Ex Parte Fine et al

Board of Patent Appeals and Interferences

Dec 11, 2009

10404000 (B.P.A.I. Dec. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte JACK FINE, EULY LEGRO, MEHRAN HABIBL, and KIN 8
KWOK CHAN 9
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Appeal 2009-003401 12
Application 10/404,000 13
Technology Center 3600 14
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Decided: December 14, 2009 17
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. 21
FETTING, Administrative Patent Judges. 22
23
CRAWFORD, Administrative Patent Judge. 24
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26
DECISION ON APPEAL27
Appeal 2009-003401
Application 10/404,000

2
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-16, 20-22, 24-26, and 29-311. We have jurisdiction under 35 3
U.S.C. § 6(b) (2002). 4
Appellants invented billing data extraction and processing system for 5
use in connection with first and second billing systems (Abstract). 6
Claim 1 under appeal is further illustrative of the claimed invention as 7
follows: 8
1. A method of processing billing data in a 9
billing data processing system having a data 10
processor, a memory for storing data, and an 11
interface coupled to a first billing system, the 12
method comprising: 13
extracting a first set of rated aggregated 14
billing data from the first billing system at a first 15
point within the first billing system during a billing 16
period; 17
storing the first set of rated aggregated 18
billing data in the memory; 19
extracting a second set of rated aggregated 20
billing data from the first billing system at a 21
second point within the first billing system during 22
the billing period, wherein the first point and the 23
second points are different data extraction points in 24
the first billing system; 25
processing the first set of rated aggregated 26
billing data and the second set of rated aggregated 27
billing data; 28

1 Claims 17-19, 27, and 28 are withdrawn.
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determining a billing warning event based 1
on processing the first set of rated aggregated 2
billing data and the second set of rated aggregated 3
billing data; and 4
transmitting a signal to indicate the billing 5
warning event. 6
The prior art relied upon by the Examiner in rejecting the claims on 7
appeal is: 8
Schlect US 6,035,285 Mar. 7, 2000 9
Sprouse US 7,085,360 B1 Aug. 1, 2006 10
11
The Examiner rejected claims 1-16, 20-22, 24-26, and 29-31 under 35 12
U.S.C. § 101 as being directed to non-statutory subject matter; claims 1-6, 8, 13
11, 13-14, and 20-22 under 35 U.S.C. § 102(e) as being anticipated by 14
Sprouse; claims 7, 24, 26, and 29-31 under 35 U.S.C. § 103(a) as being 15
unpatentable over Sprouse and Schlect; and claims 9-10, 12, 25, and 15-16 16
under 35 U.S.C. § 103(a) as being unpatentable over Sprouse in view of 17
Official Notice. 18
We AFFIRM-IN-PART. 19
20
ISSUES 21
Did the Appellants show the Examiner erred in asserting that Sprouse 22
discloses extracting first and second sets of rated aggregated billing data 23
from different data extraction points, as recited in independent claims 1, 20, 24
and 29? 25
Did the Appellants show the Examiner erred in asserting that the 26
generation of an error report in Sprouse corresponds to transmitting a signal 27
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to indicate a billing warning event, as recited in independent claims 1, 20, 1
and 29? 2
Did the Appellants show the Examiner erred in asserting that a set of 3
call billing records from a billing device in Sprouse corresponds to a third 4
set of rated aggregated billing data at a third point in the billing system, as 5
recited in dependent claims 2 and 21? 6
Did the Appellants show the Examiner erred in asserting that 7
generating an error report in Sprouse corresponds to initiating a billing audit 8
on a subset of bills, as recited in dependent claims 13 and 31? 9
Did the Appellants show the Examiner erred in asserting that Sprouse 10
discloses outputs of a service order processing module and a usage 11
processing module, as recited in dependent claim 22? 12
Did the Appellants show the Examiner erred in asserting that a 13
combination of Sprouse and Schlect renders obvious the subject matter of 14
dependent claim 7, 24, and 26? 15
Did the Appellants show the Examiner erred in asserting that a 16
combination of Sprouse and Official Notice renders obvious the subject 17
matter of dependent claims 9, 10, 12, 15-16, and 25? 18
Did the Appellants show the Examiner erred in asserting that claims 19
1-16, 20-22, 24-26, and 29-31 are directed to non-statutory subject matter 20
under 35 U.S.C. § 101? 21
22
FINDINGS OF FACT 23
Specification 24
Appellants invented billing data extraction and processing system for 25
use in connection with first and second billing systems (Abstract). 26
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Based on the comparison between the aggregate billing data for the 1
round and the historical data and statistics threshold files an error detection 2
indicator may be produced. An alarm generation and reporting unit 414 in 3
response to a detected error indication 412, produces various types of alarms 4
and reports. For example, a web-page display may be updated 416, e-mail 5
notice may be sent 418, and a pager notification may be sent 420 (p. 6, ll. 7-6
