Ex Parte Surette

Patent Trial and Appeal BoardSep 16, 2014

12132596 (P.T.A.B. Sep. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CRAIG MICHAEL SURETTE ____________ Appeal 2012-005372 Application 12/132,596 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, ELENI MANTIS MERCADER, and MICHELLE N. WORMMEESTER, Administrative Patent Judges. WORMMEESTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non- final rejection of claims 1–6, 9–15, and 18. Claims 7, 8, 16, 17, 19, and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-005372 Application 12/132,596 2 STATEMENT OF THE CASE Introduction Appellant’s invention relates to providing language interpretation services to users through a portable access system. See Spec. ¶¶ 3, 15. Exemplary independent claim 1 reads as follows: 1. A method comprising: providing a user with a prepaid account with a predetermined number of units for live language interpretation service; providing a live language interpretation service, through a telephone call, to the user; and deducting one or more units from the predetermined number of units in the prepaid account based on an amount of units of language interpretation service provided to the user in addition to any units charged by a telephone service provider for telephone service based on a duration of the telephone call in which the live language interpretation service is provided to the user. Applied Prior Art The Examiner relies on the following prior art in rejecting the claims on appeal: D’Urso et al. (D’Urso) 5,353,335 Oct. 4, 1994 Davitt et al. (Davitt) 5,392,343 Feb. 21, 1995 Nelson US 2003/0086548 A1 May 8, 2003 Rejections Claims 1, 11, and 18 stand rejected under the judicially-created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over U.S. Application No. 11/929,885 and U.S. Patent No. 7,376,415. See Non-final Office Action 4–8 (Nov. 29, 2010). Appeal 2012-005372 Application 12/132,596 3 Claims 1, 3–6, 9–11, 13–15, and 181 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over D’Urso and Davitt. See Ans. 3–9. Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over D’Urso, Davitt, and Nelson. See Ans. 9. ANALYSIS Double Patenting Rejection Appellant acknowledges the Examiner’s rejection of claims 1, 11, and 18 under the judicially-created doctrine of nonstatutory obviousness-type double patenting but does not present any arguments challenging the rejection. See App. Br. 4. Rather, Appellant agrees to consider filing a terminal disclaimer should the claims be found allowable. See id. With no arguments from Appellant to consider, we sustain the Examiner’s double patenting rejection of claims 1, 11, and 18. Rejection under 35 U.S.C. § 103 1. Claims 1, 3–6, 9–11, 13–15, and 18 Appellant argues that the Examiner has erred in rejecting independent claim 1 because the Examiner’s proposed combination is improper for (a) failing to address Appellant’s discovery of a previously-unknown problem; (b) failing to yield predictable results; (c) combining incompatible prior art elements; and (d) failing to teach prepaid language interpretation units. See 1 We note that independent claim 18 recites “a computer useable medium.” See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007); cf. Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential-in-part) (sustaining the Examiner’s § 101 rejection of claims reciting “machine-readable storage medium”). In the event of further prosecution, we leave to the Examiner to consider claim 18 for compliance with 35 U.S.C. § 101. Appeal 2012-005372 Application 12/132,596 4 App. Br. 5–9. As independent claims 1, 11, and 18 recite similar features, these arguments also apply to claims 11 and 18. See id. at 10. We disagree with Appellant. a. Previously-unknown problem In concluding that claim 1 is obvious, the Examiner finds that the claim recites a combination that both unites old elements with no change in their respective functions and yields predictable results. See Ans. 10. Without disputing the Examiner’s finding that claim 1 recites a combination of old elements with no change in their respective functions, Appellant, citing In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008), contends that claim 1 is nonetheless nonobvious because it addresses the previously-unknown problem of delays associated with using a credit card to purchase a live language interpretation service. See App. Br. 5–7; see also Omeprazole, 536 F.3d at 1379–80. While a combination of old elements may be nonobvious in view of the discovery of a previously-unknown problem, we find unpersuasive Appellant’s argument. See Omeprazole, 536 F.3d at 1379–81. In Omeprazole, the Federal Circuit agreed with the lower court’s conclusion of nonobviousness based on the lower court’s finding that a person of ordinary skill in the art would not have seen any need at all to combine the prior art elements to obtain the claimed invention. See id. at 1380–81. In this case, however, the Examiner identifies a reason for combining D’Urso and Davitt to obtain Appellant’s claimed invention. See Ans. 4–5. The Examiner points out that D’Urso teaches using a prepaid card for purchasing translation services. See Ans. 3–4; see also D’Urso, Abstract. Recognizing that D’Urso does not teach the claimed steps of providing a live language Appeal 2012-005372 Application 12/132,596 5 interpretation service and deducting from a prepaid account language interpretation service units and telephone service units, the Examiner also points out that Davitt teaches providing a live language interpretation service and adding the billing for that service to the billing for the telephone call. See Ans. 4; see also Davitt, Abstract, col. 2, ll. 43–50, col. 5, ll. 65–67. The Examiner explains that Davitt’s teachings suggest modifying D’Urso’s system to include Davitt’s live language interpretation service and billing features in order to improve interpretation (or translation) services, (see Ans. 4–5), by allowing for live language interpretation and respective billing as explicitly taught by Davitt. We find reasonable the Examiner’s explanation for combining D’Urso and Davitt to obtain the claimed invention. Accordingly, we are unpersuaded that the Examiner’s proposed combination improperly