Ex Parte Blank

Patent Trial and Appeal Board

Aug 6, 2013

11663867 (P.T.A.B. Aug. 6, 2013)

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.
11/663,867 10/05/2007 Felix Blank 2004P15545WOUS 6168
22116 7590 08/06/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
08/06/2013 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 FELIX BLANK
____________________

Appeal 2012-004230
Application 11/663,867
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-004230
Application 11/663,867

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 10-29. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellant’s invention relates to a marketing method and
communication system for implementing the marketing method (Spec. 1,
ll. 3-4).
Claims 10 and 19, reproduced below, are representative of the subject
matter on appeal:
10. A marketing method for a communication system,
comprising:
providing a database in the communication system;
associating a destination address of a target subscriber to
a subscriber class, the association stored in the database, the
target subscriber accessible via the communication system by
the destination address;
assigning a marketer to the subscriber class, the
assignment stored in the database;
setting up a first communication relation between a first
subscriber and the target subscriber identified by the destination
address via the communication system based on the destination
address specified by the first subscriber;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 1, 2011) and Reply Brief (“Reply Br.,” filed
January 17, 2012) and the Examiner’s Answer (“Ans.,” mailed
November 17, 2011).
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querying the database for the subscriber class associated
with the target subscriber identified by the destination address;
setting up a second communication relation between the
first subscriber and the marketer assigned to the queried
subscriber class via the communication system; and
the marketer sending the first subscriber an offer via the
second communication relation set up by the communication
system.

19. A communication system for implementing a marketing
method, comprising:
a target subscriber accessible via a destination address;
a database comprising:
an association between the destination address to a
subscriber class,
a marketer assigned to the subscriber class, and
a marketing campaign;
a switching facility connectable to the database; and
a first communication relation being setup between the
first subscriber and the target subscriber via the switching
facility, the setup of the first communication relation based on
the destination address specified by a first subscriber; and
a second communication relation between the first
subscriber and the marketer being setup via the switching
facility to initiate the marketing campaign, wherein the setup of
the second communication relation is based on a query to the
database for the marketer assigned to the subscriber class that is
associated with the destination address.

THE REJECTIONS
The following rejections are before us for review:
Claims 19-29 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
Claims 10-29 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
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Claims 10-13 and 15-29 stand rejected under 35 U.S.C.
§§ 102(a) and (e) as being anticipated by Shivaram (US 2004/0203963 A1,
pub. Oct. 14, 2004).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shivaram.

