Ex Parte Gidron et alDownload PDFPatent Trial and Appeal BoardMay 21, 201310240409 (P.T.A.B. May. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/240,409 10/01/2002 Yoad Gidron 25090 (Mobilitec 1) 1879 46363 7590 05/21/2013 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER ELAHEE, MD S ART UNIT PAPER NUMBER 2653 MAIL DATE DELIVERY MODE 05/21/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOAD GIDRON, OPHIR HOLDER, and HAIM TEICHHOLTZ ____________ Appeal 2010-011428 Application 10/240,409 Technology Center 2600 ____________ Before KARL D. EASTHOM, KEVIN F. TURNER and MICHAEL R. ZECHER, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-011428 Application 10/240,409 2 STATEMENT OF THE CASE According to the Specification, “[t]he present invention relates to a system and method for charging for directed provisioning and usage of user applications” downloaded to cellular telephones or other portable devices. (Spec. 1, ll. 5-10.) Representative claim 1 follows: 1. A method for consuming dynamic content at a limited resource device-the method comprising: receiving at a billing system an event regarding ongoing consuming of the dynamic content, the event being triggered by the dynamic content; analyzing the event to determine an amount to be charged by the billing system; and charging the amount for consuming the dynamic content. (App. Br. 18, Claims Appx.) Claims 1-30 are rejected under 35 U.S.C. § 102(e) as being anticipated by Zilliacus, US 6,832,230 B1 (Dec. 14, 2004). DISCUSSION Appellants primarily direct attention to independent claims 1 and 27. (See App. Br. 11-16.) Claims 28 and 29 depend from claim 27. Accordingly, claim 1 is deemed to represent claims 1-26 and 30, while claim 27 is deemed to represent claims 27-29. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-011428 Application 10/240,409 3 Zilliacus’s Teachings – Factual Findings (FF) By way of background, Zilliacus discusses the state of the art in downloading and paying for software content as follows: As noted above, existing mobile terminals are capable of receiving content downloaded thereto. Increased amounts of, and types of, content shall likely be available to be downloadable to a mobile terminal in the future. Some, and perhaps much, of such content is private-domain content. That is to say, an owner, or other entity, has property rights in such content, and is entitled to payment for use of such content. Convenient manners by which to market, distribute, and pay for such content are needed. (Zilliacus, col. 1, l. 65 to col. 2, l. 6.) Zilliacus describes a billing system: Accordingly, a manner by which to permit a user to download and [sic] application for a limited time, pay a small price, and test or try out the applications is desirable. In addition, mobile terminals generally have much less memory capacity, at the current time, than PC applications. Because of limited memory capacity, a user or the mobile terminal itself may have to eliminate an old application in memory to make room for a new application in memory. If a consumer has paid full price for several applications that do not fit in the memory of the users [sic] mobile terminal that user will not be willing to pay for the applications that do not fit. Therefore, a manner by which to permit a user to pay for an application once but be able to download that application on subsequent occasions for a reduced fee or at no cost would be desirable. (Zilliacus, col. 3, ll. 11-25.) As to these subsequent occasions for downloading, Zilliacus further explains that because of limited memory capacity in cellular telephones, users may have deleted previously downloaded and licensed applications. Such users may later select that application for Appeal 2010-011428 Application 10/240,409 4 another downloading at a reduced fee, provided that some “lifetime” still remains per the license agreement. Similarly, even if some lifetime does not remain, the user may select the application again for downloading and pay for another “lifetime.” The “lifetime” refers to different payment requirements for either a time or number of uses remaining per a license for downloading and using the application. (See Zilliacus, col. 7, ll. 27-45; col. 8, ll. 4-51.) The lifetime remaining can be tracked by the mobile telephone or by the downloading service. (Zilliacus, col. 6, ll. 43-45.) Analysis Appellants challenge the Examiner’s finding that Zilliacus discloses “receiving at a billing system an event regarding ongoing consuming of the dynamic content, the event being triggered by the dynamic content,” as recited in claim 1. (See App. Br. 11; Office Action 2 (Nov. 12, 2002).) Appellants support the challenge by focusing on three phrases in claim 1: “billing system,” “dynamic content,” and “ongoing consuming of the dynamic content.” (See App. Br. 11-15.) As to the “billing system,” Appellants list several types of billing systems disclosed in the Specification and conclude that “Zilliacus fails to disclose exactly what is claimed in Appellants’ application.” (App. Br. 12.) Appellants maintain that “‘a billing system’ is repeatedly and invariably used in the written description to denote a plurality of billing models.” (App. Br. 11.) The Examiner relies, inter alia, on column 8, lines 4-12 of Zilliacus. (Ans. 3, 10.) That cited section clearly describes paying for services based on “different payment requirements” for “[a]vailable lifetimes.” (Zilliacus, Appeal 