14). 7
8
Sprouse 9
Sprouse discloses that there is a need in the art for a system and 10
method for auditing billing records in a telecommunications system that 11
incorporates greater accuracy checking than the one-way comparison 12
existing in the prior art. There is also a need for a system and method for 13
auditing billing records in a telecommunications system that provides for the 14
possibility that a single billed record matches more than one call data record 15
(col. 1, ll. 55-61). 16
Accordingly, Sprouse discloses a system for and method of auditing 17
billing records in a telecommunications system including retrieving first data 18
records from an origination device and second data records from a billing 19
generation device, retrieving billing records from a billing device, 20
comparing the first data records with the second data records and with the 21
billing records, generating a first error log of data records that appear in the 22
first data records but not in the second data records, and generating a second 23
error log of data records that appear in the second data records but not in the 24
billing records (col. 2, ll. 3-13; col. 5, ll. 54-58; col. 8, ll. 7-17). 25
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More specifically, Sprouse discloses performing bi-directional 1
reconciliation of each call data record from the first set of call data records, 2
the second set of call data records, and the set of call billing records so as to 3
identify any call data records that do not correspond to a call billing record 4
and any call billing records that do not correspond to a call data record, and 5
generating an error report providing a record of (i) errors identified through 6
the bi-directional reconciliation and (ii) a device of the billing chain 7
associated with each error (col. 8, ll. 30-40). 8
Exemplary embodiments consistent with the present invention 9
perform audits on a billing system by collecting data records from one or 10
more devices within a billing generation chain and running comparisons 11
with billing records. The bill generation chain comprises one or more 12
devices that facilitate the collection and aggregation of call data records 13
from origination devices, such as switches, short message service centers, 14
and/or base stations, through bill imaging and distribution devices which 15
generate billing records (col. 2, l. 62 through col. 3, l. 3; col. 5, ll. 10-15, 49-16
54). 17
Examples of call data that may be retrieved include base station call 18
records data, switch call record data, SMSC message record data, prepaid 19
call record data, mediation device call record data, collector call record data, 20
MAF call record data, call record data from rating and guiding system, or 21
other call records data (col. 6, ll. 41-54). 22
Appeal 2009-003401
Application 10/404,000

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PRINCIPLES OF LAW 1
Claim Construction 2
During examination of a patent application, a pending claim is given 3
the broadest reasonable construction consistent with the specification and 4
should be read in light of the specification as it would be interpreted by one 5
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 6
1359, 1364 (Fed. Cir. 2004). 7
Claim language cannot be mere surplusage. An express limitation 8
cannot be read out of the claim. Texas Instruments, Inc. v. United States 9
Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993). 10
11
Obviousness 12
One cannot show non-obviousness by attacking references 13
individually where the rejections are based on combinations of references. 14
In re Keller, 642 F.2d 413, 426 (CCPA 1981). 15
16
Official Notice 17
To adequately traverse a finding of Official Notice, the Appellants 18
must specifically point out the supposed errors in the Examiner's action, 19
which would include stating why the noticed fact is not considered to be 20
common knowledge or well-known in the art. A general allegation that the 21
claims define a patentable invention without any reference to the Examiner's 22
assertion of Official Notice is inadequate. In the absence of any demand by 23
Appellants for the Examiner to produce authority for his statement, the 24
traversal shall not be considered. In re Chevenard, 139 F.2d 711, 713 25
(CCPA 1943). 26
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Non-Statutory Subject Matter 1
The en banc court in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en 2
banc), cert. granted, 129 S. Ct. 2735 (U.S. Jun. 1, 2009) (No. 08-964), held 3
that “the machine-or-transformation test, properly applied, is the governing 4
test for determining patent eligibility of a process under § 101.” Id. at 956. 5
The court in Bilski further held that “the ‘useful, concrete and tangible 6
result’ inquiry is inadequate [to determine whether a claim is patent-eligible 7
under § 101.]” Id. at 959-60. The court explained the machine-or-8
transformation test as follows: “A claimed process is surely patent-eligible 9
under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it 10
transforms a particular article into a different state or thing.” Id. at 954 11
(citations omitted). 12
13
Utility 14
As a matter of Patent Office practice, a 15
specification which contains a disclosure of utility 16
which corresponds in scope to the subject matter 17
