Ex Parte Miyazaki

Board of Patent Appeals and Interferences

Mar 26, 2012

10255626 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TAKAO MIYAZAKI
____________________

Appeal 2010-001938
Application 10/255,626
Technology Center 2400
____________________

Before JEAN R. HOMERE, THU A. DANG,
and JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellant’s invention is directed to a server that either extends the
storage period of data or dynamically adjusts the data recording fee based
upon usage of the data; wherein, the server includes a counting device that
counts the number of times that the data is accessed and a recording fee
calculation device that calculates the reduction or increase in the recording
fee based upon this count (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A service server which receives information from a
communication device on an information supplier side, stores
the received information and provides the received information
to a communication device on an information demander side,
the service server comprising:

a receiving device which receives the information from
the communication apparatus on the information supplier side;

a first recording device which records the received
information and stores the recorded information such that the
stored information itself may be later supplied to the
information demander side;

a second recording device which records a storage fee as
a cost of storing the recorded information for a predetermined
time period;
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a first transmitting device which transmits the
information stored in the first recording device to the
communication device on the information demander side upon
an information service request from the information demander
side;

a counting device which counts an information service
number from the information demander side, the information
service number indicating a number of times the stored
information has been requested by the information service
requests from the information demander side; said counting
device counting the information service number for the
predetermined time period;

a third recording device which records the counted
information service number to be associated with the
information supplier; and

a recording fee calculating device which periodically
calculates a new storage fee by changing the storage fee
recorded in the second recording device for the predetermined
time period in accordance with the information service number
recorded in the third recording device and records the new
storage fee in the second recording device.

C. REJECTIONS1
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barnes US 6,970,475 Oct. 19, 1999
Alloul US 6,032,130 Feb. 29, 2000
Emodi US 2002/0016748 A1 Feb. 07, 2002
De Souza US 2002/0099653 A1 Jul. 25, 2002

1 The Examiner’s rejection of claims 1, 6, 11, and 17 under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention
has been withdrawn (Ans. 19).
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Rodriguez US 2002/0135794 A1 Sep. 26, 2002
Koenig US 7,167,855 B1 Jan. 23, 2007
(filed Aug. 11, 2000)

