Ralf Keller et al.Download PDFPatent Trials and Appeals BoardApr 7, 202014434314 - (D) (P.T.A.B. Apr. 7, 2020) Copy Citation 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. 14/434,314 04/08/2015 Ralf Keller 3000-494 4873 27820 7590 04/07/2020 WITHROW & TERRANOVA, P.L.L.C. 106 Pinedale Springs Way Cary, NC 27511 EXAMINER MANOHARAN, MUTHUSWAMY GANAPATHY ART UNIT PAPER NUMBER 2647 NOTIFICATION DATE DELIVERY MODE 04/07/2020 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): patents@wt-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RALF KELLER, FREDRIK LINDHOLM, and IVO SEDLACEK ________________ Appeal 2018-008533 Application 14/434,314 Technology Center 2600 ________________ Before BRADLEY W. BAUMEISTER, SHARON FENICK, and RUSSELL E. CASS, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of the pending claims—claims 1, 2, 5, 9, 13, 15, 17, 18, 21, 24, 26, 27, 30, 31, 34, 36, 38, 40, 43, 44, 47, and 50. Appeal Br. at 5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1 and 13 under 35 U.S.C. § 102(a)(2). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Telefonaktiebolaget L M Ericsson as the real party in interest. Appeal Brief filed April 13, 2018 (“Appeal Br.”) 2. Appeal 2018-008533 Application 14/434,314 2 CLAIMED SUBJECT MATTER Appellant describes, in the Background section of the Specification, that subscribers to cellular networks may be charged for certain packet data use, for example, packet data use over a specific quota or in roaming situations, but that disabling all packet data connectivity to prevent such charges being incurred may “render the [user equipment] unusable.” Spec. 1:25–2:3.2 Appellant describes the present invention as follows: A node of a wireless communication network . . . receives an indication from a user equipment. The indication indicates that a limitation of volume charged packet data services is required for the user equipment. Depending on the received indication, the node . . . prevents transmission of packet data associated with the volume charged packet data services and allows transmission of packet data associated with one or more other packet data services. Spec., Abstract. Independent claim 1, reproduced below, illustrates the appealed claims: 1. A method of controlling packet data connectivity in a wireless communication network, the method comprising: a node of the wireless communication network receiving, from a user equipment, an indication that a limitation of volume charged packet data services is required for the user equipment; and depending on the received indication, the node preventing transmission of packet data traffic associated with the volume charged packet data services and allowing transmission of packet 2 We refer to the above mentioned Appeal Brief, as well as the following documents, for their respective details: Appellant’s Specification filed April 8, 2015 (“Spec.”); the Final Action mailed December 14, 2017 (“Final Act.”); the Examiner’s Answer mailed July 26, 2018 (“Ans.”); and the Reply Brief filed August 28, 2018 (“Reply Br.”). Appeal 2018-008533 Application 14/434,314 3 data traffic associated with one or more other packet data services. THE REFERENCES The Examiner bases the prior-art rejections on the following references: Name Reference Date Eggleston et al. (“Eggleston”) US 6,101,531 Aug. 8, 2000 Ford US 7,433,943 B1 Oct. 7, 2008 Wei et al. (“Wei”) US 2010/0043053 A1 Feb. 18, 2010 Hedman et al. (“Hedman”) US 2011/0122885 A1 May 26, 2011 Lopez Nieto et al. (“Lopez Nieto”) US 2012/0144049 A1 June 7, 2012 Iwai et al. (“Iwai”) US 2015/0071128 A1 Mar. 12, 2015 Li US 2015/0223042 A1 Aug. 6, 2015 STATEMENT OF THE REJECTIONS Claims 1, 17, 26, and 43 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ford and Iwai. Final Act. 2–3. Claims 2, 18, 27, and 44 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ford, Iwai, and Li. Final Act. 3–4. Claims 5, 24, 30, and 50 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ford, Iwai, and Eggleston. Final Act. 4–5. Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ford, Iwai, Eggleston, and Hedman. Final Act. 5–6. Claims 13, 15, 38, and 40 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ford, Iwai, and Lopez-Nieto. Final Act. 7–8. Appeal 2018-008533 Application 14/434,314 4 Claims 21, 34, and 47 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ford, Iwai, and Hedman. Final Act. 6–7. Claims 31 and 36 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ford, Iwai, and Wei. Final Act. 8–9. STANDARD OF REVIEW The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS I. The Examiner finds the combination of Ford and Iwai teaches all of the elements recited in the independent claims. Final Act. 2–3. In particular, the Examiner finds that Ford discloses determining if a user has exceeded a data threshold, which corresponds to claim 1’s recitation of “an indication of volume charged packet data services for the user equipment.” Id. at 2 (citing Ford FIG. 6 (decision element 404), col. 8, l. 1). The Examiner further finds that Ford discloses quarantining users who exceed a data threshold, which corresponds to claim 1’s recitation of “depending on the received indication, the node preventing