Ralf Keller et al.

Patent Trials and Appeals Board

Apr 7, 2020

14434314 - (D) (P.T.A.B. Apr. 7, 2020)

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