Ex Parte Cai et al

Patent Trial and Appeal Board

Feb 18, 2016

12988184 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/988, 184 10/15/2010
50525 7590 02/22/2016
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
Yigang Cai
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.
801359 8351
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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@dbflaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIGANG CAI and XIANGY ANG LI
Appeal2013-005314
Application 12/988, 184
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Yi gang Cai and Xiangyang Li (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-20, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed December 11, 2012) and Reply Brief ("Reply Br.," filed March 7,
2013), and the Examiner's Answer ("Ans.," mailed January 16, 2013) and
Final Action ("Final Act.," mailed June 11, 2012).
Appeal2013-005314
Application 12/988, 184
The Appellants invented a centralized charging system for offline
charging and online charging in communication networks, such as
3GPP/3GPP2 networks. Specification 1:7-9.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. An apparatus comprising:
a centralized charging system including a processor that
is implemented between a plurality of network elements and an
offline charging system and implemented between the network
elements and an online charging system, the centralized
charging system comprising:
[ 1] a network element interface operable to receive
charging request messages from the network elements
that include charging data for services triggered in the
network elements, and to convert the charging request
messages from protocols used by the network elements
into a common protocol;
[2] an accounting data forwarding function
operable to process the charging data in the charging
request messages of the common protocol to determine if
offline charging or online charging is invoked for the
services, to generate offline accounting request messages
that include the charging data for the services that invoke
offline charging, and to generate online accounting
request messages that include the charging data for the
services that invoke online charging;
and
[3] a charging system interface operable to
transmit the offline accounting request messages to the
offline charging system, and to transmit the online
accounting request messages to the online charging
system.
2
Appeal2013-005314
Application 12/988, 184
The Examiner relies upon the following prior art:
Burghardt US 2007 /0103117 Al May 10, 2007
3GPP, 3rd Generation Partnership Project, Global System for Mobile
Communications, 3GPP TS 32.240 v8.1.0 (Dec. 2007) (hereinafter
"3GPP").
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over 3GPP and Burghardt. 2
ISSUES
The issue of obviousness turns primarily on whether the art shows an
intermediate process to convert data to a common protocol and whether the
Examiner found a reason to alter the 3GPP protocol to do so.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Burghardt
01. Burghardt is directed to a method for charging in which the
following procedural steps are executed: storing, in a network
element of a data transmission network, a charge-data record
having charge data indicating the account balance of a charge
2 A rejection of claims 1-8 under 35 U.S.C. § 112, first paragraph, as lacking
a supporting written description within the original disclosure was
withdrawn. Ans. 3.
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Appeal2013-005314
Application 12/988, 184
account of a user who transmits useful data over said data
transmission network, transmitting a service request message for
the use of a service by the user, depending on the service request
message, allocating service termination data to the user, with said
service termination data setting a limit on the use of the service
and with the value of the charge data being changed, and changing
the termination data depending on the use of the service.
Burghardt, para. 2.
02. The data transmission network is in particular a data packet
transmission network, in particular the internet or a 3GPP (Third
Generation Partnership Program) network. Burghardt, para. 7.
03. A charging method is explained in the 3GPP reference.
Burghardt, para. 8.
04. In a development, the authorizing message complies with the
specifications of the Diameter Protocol or of a protocol based
thereon. The authorizing message is in particular processed
according to the Diameter Protocol or a protocol based thereon.
The specific structure of the authorizing message is not specified
in the Diameter Protocol and depends on the relevant application.
Burghardt, para. 36.
05. The Diameter Base Protocol is employed between the
OCS/CCF and the control unit 26 or, as the case may be, the unit
28 in the manner explained with the aid of Figures 2 to 5. The
standardized interfaces Ro ( online) and Rf ( offline) are therefore
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Appeal2013-005314
Application 12/988, 184
already more similar to each other than originally provided in the
standard. Burghardt, para. 56.
3GPP
06. 3GPP is directed to part of a series of documents that specify
charging functionality and charging management in GSM/UMTS
networks. 3GPP 6: 1.
07. Several logical charging functions are needed in the network in
