Ex Parte Bulleit et al

Board of Patent Appeals and Interferences

Mar 12, 2010

10652815 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS A. BULLEIT,
KEITH O. COWAN, and
BARBARA RODEN
____________

Appeal 2009-009594
Application 10/652,815
Technology Center 3600
____________

Decided: March 12, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Douglas A. Bulleit, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-40. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention is drawn to methods, systems, and computer program
products for allocating costs in using a broadband communication network.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of operating a broadband communication network,
comprising:
establishing a communication flow between a network access
terminal and a site using the broadband communication network; and
allocating a cost of the communication flow between the
network access terminal and the site between a first account
associated with a user of the network access terminal and a second
account associated with an entity other than the user of the network
access terminal.

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Apr. 28, 2008) and the Examiner’s Answer (“Answer,” mailed May 14,
2008).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Roden
Kung
US 5,970,477
US 6,775,267 B1
Oct. 19, 1999
Aug. 10, 2004
The following rejections are before us for review:
1. Claims 1, 2, 4-14, 16-18, 20-30, and 32-40 are rejected under 35
U.S.C. §102(b) as being anticipated by Roden.2
2. Claims 3, 15, 19, and 31 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Roden and Kung.

ISSUES
The issue with respect to the rejection of claims 1, 2, 4-14, 16-18, 20-
30, and 32-40 under 35 U.S.C. §102(b) as being anticipated by Roden is
whether Roden describes, expressly or inherently, a
broadband network communication network. As shown in
FIG. 2 of Roden, a user accesses an Internet site 18 through
a modem pool 32, which provides a narrowband connection.
By contrast, as shown in FIG. 2 of the present Specification,
a broadband access node 210 may provide a user with a
broadband connection to access an Internet site 208.
Br. 12 (emphasis original).

2 There is a discrepancy between the claims indicated as rejected under §102
in the Final Rejection (claims 1-40) and the Answer (1, 2, 4-14, 16-18, 20-
30, and 32-40). It appears the Examiner inadvertently included claims 3, 15,
19, and 31 in the statement of the §102 rejection in the Final Rejection
because the body of the rejection, while separately addressing the claims,
addresses only claims 1, 2, 4-14, 16-18, 20-30, and 32-40.
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The issue with respect to the rejection of claims 3, 15, 19, and 31
under 35 U.S.C. §103(a) as being unpatentable over Roden and Kung is
whether the combination of Roden and Kung would lead one of ordinary
skill in the art to allocate costs between end user and another party based on
the level and/or quality of service provided to the end user. “Appellants do
not disagree that Kung teaches billing for a communication service based on
the level and/or quality of service provided. Appellants submit, however,
that Kung teaches that all the costs for the connection service are billed to
the end user.” Br. 14 (emphasis original).

