Ex Parte Borelli et al

Board of Patent Appeals and Interferences

Jul 28, 2010

09992379 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/992,379 11/19/2001 Steven J. Borelli 10547.20US2 5630
34018 7590 07/29/2010
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
EXAMINER
BUCHANAN, CHRISTOPHER R
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
07/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN J. BORELLI, SALLY ELIZABETH ELSE,
PATRICK C. DAVIES, RANBIR CHAWLA, and
RANDALL W. CARDINAL
____________

Appeal 2009-009204
Application 09/992,379
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
THU A. DANG, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
(2002).

SUMMARY OF DECISION
We AFFIRM IN PART.

THE INVENTION
Appellants claim a system and method for providing access to
network services. (Specification 1:11).
Claims 1, 6, and 21 reproduced below, are representative of the
subject matter on appeal.
1. In a network, a method for provisioning services comprising:
receiving a user selection of one or more services that have
been deemed to be available to the user via the network;
receiving registration information from the user including
billing information and a user identifier;
authenticating the user identifier with an ISP;
communicating the user identifier to each provider of a selected
service; and
communicating the registration information and information
representative of each selected service to a billing engine;
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whereafter a user may access each service and be billed
appropriately for usage.

6. A system for aggregating product offerings from multiple network
and service providers and managing the purchase of any offerings by end
customers, comprising:
a catalog of offerings available to end subscribers from
multiple providers organized into an aggregated plan for presentation to the
subscriber, the product catalog tracking rating guidelines and financial
reconciliation rules between providers;
a rating engine for processing usage events that originate from
providers which usage events summarize data indicative of customer use of
offerings across the multiple providers, wherein the rating engine reconciles
between the multiple providers based on the rating guidelines and financial
reconciliation rules in the product catalog for use in billing the end customer
and reconciling payments to the providers; and
a provisioning subsystem responsible for provisioning and de-
provisioning offerings with the providers, the provisioning subsystem using
information in the product catalog to create a series of provisioning events
that are relayed to the providers which allow the provider to register a
purchase of an offering by the end customer with the provider, track
customer usage of the offerings, and, in response to the usage, create usage
events for processing by the rating engine.
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21. A computer readable media having instructions for provisioning
services in a broadband network, the instructions performing steps
comprising:
receiving a query message from a customer requesting access to
the broadband network from a given location;
determining if broadband network access is available to the
customer at the given location; and
if broadband network access is available to the potential
customer, querying a product catalog to determine offerings available for the
access requested; allowing the customer to selected one or more of the
offerings for purchase; receiving an identifier from the customer;
provisioning the selected offerings from providers of the selected offerings;
and synchronizing the identifier received from the customer with the
providers of the selected offerings and a rating and billing engine.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Dickinson US 6,182,054 B1 Jan. 30,2001

The following rejection is before us for review.
The Examiner rejected claims 1-22 under 35 U.S.C. 103(a) as being
unpatentable over Dickinson.
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THE ISSUES
Have Appellants shown that the Examiner erred in rejecting claims 1-
5, 9-19 on appeal as being unpatentable under 35 U.S.C. § 103(a) over
Dickinson on the grounds that a person with ordinary skill in the art would
understand that a subscriber of an Internet Service Provider network who
selects email service from that Internet Service Provider selects a service
that is provided by that ISP network?
Have Appellants shown that the Examiner erred in rejecting claims 6-
8 on appeal as being unpatentable under 35 U.S.C. § 103(a) over Dickinson
on the grounds that a person with ordinary skill in the art would understand
that the rate plan scheduler in Dickinson would allow a service provider to
register a purchase of an offering by the end customer with the provider,
track customer usage of the offerings, and, in response to the usage, create
usage events for processing by the rating engine?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification states: “In an attempt to increase the demand for
high bandwidth Internet access, DSL providers have partnered with ISPs
whereby ISPs provide customers access to their suite of services. Current
implementations are both DSL provider and ISP provider specific.”
(Specification 1: 21-23).
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2. The Specification states ISPs offer customers a suite of services
(e.g., email, web hosting and, most importantly, technical support to
facilitate connectivity to the network). (Specification 1:18-19).
3. It is our understanding that subscribers to Internet Service Providers
are identified by the ISP by a service provider identifier specific to that user,
e.g., using the user email address as a log-on identifier.
4. With respect to claim 6, the Examiner found that Dickinson
discloses:
…[A] provisioning subsystem that allows services
to be provided to the user and creates usage events
for processing by the rating engine (col. 7 line 44+,
see Figs. 7-9, inherent in the invention).
The system of Dickinson differs from the
claimed invention in that it does not explicitly
show the provisioning subsystem to allow the
provider to register purchase offerings. However,
the provisioning subsystem would be able to store
and process a variety of data, including offerings,
purchases, returns, etc., and the particular data
stored would be a matter of design choice.
(Answer 5).
5. Dickinson discloses entering “simple data” for each rate plan group.
(Col. 7, ll. 51-53).

