Ex Parte Brouard et al

Patent Trial and Appeal Board

Oct 31, 2018

12879285 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/879,285 09/10/2010
48116 7590 11/02/2018
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Kim Brouard
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.
LUTZ 201148US01 6660
EXAMINER
KIM, STEVENS
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
3685
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):
docketing@faysharpe.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM BROUARD, THOMAS LEVY, and YIGANG CAI
Appeal 2017-004115
Application 12/879,285 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3, 5-14, and 24--30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify "Alcatel-Lucent USA, Inc. of Murray Hill, New
Jersey" and "Alcatel Lucent of Paris, France" as the real parties in interest.
Appeal Br. 1.
Appeal 2017-004115
Application 12/879,285
ILLUSTRATIVE CLAIM
1. A method for delivering dynamic policy rules for an
end user of a communication service during a communication
sess10n, compnsmg:
receiving subscription information associated with an end
user of a communication service from a subscription profile
repository (SPR) at a Policy and Charging Rules Function
(PCRF) of a Policy and Charging Control (PCC) architecture,
wherein the PCRF determines an initial policy and initial rules
for a communication session associated with the end user based
at least in part on the subscription information;
providing the initial rules to a Policy and Charging
Enforcement Function (PCEF) of the PCC architecture and
applying the initial rules to the communication session via the
PCEF, wherein the PCEF is associated with a gateway to an
extended online charging system (EOCS);
sending a credit request for allocation of service units for
the communication session to the EOCS from the PCEF;
receiving a credit answer with an allocation of service
units for the communication session from the EOCS at the
PCEF;
monitoring usage of the allocated service units at the
PCEF after establishment of the communication session and at
least periodically sending a report on usage of allocated service
units to the EOCS from the PCEF;
receiving a change notification from the EOCS at the
PCRF during the communication session after the EOCS
determines a counter associated with usage of the allocated
service units has changed based at least in part on the report
from the PCEF and that a policy/rule change is needed in
conjunction with the change to the counter, wherein the change
notification triggers the policy/rule change at the PCRF;
determining new rules for the communication session at
the PCRF based at least in part on the change notification; and
providing the new rules to the PCEF and applying the
new rules to the communication session via the PCEF.
2
Appeal 2017-004115
Application 12/879,285
CITED REFERENCES
The Examiner relies upon the following references:
Foottit et al. US 7,937,300 B2
(hereinafter "F oottit")
Koskinen et al. WO 2007 /020499 Al
(hereinafter "Ko skin en")
May 3, 2011
Feb.22,2007
3GPP TS 23.203 version 8.5.0 (2009-03), 3rd Generation Partnership
Project; Technical Specification Group Services and System Aspects;
Policy and Charging Control Architecture (Release 8) (hereinafter
"3 GPP203 ")
REJECTIONS
I. Claims 3, 11-14, and 26-30 are rejected under 35 U.S.C. § 101
as ineligible subject matter.
II. Claims 1, 3, 5-14, and 24--30 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
III. Claims 1, 3, 5-14, and 24--30 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter that the inventors regard as the
invention.
IV. Claims 1, 3, 5-14, and 24--30 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over 3GPP203, Foottit, and Koskinen.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
3
Appeal 2017-004115
Application 12/879,285
ANALYSIS
Subject-Matter Eligibility
The subject matter eligible for patenting is limited, by statute, to the
following categories: "process, machine, manufacture, [and] composition of
matter." 35 U.S.C. § 101.
Independent claim 3, and claims 11-14 and 26-30 depending
therefrom, stand rejected as not belonging to any of these statutory
categories. Independent claim 3 recites:
3. A policy and charging control (PCC) architecture for
dynamically managing policy rules for an end user of a
communication service during a communication session,
compnsmg:
a Policy and Charging Rules Function (PCRF)
configured to receive subscription information associated with
an end user of a communication service from a subscription
profile repository (SPR), wherein the PCRF is configured to
determine initial rules for a communication session associated
with the end user based at least in part on the subscription
information; and
a Policy and Charging Enforcement Function (PCEF)
associated with a gateway to an Extended Online Charging
System (EOCS) and configured to i) receive the initial rules
from the PCRF, ii) apply the initial rules to the communication
session, iii) send a credit request for allocation of service units
for the communication session to the EOCS, iv) receive a credit
answer with an allocation of service units for the
communication session from the EOCS, v) monitor usage of the
allocated service units after establishment of the
communication session, and vi) at least periodically send a
report on usage of allocated service units to the EOCS;
wherein the PCRF is configured to receive a change
notification from the EOCS during the communication session
after the EOCS determines a counter associated with usage of
the allocated service units has changed based at least in part on
4
Appeal 2017-004115
Application 12/879,285
the report from the PCEF and that a policy/rule change is
needed in conjunction with the change to the counter, wherein
the change notification triggers the policy/rule change at the
PCRF·
'
wherein the PCRF is also configured to determine new
rules for the communication session based at least in part on the
change notification;
wherein the PCEF is configured to receive the new rules
from the PCRF and apply the new rules to the communication
sess10n.
