Huawei Technologies Co., Ltd.

Patent Trials and Appeals Board

Jan 19, 2021

2021001270 (P.T.A.B. Jan. 19, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/973,331 12/17/2015 Linyi Tian HW743618 9122
77399 7590 01/19/2021
Leydig, Voit & Mayer, Ltd
(for Huawei Technologies Co., Ltd)
Two Prudential Plaza Suite 4900
180 North Stetson Avenue
Chicago, IL 60601
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
01/19/2021 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):
Chgpatent@leydig.com
hwpatent@leydig.com
uspatent@huawei.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINYI TIAN
____________

Appeal 2021-001270
Application 14/973,331
Patent 8,612,568 B2
Technology Center 3900
____________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–4, 6–13, and 27–36. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Huawei
Technologies Co., Ltd. Appeal Br. 1.
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Application 14/973,331
Patent 8,612,568 B2

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STATEMENT OF THE CASE
Appellant seeks to reissue U.S. Patent 8,612,568 (“’568 patent”)
directed to recording use of network service capability by applications
(APPs) provided by service providers. To this end, a single charging bill is
generated for an APP used by plural users based on listed items that refer to
the users’ using the APP. See ’568 patent, Abstract; col. 1, ll. 15–20; col 10,
ll. 17–20; col. 19, l. 65 – col. 20, l. 9. Claim 1 is illustrative:
1. In a network server which provides an application
programming interface (API) to a service provider, a method
comprising:
receiving, by the network server via the API, an
invocation request carrying both an identity of an application
(APP) of the service provider and an invocation parameter from
the APP of the service provider;
obtaining, by the network server, both the identity of the
APP and the invocation parameter from the invocation request;
determining, by the network server, type information of a
network service capability requested by the APP according to
the identity of the APP invocation request received from the
APP of the service provider;
based on the invocation request received from the APP of
the service provider, recording, by the network server, an item
of the network service capability used by the APP of the service
provider in a list of use of network service capability, the item
comprising the identity of the APP of the service provider and
the type information of the network service capability used by
the APP of the service provider, with the type information of
the network service capability being determined based on the
identity of the APP;
pricing according to a charging matrix of network service
capability configured in the network server, by the network
server, the list of use of the network service capability used by
the APP of the service provider, the list comprising a plurality
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Patent 8,612,568 B2

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of items comprising the identity of the APP and which refer to a
usage of the APP used by a plurality of users; and
generating, by the network server, a single charging bill
for the APP used by the plurality of users based on the plurality
of items which refer to the usage of the APP used by the
plurality of users.

THE REJECTIONS
The Examiner rejected claims 1–4, 6–13, and 27–36 under 35 U.S.C.
§ 251 as based on a defective reissue oath or declaration. Final Act. 4–5.2
The Examiner rejected claims 13 and 34 under 35 U.S.C. § 112,
second paragraph as indefinite. Final Act. 6.
The Examiner rejected claims 1–4, 6, 9–11, 13, 27–30, and 33–36
under 35 U.S.C. § 103 as unpatentable over Appellant’s admitted prior art
(“APA”), Yu (US 2004/0181591 Al; published Sept. 16, 2004), and
Adamczyk (US 7,505,482 B2; issued Mar. 17, 2009). Final Act. 7–36.
The Examiner rejected claims 7, 8, 12, 31, and 32 under 35 U.S.C.
§ 103 as unpatentable over APA, Yu, Adamczyk, and Serghi (US 7,483,438
B2; issued Jan. 27, 2009). Final Act. 37–41.

THE REJECTIONS UNDER §§ 251 AND 112
Because Appellant does not contest the Examiner’s rejections of (1)
claims 1–4, 6–13, and 27–36 under 35 U.S.C. § 251, and (2) claims 13 and
34 under 35 U.S.C. § 112, second paragraph (see Appeal Br. 7; Final Act. 5–

2 Throughout this opinion, we refer to (1) the Final Rejection mailed April 7,
2020 (“Final Act.”); (2) the Appeal Brief filed August 5, 2020 (“Appeal
Br.”); and (3) the Examiner’s Answer mailed September 29, 2020 (“Ans.”).
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6; Ans. 4), we summarily sustain these rejections. See Manual of Patent
Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 10.2019, June 2020)
(“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).

