Kim Brouard et al.

Patent Trials and Appeals Board

Mar 25, 2021

2020005610 (P.T.A.B. Mar. 25, 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.
12/879,285 09/10/2010 Kim Brouard LUTZ 201148US01 6660
48116 7590 03/25/2021
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/25/2021 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):
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIM BROUARD, THOMAS LEVY, and
YIGANG CAI

Appeal 2020-005610
Application 12/879,285
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 3, 5–14, and 24–30. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing in this matter was held
on February 4, 2021.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Alcatel-Lucent USA, Inc. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A method for delivering dynamic policy rules for an
end user of a communication service during a communication
session, comprising:
receiving subscription information for a subscriber
account associated with an end user of a communication service
from a subscription profile repository (SPR) at a Policy and
Charging Rules Function (PCRF) of a telecommunication
network, wherein the PCRF determines an initial policy and
initial rules for communication sessions associated with the
subscriber account based at least in part on the subscription
information;
providing the initial rules for the subscriber account from
the PCRF to a Policy and Charging Enforcement Function
(PCEF) of the telecommunication network and applying the
initial rules to a communication session associated with the
subscriber account via the PCEF, wherein the PCEF is
associated with a gateway to an extended online charging
system (EOCS);
sending a credit request from the PCEF to the EOCS for
allocation of service units to the subscriber account during the
communication session;
receiving a credit answer with an allocation of service
units for the subscriber account from the EOCS at the PCEF
during the communication session;
monitoring usage of the allocated service units at the
PCEF after establishment of the communication session and
sending a report on usage of the allocated service units from the
PCEF to the EOCS during the communication session;
receiving a notification of policy change for the
subscriber account from the EOCS at the PCRF during the
communication session after the EOCS determines a counter
associated with usage of the allocated service units for the
subscriber account has changed based at least in part on the
report from the PCEF, the report from the PCEF having caused
the EOCS to determine a policy/rule change is needed for the
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subscriber account in conjunction with the change to the
counter for the subscriber account, wherein the notification of
policy change for the subscriber account indicates the
policy/rule change is needed and triggers the policy/rule change
for the subscriber account at the PCRF;
determining new rules for the subscriber account at the
PCRF during the communication session, wherein the new rules
are based at least in part on the notification of policy change for
the subscriber account; and
providing the new rules for the subscriber account from
the PCRF to the PCEF and applying the new rules for the
subscriber account to the communication session via the PCEF.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Foottit et al.
(hereinafter “Foottit”)
US 7,937,300 B2 May 3, 2011
Koskinen et al.
(hereinafter “Koskinen”)2
WO 2007/020499 A1 Feb. 22, 2007
3rd Generation Partnership Project; Technical Specification Group
Services and System Aspects; Policy and charging control architecture
(Release 8); 3GPP TS 23.203 V8.5.0 (2009-03)
(hereinafter, “3GPP203”)3

2 The Examiner and the Appellant also refer to the Koskinen reference as
“Nokia.” See Appeal Br. 2, Answer 4.
3 The Examiner and the Appellant also refer to the 3GPP203 reference as
“TS 23.203.” See Appeal Br. 2, Answer 4.
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REJECTION
Claims 1, 3, 5–14, and 24–30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over 3GPP203, Foottit, and Koskinen.4
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellant argues, in part, that the cited prior art does not teach or
suggest the features of the claimed “Extended Online Charging System”
(“EOCS”) — in regard to its interactions with the “Policy and Charging
Enforcement Function” (“PCEF”) and the “Policy and Charging Rules
Function” (“PCRF”) — as recited in the following limitations of
independent claim 1:
receiving a notification of policy change for the
subscriber account from the EOCS at the PCRF during the
communication session after the EOCS determines a counter
associated with usage of the allocated service units for the
subscriber account has changed based at least in part on the
report from the PCEF, the report from the PCEF having caused
the EOCS to determine a policy/rule change is needed for the
subscriber account in conjunction with the change to the
counter for the subscriber account, wherein the notification of
policy change for the subscriber account indicates the
policy/rule change is needed and triggers the policy/rule change
for the subscriber account at the PCRF.

