Ex Parte Bejerano et al

Patent Trial and Appeal Board

Oct 31, 2018

13932256 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/932,256 07/01/2013
146446 7590 11/02/2018
Dinsmore & Shohl LLP
801 Pennsylvania Avenue, N.W.
Suite 610
Washington, DC 20004
FIRST NAMED INVENTOR
Yigal Bejerano
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 140333-548/PRAG812732PA 6876
EXAMINER
LIN, SHEW FEN
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
dcipdocket@dinsmore.com
denise.suter@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIGAL BEJERANO, DANIEL ANDREWS, and PRAMOD
KOPPOL
Appeal2017-010847
Application 13/932,256 1
Technology Center 2100
Before JAMES R. HUGHES, LARRY J. HUME, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1 and 3-20, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Nokia Technologies. App. Br. 2.
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Application 13/932,256
STATEMENT OF THE CASE
The invention relates to managing resource allocation to subscribers,
particularly without forcing negotiation of quotas. Abstract, Spec. ,r,r 1, 9,
12; Figs. 1, 5. Claim 1, reproduced below, is exemplary of the subject
matter on appeal ( emphasis added):
1. A group server configured to maintain an outstanding
quota granted to a group of lines at a variable margin at [] most a
maximum total standby allocation to ensure a group data usage of the
group surpasses a current notification milestone by at most an
accuracy requirement associated with the current notification
milestone, the group server comprising:
a processor configured to,
update a tally of the group data usage based on a
usage update message,
allocate, to lines within the group requesting a
new quota allocation, a current quota of a plurality of
quotas associated with the current notification milestone,
in response to the tally of the group data usage plus the
outstanding quota being within the variable margin, and
allocate, to lines within the group requesting a
new quota allocation, a next quota of the plurality of
quotas, in response to the tally of the group data usage
plus the outstanding quota exceeding the variable
margin,
wherein the processor allocates the current quota
and the next quota without forcing the lines to
renegotiate their respective quotas, in response to the
group data usage being within the current notification
milestone.
App. Br. 36 (Claims Appendix).
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Application 13/932,256
THE REJECTIONS
Claims 1 and 3-20 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-13
of U.S. Patent No. 9,253,101. Non-Final Act. 3
Claims 1 and 3-20 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. Non-Final Act. 4--5.
Claims 1 and 3-20 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being incomplete for omitting
essential steps, such omission amounting to a gap between the steps. Non-
Final Act. 5.
Claims 1 and 3-14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Castro Castro et al. (US 2012/0117235 Al; published
May 10, 2012) ("Castro") in view of Pattabiraman (US 2011/0151831 Al;
published June 23, 2011) ("Pattabiraman"). Non-Final Act. 7-12.
Claims 15-20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Castro, Pattabiraman and Applicant Admitted Prior Art
(hereinafter AAPA). Non-Final Act. 12-18.
ANALYSIS
The obvious-type double patenting rejection
The Examiner finds "[ a ]lthough the conflicting claims are not
identical, they are not patentably distinct from each other because they are
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substantially similar in scope and they use the same limitations. Non-Final
Act. 3.
Appellants argue, "comparing claim 1 to independent claims 1 and 12
of U.S. Patent No. 9,253,101 ("101 patent"), it is clear that claim 1 of the
Present Application corresponds to a patentably distinct embodiment, as
opposed to an obvious variant of either of those claims, because those claims
of the patent recite features that actually do force the lines to renegotiate
their respective quotas upon the detection of a violation event. App.
Br. 27-28.
In the Answer, the Examiner finds "the instant application is merely
an obvious variation of co-pending US 9,253,101 with different wording for
the same claimed limitations and the claimed subject matter is not patentably
distinct from each other." Ans. 6. The Examiner finds "[i]t would be
obvious to one of ordinary skill in the art at the time before the effective
filing date of the claimed invention to recognize that when the comparison
between the usage total and a limit not exceeding (i.e.[,] within) limit, a
current quota size will be allocated to the requester ( choosing from a finite
number of predictable solutions)." Id.
