Ex Parte Agarwal et alDownload PDFBoard of Patent Appeals and InterferencesJun 26, 200910320317 (B.P.A.I. Jun. 26, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte VIKAS AGARWAL, NEERAN M. KARNIK, and ARUN KUMAR ____________ Appeal 2009-001446 Application 10/320,317 Technology Center 3600 ____________ Decided:1 June 29, 2009 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-001446 Application 10/320,317 2 STATEMENT OF THE CASE Vikas Agarwal, et al. (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM-IN-PART. 2 THE INVENTION The invention is an apparatus for metering usage of services, which can be composite services composed of a set of component services. The metering takes into account the usage of the component services. Specification 4:26-30. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for metering usage of services which are accessed via a network, the method comprising the steps of: measuring usage of each one of a set of services comprising a composite service and requested component services in response to a request for a composite service which requests at least one component service, wherein said requested component services are autonomous and independent of each other, and wherein each of 2 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Oct. 2, 2007) and Reply Brief (“Reply Br.,” filed Feb. 27, 2008), and the Examiner’s Answer (“Ans.,” mailed Jan. 9, 2008). Appeal 2009-001446 Application 10/320,317 3 said requested component services are autonomously operated; receiving measured usage data in a correlator; and obtaining and using an identification of the requests to component services to correlate the measured usage data for the set of services corresponding to said request for the composite service. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Halliday US 2002/0083003 A1 Jun. 27, 2002 The following rejection is before us for review: 1. Claims 1-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Halliday. ARGUMENTS Independent Claims 1, 17-19, and 22 The Appellants argue that Halliday does not teach that the requested component services are autonomous and independent of each other, and wherein each of said requested component services is autonomously operated. App. Br. 29-33 and Reply Br. 1-3. The Appellants assert that the features of Halliday are instead an integral part of the overall software application. To support this assertion, the Appellants point to Halliday’s definition of an “[a]pplication” as “[a] set of features linked to the metering library” in paragraph [0050]. App. Br. 30. The Appellants also argue that Appeal 2009-001446 Application 10/320,317 4 the fact that a license may be required to utilize a feature does not teach that the features are autonomous and independent of each other. Id. In the rejection, the Examiner admits that Halliday does not expressly disclose the limitation at issue, but contends that it is obvious that the features (i.e., components) of Halliday are autonomous and independent from each other and are autonomously operated. Ans. 10. To support this contention, the Examiner points to: 1) Halliday’s statement that features can be separately licensed (Ans. 10), 2) Halliday’s example of a call waiting as a feature (Ans. 19), and 3) Halliday’s description of adding and removing features from the feature pool (Ans. 20). Further, the Examiner argues that Halliday’s definition of an application as “[a] set of features linked to a metering library” does not mean that the features are part of and collectively build a higher-level software application as argued by the Appellants, but are instead a set of features that the client application would like to use in light of the task it is asked to perform. Ans. 20. Dependent Claim 7 The Appellants argue that Halliday does not teach the steps of “sending a partial record of measured usage data for the requested composite service to the correlator” and “correlating said partial record and said set of records of service usage by reference to said set of request identifiers to generate a complete record of usage of said requested composite service and requested component service.” App. Br. 33-34. The Appellants assert that the metering server of Halliday instead uses a full and complete record of the job because it obtains all of the features used to complete a job in the feature pool. App. Br. 33-34 and Reply. Br. 4. Appeal 2009-001446 Application 10/320,317 5 The Examiner responds that Halliday “discloses in [0104] that usage data of the features and time of use for [sic.] sent to the metering service for accounting.” Ans. 21. From this fact and Halliday’s description of the metering server is responsible for collating toll usage information and applying this collated information in the form of credit deduction, the Examiner asserts that it would have been obvious that Halliday teaches the limitation at issue. Id. Dependent Claim 8 The Appellants argue that Halliday does not teach “wherein information for communicating with the correlator is provided to each of the set of component services by the requested composite service when requesting the component services.” Reply. Br. 3. The Appellants assert that Halliday discloses that the metering server receives and processes requests for features from a client application but does not teach that the features are given information for communicating with the metering monitor. Reply Br. 4. The Examiner does not respond to this argument, but does cite to paragraphs [0083] and [0091] in the rejection of claim 8. Dependent Claim 11 The Appellants argue that nothing in Halliday discloses that the component services of a composite service are composite. App. Br. 35. The Examiner did not address this limitation in the rejection of claim 11 (Ans. 8), but responds to the Appellants’ argument that since Halliday teaches component services (i.e., features) of a composite service, making the features composite services would be merely duplication of