Ex Parte Syrjala et al

Patent Trial and Appeal Board

Sep 17, 2012

10415821 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JARI SYRJALA, MARKUS MARTIN,
JUHA-PEKKA KOSKINEN, JUHA R. VALLINEN, MARC GREIS, and
JANNE TAPANI SIREN
___________

Appeal 2010-011736
Application 10/415,821
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011736
Application 10/415,821

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STATEMENT OF THE CASE
Jari Syrjala et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 14-29 and 31-46. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This “invention is a method for billing a subscriber for data
transmission in a communication network, which enables the billing for
contents transmitted in connected with call establishment.” Spec. 5:20-23.
Claim 14, reproduced below, is illustrative of the subject matter on
appeal.
14. A method, comprising:
forwarding a signaling message from a
subscriber to a destination in a communication
network including at least one call control entity
for controlling calls to be established from the
subscriber to the destination, the signaling message
comprising a message header and a message body,
the message header including information
descriptive of a content carried in the message
body;
analyzing the signaling message header, and the
information descriptive of a content carried in the

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 15, 2009) and Reply Brief (“Reply Br.,” filed Aug. 10, 2010),
and the Examiner’s Answer (“Ans.,” mailed Jun. 28, 2010).

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message body, at the call control entity; and
generating billing information based on a result
of the analysis;
wherein the forwarding of the signaling
message is operated using a session initiation
protocol,
wherein the signaling message is a session
initiation protocol message,
wherein the message header comprises a
subject field, and
wherein the billing information is generated
dependent on information contained in the subject
field.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Tinsley US 6,967,956 B1 Nov. 22, 2005
Handley et al., SIP: Session Initiation Protocol, Internet Draft, 24, 32,
36-37, 43-44, 55, 69-70 (Jun. 2000). (Hereinafter, Handley.)

The following rejections are before us for review:
1. Claim 46 is rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as
the invention.
2. Claims 14-29 and 31-46 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tinsley and Handley.

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ISSUES
The first issue is whether claim 46 is indefinite under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention. Specifically, the
issue is whether the Specification describes the corresponding structure for
the “analyzing means for analyzing the signaling message header, and the
information descriptive of a content carried in the message body” and the
“generating means for generating billing information based on a result of the
analysis.”
The second issue is whether claims 14-29 and 31-46 are unpatentable
under 35 U.S.C. § 103(a) over Tinsley and Handley. Specifically, the major
issue is whether the combination of Tinsley and Handley teaches “analyzing
the signaling message header, and the information descriptive of a content
carried in the message body, at the call control entity” and that the billing
information is generated dependent on information contained in the subject
field.

FINDINGS OF FACT
We find that the findings of fact (FF), which are enumerated below
and which may appear in the Analysis, are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
1. Tinsley describes a Multi-Protocol Gateway (MPG) routing node
that makes routing decisions and performs accounting and billing
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based on certain pre-determined criteria. Col. 3, ll. 49-62. See
also col. 9, ll. 4-15.
2. Tinsley describes that the MPG includes a Routing and Accounting
Manager (RAMG) and a Multi-protocol Routing Database (MRD).
See Fig. 5.
3. Tinsley states that the RAMG process 326 formulates an
accounting message related to the received signals and that “the
accounting message could simply be a copy of the original
received signaling message, or the accounting message could be of
a message type associated specifically with the accounting
subsystem,” which “employs a field or record structure that is
essentially a superset of all parameters of interest from all
signaling protocols of interest. As such, parameters of interest in a
SIP formatted signaling message can be easily accommodated in
[an] … accounting message.” Col. 10, ll. 31-50.
4. Tinsley states: “The de-capsulated accounting message is then
passed to an adjacent Usage and Measurement process 406 where
usage and measurement statistics are created and stored in a Usage
and Measurement Database (UMD) 410, such as that shown in
FIG. 8.” Col. 11, ll. 31-35.
5. Tinsley states:
Usage and measurements statistics produced
by such a process could include, but are not limited
to, peg counts of messages received from a
specific network address, a specific service
provider, a specific service user, a specific IP
socket, or a specific signaling link. As shown in
sample UMD 410, each “call” or communication is
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identified by a call ID, and certain predetermined
information associated with a “call” or
communication can be stored in the database. It
will be appreciated that the information contained
in a UMD database could be significantly more or
less detailed than that indicated in the example
shown in FIG. 8.
In any event, such statistics could include
information associated with the time-of-day that a
message was received, the duration of a “call” or
communication, general quality of service (QoS)
indicators associated with a “call” or
communication, information related to or
identifying the type of service that is associated
with a “call” or communication (i.e., broadband
service related, call setup related, database query
related, etc.). Such usage information could be
used to bill a subscriber at different rates
depending upon the type of service requested. For
instance, a subscriber could be billed at one rate
for a “call” or communication related to the
downloading of a movie from a video server, and a
different rate for a “call” associated with a real-
time video-telephone conference.
Col. 11, ll. 36-60 (emphasis added).
6. Tinsley describes that Tinsley incorporates by reference Handley.
Col. 3, ll. 38-41.
7. Handley describes Session Initiation Protocol (SIP). Pg. 1.
8. Handley describes a Content Type entity-header field that
“indicates the media type of the message-body sent to the
recipient,” such as text or html. Pg. 44.
9. Handley discloses that a SIP message header includes a “Content-
Length entity-header field [that] indicates the size of the message-
body.” Pgs. 43-44.
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10. Handley discloses a Subject header field which “provides a
summary or indicates the nature of the call, allowing call filtering
without having to parse the session description.” Pg. 55.