fails to address Appellant’s discovery of a previously-unknown problem. Appellant further contends that the invention recited in claim 1 prevents delays in the live language interpretation service in addition to the aforementioned delays associated with purchasing the service with a credit card. See App. Br. 5–6. As the Examiner points out, these argued features are not recited in the claim. See Ans. 9–10. Appellant’s arguments therefore are not commensurate in scope with the claim. Moreover, given that Appellant describes these argued features as problems that the claimed invention addresses, (see App. Br. 5–6; Reply Br. 3), we note that the prior art need not suggest a combination that addresses the same problem that the applicant addresses, see In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“In considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the Appeal 2012-005372 Application 12/132,596 6 invention but the general problem that confronted the inventor before the invention was made.”). b. Predictable results As to the Examiner’s finding that claim 1 recites a combination of old elements that yields predictable results, Appellant contends that the claimed invention adds complexity to a billing system that results in the removal of delays associated with credit card purchases, which Appellant urges is not a predictable result. See App. Br. 7. This argued feature of adding complexity, however, is not recited in claim 1. Appellant’s argument therefore is not commensurate in scope with the claim. (See Ans. 11.) We note that Appellant cites Crocs, Inc. v. U.S. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010), in challenging the Examiner’s finding. See App. Br. 7. That case is distinguishable from the case here. In Crocs, the disputed claims actually recite a feature (i.e., a foam strap) that yields “more than predictable results,” while Appellant’s claim 1 does not recite such feature. See Crocs, 598 F.3d at 1298, 1308–11. Moreover, as in Omeprazole, the Court in Crocs notes that “an ordinary artisan would not have been motivated even to try, let alone make, this inventive combination.” See Crocs, 598 F.3d at 1311. As discussed above, the Examiner here provides a reasonable explanation for combining D’Urso and Davitt to obtain Appellant’s claimed invention. See Ans. 4–5. Accordingly, we are unpersuaded that the Examiner’s proposed combination is improper for failing to yield predictable results. c. Incompatible prior art elements Appellant contends that the Examiner’s proposed combination renders D’Urso unsatisfactory for its intended purpose under MPEP § 2143.01(V) Appeal 2012-005372 Application 12/132,596 7 because modifying D’Urso’s system to include additional units of live language interpretation service would “completely vitiate” D’Urso’s underlying theme of simplicity. See App. Br. 8. As the Examiner points out, however, Appellant does not identify any discussion in D’Urso that emphasizes simplicity. See Ans. 11. Even if the Examiner’s proposed combination adds a level of complexity to D’Urso’s system, we find Appellant’s argument unpersuasive. “Although statements limiting the function or capability of a prior art device require fair consideration, simplicity of the prior art is rarely a characteristic that weighs against obviousness of a more complicated device with added function.” See In re Dance, 160 F.3d 1339, 1344 (Fed. Cir. 1998). As Appellant does not contend that the Examiner’s proposed combination limits the function or capability of D’Urso’s system, we are unpersuaded that the Examiner’s proposed combination is improper for combining incompatible prior art elements. d. Prepaid language interpretation units Appellant argues that the Examiner’s proposed combination does not teach a prepaid account with a predetermined number of units for live language interpretation service. See App. Br. 8–9. In particular, Appellant contends that the prepaid units in D’Urso are for telephone service, not for language interpretation service. See id. Appellant also contends that Davitt does not disclose predetermined units at all. See id. at 9. As discussed above, however, the Examiner relies on D’Urso and Davitt together, not separately, for teaching live language interpretation units. See Ans. 3–4. The Examiner points out that D’Urso discusses using prepaid time units for various services, including translation services, (see Ans. 12; see also Appeal 2012-005372 Application 12/132,596 8 D’Urso, Abstract, col. 3, ll. 35–36), while Davitt discusses providing a live interpretation service and adding the billing for that service to the billing for the associated telephone call, (see Ans. 4, 12; see also Davitt, Abstract, col. 2, ll. 43–50, col. 5, ll. 65–67). The Examiner finds, and we agree, that Davitt’s discussions suggest using D’Urso’s prepaid units for live interpretation services. See Ans. 12. Accordingly, we are unpersuaded that the Examiner’s proposed combination is improper for failing to teach or suggest live language interpretation units. We note that Appellant further contends that D’Urso’s prepaid units may be used for various services, while use of Appellant’s live language interpretation units is limited exclusively to language interpretation services. See App. Br. 9. As this limiting feature is not recited in claim 1, Appellant’s argument is not commensurate in scope with the claim. In view of the foregoing, we sustain the Examiner’s § 103 rejection of claim 1 and, for the same reasons, the rejections of claims 3–6, 9–11, 13–15, and 18, which were not separately argued, (see App. Br. 9-10). 2. Claims 2 and 12 Maintaining Appellant’s arguments with respect to independent claims 1 and 11, Appellant does not separately argue features recited in depending claims 2 and 12. We therefore sustain the Examiner’s § 103 rejection of claims 2 and 12 for the reasons discussed above. Appeal 2012-005372 Application 12/132,596 9 DECISION The Examiner’s decision rejecting claims 1, 11, and 18 under the judicially-created doctrine of nonstatutory obviousness-type double patenting is affirmed. The Examiner’s decision rejecting claims 1–6, 9–15, and 18 under 35 U.S.C. § 103(a) 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)(1)(iv). AFFIRMED msc