Ex Parte Haiyan

Patent Trial and Appeal Board

Oct 14, 2016

12733914 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121733,914 03/26/2010
47382 7590 10/18/2016
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
FIRST NAMED INVENTOR
Feng Haiyan
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.
801637/LUC-859 US 8159
EXAMINER
SHAAWAT,MUSSAA
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
10/18/2016 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):
info@pattimalvonelg.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FENG HAIY AN
Appeal2014-002268 1
Application 12/733,9142
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-13, and 15-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("Br.," filed July 23,
2013) and the Examiner's Answer ("Ans.," mailed November 8, 2013) and
Final Office Action ("Final Act.," mailed June 4, 2013).
2 Appellant identifies Lucent Technologies, Inc., now known as Alcatel-
Lucent, as the real party in interest. Br. 2.
Appeal2014-002268
Application 12/733,914
CLAIMED INVENTION
Appellant's claimed invention "relates to the field of communication,
and more particularly to the real time billing of a call in a packet switching
based network" (Spec. 1 ).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative:
1. A method for generating a real time billing
information in a packet switching based network, wherein a call
is set up between a user of said packet switching based network
and a user of a circuit switching based network, and wherein a
billing server is informed of at least a billing rate and an interval
of billing, the method comprising the steps of:
generating, via a network element, a first message with a
first token that indicates the billing rate upon receipt of a first
charge message that contains said billing rate from said circuit
switching based network and based on said first charge message,
wherein the billing server is informed of said billing rate;
once said call has been set up, generating, via the network
element, a second message with a second token that indicates the
interval of billing upon receipt of a subsequent charge message
that contains said interval of billing and based on said subsequent
charge message, wherein the billing server is informed of said
interval of billing; and
generating continuously, via said billing server, the real
time billing information after receipt of the billing rate and the
interval of billing.
2
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Application 12/733,914
REJECTIONS
Claims 1-3 and 5-10 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. 3
Claims 1-3, 5-7, 10-13, 15-17, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Honda (US 6,977,999 B2, iss. Dec. 20, 2005)
and Chiu (US 2003/0031134 Al, pub. Feb. 13, 2003).
Claims 8, 9, 18, and 19 are rejected under 35 U.S.C § 103(a) as
unpatentable over Honda, Chiu, and Cai (US 2008/0103992 Al, pub. May 1,
2008).
ANALYSIS
Non-Statutory Subject Matter
In rejecting claims 1-3 and 5-10 under 35 U.S.C. § 101, the Examiner
determines that independent claim 1 fails to satisfy the machine-or-
transformation test (Final Act. 2-3). And the Examiner concludes that the
claim will, therefore, be considered "directed to a non-statutory process
unless there is a clear indication that the method is not directed to an
abstract idea" (id. at 2 (emphasis added)). The Examiner, thus, ostensibly
takes the position that if a method claim does not satisfy the machine-or-
transformation test, the claim is presumed to be directed to patent-ineligible
subject matter.
The Supreme Court clarified in Bilski v. Kappas, 130 S. Ct. 3218
(2010) that the machine-or-transformation test "is not the sole test for
deciding whether an invention is a patent-eligible 'process' [under§ 101]."
3 We treat the Examiner's inclusion of canceled claim 4 among the claims
rejected under§ 101 as inadvertent error.
3
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Application 12/733,914
Id. at 3227. But the Court did not state, or otherwise suggest, that failure to
satisfy the machine-or-transformation test creates a presumption that a
claimed method is directed to patent-ineligible subject matter.
More recently, in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct.
2347 (2014), the Supreme Court further clarified the law regarding
patentable subject matter. In doing so, the Supreme Court reiterated the
two-step framework previously set forth in Mayo Collaborative Services v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of these concepts." Alice
Corp., 134 S. Ct. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," id., e.g., to an abstract idea. If the claims are not directed to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit
has instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games America, Inc., 2016 WL 4896481, *6
4
Appeal2014-002268
Application 12/733,914
(Fed. Cir. September 13, 2016) (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, the claimed invention relates to the field of communication, and
more particularly to the real time billing of a call in a packet switching based
network. The Specification discloses that in a conventional call between an
IMS (IP Multimedia Subsystem) network and a PSTN (Public Switched
Telephone Network) network, the billing server generates billing
information based on CDR (Call Detailed Record) data sent by the SIP
Session Initiation Protocol) application server (AS) at the end of the call, and
the billing server cannot provide real time billing (Spec. 2). The claimed
invention addresses this shortcoming by implementing a signaling process
whereby the SIP application server, and, therefore, the billing server, is
informed of the billing rate for the call and an interval of billing once the call
has been set up such that the billing server can generate real time billing
information during the course of the call.
In accordance with the claimed method, as recited in claim 1, a first
message with a first token indicating a billing rate is generated, via a
network element, upon receipt of a first charge message (containing the
billing rate) from the circuit switching based network, and a billing server is
informed of the billing rate. Once the call has been set up, a second message
with a second token indicating an interval of billing is generated, via the
network element, upon receipt of a subsequent charge message from the
circuit switching based network that contains the interval of billing, and the
billing server is informed of the interval of billing. After receipt of the
billing rate and the interval of billing, the billing server continuously
generates real time billing information.
5
Appeal2014-002268
Application 12/733,914
The Federal Circuit noted in McRO that the abstract idea exception
has been applied to prevent patenting of claims that abstractly cover results
where "it matters not by what process or machinery the result is
accomplished" (McRO, 2016 WL 4896481 at *8 (quoting O'Reilly v. Morse,
56 U.S. (15 How.) 62, 113 (1854))). The court in that case, thus, looked to
