Ex Parte Sunder et alDownload PDFPatent Trial and Appeal BoardMar 28, 201410456159 (P.T.A.B. Mar. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SINGAM SUNDER, JEFF EDGETT, and ROY DAVID ALBERT ____________ Appeal 2011-012456 Application 10/456,159 Technology Center 2400 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012456 Application No. 10/456,159 2 STATEMENT OF THE CASE Singam Sunder et al. (Appellants) seek review under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-13 and 15-44. Claim 14 was cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claims 1, 16, 23, 31, 37, 41, and 44 are independent. Claim 1 represents the claims on appeal and is reproduced below with the key disputed limitation emphasized. 1. A computer-implemented method for managing a network connection application executable on a computer, the method including: assigning a plurality of selection criteria to each connection point, each selection criteria bearing an associated selection weight; arranging the connection points in a prioritized order in a priority list used by the connection application to connect to anyone of the connection points, the prioritized order being based on the selection criteria and associated selection weights; diversifying the connection points in the priority list so that connection points from a plurality of service providers are provided to a user; and making the prioritized list available for use by the connection application. REJECTIONS The following rejections are before us for review: Claims 16-22 and 37-43 stand rejected under 35 U.S.C § 101 as directed to non-statutory subject matter. Ans. 4. Appeal 2011-012456 Application No. 10/456,159 3 Claims 1-9, 12, 13, and 15-44 stand rejected under 35 U.S.C § 102(e) as anticipated by West (US 6,538,996 B1; iss. Mar. 25, 2003). Ans. 7. Claim 10 stands rejected under 35 U.S.C § 103(a) as unpatentable over West and Stringer (US 7,222,193 B2; iss. May 22, 2007). Ans. 11. Claim 11 stands rejected under 35 U.S.C § 103(a) as unpatentable over West and Slemmer (US 2002/0069284 A1; pub. Jun. 6, 2002). Ans. 12. ANALYSIS Claims 16-22 - Non-Statutory Subject Matter Claims 16-22 Appellants argue claims 16-22 as a group. App. Br. 8-9. We select claim 16 as representative. 37 C.F.R. § 41.37(c)(1)(vii). Claims 19-22 stand or fall with claim 16. The Examiner finds that claim 16 is directed to a non-statutory method because it is not tied to a particular machine and does not transform an article to a different state or thing because arrangement of connection points does not constitute a transformation. Appellants argue that “the machine-or-transformation test is not the sole test for determining whether a claimed process is patentable under § 101,” and that claim 16 does not fall within one of the three exceptions to the Patent Act’s broad patent eligibility principles. App. Br. 8-9. Appellants argue that claim 16 is not drawn to an abstract idea because it is not directed to a fundamental principle or mental process, but instead recites a process in the field of computer technology for assigning selection criteria to network connections points and arranging/diversifying the connections points. App. Br. 9. Appeal 2011-012456 Application No. 10/456,159 4 Although the machine-or-transformation test is not the sole test for determining whether a claimed process is patentable, it is a “useful and important clue” when determining whether a claimed process contains statutory subject matter. See Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). Appellant does not allege that claim 16 expressly or inherently recites a machine or transformation, instead arguing only in a conclusory manner that claim 16 is not an abstract idea because it is drawn to “a process in the field of computer technology for assigning selection criteria to network connections points and arranging/diversifying the connections points.” We are not persuaded by Appellants’ conclusory arguments and we therefore sustain the Examiner’s rejection of claims 16-22 under 35 U.S.C. § 101. Claims 37-43 Appellants argue claims 37-43 as a group. App. Br. 9-10. We select claim 37 as representative. 37 C.F.R. § 41.37(c)(1)(vii). Claims 38-43 stand or fall with claim 37. The Examiner finds that claim 37 is directed to non-statutory subject matter because, although Appellant removed “carrier wave signals” from the specification and amended the claims to recite a “machine readable storage medium,” Appellant has not “disavowed” the use of carrier wave signals within claim 37. See Ex parte Mewherther (PTAB 2013)(precedential), http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd2012_007692_preced ential.pdf. According to the Examiner: Carrier wave signals were used as an example of machine readable medium and removing an example does not remove it from the scope of machine readable medium, leaving machine Appeal 2011-012456 Application No. 10/456,159 5 readable medium to still be defined as including both statutory . . . and non-statutory . . . subject matter. Ans. 5-6. Appellants argue that claim 37 recites a “machine readable storage medium” that is not an electronic signal. App. Br. 10. However, because Appellants’ Specification does not expressly exclude transitory signals from the machine-readable storage medium, we give “machine-readable storage medium” its broadest reasonable interpretation as covering both non- transitory tangible media and transitory propagating signals. We therefore sustain the rejection of claims 37-43 under 35 U.S.C. § 101. Rejection under 35 U.S.C. § 102(e) The Examiner finds that West teaches all of the limitations of claims 1-9, 12, 13, and 15-44, including diversifying connection points in the priority list so that a plurality of service providers are provided to a user. Ans. 7 (citing West, col. 12, ll. 8-18 and col. 17, ll. 19-31). Although Appellants provide separate subheadings for (1) claims 1-13 and 15, (2) claims 16-22, (3) claims 23-30, (4) claims 31-36, (5) claims 37- 40, (6) claims 41-43, and (7) claim 44, Appellants make the same argument for all of claims 1-9, 12, 13, and 15-44, namely that the Examiner erred in finding that West teaches diversifying connection points in the priority list so that a plurality of service providers are provided to a user. App. Br. 12, 13, 14, 15-16, 17, 18, 19. