Ex Parte Cutler et al

Patent Trial and Appeal Board

Sep 26, 2016

12777713 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121777,713 05/11/2010
76614 7590
Terry W, Kramer, Esq,
Kramer & Amado, P.C.
330 John Carlyle Street
3rd Floor
Alexandria, VA 22314
09/28/2016
FIRST NAMED INVENTOR
Kevin Scott Cutler
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.
ALC 3531 4912
EXAMINER
MURRAY, DANIEL C
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
mail@krameramado.com
ipsnarocp@alcatel-lucent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN SCOTT CUTLER and
KAL YAN PREMCHAND SIDDAM
Appeal2015-004975
Application 12/777,713
Technology Center 2400
Before JOHN A. EV ANS, NORMAN H. BEAMER, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 2, 4--9, 11-15, and 17-23, which are all of the
claims pending in this application.2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Alcatel-Lucent
Canada, Inc. App. Br. 2.
2 Claims 3, 10, and 16 have been canceled. App. Br. 21, 23, 25.
Appeal2015-004975
Application 12/777,713
INVENTION
Appellants' invention relates to implementing policy rules for
controlling the behavior of a policy and charging rules node. Abstract.
Claim 1 is illustrative and reads as follows:
1. A method for determining the behavior of a policy and
charging rules node (PCRN), the method comprising:
receiving a message at a PCRN;
determining that a policy decision should be made with regard to
the received message; and
in response to determining that a policy decision should be made:
identifying a rule of a plurality of rules as applicable to
processing the received message, wherein the identified
rule specifies an action to be taken in response to the
received message, wherein the action includes a reference
to a predefined routine,
retrieving previously-stored definition data defining the
predefined routine based on the reference to the predefined
routine, [and]
performing, by the PCRN, the action specified by the
identified rule in response to the received message,
comprising performing the predefined routine based on the
definition data.
REJECTIONS
Claims 1, 2, 4--9, 11-15, and 17-23 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Ans. 23-24.
Claims 1, 2, 4, 8, 9, 11, 14, 15, 17, and 21-23 stand rejected under
35 U.S.C. § 102(b) as anticipated by Belling (US 2008/0271113 Al; Oct.
30, 2008) as supported by teaching reference Universal Mobile
Telecommunications System (UMTS); LTE; Policy and charging control
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over Gx reference point (ETSI TS 129 212 V9.2.0 (2010--04)) ("TS
29.212"). Final Act. 2.
Claims 5, 6, 12, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Belling (supported by TS 29.212) and
Castellanos Zamora et al. (US 2010/0040047 Al; Feb. 18, 2010)
("Castellanos"). Final Act. 16.
Claims 7, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Belling (supported by TS 29.212) and
Moran et al. (US 2008/0155643 Al; June 26, 2008) ("Moran"). Final Act.
19.
ANALYSIS
We have considered Appellants' arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner's
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken. We provide the following explanation for
emphasis.
35 U.S.C. § 101 Rejection of Claims 1, 2, 4-9, 11-15, and 17-23
In rejecting the pending claims as directed to nonstatutory subject
matter, the Examiner found that the claims are directed to the abstract idea
of "identifying and applying an appropriate rule to incoming message ((iii)
an idea of itself)." Ans. 24. The Examiner further found that, viewed as a
whole, the additional claim elements do not provide meaningful limitations
to transform the abstract idea into a patent eligible application of the abstract
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idea such that the claims amount to significantly more than the abstract idea
itself. Id.
Appellants contend the Examiner erred because the claims "do not
seek to entirely tie up the concept of 'identifying and applying a rule to an
incoming message.'" Reply Br. 3. In particular, Appellants argue that the
claims relate specifically to a policy and charging rules node (PCRN) that,
based on identifying a rule applicable to a received message, retrieves
separate definition data identified by that rule to perform a predefined
routine. Id. at 3--4. Appellants further argue that the claims "provide[] a
specific improvement to a particular machine (a PCRN and similar policy
nodes) that provide an improvement to a technical field (L TE and other
carrier technology)." Id. at 5-6. Relying on the Federal Circuit's decision in
DDR Holdings, Appellants also argue that the claimed solution is
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Reply Br. 6-7
(quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014)).
