Ex Parte Wengrovitz

Board of Patent Appeals and Interferences

Mar 19, 2012

10942354 (B.P.A.I. Mar. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL WENGROVITZ
____________________

Appeal 2009-013150
Application 10/942,354
Technology Center 2400
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Before ERIC S. FRAHM, JEFFREY S. SMITH, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Disclosure
Appellant’s invention relates to call accounting of telephone charges,
so that charges can be correctly apportioned to individual users or
departments (Spec. 1:6-9 and 12-18). Claims 1, 8, 12, and 16 are
independent and recite systems and a method for providing call accounting
services including an intelligent ticket collector and data transfer protocol
for periodically polling a network to retrieve and encrypt call parameter
information (claims 1, 8, 12, and 16). Call parameter information may
include call detail record data such as calling number, called number, and
call duration (Abs.; Spec. 1:21-23).
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added,
reads as follows:
1. A system for providing call accounting services, the
system comprising:
a first network collecting call parameter information, the
first network including:
a storage device coupled to receive and store the
call parameter information; and
an intelligent ticket collector operable to
periodically poll the storage device to retrieve the call
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parameter information and encrypt the retrieved call
parameter information; and
a second network receiving, decrypting, and processing
the call parameter information for generating a usage profile;
wherein the call parameter information is transmitted
from the first network to the second network over a public
computer network.
Rejections
(1) The Examiner rejected claims 1-5, 7-9, 11-13, 15-17, 19, and 20 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Voit
(US 6,430,275 B1) and Allison (US 6,052,450). Ans. 3-5.
(2) The Examiner rejected claims 6, 10, 14, and 18 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Voit,
Allison, and Lohtia (US 6,560,456 B1). Ans. 5.
Appellant’s Contentions
(1) Appellant contends (App. Br. 10-12; Reply Br. 2-5) that the
Examiner erred in rejecting claims 1-5, 7-9, 11-13, 15-17, 19, and 20 under
35 U.S.C. § 103(a) over Voit and Allison for numerous reasons including:
(a) Voit and Allison fail to teach or suggest “a first network collecting
call parameter information, the first network including: a storage device
coupled to receive and store the call parameter information; and an
intelligent ticket collector operable to periodically poll the storage device to
retrieve the call parameter information and encrypt the retrieved call
parameter information,” as recited in claim 1, and as similarly recited in
claims 8, 12, and 16 (App. Br. 11);
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(b) there is no motivation to combine Voit and Allison because the
proposed modification of Voit’s real time data collection with Allison’s
periodic polling would change the principle of operation of Voit (e.g., real
time performance) (App. Br. 11; Reply Br. 2-4); and
(c) Voit teaches away from Appellant’s invention and periodic polling
because Voit does not poll, and doing so would delay the delivery of Voit’s
usage records and circumvent Voit’s real time operation (App. Br. 11-12;
Reply Br. 4); and
(d) only the purposes of Voit that deal with the particular claims
limitations at issue in claim 1 should be considered when determining
whether Voit’s modification with Allison would render Voit unsatisfactory
for its intended purpose (Reply Br. 2).
(2) Appellant contends (App. Br. 13) that the Examiner erred in
rejecting claims 6, 10, 14, and 18 under 35 U.S.C. § 103(a) over Voit,
Allison, and Lohtia for the following reasons:
(a) the same reasons argued with respect to claims 1, 8, 12, and 16
discussed supra (see App. Br. 13); and
(b) Lohtia fails to cure the deficiencies of Voit and Allison argued
with respect to claims 1, 8, 12, and 16 (App. Br. 13).
Issues on Appeal
Based on Appellant’s arguments, the following issues are presented
for appeal:
Did the Examiner err in rejecting claims 1-20 as being obvious
because (i) Voit’s real time data collection and maintenance teaches away
from Appellant’s recited invention of periodic polling, (ii) Allison’s periodic
polling would change Voit’s operation (delaying delivery of usage records)
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and render Voit unsatisfactory for its intended purpose, and (iii) therefore it
would not have been obvious to combine Voit with Allison?
Did the Examiner err in rejecting claims 1-20 as being obvious
because the combination of Voit and Allison fails to teach or suggest the
limitations of representative claim 1 at issue?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis (see In re Fine, 837 F.2d 1071, 1073
(Fed. Cir. 1988)), and provide articulated reasoning in the rejection
possessing a rational underpinning to support the legal conclusion of