transmission of packet data traffic associated with the volume charged packet data services and allowing transmission of packet data traffic associated with one or more other packet data services.” Id. at 2. As we understand the rejection, the Examiner finds that Ford does not teach that the claimed indication is received from a user Appeal 2018-008533 Application 14/434,314 5 equipment or that the communication between the user equipment and the node may be wireless. Id. at 3. The Examiner finds that Iwai cures the deficiencies of Ford. Id. 3. In particular, the Examiner finds that Iwai’s changing of charging policies based on an event notification corresponds to the claimed “node of the wireless communication network receiving, from a user equipment, an indication that a limitation of volume charged packet data services is required for the user equipment.” Id. The Examiner further determines that it would have been obvious “to receiv[e], from a user equipment, an indication that a limitation of volume charged packet data services is required for the user equipment in order to have user friendly service to the subscriber.” Id. Appellant argues, inter alia, that Iwai cannot cure the acknowledged deficiencies of Ford, as the teachings of Iwai cited by the Examiner do not correspond to the claimed “receiving, from the user equipment, an indication that a limitation of volume charged packet data services is required for the user equipment.” Appeal Br. 10. Appellant argues that Iwai, instead, teaches that a charging policy can be changed such that a network can be charged instead of the user equipment. Id. at 11. Appellant further argues Ford does not teach claim 1’s second element of preventing or allowing transmission of packet data traffic depending on the received indication because Ford does not teach preventing transmission of volume charged packet data services while allowing transmission of other packet data. Id. at 12. Appellant contends Ford cannot teach this element because in Ford’s disclosure, network traffic is restricted by the user and all network traffic for a user is treated the same. Id. Appeal 2018-008533 Application 14/434,314 6 Appellant’s argument regarding Iwai is persuasive. Iwai describes a gateway device receiving a request from a communication terminal. Iwai, ¶ 20–27. Based on the request, the gateway device updates the charging policy. Id. Iwai does not teach any indication of—or limitation on—volume charged packet data. We, therefore, agree with Appellant that the cited teachings of Iwai do not correspond to the disputed elements of claim 1, as relied upon by the Examiner. We, therefore, do not sustain the obviousness rejection of independent claim 1 over Ford and Iwai, as formulated by the Examiner, or of independent claims 17, 26, and 43, which all recite similar limitations. With respect to the remaining obviousness rejections of dependent claims 2, 5, 9, 13, 15, 18, 21, 24, 27, 30, 31, 34, 36, 38, 40, 44, 47 and 50, the Examiner does not rely on any of the additionally cited references to cure the deficiencies of the rejection over Ford and Iwai, as explained above. Final Act. 3–9. Accordingly, we, likewise, do not sustain the obviousness rejections of these claims for the reasons set forth above in relation to claim 1. II. Dependent claim 2 reads as follows with formatting modified for clarity: 2. The method according to claim 1, wherein the indication indicates one of (A) that none of the volume charged packet data services are allowed for the user equipment and (B) that none of the volume charged packet data services are allowed while the user equipment is roaming, and wherein the indication further indicates one or more access networks in which the indication is applicable. Appeal 2018-008533 Application 14/434,314 7 The Examiner finds the combination of Ford and Iwai does not teach the additional limitations of dependent claim 2, but relies on Li to teach these additional limitations. Final Act. 3–4. The Examiner’s position as to how Li purportedly teaches these elements is not completely clear, though. The Examiner merely cites to paragraphs 60 and 75 of Li, without explanation, for teaching the second limitation of “wherein the indication further indicates one or more access networks in which the indication is applicable.” Final Act. 4. And in spite of an apparent cut-and-paste clerical error in the Final Action, we understand the motivation for combining Li with Ford and Awai to be that “it would [have been] obvious . . . to have . . . the indication further indicate one or more access networks in which the indication is applicable in order to have additional flexibility in charging rules.” Id. The Examiner’s Answer expands on the reasoning, as follows: Li further teaches that the user equipment is roaming (Figure 2; P[0060], cell duration and traffic usage; P[0075], charging rule for the roaming user)_and one or more access networks in which is applicable[](Figure 2; roaming user in visited network where the rule is applicable). Here the type of service is different (roaming) and Iwai teaches notifying the type of service that further causes the implementing the restriction of data transfer. Ans. 