Ex Parte Gritzmacher et al

Board of Patent Appeals and Interferences

Aug 19, 2009

10005771 (B.P.A.I. Aug. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS J. GRITZMACHER, JOHN M. PALMER, LANCE J.
GAY and TIMOTHY A. YOKOTE
____________

Appeal 2009-004476
Application 10/005,771
Technology Center 3600
____________

Decided: August 19, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/005,771

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STATEMENT OF THE CASE
Thomas J. Gritzmacher et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1, 3-6, 8, 9, 11-16, 18-28, and
36. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
The invention is a method of billing usage over a network including
determining when a network interface is turned on and off. Specification
[0006].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of billing network usage
over a network, said method comprising:
determining when a network interface is
activated at a client system the network interface
being activated when a communication link
between the network and the client system is
established;
obtaining at least one of a video file, a data
file and an audio file across said communication
link while said network interface is activated;
determining when said network interface is
deactivated at the client system, the network

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 5, 2008) and Reply Brief (“Reply Br.,” filed Nov. 13, 2008),
and the Examiner’s Answer (“Ans.,” mailed Sep. 17, 2008).

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interface being deactivated when the
communication link between the network and the
client system is disconnected, wherein the
determining when a network interface is activated
and the determining when said network interface is
deactivated is performed by the client system;
storing, at the client system, information
relating to a time-based bill based on when the
network interface is activated and when the
network interface is deactivated;
transmitting a call detail record from the
client system to a billing module on a billing
system based on the information relating to said
time-based bill.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schweitzer
Jones
Buhler
US 2001/0055291 A1
US 2002/0176547 A1
EP 1 775 929 A2
Dec. 27, 2001
Nov. 28, 2002
Apr. 18 , 2007

The following rejections are before us for review:
1. Claims 1, 5-6, 8-9, 11-16, 19-27, and 36 are rejected under 35
U.S.C. §103(a) as being unpatentable over Jones.
2. Claims 3 and 18 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Jones and Schweitzer.
3. Claim 4 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Jones, Schweitzer, and Buhler.
4. Claim 28 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Jones and Buhler.

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ARGUMENTS
The rejection of claims 1, 5-6, 8-9, 11-16, 19-27, and 36 under §103(a) as
being unpatentable over Jones.
Claims 1, 16, and 36
First, in rejecting claims 1, 16, and 36, the Examiner asserts that, if the
pack billing system 104 and communication device 112 of Jones were
integrated, Jones teaches the claimed client system. Ans. 4-5 and 8. The
Examiner relied upon In re Larson, 340 F.2d 965, 968 (C.C.P.A. 1965) for
the proposition that merely making something integral only requires routine
skill in the art. Ans. 5 and 8.
The Appellants traverse the rejection of independent claims 1, 16, and
36 and assert that making the packet billing system 104 and communications
device 112 of Jones integral would not have been obvious. Ans. 18-19 and
Reply Br. 2-5. The Appellants assert that making the packet billing system
104 and the communications device 112 integral would require replacing
one billing system with multiple billing systems, which would operate in a
fundamentally different way, and therefore the modifying Jones is not
merely making several components into an integral unit as in Larson. Ans.
8.
Second, in the Answer, the Examiner also notes that claims 1, 16, and
36 recite a “client system” and that packet billing system 104 and
communication device 112 are part of a packet communication system 101.
Ans. 19. The Examiner states, “[n]othing about the invention as claimed
would limit the interpretation of what is the “client system” in Jones to the
communication device 112 or the packet billing system 104 as the applicant
would suggest.” Id.
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The Appellants respond that claims 1, 16, and 36 require that the
client system for which activation and deactivation times are determined is
the same as the client system at which information related to a time based
bill is stored. Reply Br 3. The Appellants assert that Jones does not teach
that the packet based billing entity, which store the information related to a
time based bill, is the same entity at which the network interface is activated
or deactivated. Id. Instead, the Appellants assert that Jones teaches a
detected activation and deactivation of a call at a separate entity,
communications device 112. Id. The Appellants conclude, “that even given
its broadest reasonable interpretation, the packet communication system 101
disclosed in Jones does not read on the client system recited in claim 1.” Id.
Claims 5-6, 8-9, 11-14, and 19-26
The Appellants assert that dependent claims 5-6, 8-9, 11-14, and 19-
26 are patentable for the same reasons used to argue against the rejection of
claims 1, 16, and 3. App. Br. 10.
Claims 15 and 27
In addition to the arguments against the rejection of claims 1 and 16,
the Appellants argue that Jones does not teach the step of displaying call
detail record information as recited in dependent claims 15 and 27. App. Br.
10 and Reply Br. 7.
In response, the Examiner asserts that Jones describes generating a
bill for a customer, based on call detail record information. Ans. 19. The
Examiner concludes that given this description in Jones, it would be
predictable that a display of the call detail record information would be
made available to the customer. Id.

