Ex Parte Baumgarten et al

Patent Trial and Appeal Board

Aug 3, 2017

12449321 (P.T.A.B. Aug. 3, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/449,321 12/23/2009 Hans-Georg Baumgarten BAUMGARTEN 8676
20151 7590 08/07/2017
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
708 THIRD AVENUE
SUITE 1501
NEW YORK, NY 10017
EXAMINER
CRAWLEY, TALIA F
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/07/2017 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):
INFO @ FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-GEORG BAUMGARTEN and HANS ROHNERT
Appeal 2016-000004
Application 12/449,3211
Technology Center 3600
Before WILLIAM V. SAINDON, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 21^42. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Siemens
Aktiengesellschaft. (Appeal Br. 3.)
Appeal 2016-000004
Application 12/449,321
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to “a method for determining
billing information in a communication network.” (Spec. 19.2)
Claims 21, 37, and 40 are the independent claims on appeal. Claim 21
is illustrative. It recites:
21. A method for determining billing information in a
communication network, comprising:
storing content in a memory module in the communication
network; and
determining variable billing information, which varies
over time, for said content by a criteria module based on a
function of an age of the content, the age of the content being
defined with regard to a first transmission of the content to a
subscriber terminal device, with regard to an event to which the
content relates, or with a set of discrete age levels which relate to
a period of time between first publication of the content and a
specific, subsequent time, and
wherein the storing and determining are performed by one
or more processors.
REJECTIONS
Claims 21—31 and 34^42 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Deshpande (US 2002/0176579 Al, pub.
Nov. 28, 2002), Shirai (EP 1,296,481 Al, pub. Mar. 26, 2003), Muller
(US 2007/0198421 Al, pub. Aug. 23, 2007), and Watson
(US 2004/0133923 Al, pub. July 8, 2004).
2 References to “Spec.” refer to the “Substitute Specification” filed
August 3, 2009.
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Application 12/449,321
Claims 32 and 33 are rejected under 35 U.S.C. § 103 as unpatentable
in view of Deshpande, Shirai, Muller, and Official Notice.3
ANALYSIS
Claim 21
Appellants argue that
the Examiner points to [paragraphs 199—202 of] Watson and
takes the position that Watson discloses “wherein a movie is not
viewable before a contract begin date or after a contract end
date.” However, this disclosure in Watson does not correspond
to the claimed features of the age of the content being defined
with regard to (1) a first transmission of the content to a
subscriber terminal device; (2) an event to which the content
relates; or (3) a set of discrete age levels which relate to a period
of time between first publication of the content and a specific,
subsequent time.
(Appeal Br. 12.)
The Examiner disagrees and finds that paragraph 14 of “Watson at
least teaches wherein the age of the content may be defined as the period of
time that lies between the content being provided for delivery to subscriber
terminal device for the first time and a specified later time.” (Answer 3—4,
emphasis omitted; see also Final Action 3.)
Watson discloses a system and method for providing “viewers access
to a library of movies, or any other audio/video content available for viewing
at anytime.” (Watson, Abstract.) In relevant part, Watson discloses
transmitting movies to a set-top box and that “[o]nce a full movie has been
3 See Final Action 11.
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Application 12/449,321
received by the set-top box, ... the movie is added to a list of available
movies on the set-top box and becomes viewable by the user.” {Id. 113.)
Watson further discloses that “a movie may have an associated start and end
date or time.” {Id. 114.) Watson also discloses that “the content provider
may supply an end date associated with a movie, after which date the movie
can no longer be viewed.” {Id.) In short, although we agree with Appellants
that Watson does disclose that a movie may have a start and an end date,
Watson also discloses that a movie’s age may also relate to a period of time
between first publication of the content to the set-top box and a specific,
subsequent end date.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21 under § 103.
Claim 27
Claim 27 recites: “The method as claimed in claim 21, wherein the
variable billing information is determined by the criteria module as a
function of - number of subscriber terminal devices to which the content has
been delivered.”
Appellants argue that “[i]n rejecting claim 27 in view of Deshpande,
the Examiner points to paragraphs [0027]-[0029]. However, these portions
of Deshpande fail to disclose variable billing as a function of how many
subscribers receive a specific content.” (Appeal Br. 14, emphasis omitted.)
In the Answer, however, the Examiner relies on Muller, not
Deshpande, for disclosing this limitation. Muller discloses “[a] system and