whether the claim at issue focused on a specific method that improves the
relevant technology, i.e., computer animation, or instead was directed to a
result or effect that itself is the abstract idea and merely invokes generic
processes and machinery (id.). There, the court concluded that the claim,
when considered as a whole, was directed to a technological improvement
over the existing, manual 3-D animation techniques and used limited rules
in a process specifically designed to achieve an improved technological
result in conventional industry practice. As such the court found that the
claim was not directed to an abstract idea. Id. at * 10.
Similarly here, claim 1 is directed to a specific improvement in the
way billing information is generated in a packet switching based network -
an improvement designed to address a shortcoming in conventional practice
and achieve an improved technological result. This is not a situation where
"it matters not by what process or machinery the result is accomplished."
Instead, similar to the situation in McRO, it is the generation and use of the
claimed token-based messages, and not the use of generic network
components, which improves the existing technological process by allowing
the generation of real time billing information. Although not dispositive, 4
4 The Federal Court has noted that although preemption may signal patent
ineligible subject matter, "the absence of complete preemption does not
6
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Application 12/733,914
claim 1 also does not broadly preempt all processes for achieving real time
billing of a call in a packet switching based network. 5
Claim 1 is limited to a specific signaling process, i.e., a discrete
implementation, for communicating billing information between a packet
switching based network and a circuit switching based network The claim,
thus, calls for the generation of first and second token based messages that
contain particular information, i.e., a billing rate and an interval of billing,
and recites that these messages are respectively generated at a particular
time, i.e., upon receipt of a first charge message from the circuit switching
based network that contains the billing rate, and upon receipt, once the call
has been set up, of a subsequent charge message from the circuit switching
based network that contains the billing interval.
We find that claim 1, when considered as a whole, is directed to a
method for improving an existing technological process, i.e., a process
designed to solve the prior art problem of providing real time billing in a
packet switching based network, and not to an abstract idea. Therefore, we
do not sustain the Examiner's rejection of claim 1under35 U.S.C. § 101.
For the same reasons, we also do not sustain the rejection of dependent
claims 2, 3, and 5-10.
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
5 The Specification describes possible alternative solutions for generating
real time billing information exist albeit that these alternatives are
characterized as complex and costly and as negatively impacting application
server performance (Spec. 2-3).
7
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Application 12/733,914
Obviousness
Independent claim 1 and dependent claims 2, 3, 5-7, and 10
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Chiu, on
which the Examiner relies, does not disclose or suggest "generating
continuously, via said billing server, the real time billing information after
receipt of the billing rate and the interval of billing," as recited in claim 1
(Br. 6-8). The Examiner cites the Abstract, Figure 2, and paragraphs 6, 7,
25, and 26 of Chiu as disclosing the argued limitation. But we agree with
Appellants that there is nothing in the cited portions of Chiu that discloses or
suggests that real-time billing information is "generat[ ed] continuously" via
the billing server, as called for in claim 1.
Chiu is directed to a system and method for providing billing and
timing information to internet protocol ("IP") telephone users in real-time on
the telephone display (Chiu i-fi-f l, 6). Chiu discloses that call charge rates are
made available in the IP telephone; an IP telephone can, thus, calculate the
fee for a call based on current rates and network time (Chiu i-fi-17, 8). Chiu
describes that when a call originating from an IP telephone is answered, the
IP telephone starts calculating the fee based on the rates and network time;
the call duration and fee are displayed on the IP telephone and "are refreshed
regularly until the call is disconnected" (id. i125). Then, after the call is
completed, a billing record is generated and stored in the IP telephone (id.
i126).
We agree with Appellants that there is nothing in the cited portions of
Chiu that discloses or suggests that real-time billing information is generated
continuously. Instead, Chiu expressly discloses in paragraph 25, on which
8
Appeal2014-002268
Application 12/733,914
the Examiner relies, that the call duration and fee are "refreshed regularly."
The term "regularly" is generally understood to mean "at regular times or
intervals." See RANDOi'vf Hrn.JSE KERNERMAN \VEBSTER'S COLLEGE
DICTlONARY, K Dictionaries, Ltd., 2010, accessed at
http://www.thefreedictionary.com/regularly (last visited October 6, 2016).
A person of ordinary skill in the art would, thus, reasonably understand from
Chiu that the billing information is generated at regular times or intervals,
i.e., not continuously. This also is consistent with paragraph 8 of Chiu,
which discloses that fee and network time are "periodically updated and
displayed on the [telephone] screen during the call."
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1under35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 2, 3, 5-7, and 10. Cf In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if
the independent claims from which they depend are nonobvious").
Independent claim 11 and dependent claims 12, 13, 15-17, and 20
Claim 11 include language substantially similar to the language of
claim 1. Therefore, we do not sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claim 11, and claims 12, 13, 15-17, and
20, which depend therefrom, for the same reasons set forth above with
respect to claim 1.
Dependent claims 8, 9, 18, and 19
Claims 8 and 9 and claims 18 and 19 depend from claims 1 and 11,
respectively. The Examiner's rejection of claims 8, 9, 18, and 19 based on
Cai, in combination with Honda and Chiu, does not cure the deficiencies in
the Examiner's rejection of claims 1 and 11. Therefore, we do not sustain
9
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Application 12/733,914
the Examiner's rejection of claims 8, 9, 18, and 19 under 35 U.S.C. § 103(a)
for the same reasons set forth above with respect to the independent claims.
DECISION
The Examiner's rejection of claims 1-3 and 5-10 under 35 U.S.C.
§ 101 is reversed.
The Examiner's rejections of claims 1-3, 5-13, and 15-20 under
35 U.S.C. § 103(a) are reversed.
REVERSED
10