Ex Parte Surette

Patent Trial and Appeal Board

Sep 16, 2014

12132596 (P.T.A.B. Sep. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CRAIG MICHAEL SURETTE
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Appeal 2012-005372
Application 12/132,596
Technology Center 2600
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Before MAHSHID D. SAADAT, ELENI MANTIS MERCADER,
and MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1–6, 9–15, and 18. Claims 7, 8, 16, 17, 19, and 20
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to providing language interpretation
services to users through a portable access system. See Spec. ¶¶ 3, 15.
Exemplary independent claim 1 reads as follows:
1. A method comprising:
providing a user with a prepaid account with a
predetermined number of units for live language interpretation
service;
providing a live language interpretation service, through
a telephone call, to the user; and
deducting one or more units from the predetermined
number of units in the prepaid account based on an amount of
units of language interpretation service provided to the user in
addition to any units charged by a telephone service provider
for telephone service based on a duration of the telephone call
in which the live language interpretation service is provided to
the user.
Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims
on appeal:
D’Urso et al. (D’Urso) 5,353,335 Oct. 4, 1994
Davitt et al. (Davitt) 5,392,343 Feb. 21, 1995
Nelson US 2003/0086548 A1 May 8, 2003
Rejections
Claims 1, 11, and 18 stand rejected under the judicially-created
doctrine of nonstatutory obviousness-type double patenting as being
unpatentable over U.S. Application No. 11/929,885 and U.S. Patent No.
7,376,415. See Non-final Office Action 4–8 (Nov. 29, 2010).
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Claims 1, 3–6, 9–11, 13–15, and 181 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over D’Urso and Davitt. See Ans. 3–9.
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over D’Urso, Davitt, and Nelson. See Ans. 9.

ANALYSIS
Double Patenting Rejection
Appellant acknowledges the Examiner’s rejection of claims 1, 11, and
18 under the judicially-created doctrine of nonstatutory obviousness-type
double patenting but does not present any arguments challenging the
rejection. See App. Br. 4. Rather, Appellant agrees to consider filing a
terminal disclaimer should the claims be found allowable. See id. With no
arguments from Appellant to consider, we sustain the Examiner’s double
patenting rejection of claims 1, 11, and 18.
Rejection under 35 U.S.C. § 103
1. Claims 1, 3–6, 9–11, 13–15, and 18
Appellant argues that the Examiner has erred in rejecting independent
claim 1 because the Examiner’s proposed combination is improper for (a)
failing to address Appellant’s discovery of a previously-unknown problem;
(b) failing to yield predictable results; (c) combining incompatible prior art
elements; and (d) failing to teach prepaid language interpretation units. See

