Ex Parte D et al

Patent Trial and Appeal Board

Jun 15, 2017

13901206 (P.T.A.B. Jun. 15, 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.
13/901,206 05/23/2013 Michael J. D'ARGENIO 20130168 3234
7590 06/19/201725537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
GALLUP, KAITLIN
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/19/2017 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. D’ARGENIO,
KRISTOPHER T. FRAZIER, and LONNIE KATAI
Appeal 2016-002884
Application 13/901,206
Technology Center 3600
Before ALLEN R. MacDONALD, AARON W. MOORE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002884
Application 13/901,206
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
Representative Claims
Representative claims 15 and 19 under appeal reads as follows
(bracketing and emphasis added):
15. A method comprising:
[A.] receiving, by a kiosk device, user information
provided by a user at a first time,
[i.] the user information being received via a first
device, and
[ii.] the user information including:
[a.] information associated with a second
device, the second device being different
than the first device, and
[b.] subscription information associated with
the second device;
[B.] determining, by the kiosk device and based on the
received user information and at a second time, device
information identifying the second device housed within the
kiosk device,
[i.] the second time being after the first time;
[C.] dispensing, by the kiosk device, the second device
based on the device information;
[D.] providing, by the kiosk device and for display, the
information associated with the second device and the
subscription information;
[E.] receiving, by the kiosk device, an indication that the
second device is to be purchased;
2
Appeal 2016-002884
Application 13/901,206
[F.] associating, by the kiosk device, the subscription
information with the second device based on receiving the
indication that the second device is to be purchased; and
[G.] providing, by the kiosk device, activation
information that allows the second device to be activated on a
network,
[i.] the activation information identifying the
second device and including the subscription
information.
19. The method of claim 15, where, when dispensing the
second device based on the device information, the method
includes:
[H.] dispensing, by the kiosk device, a demonstration
device based on the device information;
[I.] collecting, by the kiosk device, the demonstration
device after dispensing the demonstration device; and
[J.] dispensing, by the kiosk device, the second device
based on the indication that the second device is to be
purchased and based on collecting the demonstration device.
Rejections
The Examiner rejected claims 1—20 under 35U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.1
1 We select claim 15 as representative. Separate patentability is not argued
for claims 1—14 and 16—20. Except for our ultimate decision, the § 101
rejection of claims 1—14 and 16—20 is not discussed further herein.
3
Appeal 2016-002884
Application 13/901,206
The Examiner rejected claims 1—4, 6—11, 13—18, and 20 under
35 U.S.C. § 103 as being unpatentable over the combination of Malik (US
2012/0158597 Al; pub. June 21, 2012) andNecker et al. (EP 1274048 A2;
pub. Jan. 8, 2003).2
The Examiner rejected claims 5, 12, and 19 under 35 U.S.C. § 103 as
being unpatentable over the combination of Malik, Necker, and Hay (US
2013/0332271 Al; pub. Dec. 12, 2013).3
Section 101 Case Law
Eligibility under 35 U.S.C. § 101 is determined using the Alice/Mayo
framework. Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014).
The first step involves determining whether the claims at issue are directed
to a patent-ineligible concept. Id. at 2355. The second step involves
determining whether the elements of the claim contain an inventive concept
sufficient to transform a claimed abstract idea into a patent-eligible
application. Id. at 2357. The “inventive concept” may arise in one or more
of the individual claim limitations or in the ordered combination of the
limitations. Id. at 2355.
In Bascom, the Federal Circuit deferred consideration of the specific
claim limitations’ narrowing effect for Alice step two. Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
2 We select claim 15 as representative. Separate patentability is not argued
for claims 1—4, 6—11, 13, 14, 16—18, and 20. Except for our ultimate
decision, the § 103 rejection of claims 1—4, 6—11, 13, 14, 16—18, and 20 is
not discussed further herein.
3 We select claim 19 as representative. Separate patentability is not argued
for claims 5 and 12. Except for our ultimate decision, the § 103 rejection of
claims 5 and 12 is not discussed further herein.
