Ex Parte Moore et al

Board of Patent Appeals and Interferences

Jul 23, 2010

10404110 (B.P.A.I. Jul. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD G. MOORE, GREGORY L. MUMFORD,
DURAISAMY GUNASEKAR
____________

Appeal 2009-09115
Application 10/404,110
Technology Center 3600
____________

Before, ANTON W. FETTING, JOSEPH A. FISCHETTI and THU A. DANG,
Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37
C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or
the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-
90A cover letter attached to this decision.

Appeal 2009-009115
Application 10/404,110

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-74. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim a system and method for permitting access to services
through instant messaging. (Specification 2:[0004])
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for controlling usage of a service providing system, the method
comprising:
receiving indication that a first party, via an instant communications client
communicating to the service providing system in a first communications session,
is requesting that the service providing system perform a service;
responsive to the indication, determining a usage charge to be assessed for
the performing the service;
determining whether payment can be obtained for the usage charge
pertaining to the performing the service; and
conditionally causing the service providing system to perform the service
responsive to whether payment can be obtained for the usage charge.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Matsuda US 2002/0082905 A1 Jun. 27, 2002
Grabelsky US 2004/0003046 A1 Jan. 1, 2004
The following rejection is before us for review.
Appeal 2009-009115
Application 10/404,110

3
The Examiner rejected claims 1-74 under 35 U.S.C. § 103 as being
unpatentable over Matsuda in view of Grabelsky.
ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 1-74 on
appeal as being unpatentable under 35 U.S.C. § 103(a) over Matsuda in view of
Grabelsky on the grounds that a person with ordinary skill in the art would
understand that the corporation service in Matsuda would use a reliability rating as
a condition to providing services because the rating would indicate whether
payment will be obtained by the corporation for its usage charges?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Grabelsky discloses a single user may be associated with multiple
subscriptions for a single service while employing different identities. (¶[0026])
2. Matsuda discloses corporations provide services to the users via the
communities. (¶[0084])
3. The Examiner found with respect to the combination of Matsuda and
Grabelsky that:
… it would have been obvious to one of ordinary skill to
combine the teachings of Matsuda et al. and Grabelsky et
al. in order allow members of the community of Matsuda
et al. ('905, abstract) to obtain telecommunication
services ('046, paragraphs 43 and 52) without having to
Appeal 2009-009115
Application 10/404,110

4
provide marketing information such as personal interests
to the service provider ('905, abstract; paragraph 6).
(Answer 8)
4. The Examiner found with respect to the claim limitation of “conditionally
causing the service providing system to perform the service responsive to whether
payment can be obtained for the usage charge” that Matsuda discloses this feature,
inter alia, at ¶[0087]. (Answer 3)
5. Matsuda discloses a rating organization at ¶[0087]
…which is an external organization rates the reliability
of the community 81 by accessing the community
information database 22, payment information database
23, complaints database 25, and so forth, via the rating
organization server 12 described with reference to FIG.
2, rates the reliability of the community 81 based on, for
example, whether or not there are members who are late
making payments, members against whom complaints
have been filed, and so forth, and if necessary provides
information relating to the reliability of the community
81 to the corporation 72. Now, the information which
the rating organization 75 provides to the corporation 72
is only information relating to the community 81 and
does not contain personal information of the user 71
within the community 81, but an arrangement can be
conceived wherein, for example, the rating organization
75 obtains permission from the owner of the community
81, either by the rating organization 75 asking for such
permission from the owner or the owner desiring such,
and searches and confirms personal information for the
user 71 of the corresponding community 81 from the user
information database 21, thereby further increasing the
reliability of the community 81. (¶[0087])
Appeal 2009-009115
Application 10/404,110

5
ANALYSIS
We affirm the rejection of claims 1-74.
Initially, we note that the Appellants argue claims 1-74 together as a group
and elect representative claim 1 to decide the appeal of these claims.
(Appeal Br. 8) Therefore, we address only claim 1. Claims 2-74 fall with claim 1.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants argue that
… the proposed combination is improper because the
whole point of the system of Matsuda et al. is to provide
services and/or merchandise without knowing the
personal information of the users, or customers, while the
system of Grabelsky et al. is designed specifically for the
exchange of personal information. Thus, the objectives of
the references are antithetical to each other.
(Reply Br. 4)
We disagree with Appellants because Appellants’ argument hinges on the
type of content in the information being exchanged which we decline to give
patentable weight. Patentable weight need not be given to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir.
1994).
We further disagree with Appellants’ argument that the objectives of the
references are antithetical to each other. This is because we find in Grabelsky, a
single user may be associated with multiple subscriptions for a single service while
employing different identities. (FF 1) That is, in Grabelsky, a user who uses
Appeal 2009-009115
Application 10/404,110

6
different identities, e.g. aliases, would not be antithetical to the goal of Matsuda of
keeping the user’s identity private because in permitting different user identities,
Grabelsky can conceal a user’s real identity, or at least confuse it by ambiguity.
Conversely, Matsuda discloses that the rating organization 75 may obtain
permission from the owner of the community 81, and then search and confirm
personal information of a user in the corresponding community (FF 5). Thus,
when looked at from either side of user privacy, both Matsuda and Grabelsky can
be seen as sharing similar features depending on the goal to be achieved.
Appellants next argue that “the Examiner did not provide any explicit reason
to combine the references based on some rational underpinning.” (Appeal Br. 12)
To the extent Appellants seek an explicit suggestion or motivation in the reference
itself, this is no longer the law in view of the Supreme Court’s recent holding in
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Since the Examiner
has provided some articulated reasoning with some rational underpinning for
why a person with ordinary skill in the art would modify Matsuda to obtain
telecommunication services, Appellants’ argument is not persuasive as to error
in the rejection. That is, we find that the Examiner gave an explicit reason for
making the combination, i.e., to “obtain telecommunication services …without
having to provide marketing information such as personal interests to the
service provider….” (FF 3). We find this explanation to be reasonable in that the
community based system in Matsuda is integrated with corporate services
Appeal 2009-009115
Application 10/404,110

7
(FF 2), and thus would effectively be served by instant communications between
its users and the integrated corporate services.
Finally, Appellants argue that the proposed combination fails to meet the
claim limitation of conditionally causing the service providing system to perform
the service responsive to whether payment can be obtained for the usage charge.
(Appeal Br. 13-14)
We disagree with Appellants. The Examiner found with respect to this
claim limitation that Matsuda discloses the conditional feature as implemented by a
rating organization for the service providing corporations (FF 4, 5). That is,
according to Matsuda, a service corporation may obtain information on the
reliability of a community based, for example, on whether or not there are
members who are late making payments. (FF 5). We find that it is a matter of
common sense to conclude that the corporation would use the reliability rating as a
condition to providing its services because the rating would be an indicator of
whether the corporation will be paid for its services. “Common sense teaches,
however, that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, at 420.

Appeal 2009-009115
Application 10/404,110

8
CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred in
rejecting claims 1-74 under 35 U.S.C. § 103 as being unpatentable over Matsuda in
view of Grabelsky.
DECISION
The decision of the Examiner to reject 1-74 is AFFIRMED.
AFFIRMED

JRG

VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909