ANALYSIS
We affirm the rejection of claims 1-5, 9-19 and 20-22; and reverse as
to claims 6-8.
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Initially, we note that the Appellants state that for purposes of this
appeal, claims 1-5 and 9-19 stand as a single group, claims 6-8 stand as a
single group, and claims 20-22 stand as a single group. (Appeal Br. 4).
Claims 1-5, 9-19.
Appellants argue these claims together as a group. Correspondingly,
we select representative claim 1 to decide the appeal of these claims,
remaining claims 2-5 and 9-19 standing or falling with claim 1.
Appellants argue that “... the rejection of the claims has neglected to
demonstrate where Dickinson discloses, teaches, or suggests the expressly
claimed “‘receiving a user selection of one or more services that have been
deemed to be available to the user via the network.’" (Appeal Br. 6).
However, we find that the Specification states that it is known that
“…ISPs offer customers a suite of services (e.g., email, web hosting and,
most importantly, technical support to facilitate connectivity to the
network).” (FF 2). We read the claimed network as that of the Internet
Service Provider only. Thus, a subscriber of the Internet Service Provider
network who selects email service from that ISP meets the claim
requirement of receiving a user selection of one or more services that have
been deemed to be available to the user via the network.
Appellants next argue that the “rejection of the claims has neglected
to demonstrate where Dickinson discloses the expressly claimed
‘authenticating the user identifier with an ISP’ and the expressly claimed
‘communicating the user identifier to each provider of a selected service.’”
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(Appeal Br. 6). However, Appellants’ argument is unpersuasive for the
following reasons. First, as stated above, we read the network as that of the
Internet Service Provider, and the email service provided by the ISP as the
selected service. We thus find that where an Internet Service Provider uses
the subscriber’s email address as its identifier, for example, (FF 3), that
email address/identifier is communicated to the Internet Service Provider’s
email server in order to correspond to a given user’s account.
Claims 6-8.
Independent claim 6 requires a provisioning subsystem responsible for
provisioning and de-provisioning offerings with the providers, the
provisioning subsystem using information in the product catalog to create a
series of provisioning events that are relayed to the providers which allow
the provider to register a purchase of an offering by the end customer with
the provider, track customer usage of the offerings, and, in response to the
usage, create usage events for processing by the rating engine.
The Examiner found Dickinson discloses a provisioning subsystem in
the Usage Plan groups shown in the tables at the bottom of column 7 in the
Dickinson reference. However, the Examiner further maintains that
although “[t]he system of Dickinson differs from the claimed invention in
that it does not explicitly show the provisioning subsystem to allow the
provider to register purchase offerings…. the provisioning subsystem would
be able to store and process a variety of data, including offerings, purchases,
returns, etc.” (FF 4). We disagree with the Examiner because it is not
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apparent from Dickinson how the rate plan table could be modified to allow
the provider to register a purchase of an offerings and create usage events
given Dickinson discloses entering only “simple data” e.g., charges, for each
rate plan.
Accordingly, we will not sustain the rejection of claim 6. Since claims
7 and 8 depend from claim 6, and since we cannot sustain the rejection of
claim 6, the rejection of claims 7 and 8 likewise cannot be sustained.
Claims 20 21 and 22.
Initially, we note that the Appellants argue these claims together as a
group. Correspondingly, we select representative claim 21 to decide the
appeal of these claims, remaining claims 20 and 22 standing or falling with
claim 21.
Appellants’ arguments to claims 20 and 22 address elements which
are not present in claim 211. Since we choose claim 21 as representative, we
find Appellants’ arguments to claim 21 deficient because they do not contain
the elements asserted in these arguments. We therefore sustain the rejection
of claim 21. Claims 20 and 22 fall with claim 21.

1 Appellants argue specific limitations present only in claims 20 and 22
stating “the rejection of the claims does not set forth where Dickinson
discloses, teaches, or suggests the expressly claimed "storing a universal
customer identifier in a database associated with a billing engine and
associating the universal customer identifier with the broadband services."
Similarly, the rejection of the claims does not set forth where Dickinson
discloses, teaches, or suggest the expressly claimed "synchronizing a local
customer identifier at each of the respective service providers with the
universal customer identifier." (Appeal Br. 8).
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CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1-5, 9-22.
We conclude the Appellants have shown that the Examiner erred in
rejecting claims 6-8.

DECISION
The decision of the Examiner to reject claims 1-5, 9-22 is
AFFIRMED.
The decision of the Examiner to reject claims 6-9 is REVERSED.

AFFIRM-IN-PART

MP

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