4
Appeal 2016-002884
Application 13/901,206
(Fed. Cir. 2016). The Federal Circuit held that determining whether the
claimed inventive concept is a technical improvement can aid in evaluating
the second step in the Alice!Mayo framework:
The district court thus concluded f wrongly] that BAS COM had
not asserted adequately that the claims disclose an inventive
concept because the limitations, “considered individually, or as
an ordered combination, are no more than routine additional
steps involving generic computer components and the Internet,
which interact in well-known ways to accomplish the abstract
idea of filtering Internet content.” [District Court Order, 107 F.
Supp.3d at 655.]
We agree with the district court that the limitations of the
claims, taken individually, recite generic computer, network
and Internet components, none of which is inventive by itself.
BASCOM does not assert that it invented local computers, ISP
servers, networks, network accounts, or filtering. Nor does the
specification describe those elements as inventive.
However, we disagree with the district court’s analysis of
the ordered combination of limitations. ... As is the case here,
an inventive concept can be found in the nonconventional and
non-generic arrangement of known, conventional pieces.
[T]he patent describes how its particular arrangement of
elements is a technical improvement over prior art ways of
filtering such content.
Bascom, 827 F.3d at 1349-50 (bracket and emphasis added).
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 103 because:
Based upon the objective evidence of record, the Examiner is
required to make the factual inquiries mandated by Graham v.
John Deere Co., 86 S. Ct. 684, 383 U.S. 1 [] (1966). KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398 [] (2007). The Examiner is
5
Appeal 2016-002884
Application 13/901,206
also required to explain how and why one having ordinary skill
in the art would have been realistically motivated to modify an
applied reference and/or combine applied references to arrive at
the claimed invention. Uniroyal, Inc. v. Rudkin-Wiley Com.,
837 F.2d 1044 [] (Fed. Cir. 1988).
App. Br. 7 (emphasis added).
MALIK and NECKER et al., whether taken alone or in any
reasonable combination, do not teach or suggest one or more of
these features.
App. Br. 8 (emphasis added).
2. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 103 because:
Initially, Appellants note that MALIK is silent regarding
any “kiosk device.” Indeed, the Examiner agrees that MALIK
does not teach a “kiosk device,” but the Examiner appears to
equate a retail location of a merchant (e.g., a physical store)
with the claimed “kiosk device” (Office Action at page 6). The
Examiner’s position is unreasonable for several reasons.
First, Appellants’ claimed invention is clearly directed to
an actual device, the claimed “kiosk device,” that performs each
of the features recited in claim 15. Appellants’ invention is not
directed to a retail location of a merchant where a user can
interact with a sales representative to complete a transaction.
Second, MALIK in no way contemplates the use of a
“kiosk device” to process transactions. As described below,
MALIK is solely directed to processing customer transactions
between customers and sales representatives based on a queue
status to ensure that transactions are completed in a desired
manner.
App. Br. 8—9 (emphasis added).
3. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 103 because:
[T]he disclosure of MALIK clearly teaches away from any
interaction with a “kiosk device” because MALIK is directed to
6
Appeal 2016-002884
Application 13/901,206
matching a customer with an “appropriate customer service
agent” and providing “the customer service agent with the
appropriate data in order to most efficiently assist the customer
in making his or her store selections,” as stated above.
App. Br. 10 (emphasis added).
4. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 103 because:
NECKER et al. fails to cure the deficiencies of MALIK.
App. Br. 14 (emphasis added).
5. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 103 because:
Appellants submit that the motivation for combining
MALIK and NECKER et al. is based on impermissible
hindsight. MALIK is directed to providing customer service,
via a customer service agent, in a retail premises (see paragraph
0015) and NECKER et al. is directed to a vending machine for
mobile phones. One of ordinary skill in the art would not have
reasonably looked to combine providing retail customer service
using an agent, as disclosed in MALIK, with a vending
machine, as disclosed in NECKER et al.
App. Br. 14—15 (emphasis added).
6. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 103 because:
In addition, the Examiner’s rationale for combining
MALIK and NECKER et al. is merely that NECKER et al.
“teaches that users desire ‘a retail outlet for mobile phones’
[and] shows and motivates automating the retail method and
system of MALIK by showing that the retail process of selling
a phone can be . . . fully self-service” (Office Action at page 9).
Appellants submit that this motivation is not based on any
disclosure in MALIK and that the Examiner’s rationale of
user’s desire for a retail outlet for mobile phones does not
support why it would have been obvious to replace the
7
Appeal 2016-002884
Application 13/901,206
customer service agent in the retail premises, as disclosed by
MALIK, with a vending machine, as disclosed by NECKER et
al., which is a fundamentally different type of service and
would destroy the intended purpose of MALIK’s retail
customer service using an agent, rendering it inoperable.
App. Br. 15 (emphasis added).
7. Appellants contend that the Examiner erred in rejecting claim 19
under 35 U.S.C. § 103 because:
While these passages of HAY describe an “automated
store outlet” that allows a customer to remove an “item from
the bay” during a “shopping session,” the device in HAY does
not dispense or collect anything, much less a “demonstration
device based on the device information.” In contrast, the user
in HAY merely opens a bay, removes an item, and closes the
bay door. The user performs all removal and/or replacement of
the item, and no device is actually dispensed by the machine in
HAY and then collected by the machine.
App. Br. 18 (emphasis added).
These passages of HAY merely disclose customer
removal of “desired items” from tray 28. The user performs all
removal and/or replacement of the item, and no device is
actually dispensed by the machine in HAY and then collected
by the machine. Moreover, HAY in no way teaches or suggests
that the “desired items” are or include a “demonstration
device.”
App. Br. 20 (emphasis added).
Further in response to Appellants’ arguments, the
Examiner alleged that “[a] ‘demonstration device’ is not
meaningfully differentiated from ‘the second device;’ both are
items such as a mobile phone that are dispensed to a customer
(they may be exact same item).” Examiner’s Answer, p. 18.
Appellants’ respectfully disagree with the Examiner’s
interpretation of the claims at least because the Examiner fails
to consider the plain language of the claims. For the claimed
“demonstration device,” the Examiner fails to give the term
8
Appeal 2016-002884
Application 13/901,206
“demonstration” any meaning and asserts that the
“demonstration device” may be any device. However, any
device cannot be a demonstration device because any and all
devices may not be demonstrative.
Reply Br. 13 (emphasis added).
8. Appellants contend that the Examiner erred in rejecting claim 19
under 35 U.S.C. § 103 because:
[E]ven if, arguendo, a user can interact with an item by
removing an item from a bay and then return the item back to
the bay as the Examiner seems to suggest, HAY does not
disclose or suggest an item is removed or dispensed from a bay
based on a different item being returned or collected. In other
words, HAY does not disclose dispensing a device based on
collecting another device.
Reply Br. 12 (emphasis added).
9. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 101 because claim 15 is not directed to an abstract idea.
For example, claim 15 recites “dispensing, by the kiosk
device, the second device” and “allows the second device to be
activated on a network” which involve more than merely
“completing the sales transaction” as the Examiner
characterized the claims. The Examiner conveniently dismisses
these features as a “generic implementation of extra-solution
activity to dispense the device via the kiosk device.”
Examiner’s Answer, page 4. However, dispensing the device
and allowing activation of the device on the network are not
extra-solution activity at least because the problem of allowing
a purchaser “to examine the device . . . and activate the device
without having to visit a store associated with the service
provider network” is solved, at least in part, by dispensing the
device to the user and allowing the device to be activated.
Reply Br. 3 (emphasis added).
Rather than being directed to an abstract idea similar to a
method of organizing human activity as the Examiner alleged,
9
Appeal 2016-002884
Application 13/901,206
the claims, similar to the Federal Circuit’s reasoning in DDR
Holdings, LLC v. Hotels.com et al., are “necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” 773
F.3d 1245, 1257 (Fed. Cir. 2014). Thus, the claims are not
directed to an abstract idea.
