Ex Parte Giannotti et al

Patent Trial and Appeal BoardSep 26, 2012

10896667 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRUCE B. GIANNOTTI, JEFF LAVIN, DAVID C. WAHL, and BRAD HALE ____________ Appeal 2010-005173 Application 10/896,667 Technology Center 2100 ____________ Before JOHN A. JEFFERY, JEFFREY S. SMITH, and JEREMY J. CURCURI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005173 Application 10/896,667 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-23, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Representative Claim 1. A system for managing accounts between an internet service provider and a plurality of internet connectable computing devices, each of the internet connectable computing devices including an associated unique ID, the system comprising: a validation module, the validation module validating whether an internet connectable computing device should have access to the internet; a determining module, the determining module determining whether an internet connectable computing device is a valid system based upon a plurality of criteria; and, using the determining to manage a business portion of a relationship with an internet connectable computing device user, the business portion of the relationship with the internet connectable computing device user comprising providing internet service for a respective internet connectable computing device. Prior Art Karaoguz US 2004/0117660 A1 Jun. 17, 2004 Appeal 2010-005173 Application 10/896,667 3 Examiner’s Rejection Claims 1-23 stand rejected1 under 35 U.S.C. § 102(e) as being anticipated by Karaoguz. ANALYSIS Section 102 rejection of claim 1 Appellants contend that Karaoguz does not describe a system for managing accounts between an internet service provider and a plurality of internet connectable computing devices, each of the internet connectable computing devices including an associated unique ID, much less such a system which includes a determining module which determines whether an internet connectable computing device is a valid system based upon a plurality of criteria, and, using the determining to manage a business portion of a relationship with an internet connectable computing device user, the business portion of the relationship with the internet connectable computing device user comprising providing internet service for a respective internet connectable computing device as required by claim 1. Br. 3-4. The Examiner finds that Karaoguz describes a system for managing accounts between an internet service provider and a plurality of internet connectable computing devices. Ans. 9-10, citing paragraphs 26-29, 39 and Figure 1. The Examiner finds that Karaoguz describes each internet connectable computing device including an associated unique ID. Ans. 9- 10, citing paragraph 44. The Examiner finds that Karaoguz describes a 1 Although the Examiner states on page 3 of the Answer that only claims 1- 3, 9-11, and 17-22 are rejected, we view this as harmless error in light of the Examiner’s subsequent rejection of claims 1-23 on page 4 of the Answer. Appeal 2010-005173 Application 10/896,667 4 determining module which determines whether an internet connectable computing device is a valid system based upon a plurality of criteria. Ans. 4, citing paragraphs 8-11, 44, and 45; Ans. 10, citing paragraph 44. The Examiner finds that Karaoguz describes using the determining to manage a business portion of a relationship with an internet connectable computing device user, the business portion of the relationship with the internet connectable computing device user comprising providing internet service for a respective internet connectable computing device. Ans. 4, citing Figure 1, paragraphs 8-11, 28, 29, 44-52, and 64-88; Ans. 10, citing paragraph 44. Although Appellants restate portions of the claim language and allege that paragraph 39 of Karaoguz does not describe the restated language, Appellants do not explain why the Examiner’s citation of paragraph 39 is insufficient to show that Karaoguz describes a system for managing accounts between an internet service provider and a plurality of internet connectable computing devices. Nor have Appellants addressed the Examiner’s additional findings that Figure 1 and paragraphs 8-11, 26-29, 39, 44-52, and 64-88 of Karaoguz describe the disputed limitations of claim 1. Appellants’ arguments are ineffective in demonstrating error in the Examiner’s findings. We find that the Examiner has established a prima facie case of unpatentability. “[A]ll that is required of the [Patent] [O]ffice to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We find that the Examiner has met this burden. The Examiner maps specific Appeal 2010-005173 Application 10/896,667 5 paragraphs of Karaoguz to the limitations of claim 1. See Ans. 4, 9-10. Appellants have not explained how the limitations of claim 1 distinguish over the portions of Karaoguz cited by the Examiner. Nor have Appellants provided persuasive evidence or argument to rebut the Examiner’s prima facie case. See Jung, 637 F.3d at 1365-66 (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)). We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner for the reasons given by the Examiner in the Final Rejection and the Examiner’s Answer. We therefore sustain the rejection of claim 1 under 35 U.S.C. § 102. Section 102 rejection of claims 2, 10, and 19 Appellants contend that Karaoguz does not describe determining whether an internet connectable computing device is a valid system based upon whether payment for the internet connectable computing device is up to date as required by claim 2. Br. 5. The Examiner finds that paragraphs 40 and 47 describe the disputed limitation. Ans. 4. The Examiner also finds that paragraphs 65, 68, 85, and 88-92 describe payment terms and billing information to provide a user with internet access. Final Rej. 2. Appellants have not addressed the Examiner’s findings. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings that paragraphs 40 and 47 describe determining whether an internet connectable computing device is a valid system based upon whether Appeal 2010-005173 Application 10/896,667 6 payment for the internet connectable computing device is up to date as required by claim 2. We sustain the rejection of claim 2 under 35 U.S.C. § 102. Appellants have not presented arguments for separate patentability of claims 10 and 19, which fall with claim 2. Section 102 rejection of claims 3, 11, and 20 Appellants contend that Karaoguz does not describe determining whether an internet connectable computing device is a valid system based upon whether the internet connectable computing device has been reported stolen as required by claim 3. Br. 5. The Examiner finds that paragraphs 47-52 of Karaoguz describe the disputed limitation. Ans. 5. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings. We therefore sustain the rejection of claim 3 under 35 U.S.C. § 102. Appellants have not presented arguments for separate patentability of claims 11 and 20, which fall with claim 3. Section 102 rejection of claims 4, 12, and 21 Appellants contend that Karaoguz does not describe determining whether an internet connection is valid based on whether there are duplicate copies of the internet connectable computing device as required by claim 4. Br. 5. The Examiner finds that paragraphs 47-52 describe the disputed limitation. Ans. 5. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings. We therefore sustain the rejection of claim 4 Appeal 2010-005173 Application 10/896,667 7 under 35 U.S.C. § 102. Appellants have not presented arguments for separate patentability of claims 12 and 21, which fall with claim 4. Section 102 rejection of claims 5, 13, and 22 Appellants contend that Karaoguz does not describe determining whether an internet connectable computing device is a valid system based upon whether the location from which the internet connectable computing device is establishing the connection corresponds to an expected location as required by claim 5. Br. 5. The Examiner finds that paragraphs 47-63 describe the disputed limitation. Ans. 5. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings. We therefore sustain the rejection of claim 5 under 35 U.S.C. § 102. Appellants have not presented arguments for separate patentability of claims 13 and 22, which fall with claim 5. Section 102 rejection of claims 14 and 23 Appellants contend that Karaoguz does not describe determining whether an internet connectable computing device is a valid system based upon where the internet service is a telephone company as required by claim 14. Br. 5. The Examiner finds that paragraphs 8-11, 44-52, and 64-88 describe the disputed limitation. Ans. 7. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings. We therefore sustain the rejection of claim 14 under 35 U.S.C. § 102. Appellants have not presented arguments for separate patentability of claim 23, which falls with claim 14. Appeal 2010-005173 Application 10/896,667 8 Section 102 rejection of claims 6-9 Appellants contend that Karaoguz does not describe a method for managing accounts between an internet service provider and a plurality of internet connectable computing devices, each of the internet connectable computing devices including an associated unique ID, much less where the method includes determining whether the user is an approved user based upon the user identification, receiving a unique system identification from the internet connectable computing device, determining whether the internet connectable computing device is a valid system based upon the unique system identification, and approving access to an internet session based upon the determining whether the user is an approved user and the determining whether the internet connectable computing device is a valid system, as required by claim 6. Br. 4. The Examiner finds that paragraphs 8-11, 19-23, 44-52, and 64-88 describe the limitations of claim 6. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings. We therefore sustain the rejection of claim 6 under 35 U.S.C. § 102. Appellants have not presented arguments for separate patentability of claims 7-9, which fall with claim 6. Section 102 rejection of claims 15-18 Appellants contend that Karaoguz does not describe an apparatus for managing accounts between an internet service provider and a plurality of internet connectable computing devices, each of the internet connectable computing devices including an associated unique ID, much less where the apparatus includes a user validation module which determines whether the user is an approved user based upon the user identification, a system Appeal 2010-005173 Application 10/896,667 9 identification receiving module which receives a unique system identification from the internet connectable computing device, a system validation module which determines whether the internet connectable computing device is a valid system based upon the unique system identification, and an approval module which approves access to an internet session based upon the determination of whether the user is an approved user and whether the internet connectable computing device is a valid system, as required by claim 15. Br. 4-5. The Examiner finds that paragraphs 8-11, 44-52, and 64-88 describe the limitations of claim 15. Ans. 7-8. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings. We therefore sustain the rejection of claim 15 under 35 U.S.C. § 102. Appellants have not presented arguments for separate patentability of claims 16-18, which fall with claim 15. DECISION The rejection of claims 1-23 under 35 U.S.C. § 102(e) as being anticipated by Karaoguz 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). See 37 C.F.R. § 41.50(f). AFFIRMED rwk