ANALYSIS
Indefiniteness
Claims 19-29
We are persuaded that the Examiner erred in rejecting claims 19-29
under 35 U.S.C. § 112, second paragraph, as being indefinite (App. Br. 8-11
and Reply Br. 3-5). In particular, we cannot agree with the Examiner that no
hardware or structural components are recited in either of independent
system claims 19 and 25 (Ans. 6).
Each of claims 19 and 25 recites a system comprising, inter alia, a
switching facility, which, as described in the Specification, can be “a
telephone network switching unit, a router, a server with switching control
or an application running thereon” (Spec. 6, ll. 15-17), i.e., a machine. In
our view, one of ordinary skill would understand what is claimed, i.e., a
communication system, when claims 19 and 25 are read in light of the
Specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C.
§ 112, second paragraph is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.”).
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Therefore, we will not sustain the Examiner’s rejection of
claims 19-29 under 35 U.S.C. § 112, second paragraph.
Non-Statutory Subject Matter
Independent claim 10 and dependent claims 11-18
We are persuaded that the Examiner erred in rejecting claim 10 under
35 U.S.C. § 101 by Appellant’s argument that the steps of setting up a first
communication relation and setting up a second communication relation in
claim 1 explicitly require the use of a communication system and, therefore,
tie the claim to a particular machine (App. Br. 13-14 and Reply Br. 5-8).
The Examiner asserts that “[t]here is no indication of which method
steps of Appellant [sic] claim 10 would be performed by the communication
system as argued” (Ans. 22). Yet claim 10 recites that the marketing method
comprises, inter alia, “setting up a first communication relation between a
first subscriber and the target subscriber” and “setting up a second
communication relation between the first subscriber and the marketer,” and
explicitly states that the setting up of first and second communication
relations is performed “via the communication system.”
The Supreme Court clarified in Bilski v. Kappos, 130 S. Ct. 3218,
3221 (2010) that the machine-or-transformation test “is not the sole test for
deciding whether an invention is a patent-eligible ‘process’ under § 101.”
Yet the Court explained that this test remains a “useful and important clue or
investigative tool.” See id.
We, of course, are mindful that that the “machine-or-transformation”
test is not determinative of whether an invention is a patent-eligible process.
See Bilski 130 S. Ct. at 3227. However, we find no factors in the record that
would weigh against patent eligibility. For example, claim 10 does not
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recite purely mental steps, i.e., steps that can be performed in the human
mind. The claim also does not merely describe an abstract idea or concept
inasmuch as it recites steps using a communication system to set up
communication relations, and these steps are not insignificant extra-solution
activity.
We conclude that independent claim 10 is directed to patent-eligible
subject matter. Therefore, we will not sustain the Examiner’s rejection of
independent claim 10 and dependent claims 11-18 under 35 U.S.C. § 101.
Independent claim 19 and dependent claims 20-24
We are not persuaded that the Examiner erred in rejecting claims
19-24 under 35 U.S.C. § 101 (App. Br. 14-15 and Reply Br. 8-9).
Claim 19 recites a communication system comprising, inter alia, “a
target subscriber accessible via a destination address.” The Specification
describes that a target subscriber may be an individual (Spec. 6, ll. 25-31).
Given its broadest reasonable interpretation, claim 19 thus claims a human
as part of the system. As such, the claim encompasses non-statutory subject
matter. See Manual of Patent Examining Procedure (MPEP) § 2105 (8th
Ed., Rev. 9, Aug. 2012) (“If the broadest reasonable interpretation of the
claimed invention as a whole encompasses a human organism, then a
rejection under 35 U.S.C. [§] 101 . . . must be made indicating that the
claimed invention is directed to . . . nonstatutory subject matter.”).
Therefore, we will sustain the Examiner’s rejection of claim 19 under
35 U.S.C. § 101. We also will sustain the Examiner’s rejection of dependent
claims 20-24.
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Independent claim 25 and dependent claims 26-29
Claim 25 includes language substantially similar to the language of
claim 19. Therefore, we will sustain the Examiner’s rejection of
claims 25-29 under 35 U.S.C. § 101 for the same reasons as set forth above
with respect to claims 19-24.
Anticipation
Independent claim 10 and dependent claims 11-13 and 15-18
We are persuaded that the Examiner erred in rejecting claim 10 as
anticipated by Shivaram by Appellant’s argument that Shivaram does not
teach a database that is queried for the subscriber class associated with a
target subscriber, i.e., “setting up a first communication relation between a
first subscriber and the target subscriber identified by the destination address
via the communication system . . . .” and “querying the database for the
subscriber class associated with the target subscriber identified by the
destination address,” as recited in the claim (App. Br. 16-18 and Reply
Br. 9-11).
Shivaram discloses a method for transmitting SMS messages in which
a mobile phone subscriber initiates a call to a Sponsor Call Service that
provides a subsidy by a sponsor in return for accepting an advertisement
message (Shivaram, para. [0017]). After the call is lodged, a Call Media
Server queries an Ad Delivery System to select a pre-recorded audio
advertisement message based on the subscriber’s profile, which is then
transmitted and played to the subscriber (Shivaram, paras. [0018] and
[0019]). Shivaram describes that during or after the audio advertisement
message is played, the subscriber is offered an “m-coupon,” i.e., a product
discount coupon, which is sent to the subscriber if he/she elects to receive it
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by pressing a predetermined key on the handset keypad (Shivaram,
para. [0020]).
The Examiner cites paragraph [0014] of Shivaram as teaching
“connecting incoming calls to both destination numbers and a specific
destination party (which is understood to be a first communications relation),
and disconnecting the call parties and a trunk leg to play advertisements,
where the playing of advertisements after the disconnection requires a
second communications relation be established” (Ans. 26). The Examiner
thus reasons that a first communication relation is established by a
subscriber calling an ad service, and the second communication is the ad
system disconnecting the parties to play advertisements (Id.).
Claim 10 requires a first communication relation to be set up between
a first subscriber and a target subscriber identified by a destination address
being specified by a first subscriber. The second communication relation is
set up between the first subscriber and the marketer assigned to the queried
subscriber class, which is the subscriber class associated with the target
subscriber.
We agree with Appellant that the system disclosed in Shivaram
queries a database based on a caller’s profile (App. Br. 17 and Reply
Br. 9-10). The Shivaram system does not query any database for the
subscriber class associated with the target subscriber, i.e., the called ad
service in the Examiner’s scenario. Nor does the Shivaram system form any
second communication relation between a marketer assigned to the queried
subscriber class of the target subscriber and the first subscriber.
Instead, the Shivaram system is focused only on the caller. The
advertisements played to the caller are based on the caller’s profile, and not
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based on querying any database for a subscriber class of a target subscriber
that the caller is calling (App. Br. 17 and Reply Br. 9-10).
The Examiner sets forth an alternative construction in the Answer in
which the sending of an advertisement, as described at paragraph [0020] of
Shivaram, is considered to constitute establishment of the first
communication relation, and the subscriber selection (i.e., decision to
receive the associated coupon) constitutes establishment of the second
communication relation. But that arrangement also fails to meet the
limitations of claim 10 at least because the proposed establishment of the
second communication relation, i.e.., the subscriber’s election to receive the
coupon, does not involve querying of any database for a subscriber class or
any connection with a marketer assigned to a subscriber class of a target
subscriber, as required by the claim.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 10 under 35 U.S.C. §§ 102(a) and (e). We also will not sustain the
Examiner’s rejection of claims 11-13 and 15-18, which depend, directly or
indirectly, from claim 10.
Independent claims 19 and 25 and dependent claims 20-24 and 26-29
Independent claims 19 and 25 include language substantially similar
to the language of claim 10. Therefore, we will not sustain the Examiner’s
rejection of claims 19 and 25 under 35 U.S.C. §§ 102(a) and (e) for the same
reasons as set forth above with respect to claim 10. We also will not sustain
the Examiner’s rejection of dependent claims 20-24 and 26-29.
Dependent claim 14
Claim 14 depends from claim 10. We are persuaded for the reasons
set forth above that the Examiner erred in rejecting claim 10 under 35 U.S.C.
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§§ 102(a) and (e). Therefore, we will not sustain the Examiner’s rejection of
dependent claim 14 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 19-29 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejection of claims 10-18 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 19-29 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 10-13 and 15-29 under 35 U.S.C.
§§ 102(a) and (e) is reversed.
The Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a) is
reversed.
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-IN-PART

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