Ex Parte Wake et al

Patent Trial and Appeal Board

May 9, 2016

10231970 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/231,970 08/30/2002
23696 7590 05/11/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Susan L. Wake
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.
020593 8486
EXAMINER
DANIEL JR, WILLIE J
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSAN L. WAKE and JULIE YU
Appeal2014-009231 1
Application 10/231,970
Technology Center 2600
Before JEAN R. HOMERE, CAROLYN D. THOMAS,
and MICHAEL M. BARRY, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 3, 12, 13, 15-20, 22-33, 42, and 52-
84. App. Br. 8. Claims 1, 2, 4--11, 14, 21, 34--41, and 43-51 have been
canceled. Claims App. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Qualcomm, Incorporated.
App. Br. 3. In an earlier Appeal (2010-003452, decided June 25, 2012), we
affirmed the Examiner's rejections of claims 3, 5-35, 37--42, and 51. Judge
Lance L. Barry has been replaced herein with Judge Michael M. Barry.
Appeal2014-009231
Application 10/231,970
Appellants' Invention
Appellants invented a method and system for allowing a billing server
( 16) to track billing events (application sales and services) provided by a
third party application system (30, 32) to a wireless device (12, 18, 20, 22)
via a wireless network (14). Spec. i-f 1, Fig. 1. In particular, upon detecting
a billable event caused by an identified transaction between a wireless
device and a third party computing device (30, 32), a billing server (16)
generates billing information associated therewith, and forwards such
information to the network carrier of the wireless device. Spec. i-fi-1 15-17.
Illustrative Claim
Independent claim 3 further illustrates the invention. It reads as
follows:
3. A system for providing and billing for third party
applications or services to the wireless devices of subscribers to
a wireless network, comprising:
one or more wireless devices that each selectively
communicates with other computer devices across the wireless
network, each wireless device including a computer platform
configured to selectively download and execute software
applications thereon;
one or more third party computer devices configured to
selectively provide applications or services to the one or more
wireless devices across the wireless network, interaction of the
wireless devices with the applications or services of the third
party computer devices causing one or more billable events that
identify the interaction, wherein the interaction comprises at
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Appeal2014-009231
Application 10/231,970
least an access to a specific component of the application
service; and
at least one billing server configured to:
gather at least billable event data for the billable
events from the interaction of wireless devices with the
one or more third party computer devices;
effect payment of a third party for the billable
events caused by the interaction of the wireless devices
with the applications or services of that third party;
generate billing information based on the billing
event data; and
transmit the billing information to the wireless
network carrier.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Laraki US Patent Pub. No.: 2003/0233329 Al Dec. 18, 2003
(Filed Dec. 6, 2002)
Daase US 6,754,320 B2 Jun.22,2004
(Filed Jan. 11, 2001)
Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 3, 12, 13, 15-19, 22-25, 28, 30-32, 42, 52-56, and 73-84
stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Laraki.
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Appeal2014-009231
Application 10/231,970
2. Claims 20, 26, 27, 29, 33, and 57-72 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of
Laraki and Daase.
3. Claims 28-33, 67----69, and 79-81 stand rejected under 35 U.S.C. §
101 as being directed to nonstatutory subject matter. 2
ANALYSIS
We consider Appellants' arguments seriatim as they are presented in
the Appeal Brief (id. at 8-14), and the Reply Brief (id. at 2-5).
Anticipation Rejection
Appellants argue Laraki does not describe a wireless device
interacting with an application or service of a third party computing device
to cause a billable event that identifies the interaction (e.g., access to an
application or service provided by the third party device), as recited in claim
3. App. Br. 8, Reply Br. 3--4. In particular, Appellants argue Laraki's
disclosure of a user wirelessly downloading a music file from an affiliated
content provider does not describe the disputed limitations. Id. at 9-10
(citing Laraki i-f 45). According to Appellants, Laraki discloses a
2 Because Appellants amended the claims to recite a non-transitory
computer-readable medium as suggested by the Examiner, we agree with
Appellants that this rejection is moot, and is thereby withdrawn from this
appeal. Reply Br. 2 (referring to Amendment (dated Nov. 18, 2013) entered
by Advisory Action (mailed Dec. 4, 2014)).
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Appeal2014-009231
Application 10/231,970
subscription services table that identifies the subscription service (UID,
service ID) that permits the user to download the music file from the content
provider during a specific time, as opposed to identifying an actual
interaction between the user and the affiliated content provider. App. Br. 10.
Thus, because the disclosed subscription services table does not store an ID
for the actual transaction (e.g., downloading a music file), Appellants submit
that the stored identifiers (UI, service ID) instead identify the subscription
service, as a whole. Id. at 12-13. This argument is not persuasive.
At the outset, we note the claim language does not specifically require
storing the actual interaction between the wireless device and the content
provider. Instead, the claim merely requires a billable event caused by an
identified interaction wherein the wireless device accesses an application or
service of a third party computing device. Therefore, although Laraki' s
subscription services table does not include an entry identifying each actual
interaction between the wireless device and the content provider, it suffices
that the interaction is identifiable to cause a billable event. We thus agree
with the Examiner that Laraki' s disclosure of a wireless device downloading
a music file from a content provider describes a music file download
interaction between the wireless device and the content provider, wherein
the identified transaction causes a billable event. Ans. 29-31 (citing Laraki
i-fi-141--45). It follows Appellants have not shown error in the Examiner's
rejection of claim 3.
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Appeal2014-009231
Application 10/231,970
Regarding the rejection of claim 55, Appellants argue that Laraki does
not describe a menu or diagnosis of the application or service. App. Br. 14.
According to Appellants, although Laraki' s disclosure of a web site interface
may include a menu or diagnosis of an application, Laraki does not teach
that a user accessing such a menu or diagnosis tool is an interaction of the
wireless device with the application or service causes a billable event. Id.
(citing Laraki i-fi-132, 33). This argument is not persuasive.
Because the recited claim limitation requires at least a menu for
facilitating the user's access of the application/service from the third party
content provider, we agree with the Examiner's finding that Laraki's
disclosure of providing a user with an interface or a menu to download
content from a content provider teaches or suggests the disputed limitations.
Ans. 32. It follows Appellants have not shown error in the Examiner's
rejection of claim 55.
Regarding the rejection of claims 12, 13, 15-19, 22-25, 28, 30-32,
42, 52-54, 56-62, and 73-84, because Appellants have either not presented
separate patentability arguments or have reiterated substantially the same
arguments as those previously discussed for patentability of claims 3 and 55
above, claims 12, 13, 15-19, 22-25, 28, 30-32, 42, 52-54, 56-62, and 73-
84, fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Appeal2014-009231
Application 10/231,970
Obviousness Rejection
Because Appellants do not separately argue the rejection of claims 20,
26, 27, 29, 33, 57-72, Appellants have not shown error in the Examiner's
rejection of these claims for the same reasons set forth above.
DECISION
We affirm the Examiner's rejections of claims 3, 12, 13, 15-20, 22-
33, 42, and 52-84 as set forth above.
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).
AFFIRMED
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