Ex Parte Shah et al

Patent Trial and Appeal Board

Aug 10, 2018

12641896 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/641,896 12/18/2009
83719 7590 08/10/2018
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Saryu Shah
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008-1378 (40147/15301) 1505
EXAMINER
SWARTZ, STEPHENS
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
08/10/2018 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 SARYU SHAH, CHRISTIAN KOLMODIN, JACKSON LIU,
DAQIN LIU, SANJEETA MOHAPATRA, GLENN MOHESKY,
TIMOTHY PLATTNER, JASON TOLBERT, and MICHAEL ZINNIKAS 1
Appeal2017-004631
Application 12/641,896
Technology Center 3600
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
JUSTIN BUSCH, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1 through 16. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is AT&T Intellectual
Property I, L.P. App. Br. 2.
Appeal2017-004631
Application 12/641,896
INVENTION
Appellants disclosed invention is directed to a system and method for
receiving a service ticket, determining a likelihood of success of re-testing
the service ticket and performing additional steps, if the likelihood of
success is greater than a predetermined re-testing threshold. See Spec.,
Abstract. Claim 1 is representative of the invention and reproduced below.
1. A computer readable storage medium storing a set of
instructions executable by a processor, the set of instructions
being operable to:
receive a service ticket;
determine a likelihood of successfully completing an
automated re-test of the service ticket without user interaction,
wherein the likelihood of success is determined based on a
required amount of data, a number of testable points, an existence
of a manual re-test, and a number of pending orders on a facility
corresponding to the service ticket;
perform, when the likelihood of success is greater than a
predetermined re-testing success threshold, the steps of:
determine a waiting time of the service ticket;
add the service ticket to a service ticket queue containing
a plurality of service tickets, the service ticket queue being sorted
by a waiting time of each of the plurality of service tickets;
initiate performance of the service ticket, after an
expiration of the waiting time;
remove the ticket from the queue, when the performance
of the service ticket is successful; and
re-start the waiting time, when the performance of the
service ticket is unsuccessful.
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1 through 16 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Ans. 2.
2 Throughout this Decision we refer to the Appeal Brief ("App. Br.") filed
September 7, 2016, Reply Brief ("Reply Br.") filed January 25, 2017, Final
Office Action ("Final Act.") mailed March 24, 2016, Appellants'
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Application 12/641,896
The Examiner has rejected claims 1, 7, 9, and 15 under
35 U.S.C. § 103 as unpatentable over Benedetti (US 2007/0016907 Al;
Jan. 18, 2007) and Ashiri (US 2006/0053136 Al; Mar. 9, 2006). Ans. 3.
The Examiner has rejected claims 2, 3, 4, 5, 6, and 10 through 14
under 35 U.S.C. § 103 as unpatentable over Benedetti, Ashiri, and Nishikado
(US 7,130,912 B2; Oct. 31, 2006). Ans. 3.
The Examiner has rejected claims 8 and 16 under 35 U.S.C. § 103 as
unpatentable over Benedetti, Ashiri, Brevik et al., ( "Predicting Bounds on
Queuing Delay for Batch Scheduled Parallel Machines, "UCSB Technical
Report CS2005-26, Computer Science Department, University of California,
pp. 1-11 (Oct. 2006)), and Hill (US 2010/0088141 Al; Apr. 8, 2010).
Ans. 3.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. In construing the claims to consider Appellants' arguments
directed to the rejections under 35 U.S.C. § 103 and under 35 U.S.C. § 101,
we determine that the claims are ambiguous. Accordingly, we reverse the
Examiner's rejections under 35 U.S.C. § 103 and under 35 U.S.C. § 101 as
we are unable to ascertain the scope of the claims. Our reviewing court has
said that it is wrong to rely upon speculative assumptions as to the meaning
of claims when considering a prior art rejection. In re Steele, 305 F.2d 859,
862 (CCPA 1962).
Specification ("Spec.") submitted December 18, 2009, and the Examiner's
Answer ("Ans.") mailed November 25, 2016.
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Appeal2017-004631
Application 12/641,896
New rejection under 35 U.S.C. § 112
Independent claims 1 and 9 recite "receiving a service ticket,"
"completing an automated re-test of the service ticket," "adding the service
ticket to a ticket queue," and "performance of the service ticket." It is
unclear as to what is the scope of the term "service ticket," as it is not
apparent what item described as a "service ticket" can be received, re-tested,
queued, and performed.
The definiteness requirement "secure[ s] to the patentee all to which he