ANALYSIS
The rejection of claim 46 under 35 U.S.C. § 112, first paragraph as being
indefinite
We agree with the Examiner that claim 46 is indefinite because the
Specification fails to describe sufficient corresponding structure (e.g.,
software instructions or an algorithm) for the claimed “analyzing means for
analyzing the signaling message header, and the information descriptive of a
content carried in the message body” and the “generating means for
generating billing information based on a result of the analysis.” Ans. 10-
11.
Turning first to the analyzing means, the Appellants point to page 2,
line 20 – page 3, line 11; page 8, lines 29-34; page 9, lines 14-16; the CSCF
in Figure 1; and step S22 in Figure 2 of the Specification as disclosing the
corresponding structure. Reply Br. 3-4. We have reviewed each of these
cited portions of the Specification. These portions disclose the functions to
be performed and the outcome of the function but do not disclose an
algorithm by which it is performed. For example step SDD in Figure 2
merely states: “CSCF: analyse [sic] SIP message (header).” See
Aristocrat Tech. Australia Pty Ltd. v. Int'l Game Techs., Inc., 521 F.3d
1328, 1333 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int'l Game Tech., 184
F.3d 1339, 1349 (Fed. Cir. 1999).
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Turning now to the generating means, the Appellants points to page 2,
line 20 – page 3, line 11; page 6, lines 1-2; page 9, line 23 – page 10, line 2;
the CSCF in Figure 1; and step S22 in Figure 2 of the Specification as
disclosing the corresponding structure. Reply Br. 4. Likewise, we have
reviewed each of these cited portions of the Specification. These portions
disclose the functions to be performed and the outcome of the function but
do not disclose an algorithm by which it is performed. For example, step
S23 in Figure 2 merely states: “CSCF: generate billing information
(CDR).”
Therefore, we are not persuaded by the Appellants’ argument that the
Examiner erred. Accordingly, the rejection of claim 46 under 35 U.S.C. §
112, second paragraph, as being indefinite is affirmed.

The rejection of claims 14-29 and 31-46 under § 103(a) as being
unpatentable over Tinsley and Handley
Claims 14, 29, and 31
The Appellants argue that the combination of Tinsley and Handley
does not teach the analyzing step of claim 14 and does not teach that the
billing information is generated dependent on information contained in the
subject field as recited in claim 14. See App. Br. 8-17 and Reply Br. 6-8.
First, as to the Appellants’ argument that both Tinsley and Handley
fail to disclose the claimed analyzing step, we are not persuaded by this
argument that the Examiner erred, and we agree with the Examiner (Ans.
11-13) that the combination of Tinsley and Handley teaches this step.
Tinsley teaches a system which formulates an accounting message from
information in a SIP formatted signaling message and using that information
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to bill a subscriber. FF 1-5. Tinsley teaches that the subscriber could be
billed different rates using this information: for example, the user could be
billed different rates based on the type of services or the duration of the
service. FF 5. While Tinsley does not specifically disclose what
information in the SIP signaling message is used to formulate the accounting
message, Handley, which is incorporated by reference in Tinsley (FF 6),
describes that a SIP message includes header fields that provide information
that: 1) indicates the media type of the message-body sent to the recipient
(i.e., Content-Type or information descriptive of a content) (FF 8), 2)
indicates the size of the message-body (Content-Length) (FF 9), and 3)
indicates the nature of the call, allowing call filtering without having to parse
the session description (Subject field) (FF 10). Given these teachings in
Tinsley, Tinsley’s incorporation by reference of Handley, and the teachings
of Handley, we agree with the Examiner’s articulated rationale (see Ans. 5)
that one of ordinary skill in the art would have been led to the claimed
analyzing step.
As to the Appellants’ arguments that the claim requires that the
analyzing solely occurs at the call control entity, we are not persuaded by
this argument that the Examiner erred because this is not required by claim
14. Further, we note that the MPG (i.e., the call control entity) includes both
the Routing and Accounting Manager (RAMG) and a Multi-protocol
Routing Database (MRD). FF 2.
Finally, as to the Appellants’ argument that the Examiner has not
established a prima facie showing that the combination of Tinsley and
Handley teaches that the billing information is generated dependent on
information contained in the subject field, we are not persuaded by this
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argument that the Examiner erred. As discussed above, we agree with the
Examiner (Ans. 11-13) that the combination of Tinsley and Handley teaches
this limitation.
Claims 29 and 31 recite a similar limitation and were traversed for the
same reasons as discussed above with regards to claim 14 (see App. Br. 24-
27). Accordingly, the rejection of claims 14, 29, and 31 under 35 U.S.C. §
103(a) as being unpatentable over Tinsley and Handley is affirmed.