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The rejection of claims 3 and 18 under §103(a) as being unpatentable over
Jones and Schweitzer.
The Appellants argue that claims 3 and 18 are patentable for the same
reasons asserted to traverse the rejections of independent claims 1 and 16.
Ans. 11. The Appellants further argue that the addition of Schweitzer fails
to make up for the deficiencies of Jones in regards to claims 1 and 16. Id.
The Examiner responds that claims 3 and 18 are unpatentable for the
same reasons asserted with respect to claims 1 and 16. Ans. 19.

The rejection of claim 4 under §103(a) as being unpatentable over Jones,
Schweitzer, and Buhler.
The Appellants argue that claim 4 is patentable for the same reasons
as asserted to traverse the rejection of independent claim 1. Ans. 11. The
Appellants further argue that the addition of Schweitzer and Buhler fails to
make up for the deficiencies of Jones in regards to claim 1. Id.
The Examiner responds that claim 4 is unpatentable for the same
reasons asserted with respect to claim 1. Ans. 19.

The rejection of claim 28 under §103(a) as being unpatentable over Jones
and Buhler.
The Appellants argue that claim 28 is patentable for the same reasons
as asserted to traverse the rejection of independent claim 16. Ans. 12. The
Appellants further argue that the addition Buhler fails to make up for the
deficiencies of Jones in regards to claim 16. Id.
The Examiner responds that claim 28 is unpatentable for the same
reasons asserted with respect to claim 16. Ans. 19.
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ISSUES
The issues are:
1. Would one of ordinary skill in the art have been led by Jones to
a method where the client system determines when a network
interface is activated and deactivated at the client system as
recited in claims 1 and 16?
2. Would one of ordinary skill in the art have been led by Jones to
an article tangibly embodying instructions that cause a client
system to determine when a network interface is activated and
deactivated at the client system as recited in claim 36?
3. Would one of ordinary skill in the art have been led by Jones to
a step of displaying call detail record information as recited in
claims 15 and 27?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 recites a method which includes the steps of 1)
“determining when an network interface is active at a client system
the network interface being activated when a communication link
between the network an the client system is established;” and 2)
“determining when said network interface is deactivated at the
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client system, the network interface being deactivated when the
communication link between the network and the client system is
disconnected.”
2. Claim 1 recites “wherein the determining when a network interface
is activated and the determining when said network interface is
deactivated is performed by the client system.”
3. Claim 1 also recites the step of “storing, at the client system,
information relating to a time-based bill based on when the
network interface is activated and when the network interface is
deactivated.”
4. Claim 16 recites a method which includes the steps of 1)
“determining when a network interface to said content provider is
activated” and 2) “determining when said network interface to said
content provider is deactivated.”
5. Claim 16 recites “wherein the determining when a network is
activated and the determining when said network interface is
deactivated is performed by the client system.”
6. Claim 16 also recites the step of “storing, at the client system,
information relating to a time-based bill based on when the
network interface is activated and when the network interface is
deactivated.”
7. Claim 36 recites a program storage device readable by machine a
that tangibly embodies a program that causes the machine to
perform the method of claim 1, including the steps above.
8. The Specification does not provide a definition for “system.”
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9. A definition of “system” is “a regularly interacting or
interdependent group of items forming a unified whole.” (See
Merriam-Webster’s Collegiate Dictionary 1197 (10th Ed.
1998.)(First entry for “system.”)
10. Claim 15 depends upon claim 1 and recites the step of “displaying
call detail record information based on information relating to said
time-based bill.
11. Claim 27 depends upon claim 16 and recites the step of
“displaying call detail record information.”
The scope and content of the prior art
Jones
12. Jones describes a communication system that generated billing
information based upon usage. Jones [0029].
13. Jones’ communication system includes a packet communication
system 101 which has a communication device 112 and a packet
billing system 104. Jones [0032] and Fig. 1.
14. Jones’ communication system also includes a public switched
telephone network billing system 194. Jones [0032] and Fig. 1.
15. Jones states, in paragraph [0035]:
Packet billing system 104 detects a call setup
message in first signaling transmitted between
signaling processor 102 and communication device
112. Packet billing system 104 generates a start
record responsive to detecting the call setup
message. Packet billing system 104 detects a call
complete message in second signaling transmitted
between signaling processor 102 and
communication device 112. Packet billing system
104 generates an end record responsive to
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detecting the call complete message. Packet billing
system 104 transfers the start record and the end
record.