method for providing a flexible licensing system for digital content.”
(Muller, Abstract.) The Examiner finds that Muller discloses that “the
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Application 12/449,321
system may set an exchange value for an item of software based on the
relative demand by other users to purchase the first item of software or based
on the demand by others users to exchange for the item.” (Answer 5,
quoting Muller 193.) Thus, “[t]he examiner submits that Muller et al
clearly discloses wherein the cost associated with a digital asset may be
determined by the relative demand by other users.” {Id., emphasis omitted.)
Appellants do not reply to the Examiner’s finding regarding the
disclosure of Muller, and we are not persuaded that the Examiner erred in
finding that Muller discloses that costs “associated with a digital asset may
be determined by the relative demand by other users.” (See id.', see also
Muller 193.) We are not persuaded that the Examiner erred in rejecting
claim 27 under § 103.
Claim 3 7
Claim 37 recites:
37. A method for determining billing information in a
communication network, wherein content is handled as
communication services between a provider and an end
subscriber, the method comprising:
storing content in a memory in the communication
network;
delivering a service with the content to the end subscriber,
the content being delivered one piece at a time;
individually assigning variable billing information to the
pieces of content; and
providing the end subscriber the option to interrupt
piecewise delivery of the content after an announcement of a
change to the variable billing information.
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Application 12/449,321
Appellants argue:
In rejecting claim 37 in view of Deshpande, the Examiner
pointed to paragraphs [0027]-[0029] and [0031]. However, these
portions of Deshpande fail to disclose delivering content in a
piecewise manner with variable billing information, announcing
a change to the variable billing information, and allowing the
user to interrupt the piecewise delivery of the content after the
announcement of the change to the variable billing information.
(Appeal Br. 15, emphasis omitted.)
The Examiner disagrees and cites, in particular, to paragraphs 32 and
33 of Deshpande. Deshpande discloses “a method of providing location-
based services to a wireless device using a hotspot access point.”
(Deshpande, Abstract.) The Examiner finds “that Deshpande et al teaches a
location based services system and method, wherein said user may request
or accept all or a portion of said services.” (Answer 5, citing Deshpande
132; see also Final Action 3.) The Examiner further finds that
Deshpande et al anticipates the interruption of delivery of content
by a user, after the announcement of a change to the variable
billing information, because the billing rates and access details
relating to the services the user/device may access varies
depending on the location (as evidenced in at least paragraph
[0033], to Deshpande et al) wherein the information is displayed
for the user or otherwise used by the device. Further, because
the user pays on a pay per use basis, the user can determine, upon
notification of access privileges and billing rate details whether
to continue with or interrupt service.
(Answer 5—6, emphasis omitted; see also Final Action 3 4.)
Appellants do not reply to the Examiner’s findings regarding the
disclosures of paragraphs 32 and 33 of Deshpande, and we are not persuaded
that the Examiner erred in finding that paragraphs 32 and 33 of Deshpande
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Application 12/449,321
disclose delivering content on a pay per use basis, i.e., in a piecewise
manner, and further disclose billing rate details such that the user can
determine whether to interrupt the service. We are not persuaded that the
Examiner erred in rejecting claim 37 under § 103.
Claims 32, 33, and 40
With regard to claims 32 and 33, Appellants assert that the cited art
and Official Notice “do[] not teach or make obvious all of the features of
claims 32 and 33.” (Appeal Br. 16.) We do not find this persuasive of error.
See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”). Appellants further argue that claims 32 and 33 depend from
claim 21 and for the reasons argued regarding claim 21, claims 32 and 33 are
patentably distinguishable over the cited art. (Appeal Br. 16.) However, for
the reasons discussed above with regard to claim 21, we are not persuaded
that the Examiner erred in rejecting claims 32 and 33.
With regard to independent claim 40, Appellants simply “submit[]
that the combination of Deshpande, Shirai, Muller, and Watson fails to teach
or make obvious all of the features of independent claim 40, so that claim 40
patentably distinguishes over the combination of Deshpande, Shirai, Muller,
and Watson.” (Id. at 15.) We do not find this persuasive of error. See
37 C.F.R. §41.37(c)(iv).
DECISION
The Examiner’s rejections of claims 21—42 under 35 U.S.C. § 103(a)
are affirmed.
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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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