Ex Parte BlankDownload PDFPatent Trial and Appeal BoardAug 6, 201311663867 (P.T.A.B. Aug. 6, 2013) Copy Citation 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 2 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). Appeal 2012-004230 Application 11/663,867 3 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. Appeal 2012-004230 Application 11/663,867 4 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.”). Appeal 2012-004230 Application 11/663,867 5 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 Appeal 2012-004230 Application 11/663,867 6 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. Appeal 2012-004230 Application 11/663,867 7 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 Appeal 2012-004230 Application 11/663,867 8 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 Appeal 2012-004230 Application 11/663,867 9 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. Appeal 2012-004230 Application 11/663,867 10 §§ 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 Klh Copy with citationCopy as parenthetical citation