Ex Parte South et al

Patent Trial and Appeal Board

Apr 12, 2018

14323609 (P.T.A.B. Apr. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/323,609 07/03/2014
96355 7590 04/16/2018
NIXON & VANDERHYE, P.C. I Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
MICHAEL SOUTH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5524-281 8345
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
04/16/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SOUTH, JOHN ERIKSON, and
ANDREW MCSHERRY
Appeal2017-001738
Application 14/323,609
Technology Center 3600
Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellants indicate the real party in interest is Vonage America Inc.
App. Br. 3.
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Application 14/323,609
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM.
Representative Claim
Representative claim 1 under appeal read as follows (emphasis,
formatting, and bracketed material added):
1. A method of causing a selected one of a plurality of billing
groups to be charged for the costs of an outgoing communication
originating from a communications device in an Internet Protocol (IP)
environment, the plurality of billing groups being associated with the
communications device, comprising:
[A.] receiving input at the communications device utilizing at
least one processor of the communications device,
[i.] the input indicating which of the plurality of billing
groups is to be charged for the costs of an outgoing
communication that is to originate from the
communications device,
[ii.] wherein the plurality of billing groups correspond to
a plurality of originating telephone numbers; and
[B.] sending a communication request for the outgoing
communication utilizing at least one processor of the communications
device to an IP telephony system that is to handle the outgoing
communication,
[i.] the communication request including information
identifying the selected billing group.
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Kung et al.
Takatori et al.
References
US 6,252,952 B 1
US 2003/0078844 Al
Rejections
June 26, 2001
Apr. 24, 2003
1. The Examiner rejected claims 1-22 under 35 U.S.C. § 101
"because the claimed invention is directed to non-statutory subject matter,"
i.e., "the claimed invention is directed to a judicial exception (i.e., a law of
nature, a natural phenomenon, or an abstract idea) without significantly
more." Final Act. 5. 2
2. The Examiner rejected claims 1-22 under 35 U.S.C. § 102(b)3
as being anticipated by Kung.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
non-statutory subject matter?
Did the Examiner err in rejecting claim 1 as being anticipated because
Kung fails to disclose the argued limitations?
2 We select claim 1 as representative. Separate patentability under§ 101 is
not argued for claims 2-22. Except for our ultimate decision, the§ 101
rejection of claims 2-22 is not discussed further herein.
3 Appellants argue separately the patentability of claims 1, 3, and 9. Except
for our ultimate decision, we do not discuss further herein the § 102(b)
rejection of claims 2, 4--8, and 10-22.
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Application 14/323,609
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
A. Section 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). 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 these concepts." Alice, 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," such as an abstract idea. Id. For
example, a fundamental economic practice is an abstract idea.
[In Bilski v. Kappas], the Court grounded its conclusion that all
of the claims at issue were abstract ideas in the understanding
that risk hedging was a" 'fundamental economic practice.' " 561
U.S., at 611, 130 S.Ct. 3218.
Alice, 134 S. Ct. at 2357.
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
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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
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If
the claims are not directed to 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 the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
Ct. at 1298, 1297).
B. Examiner's Rejection -Alice/Mayo - Steps 1 and 2
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea because:
Claims 1-22 are directed to the concept of selecting one of a
plurality of billings groups to charge for costs of an outgoing
communication. This concept is merely a series of steps
instructing how to select the appropriate billing group which is a
fundamental economic practice and merely the automation of
human activity.
Final Act. 5.
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes
"[ t ]he claims do not include additional elements that are sufficient to amount
to significantly more than the judicial exception because":
they are merely an abstract idea with additional generic computer
elements explain that the generically recited computer elements
do not add a meaningful limitation to the abstract idea because
they would be routine in any computer implementation. The
limitations are merely instructions to implement the abstract idea
on a computer and require no more than a generic computer to
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perform generic computer functions that are well-understood,
routine and conventional activities previously known to the
industry. A computer "that receives and sends information over
a network- with no further specification - is not even arguably
inventive" (see Buysafe Inc. vs Google Inc. (Fed. Cir. 2014)).
Additionally, the claimed functions of the generic computer
represent insignificant data-gathering steps and thus add
nothing of practical significance to the abstract idea (see
Ultramerical Inc vs Hulu LLC (Fed. Cir. 2014)).
Final Act. 5---6.
C. Appellants 'Arguments
1.
Appellants contend the Examiner erred in rejecting claim 1 as directed
to non-statutory subject matter because:
[C]laim 1 [] does not recite a step of selecting a billing group,
which could be considered a mental activity performed by a
human. Also, claim 1 is not merely the automation of human
activity, because no human could perform the sending step
recited in claim 1.
Appellant agrees that the steps of the method recited in
claim 1 are intended to cause an IP telephony system to charge a
selected billing group for the costs of an outgoing
communication. However, claim 1 does not recite the actions
performed by the IP telephony system. Instead, claim 1 recites
steps that are performed by one or more processors of a
communications device, such as a user's smartphone. Thus,
claim 1 does not recite a step of charging a billing group.