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii). According to Appellant: West does not disclose diversifying the connection points in the priority list so that points from a plurality of service providers are provided to a user. That is, West’s system is not designed to perform diversifying of connection points in the priority list Appeal 2011-012456 Application No. 10/456,159 6 so that connection points from a plurality of service providers are provided to a user. App. Br. 12. The Examiner responds that “West teaches evaluating connection points from multiple ISPs and providing these points in a list. The outcome of the evaluation includes connection points from multiple ISPs.” Ans. 14. More particularly, the Examiner explains that: The corporate database includes pricing information for a variety of ISPs and also ISP and POP information that are not included in the POP information and distribution databases. For instance, corporations may have a special price or may use a regional ISP that is not included in the POP information database (see col. 12 lines 6-18; col. 17 lines 19-31). Once the information relating to different ISPs from the corporate and distribution databases are combined in the master client database, the various connection paths are evaluated based on ISP and POP factors and the results are displayed in a sorted list to the user (see col. 13 lines 21-29; col. 6 lines 42-60). Ans. 14-15. Appellants argue that West’s corporate-specific information includes “pricing information for various ISPs” that is used to select a lowest-cost connection path from a remote computer to the corporate system, and that West does not “disclose or suggest any type of diversifying of the connections points so that the connections points are from a plurality of service providers.” Reply Br. 1-2. We think the Examiner has the better position on this issue. West discloses creating a list including multiple ISPs, and Appellant has not explained why West’s creation of a list of connection points including multiple ISPs fails to disclose “diversifying” the connection points to Appeal 2011-012456 Application No. 10/456,159 7 include plural service providers. We therefore sustain the rejection of claims 1-9, 12, 13, and 15-44 as anticipated by West. Claims 10 and 11 under 103(a) Claim 10, which depends from claim 1, recites the selection criteria including “a profit margin, wherein the profit margin is defined as a margin available on the associated connection point relative to a margin available on all connection points in a particular pricing plan.” The Examiner finds that West teaches “computing relative monetary costs associated with selecting a particular POP (see col 16 lines 4-6, col 6 lines 46-57) and listing the preferred connections first (see col 6 lines 46- 57),” but does not teach the selection criteria including a profit margin defined as a margin available on the associated connection point relative to a margin available on all connection points in a particular pricing plan. Ans. 11-12. The Examiner finds, however, that Stinger teaches “considering the net profit when evaluating connections (see col. 9 lines 48-55),” and concludes that combining Stinger’s consideration of net profit with West’s monetary connection prioritization “would result in connections being sorted based on net profit and viewing an ordered list based on net profit would illustrate the profit margins of each connection relative to the other connections.” Id. at 12. The Examiner also concludes that it would have been obvious to one of ordinary skill in the art at the time of invention that “incorporating Stringer’s profit margin into West’s system would provide additional factors when computing total costs, thereby ensuring more accurate total cost calculations.” Id. Appellants argue that although West teaches considering monetary factors for a connection and Stringer teaches considering profit for a Appeal 2011-012456 Application No. 10/456,159 8 connection, neither West nor Stringer, alone or in combination, discloses or suggests arranging of connection points in a prioritized order based on a margin available on the associated connection point relative to a margin available on all connection points in a particular pricing plan. App. Br. 22. We are not persuaded by this conclusory argument. The Examiner set forth reasons why one skilled in the art would combine Stringer with West to produce the recitation of claim 10, and Appellants have not explained why the Examiner’s findings and/or conclusion are in error. We therefore sustain the rejection of claim 10 under 35 U.S.C. § 103(a). Claim 11, which depends from claim 1, recites the selection criteria including “service commitment associated with the connection point, wherein the service commitment is defined as a percentage of commitment remaining in a period relative to all other commitments in the period.” The Examiner finds that West teaches “the selection criteria includ[ing] service commitment associated with the connection point (see col 15 lines 58-66: tracking the remaining time in a provider’s commitment) and also computing relative costs associated with selecting a particular POP (see col 16 lines 4-6),” but does not teach “a provider commitment percentage.” Ans. 12. The Examiner finds, however, that Slemmer teaches “associating connection percentages with access points and using these percentages for balancing system load and ensuring capacity commitments are met (see paragraphs l3, 43).” Id. The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time of invention that incorporating Slemmer’s teachings into West’s system would provide another way to illustrate the remaining commitment time and also a way to illustrate relative costs.” Id. at 12-13. Appeal 2011-012456 Application No. 10/456,159 9 Appellants admit that West teaches “threshold cumulative connection time (for a particular connection) beyond which a monetary factor is applied,” and that Slemmer teaches “balancing of system loads and archiving of capacity commitments for connections (by a management server). . . . [and] connection information that includes ‘priorities and percentages associated with individual or groups of access points of the access provider. . . .’” App. Br. 23. Appellant argues, however, that neither West nor Slemmer, alone or in combination, discloses or suggests arranging connection points in a prioritized order based on a percentage of commitment remaining in a period relative to all other commitments in the period. Id. The Examiner set forth reasons why one skilled in the art would combine Slemmer with West to produce the recitation of claim 11, and Appellants have not explained why the Examiner’s findings and/or conclusion are in error. We therefore sustain the rejection of claim 11 under 35 U.S.C. § 103(a). DECISION We AFFIRM the rejection of claims 16-22 and 37-43 under 35 U.S.C § 101 as being directed to non-statutory subject matter. We AFFIRM the rejection of claims 1-9, 12, 13, and 15-44 under 35 U.S.C. §102(e) as being anticipated by West. We AFFIRM the rejection of claim 10 under 35 U.S.C § 103(a) as being unpatentable over West and Stringer. We AFFIRM the rejection of claim 11 under 35 U.S. C. § 103(a) as being unpatentable over West and Slemmer. Appeal 2011-012456 Application No. 10/456,159 10 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)(1)(iv). AFFIRMED Vsh Copy with citationCopy as parenthetical citation