Ex Parte De et al

Patent Trial and Appeal Board

Mar 24, 2017

13311876 (P.T.A.B. Mar. 24, 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.
13/311,876 12/06/2011 Pradipta De IN920110204US1
(790.140)
3604
89885 7590 03/27/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
03/27/2017 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 PRADIPTA DE and KUNTAL DEY
Appeal 2015-000172
Application 13/311,876
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
MATTHEW S. METERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-000172
Application 13/311,876
STATEMENT OF THE CASE
Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—5, 9-18, and 22—21} We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative:
1. A method comprising:
utilizing at least one processor to execute computer code
configured to perform the steps of:
assimilating a user request for an active capability;
generating a code which permits exercise of the active
capability by the user and at least one secondary recipient;
permitting execution of the active capability responsive to an
attempt at executing the active capability by at least one taken
from the group consisting of: the user and the at least one
secondary recipient; and
denying execution of the active capability responsive to an
attempt at executing the active capability by a recipient other
than the user and the at least one secondary recipient;
wherein said generating comprises imparting a use policy to
the code;
the use policy comprising a distribution policy;
the distribution policy relating to a sharing depth with respect
to the user.
1 The Examiner indicates that claims 1—27 are rejected, however, in a claims
amendment, filed October 17, 2013, Appellants cancelled claims 6—8 and
19-21 while adding claims 26 and 27.
2
Appeal 2015-000172
Application 13/311,876
Appellant(s) appeal the following rejection(s):
1. Claims 14—18, 22—25, and 272 are rejected under 35 U.S.C. § 101
because claims 14—18, 22—25, and 27 are directed to a computer
readable storage medium that reads on both non-transitory tangible
media and transitory propagating signal.
2. Claims 1—5, 9—18, and 22—25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Velusamy (US 2012/0166261 Al, published
June 28, 2012) in view of Graham (2012/0150746 Al, published June
14, 2012).
3. Claims 26 and 27 are rejected under 35 U.S.C. 103(a) as unpatentable
over Velusamy in view of Graham and further in view of Greeman
(US 2008/0208626 Al, published Aug. 28, 2008).
ISSUE
Did the Examiner err because the prior art does not disclose imparting
a user policy which comprises a distribution policy relating to a sharing
depth?
ANALYSIS
Rejections of the claims under 35 U.S.C. £ 101
2 The Examiner improperly indicates that claims 14—25 are rejected under 35
U.S.C. § 101, however, as noted above claims 19-21 are cancelled and claim
27 was added in the claims amendment, filed October 17, 2013, and as such,
inadvertently omitted.
3
Appeal 2015-000172
Application 13/311,876
The Examiner rejected claims 14—18, 22—25, and 273 under 35 U.S.C.
§101 because the claims are directed to a computer readable storage
medium that reads on both non-transitory tangible media and transitory
propagating signal (Final Act. 4—5). The Appellants have not addressed this
rejection in this appeal. As such, this rejection of claims 14—18, 22—25, and
27 is summarily affirmed.
The Examiner included a new ground of rejection under 35 U.S.C.
§ 101 of claims 1—5, 9—13, and 264 in the Answer.5_Ac-cording to 37 C.F.R.
§ 41.39(b)(1) and (b)(2), Appellants must respond to the new ground of
rejection by either reopening prosecution or filing a Reply Brief addressing
each new ground of rejection to avoid dismissal of the appeal. Appellants
did neither in the present case. Although Appellants have filed a Reply
Brief in this case, the Reply Brief does not respond to the ne w ground of
rejection, as required by 37 C.F.R. § 41.39(b)(2). Accordingly, the appeal is
dismissed with respect to claims 1—5, 9-13, and 26.
Rejections under 35 U.S.C. § 103
The Appellants argue that the references do not disclose imparting a
use policy comprising a distribution policy related to a sharing depth, as
required by claim 14 (Appeal Br. 16—17). We agree.
3 See Footnote 2.
4 The Examiner fails to indicate that claims 6—8 are cancelled and include
claim 26 which was added in the claims amendment, filed October 17, 2013.
5 We note that claims 14—18, 22—25, and 27 were also rejected under this
new ground of rejection (see Ans. 8—11), however, claims 14—18, 22—25,
and 27 already stand rejected under 35 U.S.C. § 101.
4
Appeal 2015-000172
Application 13/311,876
Appellants define a depth to which sharing is permissible as how
many times the coupon can be passed from one individual to another and a
usage count (Spec. 113).
The Examiner relies on Velusamy for teaching a distribution policy
relating to a sharing depth with respect to the user. In the Answer, the
Examiner directs our attention to paragraphs 49—51 of Velusamy for
teaching this subject matter (see Ans. 12). While this portion of Velusamy
does disclose a deal sharing service, which verifies that a user is registered
to receive sharable data, and therefore discloses a distribution policy relating
to content, there is no disclosure in this portion of Velusamy that that
distribution policy relates to how many times a coupon can be passed from
one individual to another or a usage count.
In view of the foregoing, we will not sustain the Examiner’s rejection
of independent claim 14 under 35 U.S.C. § 103(a). For the same reasons, we
also will not sustain the Examiner’s rejections of dependent claims 15—18,
22—25, and 27 which depend from independent claim 14.
DECISION
We affirm the rejection of the appealed claims 14—18, 22—25, and 27
under 35 U.S.C. § 101.
We reverse the rejection of appealed claims 14—18, 22—25, and 27
under 35 U.S.C. § 103.
The appeal as to claims 1—5, 9-13, and 26 is dismissed.
5
Appeal 2015-000172
Application 13/311,876
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
6