parts, which Appeal 2009-001446 Application 10/320,317 6 has no patentable significance unless a new and unexpected result is produced. Ans. 22. Dependent Claim 14 The Appellants argue that nothing in Halliday discloses determining a charging model for the job based on a charging policy and charging models for the features. App. Br. 36. The Appellants assert that Halliday merely describes charging policies of individual features used by the job. App. Br. 37. The Examiner responds that paragraph [0104] of Halliday discloses that different features (i.e., components) have different charging models and that the determination of the cost for the total features is the charging policy for the composite service (i.e., client applications). Ans. 22. Dependent Claims 2-6, 9-10, 12-13, 15-16, 20-21, and 23-24 The Appellants argue that since independent claims 1, 17-19 and 22 are not rendered obvious, claims 2-6, 8-10, 12-13, 15-16, 20-21, and 23-24, dependent thereon, are also not rendered obvious. App. Br. 38. ISSUES The issues are: 1. Would one of ordinary skill in the art have been led by Halliday to a method for metering usage of services including the step of measuring usage of each one of a set of services comprising a composite service and component services, wherein the component services are autonomous and independent of each other and wherein each of said requested component services are autonomously operated as recited in independent claim 1? Appeal 2009-001446 Application 10/320,317 7 2. Would one of ordinary skill in the art have been led by Halliday to a method for generating service usage data for a composite service including the step of receiving measured usage data in a correlator for each one of a set of services comprising a composite service and component services, wherein the component services are autonomous and independent of each other and wherein each of said requested component services are autonomously operated as recited in independent claim 19? 3. Would one of ordinary skill in the art have been led by Halliday to apparatuses comprising a metering component operable to measure usage of a component service or a correlator operable to receive records of measured usage of a component service, wherein component services are autonomous and independent of each other and wherein each of the component services are autonomously operated as recited in independent claims 17 and 22? 4. Would one of ordinary skill in the art have been led by Halliday to a computer program product that comprises a recorded program code that causes a data processing apparatus to measure usage of each one of a set of service comprising a requested component service, wherein requested component services are autonomous and independent of each other and wherein each of said requested component services are autonomously operated as recited in independent claim 18? Appeal 2009-001446 Application 10/320,317 8 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 including the step of measuring usage of each one of a set of services comprising a composite service and requested component services in response to a request for a composite service which requests at least one component service, wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated. 2. Claim 17 recites an apparatus including at least one metering component operable for measuring usage of each of a set of services comprising a requested composite service and at least one component service requested by the composite service in response to a request for the composite service, wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated. 3. Claim 18 recites a computer program product comprising program code which causes a data processing apparatus to measur[e] usage of each one of a set of services comprising a composite service and a Appeal 2009-001446 Application 10/320,317 9 requested component services in response to a request for a composite service which requests at least one component service, wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated. 4. Claim 19 recites a method including the step of receiving measured usage data in a correlator for each one of a set of services comprising a composite service and the component services in response to a request for a composite service which invokes at least one component service, wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated. 5. Claim 22 recites a system comprising “a correlator operable for receiving records of measured usage for each of a set of invoked component service” and recites “wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated.” 6. Claim 7 recites “sending a partial record of measured usage data for the requested composite service to the correlator.” 7. Claim 7 also recites “correlating said partial record and said set of records of service usage by reference to said set of request identifiers to generate a complete record of usage of said requested composite service and requested component services.” Appeal 2009-001446 Application 10/320,317 10 8. Claim 11 recites “wherein component services of a composite service are composite.” 9. Claim 14 recites “wherein the accounting service determines a charging model for the composite service in accordance with a charging policy and charging models supported by the composite service and each on of the set of requested component services.” 10. The Specification does not provide a definition for “autonomous.” 11. The definition of “autonomous” is “responding, reacting, or developing independently of the whole.” (See Merriam-Webster’s Collegiate Dictionary 79 (10th Ed. 1998.)(Entry for “autonomous.”) The scope and content of the prior art 12. Halliday describes a method and apparatus for centralized metering of client applications or application features. Halliday [0003]. 13. Halliday describes executing a number of software applications on a client system. Halliday [0053]. 14. Halliday describes the software as including a client application, an application library and a metering monitor. Halliday [0056]. 