is entitled" and "apprise[ s] the public of what is still open to them."
Markman v. Westview Instruments, Inc., 517 U.S. 370,373 (1996)
( quotation and brackets omitted). The Office "determines the scope of
claims . . . not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction 'in light of the specification as
it would be interpreted by one of ordinary skill in the art."' Phillips v. A WH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (quoting In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); see also
Zietz, 893 F.2d 319,321. Applying the broadest reasonable interpretation of
a claim, then, the Office establishes a prima facie case of indefiniteness with
a rejection explaining how the metes and bounds of a pending claim are not
clear because the claim contains words or phrases whose meaning is unclear.
See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam).
Appellants' Specification does not provide a definition of what
constitutes a service ticket. Appellants' Specification in paragraph 1
discusses a service ticket as something that exists in large numbers when
there is a network outage, leading to the inference that a "service ticket" is a
complaint about service or indication of service outage. However, if the
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Application 12/641,896
term is construed in this manner, it is not clear how a received complaint or
indication is re-tested or performed as claimed.
The term "service ticket" could also be construed as an identifier that
a person is requesting service (similar to a ticket for an airline). In which
case the claimed performance of the service ticket is clear ( the performance
of service). However, the re-test of the service ticket is still not clear and it
is not clear how this relates to network outages as discussed in Appellants'
Specification.
Given that we are not able to ascertain the scope of the term "service
ticket," we now reject independent claims 1 and 9, as well as dependent
claims 2 through 8 and 10 through 16, under 35 U.S.C. § 112 second
paragraph.
Additionally, we also reject claims 1 through 16 under
35 U.S.C. § 112 first paragraph as not being enabled by Appellants'
disclosure. As discussed above, there are several possible interpretations of
the term service ticket. Applying either of the interpretations discussed
above, it is not clear from Appellants' Specification how the "service ticket"
would be re-tested, and thus the Specification does not enable the claimed
re-testing of a service ticket. "[E]nablement requires that the specification
teach those in the art to make and use the invention without 'undue
experimentation.' That some experimentation may be required is not fatal;
the issue is whether the amount of experimentation required is 'undue."' In
re Vaeck, 947 F.2d 488,495 (Fed. Cir. 199 1) (citation omitted).
Appellants' Specification discusses re-testing service tickets, however
Appellants' Specification does not identify what constitutes a service ticket
and how they are tested or re-tested. Thus, the skilled artisan has no
guidance as to what level of experimentation would yield the claimed
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invention. Accordingly, Appellants' disclosure does not provide an enabling
disclosure of re-testing a service ticket as claimed.
New rejection under 35 U.S.C. § 101
We also enter a new ground of rejection against claims 1 through 8
under 35 U.S.C. § 101. The claims recite a computer readable storage
medium. Appellant's Specification does not identify what comprises a
machine-readable storage medium. We do not consider the term computer
readable storage medium to be limited to non-transitory media, and thus, we
consider the claim broad enough to encompass a transitory signal. A signal
is not within one of the four categories of patentable subject matter as
defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed.
Cir. 2007). See also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential); Manual of Patent Examining Procedure ("MPEP") § 2106(1),
ed. 8, Rev. 9 (Aug. 2012). Accordingly, we now reject claims 1 through 8
under 35 U.S.C. § 101 as being drawn to subject matter that is not eligible
for patent protection under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's rejections of claims 1 through 16 under
35 U.S.C. § 103 and under 35 U.S.C. § 101.
We enter new grounds of rejection of claims 1 through 16 under
35 U.S.C. § 112 first and second paragraph.
We enter a new ground of rejection of claims 1 through 16 under
35 U.S.C. § 101 as not being directed to a patentable subject.
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). This section provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
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Application 12/641,896
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±)(2016).
REVERSED; 37 C.F.R. § 4I.50(b)
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