Ex Parte Gidron et al

Patent Trial and Appeal Board

May 21, 2013

10240409 (P.T.A.B. May. 21, 2013)

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.
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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).

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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
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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,
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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.)
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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
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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
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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,
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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,
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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).
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AFFIRMED

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