THE OBVIOUSNESS REJECTION OVER APA, YU, AND ADAMCZYK
Regarding independent claim 1, the Examiner finds that APA
discloses (1) the recited receiving, obtaining, and determining steps, and (2)
recording network information that is used as a basis for pricing and
generating a bill according to a pre-configured charging matrix. Final Act.
7–8. Although the Examiner acknowledges that APA lacks the particular
recited recording, pricing, and single charging bill generating steps, the
Examiner cites Yu as teaching these features. Final Act. 9–10. The
Examiner adds that, to extent the recited single charging bill generating step
is construed to mean charging a service provider, the Examiner cites both Yu
and Adamczyk for teaching this feature in concluding that the claim would
have been obvious. Final Act. 10.
Appellant argues that APA, and its referenced Parlay/OSA
Application Programming Interface (API) architecture, including Parlay X
Web Services (“Parlay API”) on which the Examiner relies, does not
describe the recited pricing and single charging bill generation steps.
Appeal Br. 8–12. According to Appellant, not only does the APA charge
APP usage for each single user, the Parlay API’s structure differs from that
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of the claimed invention, and does not describe (1) a list with plural items
comprising an APP’s identity and which refer to the APP’s usage by plural
users; (2) a single charging bill for the APP referring to the APP’s usage by
plural users; and (3) a charging matrix of network service capability. Appeal
Br. 9–12. Appellant adds that Yu does not cure APA’s deficiencies in this
regard because not only does Yu lack a charging matrix, Yu’s billing is not
for an APP, but rather each end user. Appeal Br. 12–13. Appellant also
contends that Adamczyk is similarly deficient because, among other things,
Adamczyk lacks the recited charging matrix and does not charge an APP
based on items that refer to plural users’ usage of the APP. Appeal Br. 13–
14.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that APA, Yu, and Adamczyk collectively would have taught or suggested,
in a network server: (1) pricing according to a charging matrix of network
service capability a list of use of network service capability used by a service
provider’s APP, where the list comprises items that (a) comprise the APP’s
identity, and (b) refer to the APP’s usage by plural users; and (2) generating
a single charging bill for the APP based on the items?

ANALYSIS
On this record, we see no error in the Examiner’s reliance on APA,
Yu, and Adamczyk for at least suggesting the recited limitations of claim 1.
First, the Examiner’s finding that APA discloses (1) receiving the recited
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invocation request; (2) obtaining an APP’s identity and invocation parameter
from that request; and (3) determining type information of a network service
capability requested by the APP as claimed is undisputed. See Final Act. 7
(citing APA col. 2, ll. 24–39).
Nor do we see error in the Examiner’s reliance on Yu for at least
suggesting, based on the received invocation request, recording an item of
the network service capability used by the service provider’s APP in a list of
use of network service capability, where the item comprises the APP’s
identity and the recited type information. See Final Act. 9; Ans. 7. As Yu’s
paragraph 44 explains, billing record 900, shown in Figure 9, is kept in a
billing database in server 112 where the record includes usage information
as well as user, subscription plan, and carrier identifications. After sending
the billing record to each carrier 212, the carrier bills the user for the rated
price. Yu ¶ 44. Yu’s Figure 10 shows product record 1000 including,
among other things, fields for product identification, subscription usage and
pay-per-use. Yu ¶ 45.
Based on this functionality, we see no error in the Examiner’s
mapping the recited “item” to a record that is stored or “recorded” in a
database that corresponds to the recited “list.” See Final Act. 9; Ans. 7.
Nor do we see error in the Examiner’s finding that Yu at least
suggests the recited pricing limitation, where Yu’s above-noted list not only
includes an APP’s identity which is at least suggested by, among other
things, the stored product identification, but also refers to the APP’s usage
by plural users. See Final Act. 9; Ans. 7; see also Yu ¶ 45 (noting that the
product record’s subscription usage and pay-per-use fields can list how
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many subscribers have subscribed to the product on a monthly or pay-per-
use basis, respectively).
Yu also at least suggests generating a single charging bill for the APP
based on the items that refer to the APP’s usage by plural users as claimed.
As explained in Yu’s paragraph 48, Yu’s billing system (1) establishes
accounts for each developer that list those developer’s products; (2)
associates each end-user with a carrier; and (3) generates invoices on a per
use or monthly subscription basis. With this arrangement, the payment
collected from each carrier is recorded, and the appropriate portion of the
collected payment is distributed to the developers whose products were used
or subscribed by the end users.
Our emphasis underscores that payment is made to a developer based
on usage of that developer’s product, or APP, by multiple users. Although
carriers are billed resulting in their payments for their respective users’
product usage, Yu’s system nonetheless generates a “single charging bill”
with respect to the associated payment owed to the developer—a payment
based on usage of that particular developer’s product by multiple users. See
Yu ¶ 48. Therefore, for developers associated with only a single product or
APP, the single charging bill resulting in that developer’s payment is
effectively for that developer’s APP that is used by multiple users. Although
some of Yu’s developers could have more than one product or APP resulting
in usage-based payments, other developers could nonetheless also have only
one product. Therefore, payments to those latter developers would be based
on plural users using that single product or APP. Although carriers (and
ultimately users) are billed for product usage as shown in Yu’s Figure 8,
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nothing in the claim precludes generating a single charging bill with respect
to the associated payment owed to the developer as suggested by Yu’s
paragraph 48 as noted above. Therefore, Appellant’s arguments regarding
Yu’s carriers sending bills to each user (Appeal Br. 12–13) are not
commensurate with the scope of the claim that does not preclude generating
a single charging bill with respect to the associated payment owed to the
developer.
To be sure, Yu does not state explicitly that a charging matrix is used
as a basis for associated pricing. Nevertheless, we see no error in the
Examiner’s reliance on APA and the charging information data structure in
Section 5.2.1 of the Technical Specification3 associated with the Parlay API
referenced in APA for teaching that pricing according to a charging matrix is
known in the art. See Final Act. 8; Ans. 5–6. That APA in column 2, lines
57 to 60 states explicitly that received statistical information is priced
according to a pre-configured charging matrix only underscores this known
matrix-based pricing technique. Therefore, using a charging matrix as a
basis for associated pricing in the APA/Yu system as the Examiner proposes
uses prior art elements predictably according to their established functions—
an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007).
Appellant’s contention, then, regarding Yu’s lacking the recited
charging matrix (Appeal Br. 13) is inapposite to the Examiner’s reliance on

