Ex Parte Vrbaski et al

Patent Trial and Appeal Board

Sep 23, 2016

13343357 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/343,357 01/04/2012
76614 7590
Terry W, Kramer, Esq,
Kramer & Amado, P.C.
330 John Carlyle Street
3rd Floor
Alexandria, VA 22314
09/27/2016
FIRST NAMED INVENTOR
Mira Vrbaski
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.
ALC 3763 7848
EXAMINER
BURGESS, BARBARA N
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
mail@krameramado.com
ipsnarocp@alcatel-lucent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIRA VRBASKI, LUI CHU YEUNG,
HAMDY FARID, and ALLEN ROBINSON
Appeal2015-004699
Application 13/343,357
Technology Center 2400
Before ST. JOHN COURTENAY III, TERRENCE W. McMILLIN, and
NORMAN H. BEAMER, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Non-
Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
Appeal2015-004699
Application 13/343,357
Invention
The disclosed and claimed invention on appeal relates "generally to
telecommunications networks." (Spec. i-f 1.) More particularly, the
invention relates "to a method performed by a policy and charging rules
node (PCRN) of generating a notification message." (Abstract.)
Representative Claim 1
1. A method performed by a policy and charging rules node
(PCRN) of generating a notification message, the method
compnsmg:
[L 1] defining a notification server profile including an address
of a notification server;
defining a notification template including a message body and a
variable;
defining an action rule including a condition, a first action
implementing a policy decision, and a second action for
sending a notification message;
evaluating the condition of the action rl1le using a r11les engine
based on context information related to the state of a mobile
network;
[L2] determining, by the rules engine, a result set including a
value of an attribute determined by the first action;
placing the value of the attribute m the variable to form a
notification message; and
[L3] sending the notification message to the address of the
notification server.
(Emphasis and bracketed lettering added to highlight contested limitations
(LI, L2, and L3).)
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Application 13/343,357
Rejection
Claims 1-20 are rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Li et al. (US 2013/0031231 Al; Jan. 31, 2013)
and Batz et al. (US 2006/0047814 Al; Mar. 2, 2006).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all rejected
claims on the basis of representative independent claim 1, except for
dependent claims 2 and 15, which are argued separately, and addressed
infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. For the reasons discussed below, and regarding contested
limitations LI, L2, and L3 of representative claim 1, we disagree with
Appellants' arguments. However, for essentially the same reasons argued
by Appellants, we reverse the Examiner's rejection of dependent claims 2
and 15. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Independent Claim 1under35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Li and Batz would have taught or suggested contested
limitations LI, L2, and L3, within the meaning of claim 1 ?1
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
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Appeal2015-004699
Application 13/343,357
To the extent that Appellants may substantively contest limitations
L 1, L2, and L3, we are not persuaded by Appellants' arguments, because
they are not responsive to the Examiner's specific findings. 2 In reviewing
the administrative record, we find the Examiner's legal conclusion of
obviousness is supported by a preponderance of the evidence, for the
following reasons:
Limitation LI
Regarding contested limitation L 1 ("defining a notification server
profile including an address of a notification server"), Appellants contend:
"While Li may disclose 'notification server 5,' Li is silent regarding the
claimed definition of a notification server profile." (App. Br. 7 .)
However, Appellants have not identified any definition of a
"notification server profile" in the Specification that would preclude the
Examiner's reading.3 (See Ans. 3--4). Turning to the Specification for
1048, 1054 (Fed. Cir. 1997). See, e.g., Spec. i-f 84 ("the foregoing
disclosure, description, and figures are for illustrative purposes only and do
not in any way limit the invention, which is defined only by the claims.").
2 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). Accord Ex parte Belinne, No. 2009-004693, 2009 WL 2477843,
at *4 (BP AI Aug. 10, 2009) (Informative) ("Appellants' argument ...
repeatedly restates elements of the claim language[] and simply argues that
the elements are missing from the reference.")
3 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
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Appeal2015-004699
Application 13/343,357
context, we merely find non-limiting descriptions of exemplary notification
server profiles (e.g., see i-fi-16-7). 4 In construing the contested definition as
recited in the claim ("defining a notification server profile including an
address of a notification server;"), we conclude "defining a notification
server profile" merely requires "including an address of a notification
server," under a broad but reasonable interpretation of claim 1.5
The Examiner cites to Li, inter alia, paragraphs 13 8 and 14 7, as
evidence in support of the rejection. Both cited paragraphs (id.) expressly
describe: "[ w ]herein the account information notification control
information [i.e., a 'profile'] includes a network address of a web
notification server," which we find would have taught or suggested
contested limitation L 1. (Emphasis added).
also lfelmsderfer v. Bobrick TÂ¥ashroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
4 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir.
