Ex Parte Giannotti et al

Patent Trial and Appeal Board

Sep 26, 2012

10896667 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRUCE B. GIANNOTTI, JEFF LAVIN, DAVID C. WAHL,
and BRAD HALE
____________

Appeal 2010-005173
Application 10/896,667
Technology Center 2100
____________

Before JOHN A. JEFFERY, JEFFREY S. SMITH, and JEREMY J.
CURCURI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005173
Application 10/896,667

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-23, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
1. A system for managing accounts between an internet service
provider and a plurality of internet connectable computing devices, each of
the internet connectable computing devices including an associated unique
ID, the system comprising:

a validation module, the validation module validating whether an
internet connectable computing device should have access to the internet;

a determining module, the determining module determining whether
an internet connectable computing device is a valid system based upon a
plurality of criteria; and,

using the determining to manage a business portion of a relationship
with an internet connectable computing device user, the business portion of
the relationship with the internet connectable computing device user
comprising providing internet service for a respective internet connectable
computing device.

Prior Art
Karaoguz US 2004/0117660 A1 Jun. 17, 2004

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Application 10/896,667

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Examiner’s Rejection
Claims 1-23 stand rejected1 under 35 U.S.C. § 102(e) as being
anticipated by Karaoguz.

ANALYSIS
Section 102 rejection of claim 1
Appellants contend that Karaoguz does not describe a system for
managing accounts between an internet service provider and a plurality of
internet connectable computing devices, each of the internet connectable
computing devices including an associated unique ID, much less such a
system which includes a determining module which determines whether an
internet connectable computing device is a valid system based upon a
plurality of criteria, and, using the determining to manage a business portion
of a relationship with an internet connectable computing device user, the
business portion of the relationship with the internet connectable computing
device user comprising providing internet service for a respective internet
connectable computing device as required by claim 1. Br. 3-4.
The Examiner finds that Karaoguz describes a system for managing
accounts between an internet service provider and a plurality of internet
connectable computing devices. Ans. 9-10, citing paragraphs 26-29, 39 and
Figure 1. The Examiner finds that Karaoguz describes each internet
connectable computing device including an associated unique ID. Ans. 9-
10, citing paragraph 44. The Examiner finds that Karaoguz describes a

1 Although the Examiner states on page 3 of the Answer that only claims 1-
3, 9-11, and 17-22 are rejected, we view this as harmless error in light of the
Examiner’s subsequent rejection of claims 1-23 on page 4 of the Answer.
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determining module which determines whether an internet connectable
computing device is a valid system based upon a plurality of criteria. Ans.
4, citing paragraphs 8-11, 44, and 45; Ans. 10, citing paragraph 44. The
Examiner finds that Karaoguz describes using the determining to manage a
business portion of a relationship with an internet connectable computing
device user, the business portion of the relationship with the internet
connectable computing device user comprising providing internet service for
a respective internet connectable computing device. Ans. 4, citing Figure 1,
paragraphs 8-11, 28, 29, 44-52, and 64-88; Ans. 10, citing paragraph 44.
Although Appellants restate portions of the claim language and allege
that paragraph 39 of Karaoguz does not describe the restated language,
Appellants do not explain why the Examiner’s citation of paragraph 39 is
insufficient to show that Karaoguz describes a system for managing
accounts between an internet service provider and a plurality of internet
connectable computing devices. Nor have Appellants addressed the
Examiner’s additional findings that Figure 1 and paragraphs 8-11, 26-29, 39,
44-52, and 64-88 of Karaoguz describe the disputed limitations of claim 1.
Appellants’ arguments are ineffective in demonstrating error in the
Examiner’s findings.
We find that the Examiner has established a prima facie case of
unpatentability. “[A]ll that is required of the [Patent] [O]ffice to meet its
prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of [35
U.S.C.] § 132.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We find
that the Examiner has met this burden. The Examiner maps specific
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paragraphs of Karaoguz to the limitations of claim 1. See Ans. 4, 9-10.
Appellants have not explained how the limitations of claim 1 distinguish
over the portions of Karaoguz cited by the Examiner. Nor have Appellants
provided persuasive evidence or argument to rebut the Examiner’s prima
facie case. See Jung, 637 F.3d at 1365-66 (citing Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010) (precedential)).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusion reached by the
Examiner for the reasons given by the Examiner in the Final Rejection and
the Examiner’s Answer.
We therefore sustain the rejection of claim 1 under 35 U.S.C. § 102.

Section 102 rejection of claims 2, 10, and 19
Appellants contend that Karaoguz does not describe determining
whether an internet connectable computing device is a valid system based
upon whether payment for the internet connectable computing device is up
to date as required by claim 2. Br. 5. The Examiner finds that paragraphs
40 and 47 describe the disputed limitation. Ans. 4. The Examiner also finds
that paragraphs 65, 68, 85, and 88-92 describe payment terms and billing
information to provide a user with internet access. Final Rej. 2.
Appellants have not addressed the Examiner’s findings. Appellants
have not provided persuasive evidence or argument to rebut the Examiner’s
findings that paragraphs 40 and 47 describe determining whether an internet
connectable computing device is a valid system based upon whether
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payment for the internet connectable computing device is up to date as
required by claim 2.
We sustain the rejection of claim 2 under 35 U.S.C. § 102. Appellants
have not presented arguments for separate patentability of claims 10 and 19,
which fall with claim 2.

