Ex Parte HAO et al

Patent Trial and Appeal Board

Oct 12, 2017

13330319 (P.T.A.B. Oct. 12, 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.
13/330,319 12/19/2011 Jack Jianxiu HAO 20110590 7198
25537 7590
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
10/20/2017 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 JACK JIANXIU HAO, MICHAEL R. OLIVER,
RAUL I. ALDREY, and RUCHIR RODRIGUES
Appeal 2016-0009191
Application 13/330,3192
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 5—7, 9, 11, 12, and 22—31. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
May 28, 2015) and Reply Brief (“Reply Br.,” filed October 26, 2015), and
the Examiner’s Answer (“Ans.,” mailed September 1, 2015) and Final
Office Action (“Final Act.,” mailed January 9, 2015).
2 Appellants identify Verizon Communications, Inc. and its subsidiary
companies as the real parties in interest. App. Br. 3.
Appeal 2016-000919
Application 13/330,319
CLAIMED INVENTION
Appellants’ claimed invention generally relates to “mobile device data
metering, bandwidth allocation, and traffic control” (Title).
Claims 1, 7, and 26 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method, comprising:
receiving, by a device, data usage information associated
with application server devices and user equipment in a network,
wherein the data usage information identifies data usage
demands by the user equipment and the application server
devices corresponding to locations associated with the user
equipment;
determining, by the device, time-based and location-based
pricing for data usage based on the data usage information with
respect to bandwidth limits associated with different ones of the
locations, wherein the time-based and location-based pricing
includes at least:
a first price for data usage in a first one of the
locations determined to correspond to an inflated data
usage, and
a second price, less than the first price, for data
usage in a second one of the locations determined to
correspond to a discounted data usage;
adjusting, by the device and based on the first and second
prices, data usage between the application server devices and the
user equipment to prevent the network from becoming congested
with respect to the bandwidth limits associated with the different
ones of the locations;
charging, by the device, a first one of the application
server devices for first data usage, between the first one of
application server devices and a first one of the user equipment
located at the first location and second data usage between the
first one of the application server devices and the first one of the
user equipment located at the second location, according to the
first price or the second price, respectively; and
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Application 13/330,319
charging, by the device, a provider of an application
hosted by the first one of the application server devices for third
data usage, between the first one of the application server devices
and a second one of the user equipment located at the first
location and fourth data usage between the first one of the
application server devices and the second one of the user
equipment located at the second location, according to the first
price or the second price, respectively.
REJECTIONS3
Claims 1, 2, 5—7, 9, 11, 12, and 22—31 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 1, 2, 5—7, 9, 11, 12, and 22—31 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims 1,2, 5—7, 9, 11, 12, and 22—31 as a group
(App. Br. 9-13). We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
3 The rejection of claims 1, 2, 5—7, 9, 11, 12, and 22—31 under 35 U.S.C.
§103 has been withdrawn (Ans. 5).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the pending claims under § 101, the Examiner finds
that the claims are directed to gathering data and charging prices based on
the gathered data, i.e., to a fundamental economic practice, and, therefore, to
an abstract idea; and that the elements and combinations of elements beyond
the abstract idea do not amount to “significantly more” than the abstract idea
itself (Final Act. 2—3).
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Application 13/330,319
Appellants argue that claim 1 cannot be fairly construed as a
“fundamental economic practice” because the claim recites, inter alia,
“adjusting, by the device and based on the first and second prices, data usage
for data exchanged between the application server devices and the user
equipment to prevent the network from becoming congested,” which
Appellants assert “cannot be fairly construed as being ‘abstract’” (App.
Br. 10-11). Yet it is telling that, in paragraph 33, which Appellants identify
as support (see id. at 4), the Specification merely discloses dynamically
changing a price charged for data usage. In other words, the Specification
discloses that traffic flow, i.e., data usage, is adjusted/controlled, i.e., to
prevent network congestion, by changing/adjusting the data usage rate, i.e.,
by encouraging/discouraging users from accessing applications based on the
adjusted price/rate of data usage (see Spec. 133 (“By dynamically changing
the price charged for data usage, ADSP server 120 may adjust traffic flows
for application servers 130 by using price as a tool.”).