sought to be patented must be taken as sufficient to 18
satisfy the utility requirement of § 101 for the 19
entire claimed subject matter unless there is reason 20
for one skilled in the art to question the objective 21
truth of the statement of utility or its scope. 22
In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974). 23
24
ANALYSIS 25
First and Second Data Sets from Different Extraction Points 26
We are not persuaded of error on the part of the Examiner by 27
Appellants’ argument that Sprouse does not discloses extracting first and 28
second sets of rated aggregated billing data from different data extraction 29
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points, as recited in independent claims 1, 20, and 29 (App. Br. 5-6, 7, 10; 1
Reply Br. 2, 5-6, 6-7, 9-10). Sprouse discloses retrieving first call data 2
records from an origination device and second call data records from a 3
billing generation device. Appellants assert that these first and second call 4
data records of Sprouse do not correspond to the claimed rated aggregated 5
billing data. However, neither the claims nor the Specification provide 6
adequate guidance as to the meaning of “rated.” Moreover, the call data 7
records in Sprouse are aggregated billing data, as the call records are 8
aggregated and the call data is used for billing. See In re Am. Acad. of Sci. 9
Tech. Ctr., 367 F.3d at 1364. 10
Appellants also assert that the origination device and the billing 11
generation device of Sprouse do not correspond to the claimed different data 12
extraction points in the billing system, because the origination device and 13
the billing generation device are not a part of the billing system. However, 14
once again, neither the claims nor the Specification provide adequate 15
guidance as to which modules are parts of the claimed billing system and 16
which are not. Accordingly, in the absence of such guidance, we are of the 17
opinion that both the origination device and the billing generation device are 18
parts of the claimed billing system. See Id. 19
20
Transmitting Signal 21
We are not persuaded of error on the part of the Examiner by 22
Appellants’ argument that the generation of an error report in Sprouse does 23
not correspond to transmitting a signal to indicate a billing warning event, as 24
recited in independent claims 1, 20, and 29 (App. Br. 6, 7, 11; Reply Br. 6, 25
7, 10-11). One of the functions performed in the Specification by alarm 26
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generation and reporting unit 414, in response to a detected error indication 1
412, is the generation of an error report. Accordingly, absent a definition of 2
transmitting a signal which excludes the generation of such an error report, 3
the claim recitation is met by Sprouse. 4
5
Third Data Set 6
We are not persuaded of error on the part of the Examiner by 7
Appellants’ argument that a set of call billing records from a billing device 8
in Sprouse does not correspond to a third set of rated aggregated billing data 9
at a third point in the billing system, as recited in dependent claims 2 and 21 10
(App. Br. 6-7, 8; Reply Br. 7-8, 8). As set forth above, the definition of 11
rated is unclear, and the call billing records are aggregated and used for 12
billing. Accordingly, call billing records are rated aggregated billing data. 13
See Id. 14
15
Billing Audit 16
We are persuaded of error on the part of the Examiner by Appellants’ 17
argument that generating an error report in Sprouse does not correspond to 18
initiating a billing audit on a subset of bills, as recited in dependent claims 19
13 and 31 (App. Br. 6-7; Reply Br. 7-8). Under the Examiner’s 20
interpretation, the generating of an error report in Sprouse corresponds to 21
both transmitting a signal and initiating a billing audit, impermissibly 22
reading one of these recitations out of the claim. See Texas Instruments Inc. 23
v. United States Int'l Trade Comm'n, 988 F.2d at 1171. 24
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Service Order Processing Module and Usage Processing Module 1
We are not persuaded of error on the part of the Examiner by 2
Appellants’ argument that Sprouse does not disclose outputs of a service 3
order processing module and a usage processing module, as recited in 4
dependent claim 22 (App. Br. 8; Reply Br. 8). We agree with the Examiner 5
that the claims and underlying Specification are unclear as to exactly what 6
occurs in the “‘service order processing’” and “‘usage processing’” modules 7
(Ans. 8). Under these circumstances, we find reasonable the Examiner’s 8
interpretation that these modules include primarily data regarding what type 9
of services is used and how much of the service is used, respectively. As at 10
least prepaid call record data in stage 440 and collector call record data in 11
stage 460 indicate types of service used, and any call data record would 12
include how much of the service is used, Sprouse discloses both of the 13
recited service order processing module and usage processing module. 14
15
Claims 7, 24, and 26 16
We are not persuaded of error on the part of the Examiner by 17
Appellants’ argument that a combination of Sprouse and Schlect does not 18
render obvious the subject matter of dependent claim 7, 24, and 26 (App. Br. 19
8-9, 9-10; Reply Br. 2-3, 9, 12). Appellants assert that Schlect does not 20