obviousness (KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). When an examiner
establishes a prima facie case of obviousness, the burden shifts to the
applicant to show non-obviousness. See In re Rijckaert, 9 F.3d 1531, 1532
(Fed. Cir. 1993).
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
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art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 9-14) and the Reply Brief (Reply
Br. 2-6) that the Examiner has erred.
We disagree with Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, as well as the Advisory Action mailed October
27, 2008, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (see Ans. 3-9). We concur
with the conclusions reached by the Examiner.
With regard to representative claim 1 the Examiner has provided a
factual basis and articulated reasoning with a rational underpinning to
support the conclusion of obviousness (see Ans. 3-4 and 6-8). See KSR, 550
U.S. at 418. We agree with the Examiner that it would have been obvious to
modify Voit with Allison (Ans. 4), and further modify that combination with
Lohtia (Ans. 5). We agree with the Examiner that (i) Voit and Allison both
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collect and maintain call usage records of a communication network for use
in billing, pricing, and authorization (Ans. 8), and (ii) Voit and Allison are
both concerned with a data collector that receives usage records for storage
and later processing for billing, pricing, and authorization (Ans. 8-9).
We disagree with Appellant’s assertions (App. Br. 10-12; Reply Br. 3-
4) that Voit fails to “poll,” and instead generates usage records in the C2
object and accepts the usage records with the C3 object.
Specifically, Voit discloses invoking a C3 object during a call, which
in turn requests authorization over interface C3.14 which maintains the
current state of the connection and passes generated/encrypted usage records
from C2 to C3 in real time (col. 9, ll. 38-55). “The C3 object represents the
network element required in this architecture to perform customer
authentication, call authorization, usage accounting, and usage pricing for a
particular PC user’s customer account” (col. 8, ll. 59-62), using a single
logical database. C3 ensures coordination between user authorization and
usage recording for an account (col. 9, ll. 12-14). “C3 can also respond to
real time requests . . . for usage record details and account status information
for the customer account” (col. 9, ll. 8-11) (emphasis added). “C2 generates
the raw usage records which are sent to C3” (col. 13, ll. 26-27).
Instead, we agree with the Examiner’s (Ans. 3) reasonable
determination that Voit operates to poll the database to retrieve the call
usage records and information from C2 to C3 in encrypted form. Polling,
according to claim 1, comprises retrieving and encrypting call parameter
information. Voit (see col. 8, ll. 59-62; col. 9, ll. 8-14 and 38-55) and
Allison (see col. 3, ll. 49-50; col. 4, ll. 29-32) both teach a system/network
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element that is operable to poll (i.e., retrieve and encrypt call parameter
information such as usage records).
We are not persuaded by Appellant’s arguments (App. Br. 12; Reply
Br. 4) that (i) Voit teaches away from Appellant’s invention, (ii) Voit does
not poll, and (iii) polling would delay the delivery of the usage records and
be in opposition to Voit’s purpose of providing real time usage information.
We disagree with Appellant’s arguments (App. Br. 11-12; Reply Br.
4) that Voit teaches away from Appellant’s claimed invention. Although we
agree with Appellant that Voit discloses operating to collect and maintain
usage records in real time, there is nothing in Voit that precludes polling
from also being done periodically (e.g., for only some of the call parameter
information, such as authorization, customer usage statistics, billing
information, customer’s available balance, etc.). Likewise, the language of
claim 1 does not preclude or disparage real time processing of usage records.
Since Voit does not disparage periodic polling, Voit’s real time polling
could even be replaced by Allison’s periodic polling in order to conserve
resources and so as not to annoy the user with a constant stream of
information.
Appellant has provided no evidence on this record to support the
assertion the Voit teaches away from Appellant’s invention, apart from mere
conclusory statements which are unsupported by factual evidence and
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Rather,
only attorney argument was presented regarding the asserted delay of usage
record delivery due to periodic polling (App. Br. 11-12; Reply Br. 4). See In
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re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); Meitzner v. Mindick, 549
F.2d 775, 782 (CCPA 1977).
Common sense teaches that familiar items may have obvious uses
beyond their primary purposes, and persons of ordinary skill can often fit the
teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S.
at 420. Thus, it is not necessary that the references be physically