We agree with the Examiner that representative claim 1 is ineligible
for patent protection. See Ans. 24. We analyze claim 1 to determine
whether the claim embodies a patent-eligible application of an abstract idea
or merely nothing more than the abstract idea itself. Alice Corp. Pty. Ltd. v.
CLS Bank Int 'l, 134 S. Ct. 2347, 2350 (2014).
We first decide whether the claim is directed to a patent-ineligible
concept. Id. at 2355. We agree with the Examiner that claim 1 is directed
to the abstract idea of "identifying and applying an appropriate rule to
incoming message," and requires no more than a generic computer to
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perform "functions that are well-understood, routine, and conventional
activities previously known in the art." Ans. 24.
We are not persuaded by Appellants' argument that the claimed
solution is "rooted in computer technology to overcome problems
specifically arising in the realm of computer networks" because "[t]he
claims specifically recite steps related to receiving and processing network
messages and overcome problems that arise in this area." See Reply Br. 6
(citing DDR Holdings, 773 F.3d 1245). While Appellants identify problems
that claim 1 allegedly overcomes (see Reply Br. 6), Appellants point to no
specific solution in the claim. Moreover, the recitation of "a policy and
charging rules node (PCRN)" appears only in the preamble of claim 1, and
Appellants present no persuasive explanation or evidence that it limits the
claim. We find that the resulting solution is routine and conventional
activity that is not rooted in computer technology, but rather in identifying a
rule to apply to a message and taking action based on the rule.
We next decide whether an element or combination of elements is
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the abstract idea. Alice, 134 S. Ct. at 2357. We agree
with the Examiner that the additional elements in claim 1, taken individually
or as an ordered combination, are merely necessary and conventional steps
in identifying and applying a rule to an incoming message, and do not add
enough to the claims to transform the recited method into patent-eligible
subject matter. See Ans. 24.
Appellants' argument that "any device that is not a PCRN or an
equivalent policy device would still be able to identify and apply rules to
incoming messages" does not persuade us that claim 1 precludes
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performance of the recited steps by a generic computer. To the contrary,
there is no indication or evidence that performance of the method by a
"policy device" would preclude performance by a generic computer. See
Reply Br. 3--4; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (recitation of generic computer elements does not
make a claim directed to an abstract idea patent-eligible).
Appellants' argument that claim 1 is "tied to a policy and charging
rules node (PCRN) which is a particular machine that performs specific and
standard-defined functionality within the technological field of long-term
evolution carrier networks," as evidenced by "performing policy decisions,"
is also unpersuasive. See Reply Br. 5---6. As the Examiner found, the
additional elements amount to mere instructions to implement the idea on a
computer and recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known in the art. See Ans. 24.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 1 as directed to nonstatutory subject matter. The same
reasoning applies to independent claim 8, which, although directed to "[a]
policy and charging rules node (PCRN)," recites in the body of the claim
generic computer components for performing the method of claim 1. Our
reasoning also applies to independent claim 14, which is directed to a
machine readable storage medium. See Alice, 134 S. Ct. at 2360 (system
and media claims that add nothing of substance to the underlying abstract
idea are also patent ineligible under § 101 ). We further find that dependent
claims 2, 4--7, 9, 11-13, 15, and 17-23 do not add anything materially more
patent-eligible than the abstract concepts recited in the independent claims.
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According! y, we sustain the Examiner's § 101 rejection of claims 1, 2,
4--9, 11-15, and 17-23.
