Ex Parte Minear et alDownload PDFPatent Trial and Appeal BoardJun 22, 201711349380 (P.T.A.B. Jun. 22, 2017) 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. 11/349,380 02/06/2006 Brian Minear 010240C1 6606 23696 7590 06/26/2017 OTTAT mMM TNmRPORATFD EXAMINER 5775 MOREHOUSE DR. SAN DIEGO, CA 92121 HAQ, NAEEM U ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 06/26/2017 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): us-docketing@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN MINEAR, RICHARD WAYNE GARDNER III, STEPHEN A. SPRIGG, PHIL TIEN NGUYEN, MITCHELL B. OLIVER, and ERIC J. LEKVEN1 Appeal 2016-005419 Application 11/349,380 Technology Center 3600 Before JOHN A. EVANS, JOHN D. HAMANN, and JASON M. REPKO, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Non-Final Rejection of Claims 26-45 and 51—59, all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 1 According to Appellants, the real party in interest is QUALCOMM Incorporated. See Appeal Br. 3. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed November 30, 2015, “App. Br.”), the Reply Appeal 2016-005419 Application 11/349,380 STATEMENT OF THE CASE The claims relate to systems and methods for provisioning downloadable subscription-based software to a wireless device. See Abstract. INVENTION Claims 26, 33, 37, 38, 42, 51, 57, 58, and 59 are independent. An understanding of the invention can be derived from a reading of Claim 26, which is reproduced below with some formatting added: 26. A method of operating a computer system that is configured to provide downloadable subscription-based software applications across a wireless network, comprising: receiving a subscription-based application download data at the computer system from an application download server corresponding to a download from the application download server to a wireless device of a subscription-based software application; receiving, at the computer system over the wireless network, a subscription-based application deletion data passively transmitted in response to a deletion from the wireless device of a corresponding subscription-based software application; calculating at the computer system a subscription fee associated with a usage of said corresponding subscription- Brief (filed April 26, 2016, “Reply Br.”), the Examiner’s Answer (mailed March 28, 2016, “Ans.”), the Non-Final Action (mailed July 24, 2015, “Non-Final Act.”), and the Specification (filed February 6, 2006, “Spec.”) for their respective details. 2 Appeal 2016-005419 Application 11/349,380 based software application between said download and said deletion; and transmitting said subscription fee from the computer system to a billing module of said computer system. Rejections Claims 26-45 stand rejected under 35 U.S.C. § 112 as failing the written description requirement. Non-Final. Act. 2—3. Claims 26-45 and 51—59 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception to statutory subject matter. Non-Final. Act. 3-5. ANALYSIS We have reviewed the rejections of Claims 26-45 and 51—59 in light of Appellants’ arguments that the Examiner erred. We consider Appellants’ arguments seriatim, as they are presented in the Appeal Brief, pages 7—16. Claims 26-45: Written Description The Examiner finds the Specification fails to disclose an algorithm as to how the subscription fee is calculated which questions whether Appellants truly possessed this feature at the time of filing. Non-Final Act. 3. Appellants refer to the Specification which discloses: In downloading the application, the wireless device 12, 18, 20, 22 has subscribed to the application and the user/owner of the wireless device will be billed under whatever terms the subscription entails, which is typically a recurrent periodic fee. App. Br. 8 (citing Spec., 135). 3 Appeal 2016-005419 Application 11/349,380 The Examiner finds Appellants’ disclosure goes to enablement, but not to written description, i.e., whether Appellants possessed the invention. Ans. 3. We agree with Appellants that an “objective standard for determining compliance with the written description requirement is, ‘does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed’.” Reply Br. 2 (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). We find the claimed calculation, in light of the Specification disclosure, even without an explicit arithmetic algorithm, “reasonably conveys to the artisan that the inventor had possession at [the time of the invention] of the later claimed subject matter.” Id. (quoting Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Claims 26-45 and 51-59: Novel and Non-Obvious The present Application has been allowed as novel and non-obvious over the prior art. See App. Br. 14; Application 