Ex Parte Cai et al

Patent Trial and Appeal Board

May 31, 2017

12418206 (P.T.A.B. May. 31, 2017)

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.
12/418,206 04/03/2009 Yigang Cai 804185 7973
50525 7590 06/02/2017
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
ORTIZ ROMAN, DENISSE Y
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
docketing @ dbflaw. com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIGANG CAI, RANJAN SHARMA, and SHENGQIANG WANG
Appeal 2015-003915
Application 12/418,2061
Technology Center 3600
Before ANTON W. FETTING, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 The Appellants identify Alcatel-Lucent USA Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2015-003915
Application 12/418,206
ILLUSTRATIVE CLAIM
1. A charging system operable to provide interim billing
for sessions in an IP Multimedia Subsystem (IMS) network, the
charging system comprising:
a charging data system operable to receive accounting
messages from network elements serving the session in the IMS
network, to generate partial Charging Data Records (CDR) for
each network element based on the accounting messages, and to
set a timer that triggers aggregation of the partial CDRs during
the session after the session exceeds a time period;
the charging data system further operable to monitor the
timer;
responsive to the timer expiring, the charging data system
is further operable to aggregate the partial CDRs for each
network element during the session to generate an aggregated
CDR for each network element.
REJECTIONS
I. Claims 1—20 are rejected under 35 U.S.C. § 101 as patent-
ineligible subject matter.2
II. Claims 1—20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mansey et al. (US 6,023,499, iss. Feb. 8, 2000) (“Mansey”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANAFYSIS
Rejection Under 35 U.S.C. §101
According to the Examiner, applying the first step of the two-part
analytical approach of Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
2 The rejection under 35 U.S.C. § 101 was presented in the Answer (page 2)
as a New Ground of Rejection.
2
Appeal 2015-003915
Application 12/418,206
2347, 2355 (2014), “[t]he claim(s) is/are directed to the abstract idea of a
charging for usage which is a fundamental economic practice.” Answer 2.
As to the second step of the Alice analysis, the Answer states:
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than: mere instructions to implement the idea on a computer.
Viewed as a whole, these additional claim element(s) do not
provide meaningful limitation(s) to transform the abstract idea
into a patent eligible application of the abstract idea such that the
claim(s) amounts to significantly more than the abstract idea
itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101
as being directed to nonstatutory subject matter.
Id.
As to the first Alice step, the Appellants argue “that the concept of
providing interim billing for a session in an IMS network is not a basic tool
of scientific and technological work or a building block of human ingenuity”
and “[t]he concept of providing interim billing is not a basic tool of scientific
and technological work or a building block of human ingenuity that would
impede innovation.” Reply Br. 5.3 In support, the Appellants point out that
the claim would not cover preexisting techniques for charging users of an
IMS network: “The claims of the pending application are directed toward a
new charging practice that a network operator may choose to implement if
they wish.” Id. at 6.
Concerning the second Alice step, the Appellants contend that the
claims recite features rendering them patent-eligible:
[T]o implement the concept of interim billing as discussed
above, the charging data system of claim 1 sets a timer that
3 Because the Reply Brief lacks page numbering, we treat the title page
(bearing the caption) as the first page and refer to pages thereafter
sequentially.
3
Appeal 2015-003915
Application 12/418,206
triggers aggregation of the partial CDRs during a session,
monitors the timer, and then aggregates partial CDRs during the
session when the timer expires. The Appellants remind the
Board that this is a departure from a traditional IMS network
that aggregates partial CDRs only at the end of a session in
response to receiving an ACR[STOP] message from a network
element.
Id.
Regardless of whether the claims are directed to an abstract idea,
under the first Alice step, the Appellants’ argument, concerning the second
Alice step, is persuasive of error in the rejection. The Examiner (Answer 2)
did not address the significance of the recited features of claim 1 identified
by the Appellants (see Reply Br. 6) — particularly claim 1 ’s “generating]
partial Charging Data Records” and “aggregating] the partial
CDRs . . . during the session” — that change the ways CDRs are aggregated
and billing is performed for IMS network sessions.
The Examiner does not adequately explain why an inventive concept
does not exist in the arrangement and/or ordered combination of the
elements recited in independent claim 1. The Examiner’s determinations
with respect to independent claims 9 and 16 are likewise deficient in this
regard.
Therefore, the rejection of claims 1—20 under 35 U.S.C. § 101 is not
sustained.
Rejection Under 35 U.S.C. § 102(b)
Independent claim 1 recites a charging system to provide interim
billing for sessions in an “IP Multimedia Subsystem (IMS) network.”
According to the Examiner, Mansey’s Abstract and Fig. 2 disclose
“setting a conference call via internet” and “Person to Person
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Appeal 2015-003915
Application 12/418,206
communication including voice, text, video or any combination is
considered an IMS network”; therefore the Examiner maintains that Mansey
discloses the recited “IMS network” of claim 1. Answer 2.
To the contrary, as the Appellants demonstrate, an “IMS network” is a
specific type of system that presents particular types of problems (not
evident in Mansey) that the claimed subject matter is designed to overcome.
Appeal Br. 7—9; Reply Br. 7—8. As the Appellants state:
Because IMS and [Intelligent Networks (IN)] fundamentally
have different core networks (i.e., packet-switched versus
circuit-switched) and use different signaling protocols (i.e., SIP
versus SS7), the description of IN networks in Mansey is not
equivalent to an IMS network.
Appeal Br. 9. Accordingly, Mansey does not teach the “IMS network” of
claim 1. The same issue arises in the rejection of independent claims 9 and
16. See id at 11—12. Therefore, the rejection of claims 1—20 under
35 U.S.C. § 102(b) is not sustained.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 102(b).
REVERSED
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