15. Halliday describes a client application first sending a job register message to a metering monitor 4A running on the client computer. Halliday [0075]. 16. Halliday describes the metering monitor responding with a job identification. Id. 17. Halliday describes the client application then creating a pool of features it would like to use for the task it was ask to perform and sends the pool to the metering monitor 4A. Id. Appeal 2009-001446 Application 10/320,317 11 18. Halliday describes that the metering monitor checks to see whether the client is authorized to run the features. Id. 19. Halliday describes the client application then setting a timer for a period of time and running the application. Id. 20. Halliday describes that at the end of the period of time, the client application again sends the current feature pool to the metering monitor 4A and starts the timer again. Id. 21. Halliday describes that while the client application adds and removes features while running and updates the current feature pool accordingly. Id. 22. Halliday describes the client application issuing a request to terminate by sending an empty feature pool to the metering monitor 4A and sending a job logout. Id. 23. Halliday describes the metering monitor 4A forwarding a feature pool to a billing site’s metering server 3C. Halliday [0091]. 24. Halliday describes the billing site having a database of charging tariffs for each feature, such as a “‘per use’” charge, an initial usage fee, or a charge calculated by time of usage. Halliday [0104]. 25. Halliday describes metering service 3C calculating the time between the current feature pool update and the last feature pool update and calculating the actual charge from the usage period and the specific feature tariff. Id. 26. Halliday states “[f]urther, some license management solutions such as FLEXIm also allow application vendors to divide the functionality of an application into several different feature sets Appeal 2009-001446 Application 10/320,317 12 (features) and these features can be licensed separately.” Halliday [0007]. 27. Halliday defines a “feature” as “[a]n atomic chargeable unit of functionality.” Halliday [0047]. 28. Halliday defines an “application” as “[a] set of features linked to the metering library.” Halliday [0050]. Any differences between the claimed subject matter and the prior art 29. Halliday does not describe component services that are autonomously operated. The level of skill in the art 30. Neither the Examiner nor the Appellants have addressed the level of ordinary skill in the pertinent art of metering and accounting for services accessed over a network. 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 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 31. There is no evidence on record of secondary considerations of non- obviousness for our consideration. Appeal 2009-001446 Application 10/320,317 13 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 “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, Appeal 2009-001446 Application 10/320,317 14 (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 1-24 under § 103(a) as being unpatentable over Halliday. Claims 1, 17-19, and 22 Method Claims 1 and 19 First, claims 1 and 19 both recite a method. Claim 1 recites the step of measuring usages of each one of a set of services comprising a composite service and a requested component service, “wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated.” FF 1. The Specification does not contain an express definition of “autonomous.” FF 10. We find that autonomous is defined as responding, reacting, or developing independently of the whole. FF 11. We construe claim 1 to require a step of measuring usage of component services that respond, react, or develop independently of each other and are operated to respond, react, or develop independently of the whole. Appeal 2009-001446 Application 10/320,317 15 While we agree with the Examiner that Halliday’s description of measuring usage of features (i.e., component services) (FF 17-25) teaches that the features are autonomous and independent of other features as recited by claim 1, we agree with the Appellants that Halliday does not teach that the features are autonomously operated as also recited by claim 1, since Halliday describes that the client applicant uses the features to perform a task (FF 17 and 28). Further, the Examiner has not explained whether one of ordinary skill in the art would be led to modify the features of Halliday to operate autonomously. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR., 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Therefore, we find that the Examiner has not established a prima facie case of obviousness and therefore, we shall not sustain the rejection of claim 1. Claim 19 recites the step of receiving measured usage data for each one of a set of services comprising a composite service and invoked component services, “wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated.” FF 4. We construe claim 19 to require a step of receiving measure usage data for invoked component services that respond, react, or develop independently of each other and are operated to respond, react, or develop independently of the whole. As discussed above with regards to claim 1, we agree with the Appellants that Halliday does not describe components which are Appeal 2009-001446 Application 10/320,317 16 autonomously operated. Again, the Examiner has not explained whether one of ordinary skill in the art would be led to modify the features of Halliday to operate autonomously. Therefore, we find that the Examiner has not established a prima facie case of obviousness and therefore, we shall not sustain the rejection of claim 19. Apparatus Claims 17 and 22 Finally, claims 17 and 22 both recite an apparatus. Claim 17 recites at least one metering component that is operable to measure usage of each of a set of