In the Reply Brief, Appellants argue the Examiner mischaracterizes
the term "limit" of claim 1 of the '101 patent, which does not correspond to
the "variable margin" of appealed claim 1 and, instead, actually corresponds
to the "maximum total standby allocation" of appealed claim 1. Reply
Br. 10-13. Appellants argue claim 1 of the '101 patent forces renegotiation
whereas appealed claim 1 does not force renegotiation: "wherein the
processor allocates the current quota and the next quota without forcing
the lines to renegotiate their respective quotas, in response to the group
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data usage being within the current notification milestone." Id. at 13-15.
According to Appellants, the '101 claim implements2 a "selective RAR"
approach to "limit the number of RAR/RAA message pairs being
exchanged, by forcing only the one or more line(s) having a largest
outstanding quota to request reauthorization to be assigned a new smaller
quota, these techniques still always require RAR/RAA message pairs to be
'actively' exchanged between the group server and the line server(s)." Id.
at 14. Appellants argue appealed claim 1 "enables quota reallocation/size
reduction to be performed 'passively' before reaching the current
notification milestone and exceeding the maximum total standby allocation
M(x) without actually requiring line server(s) to actively exchange
RAR/RAA messages with the group server ( which would otherwise force
the lines to renegotiate their respective quotas)." Id. We are persuaded by
Appellants' arguments.
Therefore, we do not sustain the rejection of claim 1, independent
claims 9 and 15 which are commensurate in scope with claim 1, and
dependent claims 3-8, 10-14, and 16-20. Additionally, we note the
Examiner's rejection is addressed only to appealed claim 1.
The § 112 Rejections
The Examiner finds claim 1 is indefinite because it is unclear how
"the tally of the group data usage plus the outstanding quota" is related
to "the variable margin" in the limitation allocate, to lines within the group
requesting a new quota allocation, a next quota of the plurality of quotas, in
2 RAR is an abbreviation for Re-Authorization Request. RAA is an
abbreviation for Re-Authorization Answer. See Spec. ,r,r 3, 4.
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response to the tally of the group data usage plus the outstanding quota
exceeding the variable margin. Non-Final Act. 4--5. In particular, the
Examiner finds the Specification describes "the variable margin B_k(x) is
the difference between maximum total standby allocation M(x) and a
dynamic gap G_k(x), where xis a particular reported group usage," and
describes comparing the outstanding available quota to the variable margin,
not a tally of the group data usage plus the outstanding quota. Id. ( citing
Spec. ,r,r 93, 94).
In the Answer, the Examiner finds the Specification describes "quota
are reduced based on whether the tally of the group data usage plus the
outstanding quota (known as the total allocation) exceeds the maximum
total standby allocation (NOT the variable margin)" and "[t]he variable
margin is a margin between the total allocated service units and the
maximum total standby allocation." Ans. 3 ( citing Spec. ,r 83). The
Examiner further finds "whether to reduce quota is based on the
determination of whether the outstanding available quota (NOT the tally
of the group data usage plus the outstanding quota) for the group is greater
than dynamic margin." Id. at 2-5 (citing Spec. ,r 88; Fig. 5). The
Examiner states "it is unclear to the Examiner how a current quota/a new
quota is determined in response to 'the tally of the group data usage plus the
outstanding quota' being within/exceeding 'the variable margin."' Id. at 4.
Appellants argue the Specification describes, "[t]he reassignment
prior to exceeding the maximum total standby allocation [M] is achieved by
creating a 'margin' B k(x) between the total allocated service units and the
maximum total standby allocation M and assigning different quotas Q
associated with the current notification milestone to the lines" and "one of
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ordinary skill in the art would understand that a processor compares a tally
of the group data usage plus the outstanding quota with the variable margin
B_k(x) when read in light of Appellants['] application as filed." App.
Br. 24--25 ( citing Spec. ,r 83, Fig. 5).