remedy the deficiencies of independent claims 1 and 20, from which claims 21
7, 24, and 26 depend. However, as set forth above, Sprouse has been cited 22
by the Examiner as disclosing the aspects allegedly not disclosed by Schlect. 23
One cannot show non-obviousness by attacking references individually 24
where the rejections are based on combinations of references. See In re 25
Keller, 642 F.2d at 426. 26
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Official Notice 1
We are not persuaded of error on the part of the Examiner by 2
Appellants’ argument that a combination of Sprouse and Official Notice 3
does not render obvious the subject matter of dependent claims 9, 10, 12, 15-4
16, and 25 (App. Br. 12-18, 18-20; Reply Br. 11-12). In order to adequately 5
traverse an Examiner’s finding of Official Notice and demand supporting 6
evidence, Appellants must first present specific arguments as to why the 7
facts for which Official Notice have been taken are not common knowledge. 8
In the absence of such arguments, the traversal is inadequate and supporting 9
evidence does not need to be produced. See In re Chevenard, 139 F.2d at 10
713. 11
The vast majority of Appellants’ arguments concerning Official 12
Notice are to general allegations that the Official Notice does not disclose 13
certain aspects of certain claims, and that supporting evidence is demanded 14
by Appellants, but has not been produced by the Examiner. The entirety of 15
Appellants’ argument directed to the specific underlying facts, however, for 16
which Official Notice has been taken, are as follows: 17
Appellant[s] submit[] that the phrase 18
“typical statistical analysis,” as stated in the Final 19
Office Action, is vague, as statistical analyses can 20
differ widely in their contents. 21
(App. Br. 13). 22
Appellant[s] submit[] that email, pager, and 23
screen display may be well known, but notification 24
of a billing warning event provided by at least one 25
of email, pager, and screen display is not common 26
knowledge. 27
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(App. Br. 15). We do not find these arguments to be an adequate traversal 1
of Official Notice sufficient to warrant the Examiner’s provision of 2
supporting evidence. Accordingly, we will sustain this rejection. 3
4
Non-Statutory Subject Matter 5
The Examiner asserts that claims 1-16, 20-22, 24-26, and 29-31 are 6
directed to non-statutory subject matter under 35 U.S.C. § 101, because they 7
do not meet the “[‘]useful, concrete and tangible result’” test set forth in 8
State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 9
1373-74 (Fed. Cir. 1998). However, the law in the area of patent-eligible 10
subject matter for process claims has been clarified by the Federal Circuit in 11
In re Bilski. The en banc court in Bilski held that “the machine-or-12
transformation test, properly applied, is the governing test for determining 13
patent eligibility of a process under § 101.” Id. at 956. The court in Bilski 14
further held that “the ‘useful, concrete and tangible result’ inquiry is 15
inadequate [to determine whether a claim is patent-eligible under § 101.]” 16
Id. at 959-60. The court explained the machine-or-transformation test as 17
follows: “A claimed process is surely patent-eligible under § 101 if: (1) it is 18
tied to a particular machine or apparatus, or (2) it transforms a particular 19
article into a different state or thing.” Id. at 954 (citations omitted). 20
Independent claim 1 recites a method including a billing data 21
processing system having a data processor, memory for storing data, an 22
interface coupled to a first billing system, and means for transmitting a 23
signal. Independent claim 29 recites a method including a billing data 24
extraction and processing system having a memory, a bill processing system, 25
and means for transmitting a signal. Accordingly, the claimed processes in 26
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independent claims 1 and 29 are sufficiently tied to a particular machine or 1
apparatus to qualify as statutory subject matter under 35 U.S.C. § 101. 2
Independent claim 20 recites a billing data extraction and processing 3
system, and thus Bilski does not apply. Insofar as the Examiner is asserting 4
that independent claim 20 does not meet the utility requirement of 35 U.S.C. 5
§ 101, the Specification discloses that a system that detects and reports 6
potential billing errors, for example, by updating a web-page display, 7
sending an e-mail notice, or sending a pager notification. Such actions have 8
utility sufficient to meet the requirements of 35 U.S.C. § 101. See In re 9
Langer, 503 F.2d at 1391-92. 10
We do not sustain these rejections. 11
12
CONCLUSION OF LAW 13
On the record before us, Appellants have not shown that the Examiner 14
erred in rejecting claims 1-12, 14-16, 20-22, 24-26, 29, and 30. 15
On the record before us, Appellants have shown that the Examiner 16
erred in rejecting claims 13 and 31. 17
18
DECISION 19
The decision of the Examiner to reject claims 1-12, 14-16, 20-22, 24-20
26, 29, and 30 is affirmed. 21
The decision of the Examiner to reject claims 13 and 31 is reversed. 22
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
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AFFIRMED-IN-PART 5
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