(Emphasis added).
According to the Final Office Action, rather than any of the statutory
categories, claim 3 is "directed to software per se as the claims are directed
to PCRF and PCEF." Final Action 2. Citing In re Nuijten, 500 F.3d 1346
(Fed. Cir. 2007), the Examiner states: "[A]s 'software' is neither a category
of invention nor a subset of one of the categories it does not represent patent
eligible subject matter." Final Action 3. The Examiner refers to a computer
dictionary definition for "software" ("Computer programs; instructions that
make hardware work") and the IEEE dictionary definition for "architecture"
("The organizational structure of a system or a software item, identifying its
components, their interfaces, and a concept of execution among them"). Id.
at 2-3. The Examiner goes on to say that the Specification does not describe
the PCRF and PCEF in terms of structural components or software
components, but instead describes these in terms of functional blocks that a
person of ordinary skill in the relevant art would regard as software. Id. at 3.
The Final Office Action also says that the claim elements of "SPR,"
"gateway," "EOCS," and "counter" "are all software/non-functional
descriptive material." Id. at 4.
5
Appeal 2017-004115
Application 12/879,285
The Appellants' position is that claim 3 is drawn to the "machine"
category of§ 101. See Appeal Br. 6-9, Reply Br. 2--4. In particular, the
Appellants contend that the claimed "Policy and Charging Rules Function
(PCRF)" and "Policy and Charging Enforcement Function (PCEF)" are
"structural elements" and the "subscription profile repository (SPR),"
"gateway," and "Extended Online Charging System (EOCS)" are "structural
limitations." Appeal Br. 7.
The Federal Circuit addressed an issue similar to what is presented in
this Appeal, in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), regarding the claims in that
case directed to a "device profile." Digitech explains:
For all categories except process claims, the eligible subject
matter must exist in some physical or tangible form. To qualify
as a machine under section 101, the claimed invention must be
a "concrete thing, consisting of parts, or of certain devices and
combination of devices." Burr v. Duryee, 68 U.S. 531, 570, 1
Wall. 531, 17 L. Ed. 650 (1863). To qualify as a manufacture,
the invention must be a tangible article that is given a new
form, quality, property, or combination through man-made or
artificial means. Diamond v. Chakrabarty, 447 U.S. 303, 308,
100 S. Ct. 2204, 65 L. Ed.2d 144 (1980). Likewise, a
composition of matter requires the combination of two or more
substances and includes all composite articles. Id.
Digitech, 758 F.3d at 1348--49. Digitech determined that the claimed
"device profile" is "a collection of information; specifically, a description of
a device dependent transformation of spatial and color information." Id. at
1349. As such, the "device profile" "is not a tangible or physical thing and
thus does not fall within any of the categories of eligible subject matter." Id.
"Data in its ethereal, non-physical form is simply information that does not
fall under any of the categories of eligible subject matter under section
6
Appeal 2017-004115
Application 12/879,285
IOI." Id. at 1350. See also In re Ferguson, 558 F.3d 1359, 1365---66 (Fed.
Cir. 2009) ( claims for "[a] paradigm for marketing software" held non-
statutory ).
The Appellants' description of the term "structural" does not resolve
the issue before us, as conceptual arrangements, for example, may be said to
possess structure. We are constrained, under Digitech, 758 F.3d at 1348, to
ascertain whether claim 3 's recited "architecture" (including its various
components) "exist[ s] in some physical or tangible form." Whether the
"architecture" of claim 3 might be embodied in a tangible form is not
sufficient to overcome the present rejection, because such tangible form is
not manifest in the claim language. Instead, claim 3 is drawn in terms of the
capacities of its various elements to perform certain operations.
In view of the foregoing, we are not persuaded of error in the rejection
of independent claim 3. Therefore, because the Appellants present no
separate argument for any of its dependent claims, we sustain the rejection
of claims 3, 11-14, and 26-30 under 35 U.S.C. § 101.
