Ex Parte Wisenoecker et al

Patent Trial and Appeal Board

Jul 25, 2018

13724800 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/724,800 12/21/2012
53666 7590 07/27/2018
BRAKE HUGHES BELLERMANN LLP
Mark Bellermann
c/o CPA Global
900 Second A venue South, Suite 600
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
Richard Wisenoecker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0181-003002/2008P00168US 7786
EXAMINER
GLASS, RUSSELLS
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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@brakehughes.com
uspto@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD WISENOECKER and WEI HUA ZHOU
Appeal2016-007265
Application 13/724, 800 1
Technology Center 3600
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, 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 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 The Appellants identify Nokia Siemens Networks Oy as the real party in
interest. Appeal Br. 1.
Appeal 2016-007265
Application 13/724,800
ILLUSTRATIVE CLAIM
1. A method for maintaining continuity of Diameter
online charging comprising:
a) in response to a mobile station moving from an old
prepayment client terminal to a new prepayment client terminal,
relocating a prepayment client terminal from the old
prepayment client terminal to the new prepayment client
terminal and re-authenticating the mobile station at the new
prepayment client terminal;
b) transmitting context information of an old Diameter
online charging session from the old prepayment client terminal
to the new prepayment client terminal after the re-
authentication has been successfully completed, and request for
a quota by a prepayment proxy to a prepayment server via the
new prepayment client terminal;
c) sending to the prepayment server a message indicating
the relocation of the prepayment client terminal from the old
prepayment client terminal to the new prepayment client
terminal;
d) maintaining by the prepayment proxy an old quota and
a new quota separately, and using the old quota continuously
for online charging until the new quota is available and is valid
for the prepayment proxy to ensure continuity of the old
Diameter online charging session;
e) sending a continuously charging message to the
prepayment server prompting the prepayment server to
complete the old online Diameter charging session;
f) after the new quota has become available and valid,
reporting by the prepayment proxy to the prepayment server the
information regarding the used old quota, returning by the
prepayment proxy a remaining balance of the old quota to the
prepayment server, and initializing by the prepayment proxy a
closure of the old Diameter online charging session; and
g) closing the old Diameter online charging session by
the old prepayment client terminal.
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Appeal 2016-007265
Application 13/724,800
REJECTION
Claims 1-10 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply"' these basic tools of scientific and
technological work. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014). Accordingly, ascertaining ineligible subject matter
involves a two-step framework for "distinguish[ing] between patents that
claim the buildin[g] block[ s] of human ingenuity and those that integrate the
building blocks into something more, thereby transform[ing] them into a
patent-eligible invention." Id. (internal quotation marks and citation
omitted). The first step determines whether the claim is directed to judicially
excluded subject matter (such as a so-called "abstract idea"); the second step
determines whether there are any "additional element" recited in the claim
that ( either individually or as an "ordered combination") amount to
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Application 13/724,800
"significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
Under the first Alice step, the Final Office Action states that the
claims are directed to the abstract idea of "charging a mobile client for
services from an old terminal until a new terminal is established." Final
Action 2. The Examiner's Answer, in addition to re-stating the rejection
(Answer 2), goes on to characterize the abstract idea alternatively as
"maintaining the continuity of an online charging session" (id. at 3).
In regard to the second Alice step, the rejection 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 software instructions for to implement the
abstract idea on a generic 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.
Final Action 2. See also Answer 4--5.
Asserting error in the rejection, the Appellants argue that the claims
are not directed to an abstract idea (see Appeal Br. 9--14) and that, in any
event, the claims contain additional elements that amount to significantly
more than the identified abstract idea (see id. at 14--17).
The Appellants' argument, regarding the second Alice step, persuades
us of error in the rejection, notwithstanding any determination of the
adequacy of either of the Examiner's descriptions of an abstract idea to
which the claims might be directed. Accordingly, the following discussion
focuses on the Appellants' argument regarding the second Alice step.
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Application 13/724,800
In particular, the Appellants argue that the claims include elements
that amount to significantly more than the identified abstract idea:
[T]he claimed invention as recited in claim 1 recites five
terminals, including a mobile station, an old prepayment client
terminal, a new prepayment client terminal, a prepayment
server, and a prepayment proxy. Claim 1 also recites very
specific functions/operations that are performed among these
five terminals.
Id. at 15. Specifically, the Appellants point to two limitations of claim 1 as
bases for patent eligibility, under the second Alice step:
d) maintaining by the prepayment proxy an old quota and
a new quota separately, and using the old quota continuously
for online charging until the new quota is available and is valid
for the prepayment proxy to ensure continuity of the old
Diameter online charging session; [ and]
f) after the new quota has become available and valid,
reporting by the prepayment proxy to the prepayment server the
information regarding the used old quota, returning by the
prepayment proxy a remaining balance of the old quota to the
prepayment server, and initializing by the prepayment proxy a
closure of the old Diameter online charging session.
See id. at 15-16. According to the Appellants, the claimed subject matter is
not simply an instruction to implement the identified abstract idea in a
generic computer environment. Id. at 14--16. Instead, "the claims of the
present case specify an example of how operations/functions are to be
performed in order to maintain continuity of a session for a mobile station in
a wireless network to support wireless mobility." Id. at 16.
Neither the Final Office Action, nor the Examiner's Answer,
explicitly addresses either of the two identified claim limitations, in regard
to whether they might amount to significantly more than the identified
abstract idea. Instead, the Examiner regards the recited features in terms of
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their individual components, without addressing the recited operation of, or
the interactions among, such components that are explicitly asserted, by the
Appellants, as giving rise to patent-eligibility under the second Alice step.
The Answer for example, states:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the abstract idea
because the generically-recited computer elements ( e.g.
terminal, server, etc.) do not add a meaningful limitation to the
idea because the actions, functions, and/ or steps performed by
the generically-recited computer elements would be routine and
conventional in any computer implementations.
Answer 4.
Yet, the operation of claim 1 's recited "prepayment proxy" - which
"maintain[ s] ... an old quota and a new quota separately" and, "after the
new quota has become available and valid, report[ s] ... to the prepayment
server the information regarding the used old quota," and "return[ s] ... a
remaining balance of the old quota to the prepayment server" - is not a
feature of either version of the identified abstract idea that the Examiner
provides. Nor does the Examiner provide any reasoning or explanation for
the position that the "prepayment proxy" and its operation could be well-
understood, routine, or conventional. Notably, "[ w ]hether something is
well-understood, routine, and conventional to a skilled artisan at the time of
the patent is a factual determination." Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018).
Therefore, we are persuaded that the rejection does not adequately
establish that independent claim 1 lacks any element, or combination of
elements, amounting to significantly more than the identified abstract idea.
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The foregoing discussion applies similarly to independent claim 10.
Accordingly, we do not sustain the rejection of claims 1-10 under 35 U.S.C.
§ 101.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-10 under
35 U.S.C. § 101.
REVERSED
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