Ex Parte Mecilati

Patent Trial and Appeal Board

Feb 23, 2017

12088332 (P.T.A.B. Feb. 23, 2017)

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.
175-002 1276
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
12/088,332 07/28/2008
72822 7590
Weiss & Arons, LLP
1540 Route 202, Suite 8
Pomona, NY 10970
Didi Avraham Mecilati
02/23/2017 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 DIDI AVRAHAM MECILATI
Appeal 2015-0024811
Application 12/088,332
Technology Center 3600
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant2 appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 27, 29—33, 35, 36, 38, and 40-46. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The record includes a transcript of the oral hearing held February 14, 2017.
2 The Appellant identifies the real party in interest as “One Smart Star
Limited.” (Appeal Br. 2.)
Appeal 2015-002481
Application 12/088,332
STATEMENT OF THE CASE
“The present invention relates to communications methods” and, in a
preferred embodiment, “associating a communication nickname with a
business for use with all existing types of customer communication.”
(Spec. 111,13.)
Illustrative Claim3
27. A communications coordination unit comprising:
a communications nickname database, said
communications nickname database associating each of a
multiplicity of businesses with its communications nickname;
a determining unit configured to determine if a common
communications nickname is available for a business across
analog and digital communication service providers of said
business; and
wherein said communications nickname database
is configured to communicate with router databases of said
communications providers when said communications
nickname database is modified, wherein each said router
database comprises an address database for its associated
communications provider associating at least some of said
multiplicity of businesses with their addresses as issued by said
communications provider.
Rejections
I. The Examiner rejects claims 27, 29-33, 35, 36, 38, and 40-46
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
II. The Examiner rejects claims 27, 29—33, 35, 36, 38, and 40-46
under 35 U.S.C. § 102(b) as anticipated by Ranalli.4
3 This illustrative claim is quoted from the Claims Appendix (“Claims
App.”) set forth on pages 53—57 of the Appeal Brief.
4 US 6,748,057 B2 issued June 8, 2004.
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Application 12/088,332
ANALYSIS
Claims 27, 33, 36, and 41 are the independent claims on appeal, with
the rest of the claims on appeal (i.e., claims 29-32, 35, 38, 40, and 42^46)
depending therefrom. (See Claims App.)
Independent claim 27 recites “a communications nickname”
associated with “each of multiplicity of businesses.” (Claims App.)
Independent claims 33,36, and 41 similarly recite “a unique address for
communicating with each of said businesses,” “a unified communications
number,” and “a unified communications nickname.” (Id.) According to the
Appellant, the claimed embodiments allow a customer to contact a business
“by dialing, or otherwise inputting, the common number into a device
connected to a network operated by any one of a plurality of communication
service providers.” (Appeal Br. 6.)
Independent claims 27, 33, 36, and 41 also recite limitations involving
“router databases,” “rerouting information,” and “mapping.” (Claims App.)
According to the Appellant, the claimed embodiments “allow each of the
communication service providers to independently reroute a communication
addressed to [the business’s nickname]” and “[a]ny translation or mapping
of [this nickname] is performed at the service provider level — by the routing
equipment of the communication service provider accessed by the
customer.” (Appeal Br. 7.)
In the Appellant’s illustrated embodiment, each of the independent
service providers 42a-42d is shown linked to the nickname database 46.
(See Spec., Fig. 3.) More specifically, the nickname database 46 is shown
linked to each of the router databases 54a—54d of the respective independent
service providers 42a-42d. (See id.) Thus, Figure 3 shows “connections
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Application 12/088,332
linking database 46 to router databases 52.” (Appeal Br. 12.) The Appellant
explains that this “architecture” provides “a technical advantage by
creatively ‘bootstrapping’ existing routing equipment and forwarding
services used by independent communications systems to route data from
one communications access number to another.” {Id. at 8, 9.)
The Examiner does not maintain that the architecture illustrated in
Figure 3 does not provide the particular technical advantage asserted by the
Appellant. (See Answer 2—53.) Instead, the Examiner maintains that this
“supposed advantage” is “outside the scope of the actual claim language.”
{Id. at 47.) According to the Examiner, “the only technology recited in [the
independent claims]” is a component (i.e., a database and/or a coordination
unit) that “could simply be a disk drive storing material.” (Non-Final
Action 3—4.)
A foremost issue in our analysis of the Examiner’s rejections under
both § 101 and § 102 is whether the independent claims recite limitations
implicating the illustrated architecture. In this regard, we disagree with the
Examiner’s insinuation that the claims on appeal do not recite limitations
requiring interaction (i.e., communication and/or coordination) between the
nickname database and each of the independent service providers.
Independent claim 27 recites that the nickname database is
“configured to communicate with router databases of said communications
providers.” (Claims App.) Independent claim 33 recites using the nickname
database to “communicate” and “provide” routing/rerouting information “to
said communication service providers.” {Id.) Independent claim 36 recites
“mapping,” in the nickname database, “[a] unified communications number
to each address for said business issued by the communication service