order to provide the functionality for online and offline charging.
In offline charging, the charging information is transferred from
the network to the Billing Domain (BD), where it is processed for
billing and/or statistical purposes, at the discretion of the PLMN
operator. In online charging, the charging information is
transferred from the network to the Online Charging System
(OCS). 3GPP 15:4.
08. In offline charging, the resource usage is reported from the
network to the Billing Domain after the resource usage has
occurred. In online charging, a subscriber account, located in an
online charging system, is queried prior to granting permission to
use the requested network resource( s). 3 GPP 15: 4 .1.
09. Offline charging is a process where charging information for
network resource usage is collected concurrently with that
resource usage. Offline charging is a mechanism where charging
information does not affect, in real-time, the service rendered.
3GPP 15:4.1.1.
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Appeal2013-005314
Application 12/988, 184
10. Online charging is a process where charging information for
network resource usage is collected concurrently with that
resource usage in the same fashion as in offline charging.
However, authorization for the network resource usage must be
obtained by the network prior to the actual resource usage to
occur. Online charging is a mechanism where charging
information can affect, in real-time, the service rendered and
therefore, a direct interaction of the charging mechanism with the
control of network resource usage is required. 3GPP 15:4.1.2.
11. The Charging Trigger Function (CTF) generates charging
events based on the observation of network resource usage. In
every network and service element that provides charging
information the CTF is the focal point for collecting the
information pertaining to chargeable events within the network
element, assembling this information into matching charging
events, and sending these charging events towards the Charging
Data Function. 3GPP 18:4.3.1.1.
12. Accounting Data Forwarding receives the collected accounting
metrics and determines the occurrence of chargeable events from a
set of one or more of these metrics. It then assembles charging
events that match the detected chargeable events, and forwards the
charging events towards the Charging Data Function via the Rf
reference point. The charging events provide information
pertinent to the chargeable event, i.e. characterizing the network
resource usage together with an identification of the involved
user(s). There is no assumption of any synchronization between
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Application 12/988, 184
the reception of individual accounting metrics, however, it must
be possible for the Accounting Data Forwarding to complete its
overall functionality per charging event in real-time. While the
exact information received by the Account Data Forwarding from
the Account Metrics Collection, and the relevant chargeable
events, are specific to each type of network element, the overall
functionality of receiving, assembling and forwarding the
charging information can be considered generic. Hence, the
Accounting Data Forwarding is considered the network element
(NE) independent part of the CTF. 3GPP 18:4.3.1.1.
ANALYSIS
We are persuaded by Appellants' argument that "there is no system [in
Burghardt] that receives charging request messages from these network
elements, and converts the charging request messages to a common
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"[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention." Belden Inc. v.
Berk-TekLLC, 805 F.3d 1064, 1073 (Fed Cir 2015). As Appellants contend,
the 3GPP protocol calls for a charging trigger function in every element that
communicates directly with an online and offline charging system. The
claims therefore require a deviation from this protocol. Deviating from an
established protocol incurs a substantial penalty, so there must be some
reason for doing so. Also, neither reference describes an interface
converting the charging request messages from protocols used by the
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Appeal2013-005314
Application 12/988, 184
network elements into a common protocol prior to transmission to the
online and offline charging systems.
The Examiner found that "having the charging system as centralized as
opposed to within the network elements would not modify the invention as
disclosed by 3GPP and that rearranging the accounting data forwarding
function and network element interface would yield a predictable result."
Ans. 4. To the extent the Examiner finds that this would not modify what
the 3GPP document describes as the end result, we agree, but not as to how
the 3GPP protocol operates to do so. More to the point, the Examiner has
neither shown that is was known to interpose an intermediate process for
universal data conversion nor a reason for deviating from the 3GPP protocol.
Simply finding a predictable result is not a finding as to why one of ordinary
skill would alter an established protocol to achieve that predictable result.
CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable
over 3GPP and Burghardt is improper.
DECISION
The rejection of claims 1-20 is reversed.
REVERSED
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