2015) ("This court has repeatedly 'cautioned against limiting the claimed
invention to preferred embodiments or specific examples in the
specification."') (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)).
5 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appeal2015-004699
Application 13/343,357
Limitation L2
Regarding contested limitation L2 ("determining, by the rules engine,
a result set including a value of an attribute determined by the first
action;"), Appellants merely contend:
On page 3, the Office Action cites more paragraph numbers
from Li but fails to provide any explanation or articulated
reasoning. Appellant[ s] respectfully submit[] that Li is silent
regarding the claimed determination of a result set.
(App. Br. 7.)
As evidence supporting the rejection, the Examiner cites to Li at
paragraphs 82, 90, and 106 (Non-Final Act. 3), and further explains the basis
for the rejection in the "Response to Argument" section of the Answer. The
Examiner finds, inter alia, that Li's online charging system
determines that the predetermined condition is satisfied from
the message. Specifically, the message includes the amount of
data (attribute) consumed by Mr. Zhang reaches or exceeds the
first predetermined threshold (attribute) of 4.5 GB for the past
first duration this month (attribute), e.g., 20 days (result set)
(paragraphs [0011, 0065-66, 0100-101, 0110-111])."
(Ans. 4--5.)
Appellants do not further substantively respond to the Examiner's
findings in the Reply Brief, other than to present an untimely argument that
the additional step of "defining an action rule ... implementing a policy
decision" is "subject matter that the Examiner fails to address in the context
of the claimed result set." (Reply Br. 2.) 6 However, Appellants have not
addressed the Examiner's specific findings regarding Li's paragraphs 6, 7,
6 See 37 C.F.R. § 41.41(b)(2).
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60, 65---68, and 101-106, as teaching or suggesting the newly argued step of
"defining an action rule ... implementing a policy decision .... " (Claim 1.)
Limitation L3
Regarding contested limitation L3 ("sending the notification
message to the address of the notification server"), Appellants urge:
On page 3, the Office Action cites paragraph numbers from Li
but fails to provide any explanation or articulated reasoning.
Appellant[s] respectfully submit[] that the Examiner cited the
same paragraph numbers for "defining a notification server
profile including an address of a notification server."
(App. Br. 8).
Although the Examiner does rely on the same paragraph numbers (as
argued by Appellants (id.)), we find at least paragraph 113 of Li would have
taught or suggested contested limitation L3, as claimed:
B) The Final-Indicate-Unit, which includes a Final-Unit action
as a redirection action and a Redirection URL address, where
the Redirection URL address is the network address of the
notification server 5.
(Li i-f 113, emphasis added).
Given this evidence (id.), we find Li at least suggests sending a
message "where the Redirection URL address is the network address of the
notification server 5." In the Non-Final Action (page 3), the Examiner relies
on Li's paragraphs 50-53, 82-83, 101, 106, and 121, as teaching or
suggestingforming the notification message, as claimed. Our reviewing
court guides that "[ c ]ombining two embodiments disclosed adjacent to each
other in a prior art patent does not require a leap of inventiveness." Boston
Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
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Application 13/343,357
For these reasons, and on this record, we find a preponderance of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness regarding the contested limitations of
independent claim 1. Because Appellants have not persuaded us the
Examiner erred, we sustain the§ 103 rejection of representative claim 1 over
the combination of Li and Batz. Grouped claims 1, 3-14, and 16-20 fall
with claim 1. 7 See Grouping of Claims, supra.
Dependent Claims 2 and 15
Regarding claims 2 and 15, Appellants contend:
On page 4, the Examiner cites various paragraph numbers from
Li without explanation. Li is actually silent regarding the
claimed "Simple Object Access Protocol (SOAP) based web-
service server." Thus, Appellant[ s] respectfully submit[] that
the Examiner has not presented a prima facie case of
obviousness.
f A-- D- (\\
v-"\.VV· ni. 7 J·
The Examiner disagrees, and discusses Li in the context of paragraphs
2, 52-56, and 79-83, and finds: "Therefore, Li discloses 'wherein the
notification server is a Simple Object Access Protocol (SOAP) based web-
service server'." (Ans. 6-7.)