For example, Appellants discuss a problem specifically
arising in the realm of computer networks at par. [0008] of the
specification: “[t]he purchaser may also want to examine the
device . . . and activate the device without having to visit a store
associated with the service provider network.” Activating a
device to access a service provider network, while allowing a
purchaser to examine the device and avoid visiting a store, is a
problem specifically arising in the realm of service provider
networks. The solution to this computer technology based
problem is necessarily rooted in computer technology and is
solved, at least in part, by “dispensing, by the kiosk device, the
second device based on the device information” and “providing,
by the kiosk device, activation information that allows the
second device to be activated on a network” as recited in claim
15.
Reply Br. 4 (emphasis added).
10. Appellants contend that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 101 because claim 15 recites significantly more than an
abstract idea:
First, claim 15 is for use with a particular machine (e.g., a
kiosk device). . . . [UJnlike the “numerous cases” that involved
generic devices performing routine functions comprising
“retrieving and processing data” and the Extraction case that
involved a generic scanner for “recognizing and storing
information,” the claimed kiosk device performs a mechanical
operation of dispensing a device, and does not merely employ
generic computer parts to retrieve data, process data, recognize
information, and/or store information as cited in the examples
provided by the Examiner.
Reply Br. 5—6 (emphasis added).
10
Appeal 2016-002884
Application 13/901,206
Second, claim 15 effects a transformation or reduction of
a particular article to a different state or thing. For example, the
kiosk device of claim 15 transforms from holding or otherwise
containing “the second device” to a state where the kiosk
device dispenses “the second device.” Moreover, claim 15
effects a transformation in the “second device” in that the
second device goes from an un-dispensed state to a dispensed
state. Furthermore, claim 15 “allows the second device to be
activated on a network,” thereby allowing for a transformation
of “the second device” from an un-activated state on the
network to an activated state on the network.
Reply Br. 6 (emphasis added).
Third, claim 15 adds unconventional steps that confine
the claim to a particular useful application. For example, claim
15 uses a kiosk device in an unconventional manner to dispense
a “second device” and “allow[] the second device to be
activated on a network.”
Reply Br. 6—7 (emphasis added).
Issues on Appeal
Did the Examiner err in rejecting claims 15 and 19 as being obvious?
Did the Examiner err in rejecting claim 15 as being directed to
non-statutory subject matter?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief arguments (Appeal Brief and Reply Brief) that the Examiner
has erred.
As to Appellants’ above contention 1, we disagree. Although
Appellants cite to the Supreme Court’s holding in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398 (2007), Appellants also cite to the Court of Appeals’
11
Appeal 2016-002884
Application 13/901,206
decision in Uniroyal, Inc. v. Rudkin-Wiley Com., 837 F.2d 1044 (Fed. Cir.
1988), without acknowledging how this holding was modified by KSR.
Appellants’ argument fails because it does not account for the impact of the
Court’s KSR decision, in which the Court repudiated any requirement that a
teaching, suggestion, or motivation is required to show obviousness. KSR,
550 U.S. at 415 (“We begin by rejecting the rigid approach of the Court of
Appeals.”). Rather, the requirement is only that the Examiner show “the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis
added); id. at 418 (“[T]he analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Although Appellants premise their
arguments as the applied reference(s) “do not teach or suggest” (e.g., App.
Br. 8) various claimed features, instead we review the arguments as to
whether the references teach, suggest, or render obvious.
As to Appellants’ above contention 2, we disagree. Appellants argue
Malik is silent regarding any kiosk device and in no way contemplates the
use of a kiosk device to process transactions. App. Br. 8—9. However,
Examiner did not cite Malik for the limitations of a fully automated kiosk
device. Rather, the Examiner cited Necker. Non-Final Act. 8. The
Examiner relied on Malik to show the process of assisting the customer in
making his or her store selections. Non-Final Act. 4—6. The Examiner then
equated Malik’s “interface computing device and system used by an agent at
a retail store” (Non-Final Act. 6) to a more basic form of kiosk. The
12
Appeal 2016-002884
Application 13/901,206
Examiner then introduced the fully automated kiosk of Necker. Non-Final
Act. 8—9.