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Application 12/088,332
providers.” (Id.) Independent claim 41 recites “providing rerouting
information” from the nickname database to enable “communication service
providers of a business to provide a unified communication nickname.” (Id.)
We agree with the Appellant that these recited limitations require
interaction (i.e., communication and/or coordination) between the nickname
database and each of the business’s independent service providers, which is
the hallmark of the illustrated architecture. (See e.g., Appeal Br. 13, 16—17,
30-31,37.)
Thus, we determine that the claims on appeal do indeed recite
limitations implicating what the Appellant calls the “claimed architecture.”
(See, e.g., Appeal Br. 8, 46, 47.) And, as discussed above, the Examiner
does not persuasively challenge the Appellant’s position that this
architecture provides a particular technical advantage. With this in mind, we
turn to the Examiner’s specific rejections.
Rejection I— 35 U.S.C. §101
In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme
Court provided a two-step test to evaluate whether a claim is eligible under
§ 101.5 For the purposes of this appeal, we focus on the second step of the
5 As for the first step of the Alice test, suffice it to say that we agree with the
sentiment, of both the Examiner and the Appellant, that the claims on appeal
are directed to a concept that involves providing a mnemonic for an entity
(e.g., a business). (See Answer 28; Appeal Br. 6.) The Appellant does not
persuasively challenge, and we do not necessarily disagree with, the
Examiner’s determination that a mnemonic-providing concept is an abstract
idea. As for the specific limitations that the Appellant asserts amplify the
claims beyond an abstract idea (see Reply Br. 6—7, 14—15, 18—17, 21—23) we
defer our consideration of their narrowing effect for step two of the Alice
analysis.
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Application 12/088,332
Alice test which requires the consideration of “the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355.
The Examiner establishes that the recited elements, “individually,”
fail to “‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355. We agree with the Examiner that the claims
appear to recite “generic computer structure” that “perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry.” (Non-Final Action 12.) And
the Appellant does not assert that it invented the databases, routers, or other
computer-related equipment recited in the claims on appeal.
However, the Examiner does not sufficiently establish that the
“ordered combination” of the recited elements also fails to ‘“transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
2355. “An inventive concept can be found in the non-conventional and non­
generic arrangement of known, conventional pieces,” even if these pieces
constitute generic computer, network, and internet components. Bascom
Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016). As discussed above, the Appellant explains that the claimed
architecture (i.e., the ordered combination and arrangement of the recited
elements) provides a particular technical advantage. And, as also discussed
above, the Examiner does not persuasively challenge the Appellant’s
position on this matter.
Accordingly, the Examiner has not sufficiently established, on the
record before us, that independent claims 27, 33, 36, and 41 (and the claims
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Application 12/088,332
depending therefrom) do not pass muster under step two of the Alice test.
Thus, we do not sustain the Examiner’s rejection of claims 27, 29—33, 35,
36, 38, and 40-46 under 35 U.S.C. § 101.
Rejection II— 35 U.S.C. §102
“[I]n order to demonstrate anticipation,” the Examiner must show that
“the four comers of a single, prior art document describe every element of
the claimed invention.” Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008) (internal quotation marks and citation omitted).
Moreover, this single prior art document must disclose “not only all of the
limitations claimed but also all of the limitations arranged or combined in
the same way as recited in the claim.” Id.
The Examiner establishes that Ranalli discloses elements recited in
independent claims 27, 33, 36, and 41. (See Non-Final Action 11—12.) We
agree with the Examiner (see id.) that Ranalli discloses a coordination unit
(directory service 12) comprising a database (database 19) associating each
of a multiplicity of businesses (records 24) with a communication nickname
(its telephone number) for a plurality of independent communication
providers (PSTN, Internet). (See Ranalli, Figs. 1—3.)
However, the Examiner does not sufficiently establish that Ranalli
discloses the elements arranged or combined in the same way as recited in
the claims (i.e., the claimed architecture). (See Appeal Br. 9-27.) As
discussed above, independent claims 27, 33, 36, and 41 require interaction
(i.e., communication and/or coordination) between the nickname database
and each of the independent service providers. With Ranalli’s architecture,
the nickname database (i.e., directory service database 19) communicates
and coordinates with the customer’s computer (i.e., the end user), but does
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Application 12/088,332
not interact with the independent service providers (PSTN, Internet) of the
business being contacted by the customer. (See Ranalli Fig. 1.)
Accordingly, the Examiner has not sufficiently established, on the
record before us, that independent claims 27, 33, 36, and 41 (and the claims
depending therefrom) are anticipated by Ranalli. Thus, we do not sustain
the Examiner’s rejection of claims 27, 29-33, 35, 36, 38, and 40-46 under
35 U.S.C. § 102(b).
DECISION
We REVERSE the Examiner’s rejections of claims 27, 29-33, 35, 36,
38, and 40-46.
REVERSED
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