340 by auction
server 330 fails to teach or suggest registering in the broker server an
allocation between an application server and a tag (e.g. tag 340.) Therefore,
in the absence of sufficient rebuttal to the Examiner's findings, Appellants'
contention 2 is also unpersuasive of Examiner error.
Appellants' contention 3 is unpersuasive because it is not
commensurate in scope with claim 1, which requires a single application
server and makes no mention of the argued "other applications."
Furthermore, Appellant's argument fails to address the Examiner's stated
reason for modifying Waris according to the teachings of Saros is "for the
purpose of creating an efficient network transaction processing." Final. Act.
5. We recognize that the Examiner must articulate "reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, the Examiner's
reasoning need not appear in, or be suggested by, one or more of the
references on which the Examiner relies upon. Instead, a reason to combine
teachings from the prior art "may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved." WMS
Gaming Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). "Under the
correct [obviousness] analysis, any need or problem known in the field of
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endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). In the instant appeal, the Examiner
has provided a rationale supporting motivation by a person of ordinary skill
in the art to achieve the claimed subject matter. Final Act. 5. Appellants
have not provided persuasive evidence or line of reasoning explaining why
such rationale is erroneous or why a person of ordinary skill in the art would
not have reached the conclusions reached by the Examiner. See DyStar
Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) ("[T]he proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable of combining
the prior art references."). Consequently, we are not persuaded that the
Examiner failed to articulate a sufficient rationale for combining Waris and
Saros.
For the reasons discussed supra, Appellants' contentions in connection
with the rejection of claim 1 are unpersuasive of Examiner error. Therefore,
we sustain the rejection of independent claim 1 and, for the same reasons,
the rejection of independent claim 12 under 35 U.S.C. § 103(a) together with
the rejection of dependent claims 2-7, 9-11, 13, and 14, which are not
separately argued.
CONCLUSIONS
1) The Examiner did not err in finding the combination of Waris and Saros
teaches or suggests the disputed limitations of claim 1.
2) The Examiner did not err in combining the teachings ofWaris and Saros
in rejecting claim 1 under 35 U.S.C. § 103(a).
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DECISION
The Examiner's decision to reject claims 1-7 and 9-14 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) (2009).
AFFIRMED
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