Claims 15, 16, 17, 18, 23, 24, 25, 26, 27, 32, 33, 34, 35, 40, 41, 42,43
and 44
The Appellants contest the rejection of claims 15, 16, 17, 18, 23, 24,
25, 26, 27, 32, 33, 34, 35, 40, 41, 42, 43 and 44, by relying upon their
arguments used to contest the rejection of independent claims 14 and 31 and
stating “further, because it recites additional limitations.” See App. Br. 17-
18, 21-22, 27-28 and 31-32. For the reasons discussed above with regards to
claims 14 and 31, we find the Appellants’ argument unpersuasive. Further, a
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. 37 C.F.R. §
41.37(c)(1)(vii). A general allegation that the art does not teach any of the
claim limitations is no more than merely pointing out the claim limitations.
Accordingly, the rejection of claims 15, 16, 17, 18, 23, 24, 25, 26, 27,
32, 33, 34, 35, 40, 41, 42, 43 and 44 under 35 U.S.C. § 103(a) as being
unpatentable over Tinsley and Handley is affirmed.

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Claims 19, 20, 21, 22, 36, 37, 38, and 39
Claim 19 recites “the billing information is generated dependent on
the content length.” The Appellants argue that Tinsley’s column 11, lines
36-63 fails to teach this limitation. App. Br. 18-19.
We are not persuaded by the Appellants’ argument. Handley
discloses a SIP message header includes a “Content-Length entity-header
field [that] indicates the size of the message-body.” FF 9. Using the same
reasoning as discussed above with regards to claim 14, we find that the
combination of Tinsley and Handley teaches this limitation.
Claims 20, 21, 22, 36, 37, 38, and 39 recite a similar limitation and
were traversed for the same reasons as discussed above with regards to claim
19 (see App. Br. 19-21 and 28-30). Accordingly, the rejection of claims 19,
20, 21, 22, 36, 37, 38, and 39 under 35 U.S.C. § 103(a) as being
unpatentable over Tinsley and Handley is affirmed.

Claims 28 and 45
Claim 28 recites “wherein: the billing information is generated
dependent on the usage of the present subject field.” The Appellants argue
that the Examiner has failed to establish a prima facie showing of
obviousness in rejecting claim 28 based on a combination of Tinsley and
Handley. Ans. 23-24.
We are not persuaded by the Appellants’ argument. For the same
reasons as discussed above with regards to claim 14’s “subject field”
limitation, we find that the combination of Tinsley and Handley teaches this
limitation.
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Claim 45 recites a similar limitation and was traversed for the same
reasons as discussed above with regard to claim 28 (see App. Br. 32-34).
Accordingly, the rejection of claims 28 and 45 under 35 U.S.C. § 103(a) as
being unpatentable over Tinsley and Handley is affirmed.

Claim 46
As discussed above, we find claim 46 indefinite under 35 U.S.C. §
112, second paragraph. Therefore, the rejection of claim 46 under U.S.C. §
103(a) must fall pro forma because it is necessarily based on a speculative
assumption as to the scope of these claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). Our decision is based solely on the indefiniteness of
the claim. Accordingly, the rejection of claim 46 as being unpatentable
under 35 U.S.C. § 103(a) over Tinsley and Handley is affirmed.

DECISION
The decision of the Examiner to reject claims 14-29 and 30-46 is
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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