services, which comprise a requested component service, “wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated.” FF 2. Claim 22 recites a correlator operable for receiving records of measured usage for each of a set of invoked component services, “wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated.” FF 5. We find that claims 17 and 22 require a metering component and a correlator, respectively, which are operable to measure usage or receive the measured usage of a component service, of the claimed type. Claims 17 and 22 do not require an actual component service but recite limitations restricting the structure of a metering component and a correlator. Halliday describes a metering monitor 4C, which measures the usage of features (i.e., component services) of the client application (i.e., composite service). FF 17-23. We find that the metering monitor 4C structured to b able to be operated to measure the usage of component Appeal 2009-001446 Application 10/320,317 17 services, including component services that are autonomous and independent of each other, and are autonomously operated. Halliday also describes a metering server 3C, which receives features pools (i.e., records of measured usage) which list needed features (i.e., invoked components). FF 23-25. We find that the metering service 3C is structured to be able to operate to receive records of measured usage for each of a set of invoked components services, including component services that are autonomous and independent of each other, and are autonomously operated. Therefore, we find that the Appellants have not shown that the Examiner erred in rejecting claims 17 and 22. Article Claim 18 Next, claim 18 recites an article. Claim 18 recites a computer program product comprising recorded program code that controls a data processing apparatus to measure usage of each one of a set of services comprising a composite service and a requested component service, “wherein said requested component services are autonomous and independent of each other, and wherein each of said requested component services are autonomously operated.” FF 3. We find that claim 18 recites limitations that restrict the structure of an article – the computer program product. The computer program product is structured to control a data processing apparatus to measure usage of requested component services. The component services including component services which are autonomous and independent of each other and autonomously operated. Halliday describes a user downloading a software package from a medium onto the user’s computer. FF 13. The software package includes a Appeal 2009-001446 Application 10/320,317 18 client application, which includes the features (i.e., component services), and a metering monitor 4C. FF 14. The metering monitor measures the usage of the features of the client application. FF 15-23. As discussed above with regards to claims 1 and 19, we find the features of Halliday are not autonomous, as the Examiner asserts (Ans. 18-20). Further, the Examiner has not explained whether one of ordinary skill in the art would be led to modify the features of Halliday to be autonomous. Therefore, we find that the Appellants have shown that the Examiner erred in rejected claim 18. Accordingly, we sustain the Examiner’s rejection of independent claims 17 and 22 but we do not sustain the Examiner’s rejection of independent claims 1, 18, and 19. Claim 7 This rejection is directed to claim 7, which is dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejection of claim 7 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Claim 8 This rejection is directed to claim 8, which is indirectly dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejection of claim 8 over the cited prior art. Cf. Fritch, 972 F.2d at 1266 ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Claim 11 This rejection is directed to claim 11, which is indirectly dependent on claim 1, whose rejection we have reversed above. For the same reasons, we Appeal 2009-001446 Application 10/320,317 19 will not sustain the rejection of claim 11 over the cited prior art. Cf. Fritch, 972 F.2d at 1266 ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Claim 14 This rejection is directed to claim 14, which is indirectly dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejection of claim 14 over the cited prior art. Cf. Fritch, 972 F.2d at 1266 ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Claims 2-6, 8-10, 12-13, 15-16, 20-21, and 23-24 The Appellants argue against the rejection of dependent claims 2-6, 8- 10, 12-13, 15-16, 20-21, and 23-24 for the same reason used to argue against the rejection of independent claims 1, 17-19, and 22. App. Br. 38. Accordingly, because we found the argument unpersuasive as to the rejection of independent claims 17 and 22, we find them equally unpersuasive as to error in the rejection of claims 23 and 24. We found the arguments persuasive as to the rejection of independent claims 1, 18, and 19 and we find them equally persuasive as to error in the rejection of claims 2-6, 8-10, 12-13, 15-16, 20-21, and 23-24. We shall not sustain the rejection of claims 2-6, 8-10, 12-13, 15-16, 20-21, but shall sustain the rejection of claims 23-24. CONCLUSIONS OF LAW We conclude that the Appellants have not shown that the Examiner erred in rejecting claims 17 and 22-24 under 35 U.S.C. § 103(a) as unpatentable over Halliday. We conclude that the Appellants have shown Appeal 2009-001446 Application 10/320,317 20 that the Examiner erred in rejecting claims 1-16 and 18-21 under 35 U.S.C. § 103(a) as unpatentable over Halliday. DECISION The decision of the Examiner to reject claims 17 and 22-24 is affirmed and to reject claims 1-16 and 18-21 is reversed. 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). AFFIRMED-IN-PART hh FREDERICK W. GIBB, III Gibb Intellectual Property Law Firm, LLC 2568-A RIVA ROAD SUITE 304 ANNAPOLIS, MD 21401 Copy with citationCopy as parenthetical citation