Section 102 rejection of claims 3, 11, and 20
Appellants contend that Karaoguz does not describe determining
whether an internet connectable computing device is a valid system based
upon whether the internet connectable computing device has been reported
stolen as required by claim 3. Br. 5. The Examiner finds that paragraphs
47-52 of Karaoguz describe the disputed limitation. Ans. 5.
Appellants have not provided persuasive evidence or argument to
rebut the Examiner’s findings. We therefore sustain the rejection of claim 3
under 35 U.S.C. § 102. Appellants have not presented arguments for
separate patentability of claims 11 and 20, which fall with claim 3.

Section 102 rejection of claims 4, 12, and 21
Appellants contend that Karaoguz does not describe determining
whether an internet connection is valid based on whether there are duplicate
copies of the internet connectable computing device as required by claim 4.
Br. 5. The Examiner finds that paragraphs 47-52 describe the disputed
limitation. Ans. 5.
Appellants have not provided persuasive evidence or argument to
rebut the Examiner’s findings. We therefore sustain the rejection of claim 4
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under 35 U.S.C. § 102. Appellants have not presented arguments for
separate patentability of claims 12 and 21, which fall with claim 4.

Section 102 rejection of claims 5, 13, and 22
Appellants contend that Karaoguz does not describe determining
whether an internet connectable computing device is a valid system based
upon whether the location from which the internet connectable computing
device is establishing the connection corresponds to an expected location as
required by claim 5. Br. 5. The Examiner finds that paragraphs 47-63
describe the disputed limitation. Ans. 5.
Appellants have not provided persuasive evidence or argument to
rebut the Examiner’s findings. We therefore sustain the rejection of claim 5
under 35 U.S.C. § 102. Appellants have not presented arguments for
separate patentability of claims 13 and 22, which fall with claim 5.

Section 102 rejection of claims 14 and 23
Appellants contend that Karaoguz does not describe determining
whether an internet connectable computing device is a valid system based
upon where the internet service is a telephone company as required by claim
14. Br. 5. The Examiner finds that paragraphs 8-11, 44-52, and 64-88
describe the disputed limitation. Ans. 7.
Appellants have not provided persuasive evidence or argument to
rebut the Examiner’s findings. We therefore sustain the rejection of claim
14 under 35 U.S.C. § 102. Appellants have not presented arguments for
separate patentability of claim 23, which falls with claim 14.

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Section 102 rejection of claims 6-9
Appellants contend that Karaoguz does not describe a method for
managing accounts between an internet service provider and a plurality of
internet connectable computing devices, each of the internet connectable
computing devices including an associated unique ID, much less where the
method includes determining whether the user is an approved user based
upon the user identification, receiving a unique system identification from
the internet connectable computing device, determining whether the internet
connectable computing device is a valid system based upon the unique
system identification, and approving access to an internet session based upon
the determining whether the user is an approved user and the determining
whether the internet connectable computing device is a valid system, as
required by claim 6. Br. 4. The Examiner finds that paragraphs 8-11, 19-23,
44-52, and 64-88 describe the limitations of claim 6.
Appellants have not provided persuasive evidence or argument to
rebut the Examiner’s findings. We therefore sustain the rejection of claim 6
under 35 U.S.C. § 102. Appellants have not presented arguments for
separate patentability of claims 7-9, which fall with claim 6.

Section 102 rejection of claims 15-18
Appellants contend that Karaoguz does not describe an apparatus for
managing accounts between an internet service provider and a plurality of
internet connectable computing devices, each of the internet connectable
computing devices including an associated unique ID, much less where the
apparatus includes a user validation module which determines whether the
user is an approved user based upon the user identification, a system
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identification receiving module which receives a unique system
identification from the internet connectable computing device, a system
validation module which determines whether the internet connectable
computing device is a valid system based upon the unique system
identification, and an approval module which approves access to an internet
session based upon the determination of whether the user is an approved
user and whether the internet connectable computing device is a valid
system, as required by claim 15. Br. 4-5. The Examiner finds that
paragraphs 8-11, 44-52, and 64-88 describe the limitations of claim 15. Ans.
7-8.
Appellants have not provided persuasive evidence or argument to
rebut the Examiner’s findings. We therefore sustain the rejection of claim
15 under 35 U.S.C. § 102. Appellants have not presented arguments for
separate patentability of claims 16-18, which fall with claim 15.

DECISION
The rejection of claims 1-23 under 35 U.S.C. § 102(e) as being
anticipated by Karaoguz 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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