Appellants further argue that the § 101 rejection cannot be sustained
because the Examiner has presented no supporting evidence that the claims
are directed to a patent-ineligible abstract idea (App. Br. 11). Appellants,
thus, ostensibly maintain that because there is no evidentiary support of
record for the Examiner’s findings, the Examiner has failed to establish a
prima facie case of patent-ineligibility (id.).
We are aware of no controlling authority that requires the Office to
provide factual evidence to support a finding that a claim is directed to an
abstract idea. Nor, contrary to Appellants’ suggestion (see id.), did this
Board hold, in Ex parte Renald Poisson, Appeal 2012-011084
(PTAB February 27, 2015), that there is any such requirement. Instead, the
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Federal Circuit has repeatedly noted that “the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection, and the reference or references
relied on, in a sufficiently articulate and informative manner as to meet the
notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (Section 132 “is violated when the rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Appellants do not contend that the Examiner’s rejection under § 101
was not understood or that the Examiner’s rejection, otherwise, fails to
satisfy the notice requirements of § 132. Indeed, Appellants’ understanding
of the rejection is clearly manifested by their response as set forth in the
briefs.
Turning to the second step of the Mayo!Alice analysis, Appellants
argue that even if claim 1 could be construed as corresponding to an abstract
idea, the claim elements, taken as a whole, “amount to significantly more
than ‘gathering data and charging price(s) based on the gathered data’”
(App. Br. 11). Yet, aside from quoting the claim language {id. at 11—12),
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Appellants offer no persuasive arguments or technical reasoning to support
that position.
Appellants further argue that claim 1 does not attempt to preempt
every application of gathering data and charging prices based on the
gathered data (id. at 12). That argument is similarly unpersuasive of
Examiner error.
There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice Corp.,
134 S. Ct. at 2354. But characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the sole test
for patent eligibility. “The Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability” and
“[f]or this reason, questions on preemption are inherent in and resolved by
the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354).
“[Preemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility.” Id.
Finally, to the extent Appellants maintain that the elements of claim 1
amount to significantly more to the abstract idea because the claim is
allowable over the cited prior art (App. Br. 12; see also Reply Br. 4—5),
Appellants misapprehend the controlling precedent. Although the second
step in the Mayo!Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for “‘an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
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than a patent upon the [ineligible concept] itself.’” Alice Corp., 134 S. Ct.
at 2355. A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
We have considered Appellants’ remaining arguments and find them
unpersuasive of error on the part of the Examiner. Therefore, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claim 1, and claims 2, 5—7, 9,
11, 12, and 22—31, which fall with claim 1.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
We are persuaded here that the Examiner erred in rejecting the
pending claims under 35 U.S.C. § 112, first paragraph. The Examiner finds
that “adjusting . . . based on the first and second prices, data usage between
the application server devices and the user equipment to prevent the network
from becoming congested,” as recited in independent claim 1, and similarly
recited in independent claims 7 and 26 is not supported in the originally-
filed specification and, thus, constitutes new matter (Final Act. 4—5).
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However, we agree with Appellants that the Specification provides the
requisite written description support at least in paragraph 33 (App. Br. 14).4
Therefore, we do not sustain the Examiner’s rejection of claims 1, 2,
5—7, 9, 11, 12, and 22—31 under 35 U.S.C. § 112, first paragraph.
DECISION
The Examiner’s rejection of claims 1, 2, 5—7, 9, 11, 12, and 22—31
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 2, 5—7, 9, 11, 12, and 22—31
under 35 U.S.C. § 112, first paragraph, 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)(l)(iv).
AFFIRMED
4 The Examiner ostensibly agrees that the Specification discloses adjusting
data usage rates (see Final Act. 4—5). Rather than concerning the adequacy
of the written description, the Examiner’s concern appears related to claim
construction, i.e., whether “adjusting . . . based on the first and second
prices, data usage,” as recited in independent claim 1, and similarly recited
in independent claims 7 and 26 is properly construed to mean adjusting data
usage rates (see id. at 5), which is a separate issue.
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