9. Appellant argues that Li does not teach the elements recited in dependent claim 2: In paragraph 0075, Li teaches methods for a home network and a visiting network to determine a charging policy that a user equipment should be subject to. There is still absolutely no indication being sent from the user equipment indicating a limitation of volume charged packet data services is required. Appeal 2018-008533 Application 14/434,314 8 There is also no teaching that the indication can indicate that none of the volume charged data packet data services are allowed for the user equipment. . . . Further, it is not clear which aspect of Li the Patent Office is using in an attempt to show ‘the indication further indicates one or more access networks in which the indication is applicable.’ Neither of the paragraphs referred to nor any of Li teaches this feature or remedies the admitted deficiencies of the combination of Ford and Iwai. Appeal Br. 14 (emphasis in original) (internal citations omitted). We agree with Appellant. It is not reasonably clear how the Examiner is relying on the cited paragraphs of Li to teach the additional limitations recited in claim 2, or how Li is intended to be combined with Ford and Iwai. Therefore, we also do not sustain the obviousness rejection of dependent claim 2 for these additional reasons. Appellant argues that claims 18, 27, and 44 include similar features to claim 2 and are allowable for the same reasons provided for claim 2. Appeal Br. 14. We, likewise, then, also do not sustain the obviousness rejection of dependent claims 18, 27, and 44 for the reasons explained in relation to claim 2. III. Dependent claim 5 reads as follows: 5. The method of claim 1, further comprising: the node configuring at least one packet filter which blocks the packet data traffic associated with the volume charged packet data services and passes the packet data traffic associated with the one or more other packet data services, wherein the at least one packet filter operates in the user equipment. The Examiner finds the combination of Ford and Iwai do not teach the elements recited in dependent claim 5, but relies on Eggleston for teaching these additional limitations. Final Act. 4–5. In particular, the Examiner Appeal 2018-008533 Application 14/434,314 9 finds Eggleston’s pre-stage filtering and estimation of network costs teach the limitations of claim 5. Final Act. 5 (citing Eggleston abstract and col. 1, ll. 1–15.) Appellant argues, Eggleston teaches that the cost of transferring [ ] emails can be taken into account . . . . This merely teaches a single volume charged packet data service (transferring emails) and how to do that most efficiently. There is no teaching of a packet filter that “blocks” these transfers while “the packet data traffic associated with the one or more other packet data services [passes].” Appeal Br. 15 (internal citations omitted). We agree with Appellant. The Examiner has not explained how Eggleston’s pre-stage filter performs the filtering recited in claim 5, much less provided sufficient evidence that such a filter operates specifically in the user equipment, as claimed. For these additional reasons, then, we also do not sustain the obviousness rejection of dependent claim 5. Appellant argues claims 24, 30, and 50 include similar features to claim 5 and are allowable for the same reasons provided for claim 2. Appeal Br. 15. For the reasons noted in relation to claim 5, we, likewise, do not sustain the obviousness rejections of dependent claims 24, 30, and 50. IV. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we newly reject claim 1 under 35 U.S.C. § 102(a)(1) as being anticipated by Ford. We understand that the Examiner and Appellant both are interpreting claim 1 as requiring that the claimed “indication that a limitation of volume Appeal 2018-008533 Application 14/434,314 10 charged packet data services is required” to be a transmission that is separate and distinct from the volume charged packet data itself. In our view, though, this interpretation is unduly narrow. We see no language in claim 1 that would preclude the transmission of volume charged packet data, itself, as constituting the indication that a limitation of volume charged packet data services is required. To be sure, Appellant’s Specification describes the indication as being distinct from the volume charged packet data. E.g., Spec. p. 7, ll. 18–34. However, no such differentiation appears in the claims. And it is well settled that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). When claim 1 is interpreted more broadly, as explained below, Ford, alone, reasonably can be interpreted as disclosing every element of claim 1. Ford discloses deployment of volume-based network policies across a computer network that includes monitoring network utilization of users to detect, inter alia, events such as exceeding a data transfer allotment or threshold. Ford col. 4, ll. 7–13. Ford enforces thresholds by degrading or denying network access. Ford col. 4, ll. 13–16. Ford discloses that the packet-based network can be a wired or wireless computer network. Ford col. 17, ll. 52–54. Ford’s network usage monitor 184 corresponds