3 3rd Generation Partnership Project; Technical Specification Group Core
Network; Open Service Access (OSA); Parlay X Web Services; Part 1:
Common (Release 6), Technical Specification 3GPP TS 29.199-1, V6.0.0
(Sept. 2004) (“Technical Specification”).
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APA and the referenced Technical Specification for teaching that feature.
Moreover, Appellant’s contentions regarding the alleged shortcomings of
APA, Parlay API, and the referenced Technical Specification with respect to
generating a single charging bill for an APP referring to its usage by
multiple users (Appeal Br. 11) is inapposite to the Examiner’s reliance on
Yu for teaching those features as noted above. In short, Appellant’s
arguments regarding the individual references’ alleged shortcomings in
connection with the claimed invention do not show nonobviousness where,
as here, the rejection is based on the cited references’ collective teachings.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Lastly, although the Examiner’s reliance on Adamczyk is technically
cumulative to Yu, we nonetheless see no harmful error in the Examiner’s
reliance on Adamczyk merely for the limited purpose for which it was cited,
namely in connection with an alternative interpretation of the recited single
charging bill generation limitation. See Final Act. 10. Nevertheless, we see
no error in the Examiner’s reliance on Yu for also teaching this limitation for
the reason noted previously.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–4, 6, 9–11, 13, 27–30, and 33–36 not argued
separately with particularity.

THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 7, 8,
12, 31, and 32. Final Act. 37–41. Because this rejection is not argued
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separately with particularity, we are not persuaded of error in this rejection
for the reasons previously discussed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–4, 6–
13, 27–
36
251 Defective
oath /
declaration
1–4, 6–13,
27–36

13, 34 112,
second
paragraph
Indefiniteness 13, 34
1–4, 6,
9–11, 13,
27–30,
33–36
103 APA, Yu,
Adamczyk
1–4, 6, 9–
11, 13, 27–
30, 33–36

7, 8, 12,
31, 32
103 APA, Yu,
Adamczyk,
Serghi
7, 8, 12, 31,
32

Overall
Outcome
1–4, 6–13,
27–36

TIME PERIOD FOR RESPONSE
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).

AFFIRMED