Ex Parte Cutler et al

Patent Trial and Appeal Board

Mar 14, 2016

12776069 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121776,069 05/07/2010
76614 7590
Terry W, Kramer, Esq,
Kramer & Amado, P.C.
330 John Carlyle Street
3rd Floor
Alexandria, VA 22314
03/16/2016
FIRST NAMED INVENTOR
Kevin Cutler
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.
ALC 3530 1458
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
mail@krameramado.com
ipsnarocp@alcatel-lucent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN CUTLER and KATHA KULASINGAM
Appeal2014-003484
Application 12/776,069
Technology Center 2600
Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and
NABEEL U. KHAN, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal2014-003484
Application 12/776,069
SUMMARY OF THE INVENTION
The invention is directed to the use of a managed object by a policy
and charging node in a telecommunications network. Spec. i-f 1; Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method performed by a policy and charging rules node for
providing managed object support, the method comprising:
determining, at a policy and charging rules node, that the
policy and charging rules node should perform a policy decision;
comparing a criteria portion of at least one rule of a
plurality of rules to a set of context information;
identifying a rule of the plurality of rules that matches the
set of context information;
determining that a result portion of the identified rule
includes a reference to a first managed object;
retrieving the first managed object based on the reference
to the first managed object, wherein the first managed object is
stored separately from the identified rule; and
using the first managed object as at least part of a result of
the policy.
REFERENCES
Raleigh (hereafter Raleigh II) US 2011/0314145 Al Dec. 22, 2011
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Raleigh II. Final Act. 2.
ISSUES AND ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner has erred. Because we agree with at least one
of Appellants' contentions that is applicable to all independent claims, we
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Appeal2014-003484
Application 12/776,069
reverse the rejection of claims 1-20. We highlight the following for
emphasis.
Claims 1-20
Issue 1: Whether Raleigh II is prior art?
The instant application was filed on May 7, 2010, and Raleigh II was
filed on May 25, 2011. Therefore, on its face, Raleigh II is not prior art to
the instant application. However, Raleigh II claims priority to (a) a number
of provisional applications, and (b) U.S. Pat. No. 8,326,958 to Raleigh
(hereafter Raleigh I) as a CIP (continuation-in-part).
The earliest filing date of any of the provisional applications to which
Raleigh II claims priority is May 25, 2010. Therefore, Raleigh II is not prior
art to the instant application by way of its priority claims to the provisional
applications. The filing date of Raleigh I is March 2, 2009, and so Raleigh
II could be prior art to the instant application under 35 U.S.C. § 102(e) if it is
entitled to the benefit of the filing date of Raleigh I under 35 U.S.C. § 120,
and if the disclosure relied upon to support the rejection of claims 1-20 is
supported by Raleigh I.
In finding claim 1 anticipated by Raleigh II, the Examiner finds
Raleigh II discloses the limitation retrieving the first managed object based
on the reference to the first managed object, wherein the first managed
object is stored separately from the identified rule in Figure 27, and in the
description of Figure 27 in paragraphs 311-313. Final Act. 3. Appellants
argue that this disclosure of Raleigh II "is entirely absent from Raleigh I."
App. Br. 8. Consequently, Appellants argue "the subject matter relied on in
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Appeal2014-003484
Application 12/776,069
the rejection is not entitled to the filing date of Raleigh I and, therefore,
Raleigh II does not qualify as prior art." Id.
We are persuaded by Appellants' argument. The Examiner has failed
to show where the subject matter of Raleigh II that was cited to reject claims
1-20 is supported by the disclosure of Raleigh I. Consequently, the
Examiner has failed to show that Raleigh II is entitled to claim benefit to the
priority date of Raleigh I, and is prior art to claims 1-20.
Instead of mapping the subject matter cited from Raleigh II to
corresponding subject matter in Raleigh I, the Examiner mapped separate
subject matter from Raleigh I and Raleigh II to the elements of claims 1, 8
and 14, stating this "show[ s] how independent claims 1, 8, and 14 are
anticipated by Raleigh I and thus by Raleigh II independently." See Ans. 4--
14. But the claims stand rejected as anticipated by Raleigh II, not as
independently anticipated by Raleigh I. To support the rejection based on
Raleigh II, it is incumbent upon the Examiner to show where the subject
matter relied upon in Raleigh II is disclosed in Raleigh I.
Moreover, in rejecting claim 1 as anticipated by either Raleigh I or
Raleigh II, the Examiner maps network traffic conditions to both the set of
context information that is used to identify a rule, Ans. 7-8, and to the first
managed object that is referenced by, stored apart from, and retrieved using
the reference from the identified rule. Id. at 9-11. As Appellants correctly
argue, this mapping is inconsistent, and it is improper for the Examiner to
map the same network traffic conditions to both the first managed object and
set of context information recited in claim 1, which "are two separate things
and cannot be shown together by a single 'network traffic condition."'
Reply Br. 13-15.
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Appeal2014-003484
Application 12/776,069
Accordingly, for the reasons discussed above, we reverse the
Examiner's rejection of claims 1-20 as anticipated by Raleigh II.
DECISION
The rejection of claims 1-20 is reversed.
REVERSED
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