Ex Parte Albert et al

Board of Patent Appeals and Interferences

Aug 7, 2012

10645139 (B.P.A.I. Aug. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK ALBERT, ROBERT M. BATZ, RICHARD L. GRAY,
LOUIS F. MENDITTO, MICHAEL S. SUTTON, TZU-MING TSANG, and
PRANAV K. TIWARI
___________

Appeal 2010-011360
Application 10/645,139
Technology Center 3600
____________

Before, HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/645,139

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STATEMENT OF THE CASE
Mark Albert et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1-5, 7-13, 15-19, 21-25, and 27. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is a communication system for managing network
access. Spec. 7:2-3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An apparatus for managing network access,
comprising:
a billing system element operable to receive
one or more packets of a communication flow and
to communicate with a price server, wherein the
price server is operable to receive a query from the
billing system element associated with a pricing
parameter relating to a data segment to be accessed
by an end user associated with the communication
flow, and wherein the price server is operable to
return a response to the billing system element that
includes the pricing parameter relating to the data
segment such that the end user can verify the
pricing parameter before accessing the data
segment; and

1Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 11, 2009) and Reply Brief (“Reply Br.,” filed Jun. 10, 2010),
and the Examiner’s Answer (“Ans.,” mailed Apr. 29, 2010).
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a content services gateway coupled to the
billing system element and operable to
communicate with the billing system element in
order to manage distribution of quota provided to
the end user, wherein the quota reflects a currency
for the end user to apply in accessing the data
segment.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Keiser US 6,505,174 B1 Jan. 7, 2003

The following rejections are before us for review:
1. Claims 1-5, 8, 10-13, 15-19, 21-25, and 27 are rejected under
35 U.S.C. §102(e) as being anticipated by Keiser.
2. Claims 7 and 9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Keiser.

ISSUES
The first issue is whether Keiser anticipates under 35 U.S.C. §102(e)
claims 1-5, 8, 10-13, 15-19, 21-25, and 27. Specifically, whether Keiser
describes: 1) a price server that is operable to return a response that includes
the pricing parameter relating to the data segment such that the end user can
verify the pricing parameter before accessing the data segment; and 2) a
quota that reflects a currency for the end user to apply in accessing the data
segment.
The second issue is whether Keiser renders unpatentable under 35
U.S.C. §103(a) claims 7 and 9. Specifically, whether the Examiner has
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provided a rationale with logical underpinnings to support their finding of
obviousness.

ANALYSIS
The rejection of claims 1-5, 8, 10-13, 15-19, 21-25, and 27 under §102(e) as
being anticipated by Keiser
The Appellants argue claims 1-5, 8, 10-13, 15-19, 21-25, and 27 as a
group. App. Br. 12-14. We select claim 1 as the representative claim for
this group, and the remaining claims 2-5, 8, 10-13, 15-19, 21-25, and 27
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
First, the Appellants argue that Keiser does not describe a price server
that is operable to return a response that includes the pricing parameter
relating to the data segment such that the end user can verify the pricing
parameter before accessing the data segment. App. Br. 12-13. We are not
persuaded by this argument that the Examiner erred because the Appellants’
argument is not commensurate with the scope of the claim. The Appellants’
argument is directed to a functional limitation (i.e. “operable to return…such
that the end user can verify the pricing parameter before accessing the data
segment”) that describes the pricing server. While the Appellants argue that
a portion of the functional limitation (i.e. verifying pricing parameter) is not
described in Keiser, the Appellants have not argued how the structure of the
pricing server, which is “operable to return”, is different from the structure
described in Keiser based on the portion at issue.
Second, the Appellants argue that Keiser does not describe a quota
that reflects a currency for the end user to apply in accessing the data
segment. App. Br. 13-14. For the same reasons as discussed above with
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regard to the first limitation at issue, we are not persuaded that the Examiner
erred because the Appellants’ argument is not commensurate with the scope
of the claim. The second limitation at issue is also a functional limitation
(i.e. “a content services gateway… operable to communicate… in order to
manage distribution of quota provided to the end user, wherein the quota
reflects a currency for the end user to apply in accessing the data segment”),
and again while the Appellants’ argument is directed to a portion of the
functional limitation (i.e. quota reflects a currency), the Appellants’
arguments are not directed to the structural differences. We find that in both
instances the server and the gateway in Keiser are capable of performing the
recited functions of, respectively, returning a response and communicating a
currency to the billing system element. As functional language, we are
required to give this language weight only to the extent that the prior art is or
is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997).
Furthermore, we note that the Appellants state: “So disparate are the
teachings of Keiser that there is a good faith argument here that Keiser is not
even analogous art: much less a viable §102 reference.” App. Br. 14.
“[T]he question whether a reference is analogous art is irrelevant to whether
that reference anticipates.” See In re Self , 671 F.2d 1344, 1350, 213 USPQ
1, 7 (CCPA 1982).
Accordingly, the rejection of claims 1-5, 8, 10-13, 15-19, 21-25, and
27 under 35 U.S.C. §102(e) as being anticipated by Keiser is affirmed.

The rejection of claims 7 and 9 under §103(a) as being unpatentable over
Keiser
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The Appellants argue claims 7 and 9 as a group. App. Br. 14-17. We
select claim 7 as the representative claim for this group, and the remaining
claim 9 stands or falls with claim 7. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by the Appellants’ argument that the Examiner
has provided no suggestion or motivation to modify Keiser (App. Br. 14-17).
The Appellants are arguing that the reference itself “must disclose the
desirability of making the proposed modification.” App. Br. 16. To the
extent, the Appellants seek an explicit suggestion or motivation in the
reference itself, this is no longer the law in view of the Supreme Court's
holding in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). We find
that the Examiner provides some articulated rationale with logical
underpinnings to support their finding that Keiser renders claims 7 and 9
obvious as required. See Ans. 9-10.
Further, in as much as the Appellants’ assertion that Keiser is non-
analogous art applies to this rejection under § 103(a) (App. Br. 14 “[s]setting
aside the issue of Keiser even qualifying as analogous art”), we note that the
Appellants provide no argument as to whether or not “the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether [or not]
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992). See also In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re
Wood, 599 F.2d 1032, 1036 (CCPA 1979).
Accordingly, the rejection of claims 7 and 9 under 35 U.S.C. § 103(a)
as being unpatentable over Keiser is affirmed.

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DECISION
The decision of the Examiner to reject claims 1-5, 7-13, 15-19, 21-25,
and 27 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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