to the claimed wireless node of a communication network. Ford col. 12, ll. 46–65, FIG. 6. Ford’s usage monitor 184 receives requests for network data from a user. Id. If a user’s network utilization allotment exceeds a threshold value, “the event monitor 184 triggers event module 186 to perform a predefined set of Appeal 2018-008533 Application 14/434,314 11 actions in response.” Id. at col 12, ll. 59–61. As such, the user’s network data usage, itself, reasonably can be interpreted as serving as the indication that a limitation of volume charged packet data services is required by receiving the user equipment’s continued data volume charged data packet requests. Furthermore, Ford also discloses that after a student exhausts a data allotment, network traffic related to entertainment is denied, while non-entertainment data is allowed. Ford col. 16, ll. 28–37. Ford’s disclosure of blocking transmission of entertainment data while allowing transmission of non-entertainment data after a data threshold is reached corresponds to “depending on the received indication, the node preventing transmission of packet data traffic associated with the volume charged packet data services and allowing transmission of packet data traffic associated with one or more other packet data services,” as recited in claim 1. Thus, Ford discloses all of the limitations of independent claim 1. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), then, we reject claim 1 as unpatentable under 35 U.S.C. § 102(a)(2) over Ford. V. In the alternative, even if claim 1 is interpreted more narrowly such that the claimed indication must be separate from the volume data request, Ford still discloses all of the limitations of claim 1. This is because a user request for a pre-paid data limit reasonably can be characterized as constituting an indication from a user equipment that a limitation of volume charged packet data services is required for the user equipment, as claimed. Appeal 2018-008533 Application 14/434,314 12 Ford discloses that that invention “can be employed to create a pre-paid service where users pay for a set amount of data transfer.” Ford col. 16, ll. 14–16. This disclosure implies that the pre-paid data limit is set by a user and received by the network server. Id. Therefore, Ford also anticipates claim 1 under this narrower interpretation of the claimed “indication.” VI. Dependent claim 13 reads as follows: 13. The method according to claim 1, wherein the node prevents the transmission of the packet data traffic associated with the at least one volume charged packet data service by at least one of (A) inactivating a media component of the at least one of the volume charged packet data service and (B) rejecting a request associated with the at least one volume charged packet data service. As noted previously in this opinion, the Examiner does not rely on the additionally cited reference, Lopez-Nieto, to cure the deficiencies of Ford and Iwai noted in relation to the Examiner’s rationale for rejecting independent claim 1. Final Act. 7–8. Accordingly, we do not sustain the obviousness rejection of claims 13, for the reasons set forth for claim 1 above. We, likewise, do not sustain the obviousness rejection of claims 15, 38, and 40, which recite similar subject matter. For the following reasons, though, we exercise our discretionary authority under 37 C.F.R. § 41.50(b) and enter a new ground of rejection of claim 13 under 35 U.S.C. § 102(a)(2). Anticipation of claim 13 only requires a reference further teach “at least one of” limitations (A) and (B). Ford teaches at least limitation (B), so Ford anticipates claim 13, as well as claim 1. More particularly, Ford Appeal 2018-008533 Application 14/434,314 13 discloses rejecting a user request for entertainment-related network traffic after a user reaches a network data threshold. Ford col. 16, ll. 28–37. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), then, we reject claim 13 as unpatentable under 35 U.S.C. § 102(a)(2) over Ford. CONCLUSION We reverse the Examiner’s rejection of claims 1, 2, 5, 9, 13, 15, 17– 18, 21, 24, 26–27, 30–31, 34, 36, 38, 40, 43, 44, 47 and 50, and we enter a new ground of rejection for claims 1 and 13 pursuant to our discretionary authority under 37 C.F.R. § 41.50(b). Although we decline to reject claims 2, 5, 9, 15, 17–18, 21, 24, 26–27, 30–31, 34, 36, 38, 40, 43, 44, 47 and 50, pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean that the remaining claims are necessarily patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed New Ground 1, 13 102(a)(2) Ford 1, 13 1, 17, 26, 43 103 Ford, Iwai 1, 17, 26, 43 5, 24, 30, 50 103 Ford, Iwai, Eggleston 5, 24, 30, 50 9 103 Ford, Iwai, Eggleston, Hedman 9 13, 15, 38, 40 103 Ford, Iwai, 13, 15, 38, Appeal 2018-008533 Application 14/434,314 14 FINALITY AND RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Rule 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED 37 C.F.R. § 41.50(b) Lopez-Nieto 40 21, 34, 47 103 Ford, Iwai, Hedman 21, 34, 47 31, 36 103 Ford, Iwai, Wei 31, 36 Overall Outcome 2, 5, 9, 15, 17–18, 21, 24, 26–27, 30–31, 34, 36, 38, 40, 43, 44, 47, 50 1, 13 Copy with citationCopy as parenthetical citation