FINDINGS OF FACT
We rely on the Examiner’s factual findings. Answer 3-8.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d
628, 631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
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including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.” ) The Court in Graham further noted that evidence
of secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1, 2, 4-14, 16-18, 20-30, and 32-40 under 35 U.S.C.
§102(b) as being anticipated by Roden.
The Appellants argued claims 1, 2, 4-14, 16-18, 20-30, and 32-40 as a
group (Br. 12). We select claim 1 (see supra) as the representative claim for
this group, and the remaining claims 2, 4-14, 16-18, 20-30, and 32-40 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellants argue that the Examiner has failed to establish a prima
facie case of anticipation because Roden fails to describe, expressly or
inherently, a broadband network communication network as claimed.
According to the Appellants, Roden describes, in contrast, a “narrowband”
connection.
The argument is not persuasive.
Claim 1 requires “establishing a communication flow between a
network access terminal and a site using the broadband communication
network.”
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The Specification does not provide an express definition for the claim
term “broadband.” Accordingly, the claim term “broadband” is to be given
its ordinary and customary meaning, which, in computer-parlance, is “[i]n
local area networks (LANs), an analog communications method
characterized by high bandwidth.” Webster’s New World Dictionary of
Computer Terms (8th Ed. 2000) 75 (Entry for “broadband.”)
Roden expressly describes various types of communication networks
between a network access terminal and an Internet site.
Between an individual end-user and a local access provider's point of
presence lies a communications network, such as a telephone
network, a cable television network, a wireless communications
network, or the like. This communications network is typically
operated by a for-profit enterprise. An end-user therefore pays a cost
for using the communications network. In the United States, most
homes and businesses are already connected to a telephone network.
These telephone networks are therefore convenient options for end-
users desiring communication channels with the Internet. Other
communications networks, however, may equivalently be used to
provide Internet access.
Col. 3, ll. 14-25. Emphasis added. They can also include “a local area
network (LAN), a wide area network (WAN), Ethernet, Appletalk, or the
like.” Col. 10, ll. 35-37.
Cable television networks and Ethernets communicate at a high
bandwidth. See Webster’s New World Dictionary of Computer Terms (8th
Ed. 2000) 83, entry for “cable modem”, “[c]able modems enable Internet
access speeds of up to 1.5 Mbps”, and 195, entry for “ethernet”, “Ethernet
provides for a raw data transfer rate of 10 Mbps, with actual throughput in
the range of 2-3 Mbps.” These speeds and transfer rates are comparable to
those for a T1 line, which Roden discusses with respect to Internet sites (col.
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2, ll. 49-53: “optical, fiber, wireless, and leased telephone lines ranging from
56 kilo-bits-per-second to 1.544 mega-bits-per-second (T1) are typical
options available to an Internet site.”). T1 lines operate at high bandwidth.
See Webster’s New World Dictionary of Computer Terms (8th Ed. 2000)
523, entry for “T1”. “A high-bandwidth telephone trunk line that is capable
of transferring 1.544 Mbps of data.”
Accordingly, in contradistinction to the Appellants’ argument, Roden
expressly describes types of communication networks between a network
access terminal and an Internet site that operate at a high bandwidth.
Accordingly, we find that Roden does expressly describe “establishing a
communication flow between a network access terminal and a site using the
broadband communication network” (claim 1) as claimed.
We will therefore sustain the rejection of claim 1, and of claims 2, 4-
14, 16-18, 20-30, and 32-40 which stand or fall with claim 1.

The rejection of claims 3, 15, 19, and 31 under 35 U.S.C. §103(a) as being
unpatentable over Roden and Kung.
The Appellants argued claims 3, 15, 19, and 31 as a group (Br. 12).
We select claim 3 as the representative claim for this group, and the
remaining claims 15, 19, and 31 stand or fall with claim 3. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
The Appellants’ argument challenging the prima facie case of
obviousness is not persuasive.
The Appellants argue that Kung does not teach allocating costs
between end user and another party based on the level and/or quality of
service provided to the end user. We agree that Kung does not expressly
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disclose allocating costs per se. But this is a rejection under §103. “The
question in a §103 case is what the references would collectively suggest to
one of ordinary skill in the art. In re Simon, 461 F.2d 1387, 174 USPQ 114
(CCPA 1972).” In re Ehrreich, 590 F.2d 902, 909 (Emphasis original.) In
that regard, the Appellants concede that “Roden describes allocating costs
between different entities” (Br. 12) and that “Kung teaches billing for a
communication service based on the level and/or quality of service
provided” (Br. 14; see also Br. 13).
The question is whether one of ordinary skill in the art would have
been led to the claimed method of allocating costs between end user and
another party based on the level and/or quality of service provided to the end
user given Roden’s allocating costs between different entities and Kung’s
billing for a communication service based on the level and/or quality of
service provided would lead. The Examiner’s position is that one of ordinary
skill in the art would have. We see no difficulty with that position,
especially as there is no dispute that Roden discloses allocating costs
between different entities and Kung discloses billing for a communication
service based on the level and/or quality of service provided. The claimed
method appears to be simply a matter of combining these disclosures.
“[W]hen a patent “simply arranges old elements with each performing the
same function it had been known to perform” and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR,
550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). In that regard, the Appellants have not come forward with any
objective evidence of secondary considerations for our consideration.
Accordingly, we find that the prima facie case of obviousness for the
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subject matter of any of claims 3, 15, 19, and 31 over Roden and Kung has
not been overcome and therefore the rejection will be sustained.

CONCLUSIONS
The prima facie case of anticipation established by the Examiner in
rejecting claims 1, 2, 4-14, 16-18, 20-30, and 32-40 under 35 U.S.C. §102(b)
as being anticipated by Roden has not been overcome.
The prima facie case of obviousness established by the Examiner in
rejecting claims 3, 15, 19, and 31 under 35 U.S.C. §103(a) as being
unpatentable over Roden and Kung has not been overcome.

DECISION
The decision of the Examiner to reject claims 1-40 is affirmed.

AFFIRMED

mev

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