Written Description
The Examiner sets forth two distinct reasons for the rejections under
35 U.S.C. § 112, first paragraph- one reason that pertains to all claims in
the Appeal (claims 1, 3, 5-14, and 24--30), and a second reason that pertains
to dependent claim 29 only. We address these distinct issues separately,
below.
First (with regard to all claims in the Appeal), the Examiner states that
the Specification lacks the "structural architecture" of the PCRF of a PCC
and the PCEF of a PCC; instead, the Examiner states that the Specification
7
Appeal 2017-004115
Application 12/879,285
describes the PCEF and PCRF "in functional blocks and their functions."
Final Action 5 (emphasis added). See also Answer 4--5.
The Appellants respond by asserting that, in regard to a written-
description rejection, the issue is whether the Specification provides an
adequate written description of the claimed subject matter, not whether the
Specification discloses "structure," in particular. Reply Br. 4--6.
Indeed, the Examiner's position does not align with the objective of
the written-description requirement of§ 112, first paragraph- i.e., to show
possession of the claimed subject matter as of the filing date. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). Accordingly, we do not sustain this species of the Examiner's
rejection under 35 U.S.C. § 112, first paragraph.
The second strain of the present rejection applies only to dependent
claim 29, regarding the asserted absence of written-description support for
the following limitation thereof: "wherein the PCEF is configured to update
the IP-CAN [internet protocol connectivity access network] session via the
PCRF and a bearer binding and event reporting function (BBERF) based at
least in part on the new rules." See Final Action 5.
The Appellants contend that the Specification provides written-
description support for this limitation at page 3 (lines 4--5), page 10 (lines
18-26), page 13 (lines 17-19), and Figure 2. See Reply Br. 6. See also
Appeal Br. 12.
Notably, Figure 2 of the Specification shows the interface between the
PCRF and PCEF, as well as the interface between the PCEF and BBERF,
and the Specification, at page 13, lines 17-19, states: "The Policy and
Charging Rules Function PCRF sends new request via Gx reference point to
8
Appeal 2017-004115
Application 12/879,285
PCEF /BBERF in order to update the Internet Protocol Connectivity Access
Network IP-CAN session." These portions of the Specification adequately
disclose the identified limitation of claim 29, such that we are persuaded of
error in the rejection of claim 29.
In view of the foregoing, we do not sustain the rejection of claims 1,
3, 5-14, and 24--30 under 35 U.S.C. § 112, first paragraph.
Indefiniteness
According to the Examiner, the claims fail to comply with the
definiteness requirement of 35 U.S.C. § 112, second paragraph, because the
Appellants (in a submission that predates the Final Office Action) have
taken divergent positions, concerning the meaning of the claimed "PCC
architecture," and its "PCRF" and "PCEF" components, recited in both
independent claims 1 and 3. Specifically, the Examiner regards the
Appellants as having asserted that these claim elements are both identical to
and different from the corresponding features of a prior art reference
(identified variously as TS 23.203 or 3GPP203):
Claims 1, 3, 5-14 and 24--30 are rejected as being indefinite in
view of the applicant's suggestion [in a prior submission to the
Office] that instant invention, e.g. PCC architecture, is that of
PCC architecture as described in TS 23.203 ("3GPP203") (see
pages 10-11 ). Here, TS 23 .203 defines standards of PCC
architecture in term of functional blocks, e.g. PCRF, PCEF,
etc., and their functions. The applicant also asserts in pages 12-
1 7 that instant PCRF and PCEF functions are different than that
of PCRF and PCEF described in TS 23 .203. Here, the scope of
the claim is unclear since the supposed PCRF functions in the
claims are allegedly different than those PCRF functions
described in TS 23.203 standard and/or PCEF functions in the
9
Appeal 2017-004115
Application 12/879,285
claims are allegedly different than those PCEF functions
described in TS 23 .203 standard.
Final Action 6. See also Answer 6.
The Appellants argue that the claimed PCC architecture is "related to
TS 23.203," but is not only different from that in TS 23.203, but even differs
from the combined teachings of TS 23.203, Foottit, and Koskinen. See
Appeal Br. 13.
"[T]he Office establishes a prima facie case of indefiniteness with a
rejection explaining how the metes and bounds of a pending claim are not
clear because the claim contains words or phrases whose meaning is
unclear." Ex parte McAward, 2017 WL 3669566, at *2 (PTAB 2017)
(precedential) (citations omitted). The Appellants' characterizations of the
recited "PCC architecture," "PCRF," and "PCEF," do not rise to this level,
as a claim term may be similar to a related feature in a reference, while also
having differences that render the claim nonobvious over that reference.