16. Jones describes that the public switched telephone network billing
system 194 receives and processes the start record and end record
to generate a bill for the customer. Jones [0036].
17. Jones describes that the packet billing system 104 could
alternatively create a call detail record based on the start record
and end record and then transmits the call detail record to the
public switched telephone network billing system 194. Jones
[0037].
Schweitzer
18. The Examiner relied upon Schweitzer to teach transmitting
encrypted information. Ans. 11.
Buhler
19. The Examiner relied upon Buhler to teach a video file. Ans. 13.
Any differences between the claimed subject matter and the prior art
20. Jones does not explicitly describe displaying call detail record
information.
The level of skill in the art
21. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of billing. We will therefore
consider the cited prior art as representative of the level of ordinary
skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error ‘where the
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prior art itself reflects an appropriate level and a need for
testimony is not shown’”) (Quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
22. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Obviousness
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Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the
time the invention was made to a person having
ordinary skill in the art to which said subject
matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1, 5-6, 8-9, 11-16, 19-27, and 36 under §103(a) as
being unpatentable over Jones.
Method Claims 1 and 16
We begin by construing claims 1 and 16. “Analysis begins with a key
legal question - what is the invention claimed?[emphasis added] Courts are
required to view the claimed invention as a whole. 35 U.S.C. § 103.
[emphasis added] Claim interpretation, in light of the specification, claim
language, other claims, and prosecution history, is a matter of law and will
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normally control the remainder of the decisional process.” Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987). Claims 1 and 16 both
recite a client system. FF 1-6. We note that the Specification does not
contain an express definition of “system” (FF 8), and we give the term the
broadest reasonable construction consistent with the specification. We find
that the ordinary and customary meaning of “system” is a regularly
interacting or interdependent group of items forming a unified whole (FF 9).
We note that the ordinary and customary meaning of “system” does not
require the items to be integral.
We find that the communication device 112 and the packet billing
system of 104 of Jones are a “system”, as we have construed the term above.
The communication device 112 and the packet billing system 104 are both
items that regularly interact (FF 15) and are both described as part of the
packet communication system 101 (FF 13).
Further, claim 1 requires that the step of determining when a network
interface at a client system is activated and deactivated, be performed by the
client system (FF 2) and that the step of storing information related to a
time-based bill happen at the client system (FF 3). Claim 16 recites similar
limitations. FF 5-6. The determining steps and storing steps are performed
at or by the same client system.
As discussed above, we find that the communication device 112 and
the packet billing system 104 are both parts of a system that read on the
claimed “client system.” Jones teaches that the packet billing system 104
detects when a call step message or a call complete message is transmitted to
the communication device and that based on this, the packet billing system
stores start and end records as a call detail records. FF 15 and 17. We find
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that one of ordinary skill in the art would have been led by these teachings of
Jones to the steps of determining activation and deactivation of a network
interface and storing information related to a time-based bill by a client
system as recited in claims 1 and 16.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claims 1 and 16 under 35 U.S.C. §103(a) as
unpatentable over Jones.
Article Claim 36
Claim 36 recites a program storage device readable by machine that
tangibly embodies a program that causes the machine to perform the method
of claim 1. FF 7. The Appellants rely upon the same arguments as for claim
1 to traverse the rejection of claim 36. App. Br. 7-10. Accordingly,
because we found them unpersuasive as to that rejection, we find them
equally unpersuasive as to error in the rejection of claim 36.

