Ex Parte Hartley et al

Board of Patent Appeals and Interferences

Jul 30, 2012

11087536 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JOHN J. HARTLEY and J. DARREL THOMAS
____________________

Appeal 2011-001376
Application 11/087,536
Technology Center 3600
____________________

Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and MICHAEL
W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001376
Application 11/087,536

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
181. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a system, method, and computer program
product for byte-based utility computing pricing. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1 A method for accounting for data processing system
service usage, comprising:
metering network usage;
integrating network usage over a billing period to
determine a total network usage;
metering storage usage;
integrating storage usage over the billing period to
determine a total storage usage;
metering processor usage in byte-based units;
integrating processor usage over the billing period to
determine a total processor usage;
summing the total network usage, total storage usage,
and total processor usage to determine a total customer usage;
and
determining and storing a total customer bill according to
the total customer usage and a billing rate.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kelley US 7,313,827 Dec. 25, 2007

1 We reference the Appeal Brief filed May 5, 2009 (hereinafter “App. Br.”),
the Examiner’s Answer mailed June 23, 2010 (hereinafter “Exam’r’s Ans.”,
and the Reply Brief filed October 29, 2010 (hereinafter “Reply Br.”).
Appeal 2011-001376
Application 11/087,536

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Claim 7 is rejected under 35 U.S.C. § 112, 2nd paragraph, for
indefiniteness; and claims 1-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kelley2.
We AFFIRM.

ISSUES
Did the Examiner err in asserting that Kelley renders obvious
“processor usage is metered in byte-based units,” as recited in independent
claims 1, 7, and 13?
Did the Examiner err in asserting that independent claim 7 is
indefinite?

FINDINGS OF FACT
Specification
FF1. Different types of services may be billed by flat-rate, by the
day, week, or month, by the byte (or multiple thereof), or on a per-minute
basis (para. [0003]).
FF2. Bit- and byte-based pricing was known in data telecom and
storage systems (paras. [0003], [0037]).

2 The rejection of claims 13-18 under 35 U.S.C. § 101 is withdrawn
(Exam’r’s Ans. 15).
Appeal 2011-001376
Application 11/087,536

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ANALYSIS
Obviousness Rejection
We are not persuaded the Examiner erred in asserting that Kelley
renders obvious “processor usage is metered in byte-based units,” as recited
in independent claims 1, 7, and 13 (App. Br. 20-27). Both Appellants and
the Examiner agree that Kelley discloses time-based metering (App. Br. 21,
24-27; Exam’r’s Ans. 10-11, 15). However, contrary to Appellants’
assertion, Kelley’s disclosure of time-based metering is merely the
disclosure of an alternative that does not teach away from byte-based
metering. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed”).
Furthermore, the Examiner has specifically cited Appellants’ Specification
for admissions that byte-based metering was known (FF2) and
interchangeable with the time-based metering of Kelley (FF1) (Exam’r’s
Ans. 4, 8).

Indefiniteness Rejection
We are persuaded the Examiner erred in asserting that independent
claim 7 is indefinite (Exam’r’s’ Ans. 4-8). Appellants assert that various
figures and paragraphs [0021], [0025], and [0030] of the Specification
provide adequate structures for performing the claimed functions (Reply Br.
2-3). Appellants then cite paragraphs [0032]-[0038] of the Specification for
disclosing sufficient algorithms for performing the claimed functions on the
above-referenced structures. We agree. We find that the recited “receiving”
Appeal 2011-001376
Application 11/087,536

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and “summing” functions are self-explanatory algorithms, and that
paragraphs [0032]-[0038] of the Specification provide adequate algorithms
for performing the recited “integrating” functions.

DECISION
The Examiner’s rejection of claims 1-18 under 35 U.S.C. § 103(a) is
AFFIRMED.
The Examiner’s rejection of independent claim 7 under 35 U.S.C. §
112, 2nd paragraph, is REVERSED.
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).

AFFIRMED

mls