2010-011428 Application 10/240,409 5 col. 8, ll. 7-8.) As Appellants also recognize, Zilliacus discloses that the “‘User Pays for application.’” (App. Br. 12 (quoting Zilliacus Fig. 3, item 316, and Fig. 4, item 422).) Appellants’ vague argument about “what is claimed in Appellants’ application” fails to provide a patentable distinction. (App. Br. 12.) Contrary to Appellants’ argument, the claimed “billing system” reads on Zilliacus’s billing system. Appellants’ argument that the disclosed billing system encompasses a plurality of billing systems does not mean that the claim requires every billing system disclosed. (See id.) For example, the Specification states that for a billing system, “[t]he charge is preferably determined according to one of a plurality of rules.” (Spec. 3, ll. 27-28.) Similar to the rules discussed in the Specification, Zilliacus’s billing system involves billing for different downloadable applications which each have a “selectable lifetime.” (See Zilliacus, col. 3, ll. 50-54; FF supra.) “The lifetime may be calculated on time or transaction basis.” (Zilliacus, col. 3, ll. 60-61.) Billing systems include credit card payments, electronic cash, monthly fees or membership, network subscription and use payments, e.g., cell phone bill. (See Zilliacus, col. 8, ll. 18-20.) Zilliacus describes the billing system further as follows: The user, at block 314, has a plurality of choices for lifetimes. The price of the application, at block 316, may be dependent on the selected lifetime. For example, use of the application three times may be free, use of the application ten times or for one week may be $2.00, use of the application 100 times or for a month may be $5.00 and use of the application for an unlimited amount of time may be $10.00. (Zilliacus, col. 6, ll. 30-37.) Appeal 2010-011428 Application 10/240,409 6 Based on this record, Zilliacus discloses a billing system for downloaded content. (See also FF (discussing billing system for downloaded content).) Appellants also argue that the Specification provides a “proper understanding of the term ‘dynamic content’” in claim 1 but that “[t]he Examiner has not provided any citation tending to disclose this limitation.” (App. Br. 13.) The Specification broadly defines “dynamic content”: As used herein, the term ‘dynamic content’ refers to a unit of content and/or a set of instructions . . . . The content may optionally include any type of media, including but not limited to, any one of audio data, video data, graphic images and text, any type of application which includes any type of media (such as anyone or more of audio data, video data, graphic images and text) or a combination thereof. (Spec. 6, ll. 13-18 (emphasis added).) Contrary to Appellants’ argument, the Examiner cites to column 7, line 4 of Zilliacus which discloses that “a dynamic application downloading sequence is started.” (See Ans. 3, 10 (citing Zilliacus, col. 7, l. 4).) The Examiner also relies on executable codes in Zilliacus. (See Ans. 10 (citing Zilliacus, col. 4, ll. 9-15).) Zilliacus discloses a range of content, applications, or, generally, “digital information” for downloading on a cellular telephone. (Zilliacus, col. 1, ll. 50-54; see also FF).) According to the Specification, as noted, such dynamic content simply refers to “any type of media” or a set of instructions. Appellants fail to distinguish the claimed “dynamic content” from these teachings in Zilliacus. Appellants also maintain that Zilliacus does not disclose “ongoing consumption.” As Appellants recognize, the Examiner relies on Zilliacus’s teachings of selecting a lifetime application or charging a user based on how Appeal 2010-011428 Application 10/240,409 7 many times the user uses the application. (See App. Br. 14; Ans. 10-11.) Appellants fail to explain why these actions fail to satisfy “ongoing consumption.” (See App. Br. 14-15.) The limitation is discussed further below with regard to an “event.” Appellants also allege that the “phrases ‘billing system,’ ‘event regarding ongoing consuming’ and ‘dynamic content’ were not accorded any patentable weight within the context of the claims.” (App. Br. 13.) This truncated argument fails to provide a reason explaining why the Examiner’s findings, discussed supra and further infra, are in error. As to the “event regarding ongoing consuming,” the Examiner relies, inter alia, on “Figure 4, label 414” of Zilliacus. (See Office Action 2; Ans. 3.) That Figure 4 label represents a user selection of an application in Zilliacus. In their Reply Brief, Appellants argue that such a “lifetime selection cannot interpreted [sic] as events” according to claim 1. (Reply Br. 5.) Such an argument, not presented in the opening Appeal Brief, is untimely and deemed waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Even if the argument is timely, Appellants fail to provide a persuasive reason supporting the truncated argument. In the Reply Brief, Appellants point to their Specification, which describes types of events as including “application-specific events, system events, or events sent from the clients.” (See Reply Br. 4-5 (internal quotations omitted).) Such a listing, without any explanation, fails to explain why a lifetime selection in Zilliacus fails to correspond to one of these events. (See Reply Br. 4-5.) Moreover, the Specification specifically states that the types of events listed by Appellants are merely exemplary and not limited: “different