1 We note that independent claim 18 recites “a computer useable medium.”
See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007); cf. Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential-in-part) (sustaining the
Examiner’s § 101 rejection of claims reciting “machine-readable storage
medium”). In the event of further prosecution, we leave to the Examiner to
consider claim 18 for compliance with 35 U.S.C. § 101.
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App. Br. 5–9. As independent claims 1, 11, and 18 recite similar features,
these arguments also apply to claims 11 and 18. See id. at 10. We disagree
with Appellant.
a. Previously-unknown problem
In concluding that claim 1 is obvious, the Examiner finds that the
claim recites a combination that both unites old elements with no change in
their respective functions and yields predictable results. See Ans. 10.
Without disputing the Examiner’s finding that claim 1 recites a combination
of old elements with no change in their respective functions, Appellant,
citing In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008),
contends that claim 1 is nonetheless nonobvious because it addresses the
previously-unknown problem of delays associated with using a credit card to
purchase a live language interpretation service. See App. Br. 5–7; see also
Omeprazole, 536 F.3d at 1379–80.
While a combination of old elements may be nonobvious in view of
the discovery of a previously-unknown problem, we find unpersuasive
Appellant’s argument. See Omeprazole, 536 F.3d at 1379–81. In
Omeprazole, the Federal Circuit agreed with the lower court’s conclusion of
nonobviousness based on the lower court’s finding that a person of ordinary
skill in the art would not have seen any need at all to combine the prior art
elements to obtain the claimed invention. See id. at 1380–81. In this case,
however, the Examiner identifies a reason for combining D’Urso and Davitt
to obtain Appellant’s claimed invention. See Ans. 4–5. The Examiner
points out that D’Urso teaches using a prepaid card for purchasing
translation services. See Ans. 3–4; see also D’Urso, Abstract. Recognizing
that D’Urso does not teach the claimed steps of providing a live language
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interpretation service and deducting from a prepaid account language
interpretation service units and telephone service units, the Examiner also
points out that Davitt teaches providing a live language interpretation service
and adding the billing for that service to the billing for the telephone call.
See Ans. 4; see also Davitt, Abstract, col. 2, ll. 43–50, col. 5, ll. 65–67. The
Examiner explains that Davitt’s teachings suggest modifying D’Urso’s
system to include Davitt’s live language interpretation service and billing
features in order to improve interpretation (or translation) services, (see Ans.
4–5), by allowing for live language interpretation and respective billing as
explicitly taught by Davitt. We find reasonable the Examiner’s explanation
for combining D’Urso and Davitt to obtain the claimed invention.
Accordingly, we are unpersuaded that the Examiner’s proposed combination
improperly fails to address Appellant’s discovery of a previously-unknown
problem.
Appellant further contends that the invention recited in claim 1
prevents delays in the live language interpretation service in addition to the
aforementioned delays associated with purchasing the service with a credit
card. See App. Br. 5–6. As the Examiner points out, these argued features
are not recited in the claim. See Ans. 9–10. Appellant’s arguments
therefore are not commensurate in scope with the claim.
Moreover, given that Appellant describes these argued features as
problems that the claimed invention addresses, (see App. Br. 5–6; Reply Br.
3), we note that the prior art need not suggest a combination that addresses
the same problem that the applicant addresses, see In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“In considering motivation in the obviousness
analysis, the problem examined is not the specific problem solved by the
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invention but the general problem that confronted the inventor before the
invention was made.”).
b. Predictable results
As to the Examiner’s finding that claim 1 recites a combination of old
elements that yields predictable results, Appellant contends that the claimed
invention adds complexity to a billing system that results in the removal of
delays associated with credit card purchases, which Appellant urges is not a
predictable result. See App. Br. 7. This argued feature of adding
complexity, however, is not recited in claim 1. Appellant’s argument
therefore is not commensurate in scope with the claim. (See Ans. 11.)
We note that Appellant cites Crocs, Inc. v. U.S. Int’l Trade Comm’n,
598 F.3d 1294 (Fed. Cir. 2010), in challenging the Examiner’s finding. See
App. Br. 7. That case is distinguishable from the case here. In Crocs, the
disputed claims actually recite a feature (i.e., a foam strap) that yields “more
than predictable results,” while Appellant’s claim 1 does not recite such
feature. See Crocs, 598 F.3d at 1298, 1308–11. Moreover, as in
Omeprazole, the Court in Crocs notes that “an ordinary artisan would not
have been motivated even to try, let alone make, this inventive
combination.” See Crocs, 598 F.3d at 1311. As discussed above, the
Examiner here provides a reasonable explanation for combining D’Urso and
Davitt to obtain Appellant’s claimed invention. See Ans. 4–5. Accordingly,
we are unpersuaded that the Examiner’s proposed combination is improper
for failing to yield predictable results.
c. Incompatible prior art elements
Appellant contends that the Examiner’s proposed combination renders
D’Urso unsatisfactory for its intended purpose under MPEP § 2143.01(V)
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because modifying D’Urso’s system to include additional units of live
language interpretation service would “completely vitiate” D’Urso’s
underlying theme of simplicity. See App. Br. 8. As the Examiner points
out, however, Appellant does not identify any discussion in D’Urso that
emphasizes simplicity. See Ans. 11. Even if the Examiner’s proposed
combination adds a level of complexity to D’Urso’s system, we find
Appellant’s argument unpersuasive. “Although statements limiting the
function or capability of a prior art device require fair consideration,
simplicity of the prior art is rarely a characteristic that weighs against
obviousness of a more complicated device with added function.” See In re
Dance, 160 F.3d 1339, 1344 (Fed. Cir. 1998). As Appellant does not
contend that the Examiner’s proposed combination limits the function or
capability of D’Urso’s system, we are unpersuaded that the Examiner’s
proposed combination is improper for combining incompatible prior art
elements.
d. Prepaid language interpretation units
Appellant argues that the Examiner’s proposed combination does not
teach a prepaid account with a predetermined number of units for live
language interpretation service. See App. Br. 8–9. In particular, Appellant
contends that the prepaid units in D’Urso are for telephone service, not for
language interpretation service. See id. Appellant also contends that Davitt
does not disclose predetermined units at all. See id. at 9. As discussed
above, however, the Examiner relies on D’Urso and Davitt together, not
separately, for teaching live language interpretation units. See Ans. 3–4.
The Examiner points out that D’Urso discusses using prepaid time units for
various services, including translation services, (see Ans. 12; see also
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D’Urso, Abstract, col. 3, ll. 35–36), while Davitt discusses providing a live
interpretation service and adding the billing for that service to the billing for
the associated telephone call, (see Ans. 4, 12; see also Davitt, Abstract,
col. 2, ll. 43–50, col. 5, ll. 65–67). The Examiner finds, and we agree, that
Davitt’s discussions suggest using D’Urso’s prepaid units for live
interpretation services. See Ans. 12.
Accordingly, we are unpersuaded that the Examiner’s proposed
combination is improper for failing to teach or suggest live language
interpretation units.
We note that Appellant further contends that D’Urso’s prepaid units
may be used for various services, while use of Appellant’s live language
interpretation units is limited exclusively to language interpretation services.
See App. Br. 9. As this limiting feature is not recited in claim 1, Appellant’s
argument is not commensurate in scope with the claim.
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claim 1 and, for the same reasons, the rejections of claims 3–6, 9–11, 13–15,
and 18, which were not separately argued, (see App. Br. 9-10).
2. Claims 2 and 12
Maintaining Appellant’s arguments with respect to independent
claims 1 and 11, Appellant does not separately argue features recited in
depending claims 2 and 12. We therefore sustain the Examiner’s § 103
rejection of claims 2 and 12 for the reasons discussed above.
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DECISION
The Examiner’s decision rejecting claims 1, 11, and 18 under the
judicially-created doctrine of nonstatutory obviousness-type double
patenting is affirmed.
The Examiner’s decision rejecting claims 1–6, 9–15, and 18 under
35 U.S.C. § 103(a) is affirmed.
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).

AFFIRMED

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