Ex Parte Bruchlos et al

Patent Trial and Appeal Board

Mar 15, 2013

10596568 (P.T.A.B. Mar. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOACHIM BRUCHLOS, JOACHIM HAGMEIER, DIETMAR
KUEBLER, and TIMO KUSSMAUL
___________

Appeal 2011-000945
Application 10/596,568
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000945
Application 10/596,568

2
STATEMENT OF THE CASE
Joachim Bruchlos, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 21-29 and 35-40. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is “a license contract validation method and system
within a computer network for web services during runtime.” Spec. 1:7-8.
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.
21. A utilization method within a communication
network, the method comprising:
receiving, by a meter handler, a service request
message from a service consumer;
generating, by the metering handler, a meter event
request associated with the service request;
evaluating, by the metering handler, a status of at
least one parameter;
comparing, by the metering handler, an amount of
stored meter event requests stored in a cache
memory with the at least one parameter;
storing, by the metering handler, the meter event

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Apr. 8, 2010) and Reply Brief (“Reply Br.,” filed Sep. 22, 2010),
and the Examiner’s Answer (“Ans.,” mailed Aug. 3, 2010).

Appeal 2011-000945
Application 10/596,568

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request in the cache memory or sending the meter
event request and an entire contents of the cache
memory to a metering service in order to process
the meter event requests based on the evaluation
and the comparison;
wherein said at least one parameter is associated
with the service request and a predefined
convention, and said at least one parameter defines
how many meter event requests may be stored in
the cache memory.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Coley
Bunch

US 2001/0011253 A1
US 6,795,856 B1
Aug. 2, 2001
Sep. 21, 2004

The following rejections are before us for review:
1. Claims 21-29 and 35-40 are unpatentable under 35 U.S.C. §
112, first paragraph, as failing to comply with the written
description requirement.
2. Claims 21-29 and 35-40 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
Appellants regard as the invention.
3. Claims 21-29 and 35-40 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bunch and Coley.

Appeal 2011-000945
Application 10/596,568

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FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claims 21-29 and 35-40 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
We are persuaded by the Appellants’ argument (App. Br. 5-6) that the
Examiner erred in rejecting claims 21-29 and 35-40 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement. We agree with the Appellants that the description of sending
all meter event requests from the cache memory to the metering service in
paragraphs [0039] and [0049] of the Specification provides the required
written description support of the claimed step of “sending . . . an entire
contents of the cache memory to a metering service” (Claim 21; see also
claim 35). Accordingly, the rejection of claims 21-29 and 35-40 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is reversed.

The rejection of claims 21-29 and 35-40 under 35 U.S.C. § 112, second
paragraph, as being indefinite
We are persuaded by the Appellants’ argument (App. Br. 7) that the
Examiner erred in rejecting claims 21-29 and 35-40 under 35 U.S.C. § 112,
second paragraph, as being indefinite. We agree with the Appellants that the
Appeal 2011-000945
Application 10/596,568

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Examiner has not established (see Ans. 7-8 and 17-18) that omitting a step
of storing the received meter events in cache memory renders the claims
indefinite. Accordingly, the rejection of claims 21-29 and 35-40 under 35
U.S.C. § 112, second paragraph, as being indefinite.

The rejection of claims 21-29 and 35-40 under § 103(a) as being
unpatentable over Bunch and Coley
We are persuaded by the Appellants’ argument (App. Br. 8-10) that
the Examiner erred in rejecting claims 21-29 and 35-40 under 35 U.S.C. §
103(a) as being unpatentable over Bunch and Coley. We agree with the
Appellants that the combination of the prior art does not teach “comparing . .
. an amount of stored meter event requests stored in a cache memory with
the at least one parameter” (Claims 21 and 35, emphasis added).
In the rejection, the Examiner initially admits that Bunch does not
teach the limitation at issue and cites paragraphs [0024]-[0027], [0060],
[0064]-[0066], [0074], [0081], and [0104] of Coley to teach this limitation.
Ans. 9. Apparently recognizing the deficiency of these citations, the
Examiner then argues that combining Bunch’s description of storing
beginning time and time spent information in a cache (for example see, col.
7, l. 40-51; col. 8, l. 1-15; and col. 9, ll. 23-34) with Coley’s description of
detecting tampering with system’s date/time information by comparing
date/time information with a server’s date/time information (para. [0051])
teaches the claimed comparison. Ans. 20. See also Ans. 6. However, while
this combination of Bunch and Coley may suggest a comparison of the
content of meter event requests, it is still deficient as it does not teach the
required comparison of an amount of stored meter event requests.
Appeal 2011-000945
Application 10/596,568

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Apparently again recognizing the deficiency in this first argument, the
Examiner alternatively argues that Coley’s description of decrementing a
floating license count (see Coley, para. [0068]) is a function that “is []
similarly related to [the] function described by the Applicant[s’] limitation.”
See Ans. 21-22. We fail to see how the decrementing a floating license
count teaches the claimed comparing step.
Accordingly, the rejection of claim 21 and 35, and claims 22-29 and
36-40, dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable
over Bunch and Coley is reversed.

DECISION
The decision of the Examiner to reject claims 21-29 and 35-40 is
reversed.

REVERSED

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