Ex Parte Rahnama

Patent Trial and Appeal Board

Jan 18, 2017

14231378 (P.T.A.B. Jan. 18, 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.
14/231,378 03/31/2014 Hossein Rahnama 102130.0001US3 8624
24392 7590
FISH & TS ANG LLP
ROBERT D. FISH
2603 Main Street
Suite 1000
Irvine, CA 92614-6232
EXAMINER
HUANG, MIRANDA M
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
01/20/2017 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):
rfish @ fishiplaw. com
patents @ fishiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOSSEIN RAHNAMA
Appeal 2016-003668
Application 14/231,378
Technology Center 2100
Before ROBERT E. NAPPI, LARRY J. HUME and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—22 and 27—35, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the disclosed and claimed inventions
relate to zone technologies. See generally Spec. 1. Claim 1 is exemplary:
Appeal 2016-003668
Application 14/231,378
1. A zone management monetization system:
a zone management interface programmed to enable different zone
managers to define different zone objects, wherein each zone object is a
digital representation of a zone and has zone context criteria defined
according to a plurality of zone attributes within a multi-dimensional zone
attributes space;
a zone management server computer coupled with the zone
management interface and programmed to:
assign different monetary values to different ranges along each
dimension of the multi-dimensional zone attribute space, the
dimensions representing aspects of the multi-dimensional zone
attribute space;
upon receiving a definition of a zone object via the zone
management interface, calculate a zone value that represents a net
worth of the zone object as a function of the monetary values assigned
to the different ranges along the dimensions and the plurality of zone
attributes; and
enable a transaction with the zone manager over the zone
management interface as a function of the zone value.
References and Rejections
Claims 1—22 and 27—35 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
Claims 1—3, 6—22, and 27—35 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Robinson (US 2007/0285280 Al;
published Dec. 13, 2007) and Peeters (US 2011/0131238 Al; published
June 2, 2011).
Claims 4—5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robinson, Peeters, and Boss (US 2011/0087524 Al;
published Apr. 14, 2011).
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Application 14/231,378
ANALYSIS
35U.S.C.§ 101
Claim 1 recites: “A zone management monetization system: a zone
management interface . . . ; a zone management server computer . . .
Claim 1. The Examiner finds each of the claimed “zone management
interface” and “zone management server computer” could be software, and
claim 1 could be directed to unpatentable software per se. See Final Act. 3;
Ans. 3—A.
As discussed below, Appellant has not persuaded us of error.
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Further, software per se does
not comply with 35 U.S.C. § 101 because “[ajbstract software code is an
idea without physical embodiment.” Microsoft Corp. v. AT&T Corp., 550
U.S. 437, 449 (2007); see also MPEP § 2106 (I) (a computer program per se
is ineligible under 35 U.S.C. § 101 (citing Gottschalkv. Benson, 409 U.S.
63, 72 (1972)).
First, with respect to the claim element “zone management interface,”
Appellant initially cites paragraphs 49 and 54 of the Specification. See App.
Br. 2. However, neither paragraph is on point because neither discusses
whether the claimed zone management interface could not be merely
software. Appellant also cites paragraphs 58 and 113 of the Specification
(App. Br. 5), but as pointed out by the Examiner, neither paragraph states the
claim element could not be merely software. See Ans. 3. Appellant further
argues although the claimed zone management interface could comprise
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Application 14/231,378
software, it must be embodied on a physical computer device. See App. Br
5. That argument is unpersuasive, as the claim does not recite any physical
computer device.
Second, with respect to the claim element “zone management server
computer,” Appellant cites Figure 4 of the Specification and a Specification
excerpt, which states “computing devices comprise a processor configured
to execute software instructions stored on a tangible, non-transitory
computer readable storage medium . . . .” See App. Br. 4. The Examiner
correctly finds neither Figure 4 nor the Specification excerpt shows the zone
management server computer could not be merely software. See Ans. 3.
Appellant further argues even if the claimed zone management server
computer is a virtual software computer, it must be embodied as software
instructions executed by a physical processor. See App. Br. 5. But that
argument is unpersuasive, as the claim does not recite any physical
processor.
Because Appellant has not persuaded us of error, we sustain the
Examiner’s rejection of claim 1, and corresponding dependent claims 2—22
and 27—35 under 35 U.S.C. § 101.
Obviousness
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in finding Robinson teaches “a zone
management interface programmed to enable different zone managers to
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Appeal 2016-003668
Application 14/231,378
define different zone objects, wherein each zone object is a digital
representation of a zone,” as recited in claim 1. See App. Br. 9—11.1
The Examiner maps the claimed “zone management interface” to
Robinson’s cellular carrier, and cites Robinson’s Figure 1, Abstract, and
paragraphs 32 and 33 for teaching the disputed claim limitation. See Final
Act. 4; Ans. 6—7. We have examined the cited Robinson portions, and they
do not discuss “a zone management interface programmed to enable
different zone managers to define different zone objects, wherein each zone
object is a digital representation of a zone,” as required by the claim. See
App. Br. 9—11. Absent further explanation from the Examiner, we do not
see how the cited Robinson portions teach the disputed claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 103. We also
reverse the Examiner’s 35 U.S.C. § 103 rejection of dependent claims 2—22
and 27—35, which depend from claim 1.
DECISION
We affirm the Examiner’s decision rejecting claims 1—22 and 27—35
under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1—22 and 27—35
under 35 U.S.C. § 103.
1 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal with respect to the obviousness rejections, we need
not reach the additional arguments.
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Appeal 2016-003668
Application 14/231,378
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1) (2012).
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
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