Ex Parte Bitzinger et alDownload PDFPatent Trial and Appeal BoardJun 11, 201310239525 (P.T.A.B. Jun. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RUDOLF BITZINGER, CHRISTIAN PREHOFER, and VIKTOR RANSMAYR ____________________ Appeal 2010-012457 Application 10/239,525 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012457 Application 10/239,525 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 10 and 13-15. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to method and arrangement for checking whether the use of a service is permissible. Claims 1 and 9, reproduced below, are illustrative of the claimed subject matter: 1. A method for checking the permissibility to use a service, the service being implemented in at least one communications network, the communication network having an overall transmission capacity, the use comprising transmission of at least one service specific traffic stream which is assigned to the service by an access node which is assigned to the service to the communication network, comprising: analyzing the use with an access control function which is assigned to the access node; and checking, via the access control function, without further interrogations at internal transmission nodes of the communications network, whether the use of the service is permitted, the checking performed taking into account an available capacity, which is determined taking into account the overall transmission capacity, and available to the access node for transmitting traffic streams to the communications network. 9. A device comprising: at least one means for checking the permissibility of use of a service which is implemented in at least one Appeal 2010-012457 Application 10/239,525 3 communications network having an overall transmission capacity, wherein the means: transmits at least one service-specific traffic stream which is assigned to the service by an access node assigned to the service to the communications network; analyzes the use with an access control function which is assigned to the access node; and checks the access and via control function, without further interrogations at internal transmission nodes of the communications network, whether the use of the service is permitted, the checking performed taking into account an available capacity, the overall transmission capacity, and which is made available to the access node for transmitting traffic streams to the communications network. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tanaka Bigham Jorgensen US 5,392,286 US 5,740,075 US 6,452,915 Feb. 21, 1995 Apr. 14, 1998 Sep. 17, 2002 REJECTIONS Claims 9, 14, and 15 stand rejected under 35 U.S.C §112, first paragraph, as not being enabled for the scope of the claim. Claims 1-3, 9, and 10 stand rejected under 35 U.S.C §102(e) as being anticipated by Bigham. Appeal 2010-012457 Application 10/239,525 4 Claims 4-8, 13, and 14 stand rejected under 35 U.S.C §103(a) as being unpatentable over Bigham and Jorgensen. Claim 15 stands rejected under 35 U.S.C §103(a) as being unpatentable over Bigham and Tanaka. PRINCIPLES OF LAW MPEP 2164.08(a) Single Means Claim MPEP § 2164.08 (a) states: A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an undue breadth rejection under 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) (A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because the specification disclosed at most only those means known to the inventor.). When claims depend on a recited property, a fact situation comparable to Hyatt is possible, where the claim covers every conceivable structure (means) for achieving the stated property (result) while the specification discloses at most only those known to the inventor. ANALYSIS 35 U.S.C. § 112, first paragraph The Examiner entered a new ground of rejection in the Examiner’s Answer, mailed June 16, 2010, under 35 U.S.C. § 112, first paragraph, as a single “means” claim. In the Reply Brief, filed August 11, 2010, Appellants respond to the new ground of rejection. Appeal 2010-012457 Application 10/239,525 5 The Examiner maintains claims 9, 14, and 15 are drawn to a single element rather than a combination as required by 35 U.S.C. § 112, sixth paragraph, and are not enabled for the scope of the claim. (Ans. 3). Appellants maintain independent claim 9 is directed to a combination of elements which is the at least one means for checking permissability of the use of a service where the service is implemented in at least one communication network. Therefore, the combination is at least one means and a communications network. (Reply Br. 3-4). We agree with Appellants that independent claim 9 is not directed merely to a single means claim, and thusdoes not cover every conceivable means of achieving the stated result. Therefore, we do not sustain the rejection of independent claim 9 and dependent claims 14 and 15. 35 U.S.C. § 102 Appellants maintain independent claims 1 and 9 distinguish over the Bigham reference for five separate reasons set forth in the Reply Brief. (Reply Br. 4-8). We agree with Appellants and adopt Appellants' line of reasoning as our own. Therefore, we do not sustain the rejection of independent claims 1 and 9 and their respective dependent claims 2, 3, and 10. 35 U.S.C. § 103 We agree with Appellants that the Examiner has not shown how the Jorgensen and Tanaka references remedy the deficiency noted above with respect to the Bigham reference. Therefore, we do not sustain the rejection of dependent claims 4-8 and 13-15. Appeal 2010-012457 Application 10/239,525 6 CONCLUSIONS OF LAW The Examiner erred in rejecting claims 9, 14, and 15 under 35 U.S.C. § 112, first paragraph. The Examiner erred in rejecting claims 1-3, 9, and 10 as anticipated under 35 U.S.C. §102. The Examiner erred in rejecting claims 4-8 and 13-15 as obvious under 35 U.S.C. §103. DECISION For the above reasons, the Examiner’s rejections of claims 1-10 and 13-15 are reversed. REVERSED llw Copy with citationCopy as parenthetical citation