7 Although Appellants argue that " [ s] imilar subject matter [to claim 1]
appears in claims 8 and 14" (App. Br. 7), we do not agree that independent
claim 8 is of similar scope to independent claims 1 and 14. Nevertheless,
Appellants do not advance separate, substantive arguments under 37 C.F.R.
§ 41.37(c)(l)(iv), regarding claim 8. Arguments not made are considered
waived. (Id.)
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Appeal2015-004699
Application 13/343,357
Although the Simple Object Access Protocol (SOAP) is a notoriously
well-known protocol, we agree with Appellants that Li is silent regarding the
"Simple Object Access Protocol (SOAP) based web-service server" recited
in claims 2 and 15. A text search of the secondary Batz reference reveals
that Batz is also silent regarding the SOAP protocol, and thus cannot remedy
the deficiency of Li.
In patent examination, it is the Examiner's burden to demonstrate a
prima facie case of obviousness that must satisfy the notice requirement of
35 U.S.C. § 132. See Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780
F.3d 1376, 1384 (Fed. Cir. 2015) (noting that the Patent Office "bears the
initial burden of showing a prima facie case of obviousness"). The Federal
Circuit guides "the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007).
[A ]ll that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of [35 U.S.C.] § 132. As the statute itself
instructs, the examiner must "notify the applicant," "stating
the reasons for such rejection," "together with such
information and references as may be useful in judging the
propriety of continuing prosecution of his application."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
This burden is met by "adequately explain[ing] the shortcomings [the
Office] perceives so that the applicant is properly notified and able to
respond." Hyatt, 492 F.3d at 1370. It is only "when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection" that the prima facie burden has not been
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Appeal2015-004699
Application 13/343,357
met and the rejection violates the minimal requirements of 35 U.S.C. § 132.
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Here, the Examiner fails to provide sufficient specific evidence of
record to support the Examiner's finding that the cited references teach or
suggest the contested "Simple Object Access Protocol (SOAP) based web-
service server." (Claims 2, 15.) (Ans. 6-7.) Because we find the rejection
of claims 2 and 15 fails to satisfy the minimal notice requirement of 3 5
U.S.C. § 132, we agree with Appellants the prima facie burden has not been
met for these dependent claims.
Therefore, we are constrained by the absence of any evidence in the
record which teaches or suggests a "Simple Object Access Protocol (SOAP)
based web-service server," as contested by Appellants regarding claims 2
and 15. Accordingly, we reverse the Examiner's rejection of dependent
claims 2 and 15.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least the aforementioned reasons, and on this record, we find a
preponderance of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding the
contested limitations of representative independent 1. However, we reverse
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Appeal2015-004699
Application 13/343,357
the rejection of dependent claims 2 and 15, for essentially the same reason
argued by Appellants, as discussed above. (App. Br. 9.) 8
8 In the event of further prosecution, we leave it to the Examiner to
consider whether at least method clairn l (broadly covering financial "policy
and charging rules") should also be rejected under 35 U.S.C. § 101. Vve note
abstract ideas have been identified by the courts by way of example, as
includingfundamental economic practices, certain methods of organizing
human activities, an idea of itself~ and rnathematical relationships and/or
formulas. See Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347,
2355-56 (2014). Here, we leave it to the Examiner to consider whether a
person would also be capable of perfonning the claimed steps or functions
as mental steps, or with the aid of pen and paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely
mental processes can lJe l1npate't1talJle~ even vvhen perft1rmed by a co111puter,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
That is, "a method that can be perfonned by human thought alone is merely
an abstract idea and is not patent-eligible under§ 101." (Id. at 1373.); see
also Enfish, LLC v. lvficrosqft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
("For instance,fimdamental economic and conventional business practices
are often found to be abstract ideas, even if performed on a computer.")
(Emphasis added). We urge the Examiner to "consider the elements of each
claim both individually and 'as an ordered cmnbination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1298, 1297)). The Supreme Court guides: "the mere recitation of a generic
computer cannot transfonn a patent-ineligible abstract idea into a patent-
eligible invention." (Id. at 2358.) Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
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DECISION
We reverse the Examiner's rejection of claims 2 and 15, under
35 U.S.C. § 103(a).
We affirm the Examiner's rejection of claims 1, 3-14, and 16-20,
under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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