11/349,380 File History. Claims 26-45 and 51-59: Non-statutory, Abstract Idea The Examiner finds Claims 26-45 are directed to calculating a fee for the use of a product or service. Non-Final Act. 3. The Examiner finds calculating a fee is an abstract idea because it can be performed manually and is similar to the fundamental economic activity at issue in Alice Corp. Id. The Examiner finds Claims 29, 36, 41, and 45 are directed to the abstract concept of billing for a subscription. Id. at 4. The Examiner finds Claims 4 Appeal 2016-005419 Application 11/349,380 51—59 are directed to the abstract concept of terminating the billing for a subscription. Id. Appellants contend the claims recite further limits that do not “tie-up” the alleged abstract ideas of “calculating a fee for a product or service,” “billing for a subscription,” or “terminating a subscription billing.” App. Br. 10. Appellants argue “[1]imitations that may be enough to qualify as ‘significantly more; when recited in a claim with a judicial exception include . . . Adding a specific limitation other than what is well-understood, routine and conventional in the field.” Id. at 11 (quoting Interim Eligibility Guidance § l.B.l). Appellants further argue in view of the claims allowance over the prior art, they cannot be considered “well-understood, routine and conventional.” Id. at 14. The Examiner finds, under Step 2A of the Alice analysis, “the claims are directed to an abstract idea without adding significantly more to the idea itself.” Ans. 5. The Examiner finds, under Step 2B of the Alice analysis, “[cjlaims 26—36 recite the additional limitations of a computer system, wireless network, server, and wireless device. These limitations are generic computer components that are recited at a high level of generality to perform their basic functions of processing, storing, receiving, transmitting, and displaying data through a program that implements the abstract idea.” Id. Appellants reply the generic components of their claims are insufficient to demonstrate that it is “well-known, routine and conventional” to transfer specific information in response to specific triggers between two particular network end-points, such as a wireless device transmitting a notification of an application deletion event to a billing system.” Reply Br. 5 Appeal 2016-005419 Application 11/349,380 18.3 Appellants further argue the Examiner has not demonstrated a nexus between software deletion and billing. Appellants maintain that individual claim elements cannot simply be parsed out to show that each component is well-known individually when the combination is not well-known. Id. We agree with Appellants. The Supreme Court has established a two-part test to distinguish patents that claim one of the patent-ineligible exceptions to statutory subject matter from those that claim patent-eligible applications of those concepts. Alice Corp. v. CLSBanklnt’l., 134 S. Ct. 2347, 2354 (2014) (citingMayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1296-97 (2012). As directed by the Federal Circuit, we begin with Step 1 whether the claims are “directed to” a patent-ineligible concept. Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016). The Examiner finds the claims are directed to calculating a fee for the use of a product or service, an abstract idea. Non-Final Act. 3. However, the Examiner’s finding merely refers to a gist of the invention. However, the Supreme Court “has made it clear . . . that there is no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 344-45 (1961). Claim 26 does more than merely calculate a fee. Rather, Claim 26 recites a server receives a wireless notification from a remote location when subscription software is 3 Appellants’ Reply Brief is unpaginated. The cited page numbers refer to the electronic Record. 6 Appeal 2016-005419 Application 11/349,380 downloaded and when the subscription software is deleted. Based on the time differential between the two notifications, the server then calculates a usage fee. Thus, Claim 26 is not “directed to” a patent-ineligible abstract idea. If, as here, the answer to the Step 1 question is no, “the inquiry is over: the claim falls within the ambit of § 101.” CellzDirect, 827 F.3d at 1047. Independent Claims 33, 37, 38, 42, 51, 57, 58, and 59 recite limitations commensurate with those of Claim 26. We find the claims are not “directed to” a patent-ineligible abstract idea and thus, fall within the ambit of patent-eligible subject matter of 35 U.S.C. § 101. DECISION The rejection of Claims 26-45 under 35 U.S.C. § 112 is REVERSED. The rejection of Claims 26-45 and 51—59 under 35 U.S.C. § 101 is REVERSED. REVERSED 7 Copy with citationCopy as parenthetical citation