types of events . . . are not Appeal 2010-011428 Application 10/240,409 8 limited.” (Spec. 10, l. 25.) According to the Specification, “billing events” simply “may trigger billing.” (Spec. 10, ll. 2, 9.) Assuming for the sake of argument that the listed events in the Specification limits claim 1, Zilliacus discloses such billing events. For example, selecting or requesting one of the lifetime options for an application in Zilliacus’s system constitutes an “event[] sent from the client[]” and is also “application-specific” because a user implicitly picks the option based on that application and its associated pricing. These events in Zilliacus’s system trigger different billing options as discussed supra and infra. Claim 6 also implies that an event can be a mere request: “a request to receive the dynamic content for downloading to the limited resource device.” Requesting a selectable lifetime application also reasonably corresponds to a “system event[],” because the system records the selection and tracks its ongoing use for billing purposes. As discussed above, Zilliacus’s system also determines the amount of remaining lifetime from a previous selection so that a subsequent lifetime selection of a previously downloaded application or content can be charged accordingly, i.e., with little or no fee. (See FF, Zilliacus, col. 8, ll. 4-10.) Such a subsequent lifetime request to the system to download previously downloaded digital content also reasonably amounts to an “event regarding ongoing consuming of the dynamic content” as claim 1 requires. Similarly, the Examiner finds that Zilliacus’s system counts the number of times a user downloads or uses an application for billing purposes. (See Office Action 9 (citing Zilliacus at col. 8, ll. 10-12).) As indicated supra, Zilliacus discloses that the downloading service tracks such usage. (See FF.) Such tracking or counting of the use of an application, Appeal 2010-011428 Application 10/240,409 9 based on time or the number of uses, also corresponds to the claimed “event regarding ongoing consuming.” For example, some weekly or limited number of uses may be free, while “use of the applications ten times or for a month may be $2.00” with billing based on credit cards, monthly payments, electronic cash, and “use payments (e.g., the cell phone bill).” (Zilliacus, col. 8, ll. 15-20.) In other words, each use, charged and tracked accordingly, or alternatively, as discussed, another “lifetime” request to download previously selected and deleted content, reasonably constitutes an “event regarding ongoing consuming of the dynamic content” as claim 1 requires. (See Ans. 3-4; 10-11.) Appellants also argue that the Examiner did not address the phrase, “a messaging system for communicating between said limited resource device, said provisioning platform and said external billing system” as set forth in claim 27. (App. Br. 15.) The Examiner relies on the communication system 200 and downloading server 230 at Figure 2 in Zilliacus to teach the recited messaging system and provisioning platform. (See Ans. 11-12.) Zilliacus’s billing system is discussed supra, and the Examiner points further to Zilliacus’s downloading service system. (Ans. 12 (citation omitted).) Figure 2 also implies that some type of messages transfer between various components of the communication system. As discussed, the billing system tracks content usage, requests for content, and payment. Zilliacus also contemplates a broad array of cell phones and other more advanced “mobile terminals,” such as “PDAs,” “Smart Phones,” etc., which can download all types of content from the “WWW,” run software applications, provide Internet access, and perform other functions. (See Zilliacus, col. 1, Appeal 2010-011428 Application 10/240,409 10 l. 20 – col. 2, l. 6.) Zilliacus also contemplates devices which “communicate over networks and integrate media, telephony and computing.” (Zilliacus, col. 1, ll. 18-19.) Other messages in Zilliacus’s message system include requests for content and other messages in the system to provide support including necessary protocol messages for billing information and content provisioning. As another example, an instruction or message in a downloaded application determines when to delete it. (See Zilliacus, col. 8, ll. 1-3.) As another example, the downloading service stores identification and selection information from a user, i.e., stores a message from a user. (Zilliacus, col. 8, ll. 23-29.) Appellant’s truncated argument fails to explain what the claimed “messaging system” requires or why Zilliacus otherwise does not disclose the listed claim phrase recited in claim 27. The Board cannot discern, from Appellants’ arguments on this record, a patentable distinction between claims 1 and 27 and the teachings of Zilliacus. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicant’s burden to precisely define their invention, not the PTO’s.”); In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant . . . .”). Appellants rely on arguments directed to claims 1 or 27 in their challenges with respect to the remaining claims. (See App. Br. 15- 16.) Based on the foregoing discussion, Appellants fail to show error in the rejection of claims 1-30. DECISION The Examiner’s decision to reject claims 1-30 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)(1)(iv). Appeal 2010-011428 Application 10/240,409 11 AFFIRMED peb Copy with citationCopy as parenthetical citation