Appellant also notes that claim 1 does not include a step
of selecting one of a plurality of billing groups, as asserted by the
Examiner. Applicant agrees that selecting a billing group could
be considered a mental activity performed by a user. However,
claim 1 does not include a selecting step.
App. Br. 16 (emphasis added).
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We are unpersuaded by Appellants' arguments. We agree with
Appellants' reasoning to the extent that claim 1 does not explicitly recite a
requirement of "a step of selecting a billing group." However, claim 1 (and
the remaining claims) repeatedly recites an implicit requirement that such a
step has occurred. For example, the last clause of claim 1 requires "the
communication request including information identifying the selected billing
group" (emphasis added). Such information cannot be included unless a
selecting step occurs to produce the "selected billing group." Similarly, in
Appellants' preamble of claim 1, the recited "causing a selected one of a
plurality of billing groups to be charged for the costs" (emphasis added)
cannot occur unless there is a preceding step of selecting a billing group.
We conclude Appellants' claim is not statutory merely because it
omits any explicit claim recitation of the most inconvenient steps (as to the
Alice/Mayo analysis) of a non-statutory process, and only includes such
steps by indirect reference.
2.
Appellants also contend the Examiner erred in rejecting claim 1 as
directed to non-statutory subject matter because:
[T]he steps recited in claim 1 could not be performed by a
human. Both steps recited in claim 1 unambiguously indicate
that the actions are performed by at least one processor of a
communications device. Even if the claims did not recite that the
actions are being performed by at least one processor of a
communications device, a human would be incapable of
sending digital data packets in the proper format to an IP
telephony system, where those digital data packets comprise a
communications request that will cause the IP telephony system
to setup a new outgoing telephony communication. The sending
step could only be performed by one or more processors of a
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user's communications device, because only a processor
running appropriate software is capable of assembling and
sending a digital data message to an IP telephony system that
will cause the IP telephony system to setup a new outgoing
communication. For all these reasons, Appellant respectfully
submits that the steps recited in claim 1 are not merely the
automation of human activity.
App. Br. 17 (emphasis added).
Appellants' argument is, essentially, "the steps recited in claim 1 are
not merely the automation of human activity" because the steps have
automation recited in them that "could not be performed by a human." This
is circular reasoning and we are unpersuaded by Appellants' argument.
Claim 1 recites the conventional steps of receiving and sending
information. Moreover, each of the steps in claim 1 merely automates the
conventional human activity of receiving and sending information. Such
activity is capable of being performed by a person, possibly with the aid of
pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101.") The mere mention of certain claimed hardware components (e.g. "a
communications device," "processor," and "IP telephony system") does not
impose sufficiently meaningful limitations on claim scope beyond these
mental steps. Id. at 1372-73, 1375 ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
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3.
Appellants further contend the Examiner erred in rejecting claim 1 as
directed to non-statutory subject matter because:
The Examiner also appears to argue that the steps of claim
1 amount to no more that insignificant data gathering steps.
Appellant respectfully disagrees. While the first step of claim 1
involves receiving input from a user of a communications device,
the second step of claim 1 is not a data gathering step. Instead,
the sending step in claim 1 involves sending a communication
request for a new outgoing communication to an IP telephony
system. Thus, claim 1 clearly recites more than mere data
gathering steps.
App. Br. 17 (emphasis added).
Appellants' argument appears to concede that the first step of claim 1
is a data-gathering step. We agree. As to the second step of claim 1,
Appellants argue it "is not a data gathering step." Again, we agree.
Although we agree with Appellants that the second step of claim 1 is not a
data-gathering step, this alone does not show the Examiner erred in rejecting
claim 1 as being directed to non-statutory subject matter.
4.
Appellants also contend the Examiner erred in rejecting claim 1 as
directed to non-statutory subject matter because:
The Examiner also appears to assert that the actions recited
in claim 1 involve no more than receiving and sending
information over a data network, without any further
specification or limitation. This is abundantly not true. Claim 1
is highly specific about the type of information that is received
during the first step. Moreover, the sending step of claim 1 is
limited to sending a communication request for an outgoing
communication to an IP telephony system. Thus, claim 1
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includes multiple limitations which extend far beyond merely
receiving and sending information over a data network.
App. Br. 17 (emphasis added).
We are unpersuaded by Appellants' argument. Appellants fail to
explain the basis for their position that claiming a highly specific type of
information is sufficient to transform the nature of the claim into a patent-
eligible application of the abstract idea. Nor are we aware of any basis to
conclude that an abstraction in the form of highly specific information is
sufficient to transform the nature of a claim.
5.
Appellants also contend the Examiner erred in rejecting claim 1 as
directed to non-statutory subject matter because:
[T]he Examiner appears to object to the claims under § 101
because the Examiner does not believe that the claims recite a
novel and non-obvious invention. Appellant respectfully
submits that this is not the proper way to analyze a § 101
rejection. The novelty and non-obviousness of the claimed
subject matters are to be judged against the prior art.