We conclude that Appellants’ argument does not address the actual
reasoning of the Examiner’s rejections. Instead, Appellants attack the Malik
reference singly for lacking teachings that the Examiner relied on a
combination of references to show. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). This form of argument is inherently unpersuasive to show
Examiner error. Our reviewing court requires that references must be read,
not in isolation, but for what they fairly teach in combination with the prior
art as a whole. Id.
To the extent that Appellants are arguing that the Examiner erred
because Malik does not use the term “kiosk,” we also disagree. Appellants’
claims define the kiosk functionally in terms what it does, rather than as a
particular structure. Thus, the Examiner is correct to look to the functions of
Malik’s interface computing device and system when determining if the
interface computing device and system of Malik is a kiosk device at least as
to some functions.
As to Appellants’ above contention 3, we disagree. As the United
States Court of Appeals for the Federal Circuit has counseled:
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. . . . [I]n general, a reference will teach
away if it suggests that the line of development flowing from
13
Appeal 2016-002884
Application 13/901,206
the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation
omitted).
Here, Appellants at most have merely stated what the prior art
discloses (App. Br. 10, 13), but have not identified how the cited art
criticizes, discredits, or otherwise discourages the claimed limitation. At
most, Appellants have simply argued that Malik does not teach the
limitation. Even if we were to agree, that is not sufficient to “teach away”
from the combination.
As to Appellants’ above contention 4, Appellants begin by premising
that “NECKER et al. fails to cure the deficiencies of MALIK.” App. Br. 14.
As discussed above, we find no deficiencies in Malik. Therefore, this
premise fails. As with Malik, Appellants also attack the Necker reference
singly (App. Br. 14) for lacking teachings that the Examiner relied on a
combination of references to show. Again, we find this form of argument
unpersuasive.
As to Appellants’ contention 5, that impermissible hindsight is
required, in KSR the Court points out:
[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than
yield a predictable result. [United States v. A dams, ] 383 U.S.,
at 50-51, 86 S. Ct. 708.
14
Appeal 2016-002884
Application 13/901,206
KSR, 550 U.S. at 416. The rejection before us is one of substitution of the
vending method of Necker for the vending method of Malik. Therefore, we
find no impermissible hindsight is required. Appellants’ argument is also at
odds with the Court’s explicit guidance that:
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.
KSR, 550 U.S. at 417. Additionally, Appellants have not presented evidence
sufficient to show that combining the prior art was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
As to Appellants’ above contention 6, we disagree. First, Appellants
point out that, as to combining, the “motivation is not based on any
disclosure in MALIK.” App. Br. 15. As the Examiner relied on Necker
(Non-Final Act. 9), not Malik, as to the rationale to combine, we fail to see
any relevance to this argument. Second, Appellants assert that “to replace
the customer service agent in the retail premises . . . would destroy the
intended purpose of MALIK’s retail customer service using an agent,
rendering it inoperable.” App. Br. 15. Contrary to Appellants’restrictive
intended purpose, we conclude that intended purpose of Malik is providing
customer service and, as stated in Necker, his system offers 24 hour service
for the customer. Necker | [0007]. We conclude there is no reasonable
basis for Appellants’ assertion. Rather, we find Appellants’ assertion to be
15
Appeal 2016-002884
Application 13/901,206
conclusory. Such attorney argument is entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
As to Appellants’ above contention 7 (regarding claim 19), we
disagree. First, we disagree with Appellants’ assertion that “no device is
actually dispensed by the machine in HAY and then collected by the
machine.” App. Br. 20. Contrary to Appellants’ assertion that in Necker the
“user performs all removal and/or replacement of the item” (id.), Hay
explicitly recites “the system detects the removal of the item from the bay”
(Hay 116) and removes the item from the electronic shopping cart when it is
returned (id. 119). That the “by the machine” functions of Hay are limited
to detecting removal, replacement, and other tracking, does not preclude Hay
from being used in combination with Malik and Necker.