In the Reply Brief, Appellants argue the reallocation of quota size is
reduced before the reported usage plus the outstanding quota (known as the
total allocation) exceeds a maximum total standby allocation and this is done
by creating the variable margin and using this margin as a "dynamic
threshold of interest." Reply Br. 5-7. According to Appellants, "[i]n this
manner, quota reallocation/size reduction is performed after the reported
usage plus the outstanding quota ( the total allocation. or the total outstanding
available quota) exceeds the variable margin B k(x) but before reaching or
exceeding the maximum total standby allocation M(x)." Id. at 7 ( citing
Spec. ,r,r 92-96). We are persuaded by Appellants' arguments.
Therefore, we do not sustain the rejection of claim 1, independent
claims 9 and 15 which are commensurate in scope with claim 1, and
dependent claims 3-8, 10-14, and 16-20.
The Examiner finds claim 1 is incomplete as it omits essential steps,
such as step 510 in Figure 5, and this amounts to a gap between the steps.
Non-Final Act. 5. Appellants argue:
Step S510 of Figure 5 corresponds to a determination of
whether "Reported total usage exceed current milestone?"
Claims 1, 9, and 15 each recite that allocating of a current quota
or a next quota without forcing the lines to renegotiate their
respective quotas is performed "in response to the group data
usage being within the current notification milestone" as the
last limitation. The preceding features recited in Claims 1, 9,
and 15, which include at least Steps S520, S540, and S560 of
Figure 5, correspond to the left "No" branch resulting from the
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determination performed in Step S510. In this manner, Claims
1, 9, and 15 actually do include the determination performed in
operation 510 of Figure 5, contrary to the Examiner's assertion.
Moreover, nowhere have Appellants defined in the
[S Jpecification or during prosecution that operation 510 is
essential. Thus, Appellants assert that the claims do not omit or
fail to interrelate elements disclosed in the [S]pecification to be
essential to the invention.
App. Br. 25-26.
We are persuaded by Appellants' arguments and do not sustain the
rejection of claim 1, independent claims 9 and 15 which are commensurate
in scope with claim 1, and dependent claims 3-8, 10-14, and 16-20.
The§ 103 Rejections
Appellants argue, inter alia, the Examiner errs in finding the
combination of Castro and Pattabiraman teaches the claim 1 limitation
wherein the processor allocates the current quota and the next quota without
forcing the lines to renegotiate their respective quotas, in response to the
group data usage being within the current notification milestone. App. Br.
28-32; Reply Br. 15-18. In particular, Appellants argue the cited references
do not teach without forcing the lines to renegotiate their respective quotas.
Id.
The Examiner finds Castro's PCRF (Policy and Charging
Enforcement Function) calculates a quota to be returned "without forc[ing]
other lines to reestablish quota." Non-Final Act. 8-9 (citing Castro ,r,r 30-
36, 83-85). The Examiner finds Pattabiraman teaches notification
milestones utilized to allocate a current and next quota without forcing the
lines to renegotiate their respective quotas. Ans. 8-9 ( citing Pattabiraman
,r,r 5, 10-12).
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Appellants argue Castro's "PCRF initiates a reauthorization of the
communication session for connection identifier 1 by sending a RAR [Re-
Authorization Request] message to a [policy and charging enforcement
function] PCEF" and Castro also discloses that when no or insufficient quota
remains, "the PCRF may initiate [] reauthorization of the previously
established communication sessions in order to share part of the quotas
assigned for these communication sessions with the new communication
session." App. Br. 29-30 (citing Castro ,r,r 62, 89). According to
Appellants:
Now here does Castro disclose that the PCRF 1 allocates a
current quota or next quota of a plurality of quotas to the
connection identifiers within a group requesting a new quota
allocation based on whether a tally of the group data usage plus
the outstanding quota exceeds a variable margin, let alone
allocating the current quota or the next quota without forcing the
lines to renegotiate their respective quotas, in response to the
group data usage being within the current notification milestone.
In contrast, Castro discloses that the PCRF 1 initiates the
reauthorization of the communication session by sending the
RAR messages to the PCEF, which means that the PCRF 1
renegotiates the quotas, which is precisely what the
embodiment recited in claim 1 seeks to avoid.