combinable, without change, to render obvious the invention under review.
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The criteria instead is
what these references would have meant to a person of ordinary skill in the
field of the invention. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). In
the instant case on appeal, one of ordinary skill in the art would recognize
that combining Voit and Allison could lead to polling and collecting some
usage records in real time, and polling and collecting some usage records
only periodically. Another useful alternative could be to perform all polling
and collecting of usage records periodically.
We hold that the Examiner’s reasoning as to the obviousness of claim
1 is credible. One skilled in the art would have been able to modify Voit’s
network, C3 object, and interface (i.e., intelligent ticket collector), that
performs real time usage accounting and polling of the C3 database to
retrieve and encrypt call parameter information, to communicate usage
records periodically. Further, one skilled in the art would recognize the
advantage of generating usage records in real time, and then polling
periodically to retrieve call parameter information to check a user’s available
account balance.
“[A] reference will teach away if it suggests that the line of
development flowing from the reference's disclosure is unlikely to be
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productive of the result sought by the applicant.” In re Gurley, 27 F.3d at
553; see also W.L. Gore & Assoc., v. Garlock, Inc., 721 F.2d 1540, 1550-51
(Fed. Cir. 1983). The mere failure of a reference to mention alternatives
known in the art does not constitute a teaching away from using the known
elements. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away … if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.”). Thus, Voit’s general preference for polling and
collecting usage records in real time, and Voit’s silence as to periodic
polling do not constitute teaching away.
Both Voit and Allison disclose polling to collect network usage
records and information for billing purposes. Voit and Allison do not
discredit one another. In re Young, 927 F.2d at 591. Voit discloses a
general preference for polling in real time, and does not criticize, discredit,
or otherwise discourage periodic polling of usage or call parameter
information. Therefore, one of ordinary skill, upon reading Voit, would not
be discouraged from polling periodically, as this would provide periodic
updates of the usage records, which may be more desirable than doing so in
real time, depending upon a user’s preferences and to conserve system
resources. See In re Gurley, 27 F.3d at 553.
In summary, Appellant’s arguments throughout the briefs do not
convince us that Voit teaches away from the claimed invention. In addition,
Appellant has not shown that the Examiner erred in determining that (i) Voit
and Allison are properly combinable, (ii) it would have been obvious to
modify Voit with the teachings of Allison and/or Lohtia, and/or (iii) the
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combination of Voit and Allison teaches or suggests the invention recited in
representative claim 1 including periodic polling.
We also disagree with Appellant’s argument (App. Br. 11) that the
combination of Voit and Allison fails to teach a first network, a storage
device, and an intelligent ticket collector operable to periodically poll the
storage device to retrieve and encrypt call parameter information, as recited
in claim 1. We agree with the Examiner’s findings (Ans. 3-4 and 6-8 (citing
various portions of Voit and Allison)) that (i) Voit teaches or suggests a first
network, storage device, and intelligent ticket collector to continually poll
call information in real time, and (ii) Allison teaches periodic polling for call
information. Appellant has not persuaded us that the Examiner’s findings
with regard to Voit and Allison are erroneous, or otherwise shown non-
obviousness. See In re Rijckaert, 9 F.3d at 1532.
In view of the foregoing, we will sustain the obviousness rejection
over the combination of Voit and Allison of (i) claim 1, (ii) the remaining
independent claims 8, 12, and 16 that similarly recite periodic polling, and
(iii) claims 2-5, 7, 9, 11, 13, 15, 17, 19, and 20 that depend from respective
ones of claims 1, 8, 12, and 16. We will also sustain the obviousness
rejection of claims 6, 10, 14, and 18 over Voit, Allison, and Lohtia for the
same reasons as discussed supra regarding claims 1, 8, 12, and 16.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
obvious, because (a) Voit and Allison are properly combinable, (b) the
combination of Voit and Allison teaches or suggests the limitations of claim
1 at issue, and (c) Voit does not teach away from Appellant’s invention.
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(2) Claims 1-20 are not patentable.

DECISION
The Examiner’s rejections of claims 1-20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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