Claims 5-6, 8-9, 11-14, and 19-26
The Appellants argue against the rejection of dependent claims 5-6, 8-
9, 11-14, and 19-26 for the same reasons used to argue against the rejection
of claims 1, 16, and 36. App. Br. 10. Accordingly, because we found them
unpersuasive as to that rejection, we find them equally unpersuasive as to
error in the rejection of claims 5-6, 8-9, 11-14, and 19-26.
Claims 15 and 27
In addition to the arguments against claims 1 and 16, which we found
unpersuasive above, the Appellants argue that Jones does not teach a step of
displaying call detail record information based on information relating to
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said time-based bill as recited in dependent claims 15 (FF 10) and similarly
recited in dependent claim 27 (FF 11).
However, Jones describes using the call detail record to generate a bill
for the customer. FF 16. We find that one of ordinary skill in the art would
have been led by Jones to the claimed steps of displaying call detail record
information. The bill contains call detail record information based on
information relating to said time-based bill. Giving the bill to the customer
teaches displaying the bill.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claims 15 and 27 under 35 U.S.C. §103(a) as
unpatentable over Jones.

The rejection of claims 3 and 18 under §103(a) as being unpatentable over
Jones and Schweitzer.
The Appellants argue against the rejection of dependent claims 3 and
18 for the same reasons used to argue against the rejection of claims 1.App.
Br. 11. Accordingly, because we found them unpersuasive as to that
rejection, we find them equally unpersuasive as to error in the rejection of
claims 3 and 18.

The rejection of claim 4 under §103(a) as being unpatentable over Jones,
Schweitzer, and Buhler.
The Appellants argue against the rejection of dependent claim 4 for
the same reasons used to argue against the rejection of claim 1. App. Br. 11.
Accordingly, because we found them unpersuasive as to that rejection, we
find them equally unpersuasive as to error in the rejection of claim 4.
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The rejection of claim 28 under §103(a) as being unpatentable over Jones
and Buhler.
The Appellants argue against the rejection of dependent claim 28 for
the same reasons used to argue against the rejection of claim 16. App. Br.
12. Accordingly, because we found them unpersuasive as to that rejection,
we find them equally unpersuasive as to error in the rejection of claim 28.

CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting:
claims 1, 5-6, 8-9, 11-16, 19-27, and 36 under 35 U.S.C. §103(a) as
being unpatentable over Jones;
claims 3 and 18 under 35 U.S.C. §103(a) as being unpatentable over
Jones and Schweitzer;
claim 4 under 35 U.S.C. §103(a) as being unpatentable over Jones,
Schweitzer, and Buhler; and
claim 28 under 35 U.S.C. §103(a) as being unpatentable over Jones
and Buhler.

DECISION
The decision of the Examiner to reject claims 1, 3-6, 8, 9, 11-16, 18-
28, and 36 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) (2007).

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AFFIRMED

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