Accordingly, we do not sustain the rejection of claims 1, 3, 5-14, and
24--30 under 35 U.S.C. § 112, second paragraph.
Obviousness
The Appellants contend that independent claim 1 stands rejected
erroneously as obvious, because the cited prior art fails to teach the
following limitations of claim 1:
receiving a change notification from the EOCS at the
PCRF during the communication session after the EOCS
determines a counter associated with usage of the allocated
service units has changed based at least in part on the report
from the PCEF and that a policy/rule change is needed in
10
Appeal 2017-004115
Application 12/879,285
conjunction with the change to the counter, wherein the change
notification triggers the policy/rule change at the PCRF;
determining new rules for the communication session at
the PCRF based at least in part on the change notification; and
providing the new rules to the PCEF and applying the
new rules to the communication session via the PCEF.
See Appeal Br. 15-17.
The Examiner finds that Foottit (col. 4, 11. 32--46) discloses an OCS
notifying the PCRF of a quota breach, thus triggering the PCRF to issue a
new charging rule to the PCEF. See Final Action 8-10, Answer 7.
Referring to Figure 4, Foottit describes a sample call flow for such an
embodiment, as follows:
At step 410, the PCEF contacts the OCS with a Gy CCR when
there is no remaining quota ( as above). At step 420, the OCS
would conventionally respond with an indication that no further
quota is available. At step 430, the OCS would next notify the
PCRF directly of a quota breach, using an appropriate
interface. At step 440, the PCRF would notify the PCEF via a
Gx Re-Auth-Request (RAR) of the new charging rule. Finally,
at step 450, the PCEF acknowledges the receipt of a new
charging rule from the PCRF via a Gx Re-Auth-Answer
(RAA).
Foottit, col. 4, 11. 37--46.
The claimed "change notification" of claim 1 refers to the EOCS
determination that "a counter associated with usage of the allocated service
units has changed." (Emphasis added). According to the Examiner, Foottit
does not describe the claimed "counter"; instead, the rejection relies upon
Koskinen (page 9, line 30-page 10, line 2 and page 19, lines 20-28) for this
feature. Final Action 9. See also Answer 7-8.
11
Appeal 2017-004115
Application 12/879,285
The Appellants argue that Foottit, Koskinen, and their combination
lack claim 1 's recitations of a change notification from the EOCS indicating
that a policy/rule change is needed, the PCRF determining new rules based
on the change notification, and providing the new rules to the PCEF. Appeal
Br. 16-17 (citing Foottit, col. 4, 11. 10-15). See also Reply Br. 11-12.
According to the Appellants (see Appeal Br. 16-17), the identified prior art
is deficient, because Foottit's OCS provides a quota breach notification to
indicate the expiration of a subscriber's quota, whereas claim 1 recites a
"change notification from the EOCS ... after the EOCS determines a
counter associated with usage of the allocated service units has changed
based at least in part on the report from the PCEF and that a policy/rule
change is needed in conjunction with the change to the counter" ( emphasis
added). Further, the Appellants contend that Koskinen does "not appear to
apply to rule management or rule adjustments associated with changes to a
user account balance." Appeal Br. 16-17.
The crux of the Appellants' argument is that Foottit's technique for
invoking a new charging rule allegedly lacks the "counter" features, whereas
Koskinen - although it satisfies the claimed "counter" - does not relate
the "counter" to a need for a different charging policy/rule. Yet, as the
Examiner explains (see Final Action 9-10, Answer 7-8), each alleged
deficiency in Foottit (or Koskinen) is provided by the other reference.
Hence, the Appellants' argument criticizes these references individually, but
does not address their combined teachings. See In re Keller, 642 F.2d 413,
426 (CCP A 1981) ("[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.") ( citation omitted).
12
Appeal 2017-004115
Application 12/879,285
The Appellants' argument for independent claim 3 (see Appeal
Br. 18-20) is essentially the same as that just discussed for claim 1. No
separate argument is presented for any dependent claim. Accordingly, we
sustain the rejection of claims 1, 3, 5-14, and 24--30 under 35 U.S.C.
§ 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 3, 11-14, and
26-30 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 1, 3, 5-14,
and 24--30 under 35 U.S.C. § 112, first paragraph.
We REVERSE the Examiner's decision rejecting claims 1, 3, 5-14,
and 24--30 under 35 U.S.C. § 112, second paragraph.
We AFFIRM the Examiner's decision rejecting claims 1, 3, 5-14, and
24--30 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
13