Id. at 30.
Appellants argue Pattabiraman' s notification to a single user of
reaching a threshold level does not teach a variable margin or allocating the
current quota or the next quota without forcing the lines to renegotiate. Id.
at 31 (citing Pattabiraman Abstract, ,r,r 10-12). See also Reply Brief 19-20.
In the Answer, the Examiner is not persuaded by Appellants'
arguments regarding "without forcing the lines to renegotiate" because the
claim limitation "'merely discloses 'without forcing the lines to renegotiate
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their respective quotas without any definition of forcing [ ... ] renegotiate."'
Ans. 7.
In the Reply Brief, Appellants argue, in Castro:
the PCRF initiates "reauthorization" (i.e., quota renegotiation)
for communication sessions by sending RAR messages,
specifically. One having ordinary skill in the relevant field of
art at the time of the effective filing date of the claimed
invention would clearly have recognized that "reauthorization"
(renegotiation) in Castro is considered to be "forced" in this
case by the act of "sending a RAR message" (i.e., exchanging
RAR/RAA messages pairs triggers quota renegotiation).
Similarly, one having ordinary skill in the art would clearly
have recognized, based on such knowledge and without
requiring unclaimed limitations to be read into Claim 1 of the
present application from the [S]pecification, that what "without
forcing the lines to renegotiate their respective quotas" as
recited in Claim 1 of the present application actually means
"without sending a RAR message to the line server(s)" or
"without requiring the group server and the line server(s) to
exchange RAR/RAA messages." The particular manner in
which "renegotiation" of quotas is "forced" is explicitly,
clearly, and conspicuously defined in Appellants[']
[S]pecification, without leaving any room for uncertainty as to
the intended meaning of the concept of forcing quota
renegotiation, and without disclosing any alternative example
embodiments for forcing quota renegotiation besides the act of
sending an RAR message ( or exchanging RAR/RAA message
pairs).
Reply Br. 17-18.
We are persuaded by Appellants' arguments regarding Castro and
Pattabiraman and agree that the Examiner's findings and claim interpretation
are unreasonable and overbroad because the claim interpretation of the
disputed limitation in the rejection is inconsistent with Appellants'
Specification. Claim terms in a patent application are given the broadest
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reasonable interpretation consistent with the specification, as understood by
one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004).
Although we are not persuaded by Appellants' argument that the
disputed phrase "without forcing ... to renegotiate" is "explicitly defined,"
the Specification describes the phrase in the context of avoiding the
disadvantage of using RAR messages and instead passively using
CCR/CCA3 messages: "[t]herefore, because the quotas are reduced before
the reported usage plus the outstanding quota exceeds the maximum total
standby allocation, lines may be assigned new quotas, when their current
quotas are exhausted (i.e., 'passively'), via the CCR/CCA message pairs and
avoid forcing the lines to renegotiate their quotas via transmission of the
RAR/RAA message pairs." Spec. ,r 83; see also ,r,r 3, 4, 7, 8, 12; Fig. 5.
Here, neither Castro nor Pattabiraman teaches the disputed limitation.
In view of the above, we do not sustain the rejection of claim 1,
independent claims 9 and 15 which are commensurate in scope with claim 1,
and dependent claims 3-8, 10-14, and 16-20. 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 ... ").
Because our decision with regard to the disputed limitation is
dispositive of the rejections, we do not address additional arguments raised
by Appellants.
3 CCR is an abbreviation for Credit Control Request. CCA is an
abbreviation for Credit Control Answer. See Spec. ,r,r 3, 4.
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DECISION
We reverse the Examiner's decision rejecting claims 1 and 3-20 on
the ground of nonstatutory obviousness-type double patenting.
We reverse the Examiner's decision rejecting claims 1 and 3-20 under
35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
being indefinite.
We reverse the Examiner's decision rejecting claims 1 and 3-20 under
35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
being incomplete for omitting essential steps.
We reverse the Examiner's decision rejecting claims 1 and 3-20 under
35 U.S.C. § 103.
REVERSED
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