Kim Brouard et al.Download PDFPatent Trials and Appeals BoardMar 25, 20212020005610 (P.T.A.B. Mar. 25, 2021) Copy Citation 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. Appeal 2020-005610 Application 12/879,285 2 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 Appeal 2020-005610 Application 12/879,285 3 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. Appeal 2020-005610 Application 12/879,285 4 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. Appeal 2020-005610 Application 12/879,285 5 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). Appeal 2020-005610 Application 12/879,285 6 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 Appeal 2020-005610 Application 12/879,285 7 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 Appeal 2020-005610 Application 12/879,285 8 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 Copy with citationCopy as parenthetical citation