Claims 1, 6, and 11 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Koenig.
Claims 2, 3, 7, 8, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Koenig in view of Alloul.
Claims 4, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koenig in view of Barnes.
Claims 5, 10, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koenig in view of De Souza.
Claims 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Koenig in view of Emodi.
Claim 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koenig in view of Rodriquez.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that:
1. Koenig discloses/teaches a device “which periodically calculates a
new storage fee … in accordance with the information service number
recorded in the third recording device” (claim 1, emphasis added); and
2. the combination of Koenig and Rodriquez teaches or would have
suggested “extending a storage time of the stored information beyond the
predetermined time period in accordance with the information service
number” (claim 17, emphasis added).
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Koenig
1. Koenig is directed to a network-based consultant services
matching process and system; wherein, consultants and their services are
mapped to contacts needing their services (Abstract) and Distance Learning
Facility (DLF) courses are available for users of the system at an initial set-
up fee per agreement (col. 16, ll. 24-27).
2. The course can be archived for a specified period of access
determined by the corporate initiator during the initial set-up activity, such
that the course is maintained on a server for six months prior to deletion or
upon request and a longer period of retention may be requested at a small
storage fee charged each month of the retention period (col. 18, ll. 29-38).
3. A DLF engine maintains the counts of usage, storage, length of
course, and other information to provide a set of accounting records to be
used in billing reconciliation (col. 18, ll. 40-44).
Rodriquez
4. Rodriquez discloses a central server that includes a large
shared-disk repository 840 for storing a large volume of photo images for 30
days and extended up to 120 days; alternatively, the individual retailer can
request specific expiration periods (attributes) for their customer’s rolls of
film (¶ [0139]).
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IV. ANALYSIS
Claims 1, 6, and 11
Appellant provides separate, but similar, arguments with respect to
independent claims 1, 6, and 11 (App. Br. 12-17). Accordingly, we select
claim 1 as being representative of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant contends that “[a]lthough Koenig does detect instances of
content access and teaches assessing a fee for storing that content, Koenig is
directed to a very different problem than the present invention” (App. Br.
12). Appellant argues that Koenig “fails to disclose or suggest any kind of
dynamic fee adjustment methods or procedures tied to levels of information
demand” (id.) and that “Koenig does not disclose the archive storage fee as
being anything other than a fixed fee that is assessed periodically without
regard for data demand or usage levels” (App. Br. 13). Appellant asserts
that the “inventive storage fee assessment method … is different from a per-
use fee model because a per-use fee model does not require the calculation
of a new, periodically assessed storage fee based on usage levels” (App. Br.
14).
However, the Examiner finds that “Koenig clearly takes data demand
and usage levels into account for determining fees” (Ans. 17).
To determine whether the Koenig teaches a device which periodically
calculates a new storage fee “in accordance with the information service
number recorded in the third recording device” as recited in claim 1, we give
the claim its broadest reasonable interpretation consistent with the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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However, we will not read limitations from the Specification into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Claim 1 does not place any limitation on what “in accordance with the
information service number” means, includes, or represents other than that
the information service number is equal to a number of times the stored
information is requested. Thus, we give “in accordance with the information
service number” its broadest reasonable interpretation as in agreement with
the number of times that data is accessed, as consistent with the
Specification and as specifically defined in claim 1.
Koenig discloses that DLF courses and seminars are made available
for users of the system; wherein, an agreement is established at an initial set-
up fee (FF 1). The course can be archived for up to six months on the initial
set-up fee and, thereafter, on a month to month basis for an additional
monthly storage fee (FF 2). The DLF engine maintains the counts of usage,
storage, length of course, and other information to provide a set of
accounting records to be used in billing reconciliation (FF 3). We find that
the monthly storage fee for archiving the DLF course comprises periodically
calculating a new storage fee. We find further that the billing reconciliation
uses the count of the usage of the data stored in archive along with other
information to generate a fee assessment for billing the customer. That is,
we find that “periodically calculates a new storage fee by changing the
storage fee recorded in the second recording device for the predetermined
time period in accordance with the information service number” (claim 1)
reads on Koenig’s system having billing reconciliation that uses the count of
usage in generating accounting records.
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As to Appellant’s argument that the claims are related to a different
problem than Koenig, our reviewing Court finds that “[i]t is well settled that
the recitation of a new intended use for an old product does not make a claim
to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). “A reference may be from an entirely different field of endeavor
than that of the claimed invention or may be directed to an entirely different
problem from the one addressed by the inventor, yet the reference will still
anticipate if it explicitly or inherently discloses every limitation recited in
the claims.” Id. at 1478.
Accordingly, we find that Appellant has not shown that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(b) over Koenig; and
independent claims 6 and 11 which have been grouped therewith.
Claims 2-5, 7-10, 12-16, 18, and 19
Appellant argues that each of Alloul, Barnes, De Souza and Emodi
“add[s] nothing to Koenig … in establishing a prima facie case of
obviousness” and does “not remedy any of the noted deficiencies in Koenig”
(App. Br. 20).
As noted supra, however, we see no deficiencies in Koenig. We
therefore affirm the Examiner’s rejection of claims 2, 3, 7, 8, 12, and 13 over
Koenig in further view of Alloul; of claims 4, 9, and 14 over Koenig in
further view of Barnes; of claims 5, 10 and 15 over Koenig in further view
of De Souza; and of claims 16, 18, and 19 over Koenig in further view of
Emodi.
Claim 17
Appellant contends that although “Rodriguez teaches that ‘individual
retailers can request specific expiration periods for [the stored data],’” “this
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specified expiration attribute from Rodriguez has no conceptual
commonality with the ‘information service number’” (App. Br. 18).
Appellant asserts that neither reference “teach[es] or suggest[s] the concept
of dynamically extended the storage time of stored information beyond an
initially defined period based on how often that information is accessed”
(App. Br. 19).
However, the Examiner finds that Rodriguez discloses that “[t]he
information contained in the specified expiration attribute is user’s/retailer’s
requests” and that “[t]his information tracks how many times the stored
information (images) is transmitted to the information demander
(users/retailers) in response to the information service requests
(user’s/retailer’s requests)” (Ans. 18). Thus, “the specified expiration
attribute can reasonably be interpreted by one of ordinary skill in the art as
the claimed ‘information service number’” (id.).
In the Reply Brief, Appellant contends that “Rodriguez’ teaching of
storing image data for a predetermined time period on a central server is not
related to, or suggestive of, a storage time calculation scheme where storage
time extensions or additions are determined based on the frequency of access
of or use of particular data” (Reply Br. 3).
As noted supra, Koenig discloses that DLF courses may be archived
for an additional monthly storage fee (FF 1 and 2). The DLF engine
maintains the counts of usage, storage, length of course, and other
information to provide a set of accounting records to be used in billing
reconciliation (FF 3). Although Koenig discloses that the DLF engine
maintains the counts of usage and that the archival of the DLF courses
extending a storage time of the stored DLF course beyond the predetermined
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time period (6 months), the recited portions of Koenig are silent as to an
indication that the storage time is extended beyond the predetermined time
period in accordance with the usage count.
In addition, Rodriquez discloses a central server that stores large
volumes of photo images which may be extended for up to 120 days using a
specific expiration attribute associated with a customer’s roll of film (FF 4).
Although the Examiner finds that “the specified expiration attribute [of
Rodriquez] can reasonably be interpreted by one of ordinary skill in the art
as the claimed ‘information service number’” (Ans. 18), the recited portions
of Rodriquez are silent as to the expiration attribute comprising the number
of times that the photo images are requested and accessed. That is, we find
that neither Rodriquez nor Koenig discloses a method that includes
“extending a storage time of the stored information beyond the
predetermined time period in accordance with the information service
number” as recited in claim 17.
Accordingly, we find that Appellant has shown that the Examiner
erred in rejecting claim 17 under 35 U.S.C. § 103(a) over Koenig in view of
Rodriquez.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1, 6, and 11 under 35 U.S.C. §
102(e) and claims 2-5, 7-10, and 12-19 under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) is reversed.
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-IN-PART

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