Second, Appellants are also mistaken in their assertion that “any
device cannot be a demonstration device because any and all devices may
not be demonstrative.” Reply Br. 13. We conclude that the label term
“demonstration” is not a structural or functional limitation as Appellants
appear to be arguing. Rather, the label “demonstration” is a statement of the
intended use of the device, but does not limit the device in any other way.
As to Appellants’ above contention 8, Appellants present in the Reply
Brief a new argument against the rejection of claim 19. In the Appeal Brief,
Appellants merely quoted the entirety of the body of claim 19. In the Reply
Brief, however, Appellants now particularly argue that “HAY does not
disclose or suggest an item is removed or dispensed from a bay based on a
different item being returned or collected.” Reply Br. 12. In the absence of
a showing of good cause by Appellants, we decline to consider an argument
16
Appeal 2016-002884
Application 13/901,206
raised for the first time in the Reply Brief, as the Examiner has not been
provided a chance to respond. See 37 C.F.R. § 41.41(b)(2) (2012); In re
Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not
first raised in the opening brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the principal brief will
not be considered when filed in a reply brief, absent a showing of good
cause explaining why the argument could not have been presented in the
principal brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) (“Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause.”). Appellants have provided no showing of
good cause.
As to Appellants’ above contention 9 (regarding claim 15), Appellants
argue, as to the first step of the Alice test, that claim 15 is not directed to an
abstract idea because the claim is directed to “providing, by the kiosk
device, activation information that allows the second device to be activated
on a network.” Reply Br. 4. We disagree. We agree that activating a device
to access a service provider network is a problem specifically arising in the
realm of service provider networks, and the ultimate solution to that problem
is necessarily rooted in computer technology. However, Appellants’ claim
15 does not achieve this solution. Rather, at most, Appellants’ claim 15
recites only the initial step toward achieving the solution. That is, claim 15
requires only that activation information be provided so that, perhaps, the
second device can be activated at some later unclaimed time. This
17
Appeal 2016-002884
Application 13/901,206
understanding of claim 15 is confirmed in Appellants’ Specification at
paragraph 44 (last eight lines).
As to Appellants’ above contention 10 (regarding claim 15),
Appellants argue, as to the second step of the Alice test, that claim 15 recites
significantly more than an abstract idea. Reply Br. 5—7. We disagree. First,
Appellants argue “the claimed kiosk device performs a mechanical
operation of dispensing a device.” Reply Br. 6 (emphasis added). This
argument is not commensurate with the scope of claim 15. Our review of
claim 15 does not find the recitation of “performs a mechanical operation.”
Nor do Appellants explain why this limitation should be read into claim 15.
Second, contrary to Appellants’ argument, we do not find that “claim
15 effects a transformation or reduction of a particular article to a different
state or thing.” Reply Br. 6. Appellants argue claim 15 transforms the kiosk
from holding or otherwise containing “the second device” to a state where
the kiosk device dispenses “the second device.” Claim 15 does not recite
either holding or containing, so the argument is not commensurate with the
scope of the claim. Even if such were recited, we do not deem a mere
change in position to be the argued transformation or reduction of a
particular article to a different state or thing. As to Appellants’ argument
that there is a transformation of “the second device” from an un-activated
state on the network to an activated state on the network, our discussion
above points out that the argued “activated state” is not required by claim
15.
Third, contrary to Appellants’ assertion that claim 15 adds
unconventional steps that confine the claim to a particular useful application,
18
Appeal 2016-002884
Application 13/901,206
for the reasons above, we conclude claim 15 stops short of the required
significantly more than the abstract idea.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1—20 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
(2) The Examiner did not err in rejecting claims 1—20 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—20 are not patentable.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101, as
being directed to non-statutory subject matter, is affirmed.
The Examiner’s rejection of claims 1—20 as being unpatentable under
35 U.S.C. § 103 is affirmed.
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
19