App. Br. 18.
We are unpersuaded by Appellants' argument. Our review of the
Examiner's§ 101 rejection does not find a discussion by the Examiner of
Appellants' alleged "novel and non-obvious" analysis. Rather, we find a
discussion of "generic computer functions that are well-understood, routine
and conventional activities previously known to the industry." Final Act. 6.
Contrary to Appellants' argument, this basis for a § 101 analysis is not
improper, but is the one set forth by the Court in Alice, in which the Court
agreed that the claims were patent-ineligible despite reciting steps to be
performed by computer components: "[A ]ll of these computer functions are
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'well-understood, routine, conventional activit[ies]' previously known to the
industry. . . . In short, each step does no more than require a generic
computer to perform generic computer functions." Alice, 134 S. Ct. at 2359
(citing Mayo, 132 S. Ct. at 1294).
D. Anticipation
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) because:
Kung discloses systems and methods that involve multiple
closed user groups, or "CLGs." The members of a closed user
group can obtain special discounted communications rates.
Specifically, when a first member of a closed user group calls a
second member of the same user group, the first user is charged
a discounted rate for the call.
This distinction between a "billing group" as recited in the
claims of this application and a "closed user group" is more than
simply a matter of terminology. These are different concepts
altogether.
In the claimed systems and methods, a single user may be
associated with a plurality of different billing groups. When the
user requests the setup of a new outgoing communication, the
user can provide input to indicate which of the plurality of billing
groups is to be charged for the cost of the outgoing
communication. It is the financial account of the billing group
that is ultimately charged for the cost of the outgoing
communication.
In the systems and methods disclosed in Kung, a user has
only a single financial account with the telephony service
provider that sets up the user's outgoing telephony
communications. . . . In Kung's systems and methods, it is not
possible to charge the cost of an outgoing telephony
communications to one of multiple different billing accounts.
While the rate that is charged may vary depending on whether
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the user is calling a person within an established user group, the
same financial billing account, the user's own financial billing
account, is always charged for the costs of all of the user's
outgoing telephony communications.
App. Br. 12-13 (emphasis omitted).
Returning to the language of claim 1, Kung fails to
disclose any methods that include receiving input at a
communications device, where the input indicates which of the
plurality of billing groups is to be charged for the costs of an
outgoing communication that is to originate from the
communications device.
App. Br. 13-14.
Kung also fails to disclose or suggest any methods that
include sending a communication request for the outgoing
communication, where the communication request includes
information identifying a selected billing group.
App. Br. 14.
Appellants also contend that the Examiner erred in rejecting claim 3
under 35 U.S.C. § 102(b) because:
Kung fails to disclose or suggest any systems or methods that
involve receiving an indication that one of a plurality of billing
groups is to be used as a default billing group for the costs of
outgoing communications unless an indication is received
requesting that a different billing group is to be charged for the
costs of an outgoing communication.
App. Br. 15 (emphasis added).
Appellants also contend that the Examiner erred in rejecting claim 9
under 35 U.S.C. § 102(b) because:
In Kung' s systems and methods, a user is never presented
with a list of billing groups that are associated with the user's
communications device, nor do Kung's methods involve
receiving input from the user to indicate which of the billing
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groups 1s to be charged for the cost of an outgoing
communication.
App. Br. 15 (emphasis added).
We conclude, consistent with Appellants' arguments as to claims 1, 3,
and 9, there is insufficient articulated reasoning to support the Examiner's
findings that Kung discloses the argued limitations. Therefore, we conclude
that there is insufficient articulated reasoning to support the Examiner's
findings that claims 1, 3, and 9 are anticipated by Kung. 4
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-22 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
(2) Appellants have established that the Examiner erred in rejecting
claims 1-22 as being anticipated under 35 U.S.C. § 102(b).
(3) Claims 1-22 are not patentable.
4 As the Examiner has shown all the claims are unpatentable under 35
U.S.C. § 101, we do not also reject Appellant's claims 1-22 under
35 U.S.C. § 103 as being unpatentable over Takatori et al. (US
2003/0078844 Al). However, should there be further prosecution of these
claims; we direct the Examiner's attention to our following concerns.
Takatori discloses a nearly identical system to that of Appellants'
claims except that Takatori uses "a destination telephone number"
corresponding to a billing account, whereas Appellants' claim 1 uses an
"originating telephone number" corresponding to a billing account. In all
other respects, Appellants' claims and Takatori's disclosure appear to be the
same. For example, as to Appellants' claims 3 and 9, Takatori at i-f [14]
displays a list of billing accounts; and at i-f [24] discloses a predetermined
billing account used as a default.
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DECISION
The Examiner's rejection of claims 1-22 under 35 U.S.C. § 101, as
being directed to non-statutory subject matter, is affirmed.
The Examiner's rejection of claims 1-22 as being unpatentable under
35 U.S.C. § 102(b) is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
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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