35 U.S. C. § 102(b) Rejection of
Claims 1, 2, 4, 8, 9, 11, 14, 15, 17, and 21-23
Regarding the anticipation rejection of claims 1, 2, 4, 8, 9, 11, 14, 15,
17, and 21-23, Appellants first contend the Examiner's interpretation of the
claim term "identified rule [that] specifies an action to be taken in response
to the received message, wherein the action includes a reference to a
predefined routine" is overly broad because it encompasses the "PCC rule"
disclosed in Belling. App. Br. 5-6. Appellants argue that an artisan of
ordinary skill would have understood Belling's PCC rule to refer to the PCC
rule defined in TS 29 .212, which does not specify an action to be taken or
refer to a predefined routine. Id. at 6-7. Appellants further argue that the
Examiner's interpretation of the disputed limitation is inconsistent with
Appellants' Specification because the Specification "describes PCC rules
separately and as a different entity from the rule that is claimed." Id. at 7
(citing Spec. i-fi-1 49-54 ).
Appellants' arguments do not persuade us of error. The Examiner
found that TS29.212 defines a PCC rule as a data object including pieces of
data that "clearly dictate how to handle messages and therefore specific
actions to be taken." Ans. 31. The Examiner also found that the portion of
the Specification cited by Appellants is consistent with the application of
QoS parameters as described by TS 29.212 (section 4.3.1) in particular, and
application of rules as known in the art in general. Id. at 32. Appellants
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present no persuasive explanation or evidence to rebut the Examiner's
findings.
Appellants next contend the Examiner's anticipation rejection is not
supported by sufficient reasoning. App. Br. 8. In response, the Examiner
explained the Examiner's reasoning as to how the reproduced quotations are
believed to correspond to the claim language and to show the identical
invention in as complete detail and as arranged in the claim was provided in
previous office actions and interviews, and reproduced such reasoning. Ans.
33-35. In the Reply Brief, Appellants present no persuasive rebuttal to the
Examiner's findings and explanations.
Appellants also contend the cited portions of Belling fail to disclose
identifying a rule of a plurality of rules as applicable to processing the
received message, wherein the identified rule specifies an action to be taken,
as the claims require. App. Br. 11.
We disagree. The Examiner found that Belling discloses that the
identified rule (PCC rule) specifies an action to be taken, and the Examiner
provided several examples of such actions. Ans. 35--40 (citing Belling Fig.
2, i-fi-f 18, 19, 20, 26, 44, 50-54, 56). Appellants present no persuasive
explanation or evidence to rebut the Examiner's findings.
Appellants further contend Belling fails to disclose retrieving
definition data based on a reference to a predefined routine carried by a rule,
as the claims require. App. Br. 15. In particular, Appellants argue that "the
cited portion of Belling discloses only a list of individual actions that may be
performed" and does not disclose a reference to or retrieval of and
previously-stored definitional data defining a routine. Id.
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Appellants' arguments do not persuade us of Examiner error. The
plain language of the claims does not recite a "predefined routine carried by
a rule," and Appellants present no persuasive basis for interpreting the
claims to require that. Moreover, in response to Appellants' argument, the
Examiner explained that Belling discloses retrieving definition data (PCC
rules) based on a reference to a predefined routine (policy) carried by a rule
(PCC rule). Ans. 44--4 7 (citing Belling Fig. 2, i-fi-f 18-20, 26, 44, 50-54, and
56). Appellants present no persuasive explanation or evidence to rebut the
Examiner's findings.
For these reasons, we are not persuaded that the Examiner erred in
finding that Belling, as supported by TS 29 .212, anticipates the claims.
Accordingly, we sustain the 35 U.S.C. § 102(b) rejection of claims 1, 2, 4, 8,
9, 11, 14, 15, 17, and 21-23.
35 U.S.C. § 103(a) Rejections of Claims 5-7, 12, 13, and 18-20
Appellants summarily state that dependent claims 5-7, 12, 13, and
18-20 are allowable "based on their respective dependencies, as well as the
separately patentable subject matter recited therein." App. Br. 17-18.
For the reasons given above, we sustain the 35 U.S.C. § 103(a)
rejections of claims 5-7, 12, 13, and 18-20, not argued separately.
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DECISION
We affirm the decision of the Examiner rejecting claims 1, 2, 4--9, 11-
15, and 17-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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