4 The Final Office Action (pages 4–9) includes rejections of claims 1, 3,
5–14, and 24–30 based upon (1) failure to comply with the written
description requirement and (2) indefiniteness. These rejections are
withdrawn. Answer 3.
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See Appeal Br. 30–33; Reply Br. 2–16. The identified “report from the
PCEF” is characterized, elsewhere in claim 1, as a “report on usage of the
allocated service units” that is sent “from the PCEF to the EOCS.”
The EOCS has a specific role in the operation of the embodiment of
claim 1, wherein “the report from the PCEF having caused the EOCS to
determine a policy/rule change is needed for the subscriber account in
conjunction with the change to the counter for the subscriber account,”
whereupon the EOCS provides “a notification of policy change for the
subscriber account” to the PCRF and “the notification of policy change for
the subscriber account indicates the policy/rule change is needed and
triggers the policy/rule change for the subscriber account at the PCRF.”
This particular interrelationship is emphasized in the Specification, which
states:
Thanks to this method, there is an interface between the
Online Charging System and the Policy and Charging Rules
Function, in order to perform Online Charging System server-
initiated notification towards the Policy and Charging Rules
Function of any change in policy in the network resource
management, due to [sic] account’s data changes controlled by
the Online Charging System.
Spec. 6:23–7:1.
The Examiner relies upon the Foottit reference for teaching the
operation of the EOCS and its interactions with the PCEF and PCRF,
referenced above — except for the implementation of the claimed “counter”
(for which the Examiner relies upon Koskinen’s teachings). See Answer
4–8 (citing Foottit col. 1, l. 63 – col. 2, l. 20, col. 3, l. 44 – col. 5, l. 46,
Fig. 4; Koskinen 9:25 – 10:2, 19:20–28, Fig. 2).
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The Examiner acknowledges that Foottit’s Online Charging System
does not possess the functionality of the recited EOCS (with respect to the
recited “report” and “notification”), but the Examiner regards such
differences, between Foottit and the recited EOCS, as aspects of “intended
use” that do not limit the scope of claim 1:
The examiner further submits that the instant method is
directed to a method performed at/by PCRF and PCEF. As
such, the descriptions in the claim that are directed to functions
and intended use of the EOCS do not move to distinguish over
prior art as the descriptions do not affect the steps performed
at/by PCRF and PCEF in a manipulative sense. Furthermore,
the claimed expression of “the report . . . caused . . .” do not
move to distinguish over prior art as the description merely
describes the intended use.
Answer 6.
However, the “intended use” concept does not negate the identified
features of the recited EOCS in claim 1. “It is well settled that the recitation
of a new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Although “apparatus claims cover what a device is, not what a device does,”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990), claim 1 is drawn to a method, wherein a different operation of a
particular element does distinguish the prior art.
Moreover, the Examiner does not show that Foottit’s technology
teaches the operational or structural aspects of the EOCS of claim 1,
whereby “the report from the PCEF having caused the EOCS to determine a
policy/rule change is needed for the subscriber account in conjunction with
the change to the counter for the subscriber account,” whereupon the EOCS
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provides “a notification of policy change for the subscriber account” to the
PCRF.
A similar problem affects the Examiner’s analysis of claim 3 — the
other independent claim in the Appeal. Claim 3, an apparatus claim,
includes a recitation identical to that in claim 1, discussed above: “the report
from the PCEF having caused the EOCS to determine a policy/rule change is
needed for the subscriber account.” In addition, claim 3 recites “the PCRF is
configured to receive a notification of policy change for the subscriber
account from the EOCS” and “the notification of policy change for the
subscriber account [from the EOCS] indicates the policy/rule change is
needed and triggers the policy/rule change for the subscriber account at the
PCRF.”
As in the Examiner’s analysis of claim 1 (see Answer 6), the
Examiner ascribes no patentable weight to the EOCS’s features (in regard to
the “report from the PCEF” and the EOCS’s “notification of policy change
for the subscriber account”) appearing in claim 3 — again stating that “the
claimed expression of ‘the report . . . caused . . .’ do not move to distinguish
over prior art as the description merely describes the intended use.” Id.
at 12.
Yet, the cited language of claim 3 requires more than an intended use
of the prior art OCS of Foottit. The EOCS of claim 3 must be equipped to
operate in the manner recited — that is, the EOCS requires structure that
could “determine a policy/rule change is needed for the subscriber account,”
as a consequence of features in “the report from the PCEF” being acted upon
by the EOCS. Such a predicate finding is lacking, here — unlike the
situation in Schreiber, wherein “[t]here [was] no dispute that the structural
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limitations recited in Schreiber’s application are all found in the [prior art]
reference upon which the examiner and the Board relied.” Schreiber, 128
F.3d at 1477.
In view of the foregoing, we are persuaded of error in the rejection of
independent claims 1 and 3, along with dependent claims 5–14 and 24–30
under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–14,
24–30
103(a) 3GPP203, Foottit,
Koskinen
1, 3, 5–14,
24–30

REVERSED