Ex Parte Hakala et al

Board of Patent Appeals and Interferences

Sep 13, 2011

10492045 (B.P.A.I. Sep. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARRI HAKALA, MATTI HALKOSAARI, and
ROBERT TORNKYIST
____________

Appeal 2010-010631
Application 10/492,045
Technology Center 3600
____________

Before: ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010631
Application 10/492,045

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-12, 14-25, 27-39,
and 41. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6 (2002).
The claimed invention is directed to a system and method for charging
in a communication network and to a communication network charging
server (Spec. 1:5-8). Claim 1, reproduced below, is further illustrative of the
claimed subject matter.
1. A system for charging in a communications network,
comprising:
a first service client for providing first Intelligent
Network (IN) subscriber service to a subscriber wherein such
first subscriber service doesn't have prepaid functionality;
a prepaid service system for providing prepaid subscriber
service to said subscriber, further comprising
a charging server adapted to handle a subscriber
account storing prepaid subscriber account information
for said subscriber;
said first service client adapted to send a first-charging
request message to the charging server before the first
subscriber service is provided using an on-line charging
protocol;
said charging server within said prepaid service system
being adapted to reserve an amount of resources from the
subscriber account, said amount depending on a requested
amount included in said first charge request message, and to
return an answer message to said first service client, including
information indicating the amount of resources that has been
reserved from said subscriber account for enabling usage of
said first subscriber service by said subscriber.

Appeal 2010-010631
Application 10/492,045

3
The Examiner relies upon the following references:
Smith ‘871 US 5,559,871 Sep. 24, 1996
Smith ‘822 US 5,995,822 Nov. 30, 1999
Ginzboorg US 6,047,051 Apr. 4, 2000
Penfield US 6,058,173 May 2, 2000
Emodi US 2002/0016748 A1 Feb. 7, 2002
Alloune US 6,615,034 B1 Sep. 2, 2003
Wallenius US 6,661,887 B1 Dec. 9, 2003
Johnson US 6,999,943 B1 Feb. 14, 2006

Claims 1-12, 14-25, 27-39, and 41 stand rejected under 35 U.S.C. §
112, first paragraph, for failing to comply with the written description
requirement; claims 1 and 15 stand rejected for lack of antecedent basis;
claims 1-12, 14-25, 27-39, and 41 stand rejected under 35 U.S.C. § 112,
second paragraph, for indefiniteness; claims 1-3, 14, 16-17, and 28-29 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ‘822 in view
of Wallenius and Johnson; claims 4-5, 18-19, 21, and 30-32 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Smith ‘822 in view of
Wallenius, Johnson, and Smith ‘871; claims 7 and 34 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Smith ‘822 in view of Wallenius,
Johnson, Smith ‘871, and Penfield; claims 15, 23, 25, 27, 34, 36-37, 39, and
41 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ‘822
in view of Wallenius, Johnson, and Penfield; claims 6, 24, and 33 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ‘822 in view
of Wallenius, Johnson, Penfield, and Alloune; and claims 8 and 35 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ‘822 in view
of Wallenius, Johnson, Penfield, and Emodi.
We REVERSE.

Appeal 2010-010631
Application 10/492,045

4
ISSUES
Did the Examiner err in asserting that “wherein such first subscriber
service doesn’t have prepaid functionality,” as recited in independent claim
1, is new matter that lacks written description support?
Did the Examiner err in asserting that “[a] first Intelligent Network
(IN) subscriber service” is an insufficient antecedent basis for “first
subscriber service,” as recited in independent claim 1?
Did the Examiner err in asserting that “wherein such first subscriber
service doesn’t have prepaid functionality,” as recited in independent claim
1, is indefinite?
Did the Examiner fail to establish a prima facie case of obviousness in
combining Smith, Wallenius, and Johnson to render obvious “said first
service client adapted to send a first-charging request message to the
charging server before the first subscriber service is provided using an on-
line charging protocol … said amount depending on a requested amount
included in said first charge request message,” as recited in independent
claim 1?

FINDINGS OF FACT
Specification
Intelligent network (IN) services can be provided with prepaid rating
without redesign of the complete IN service. Hence, each IN service does
not need to be redesigned with prepaid functionality added to be able to offer
the service as prepaid (5:11-16).
Figure 1 is shown below.
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Appeal 2010-010631
Application 10/492,045

6
“first subscriber service,” one of ordinary skill understands that “first
subscriber service” refers to “[a] first Intelligent Network (IN) subscriber
service.”

Indefiniteness
We are persuaded the Examiner erred in asserting that “wherein such
first subscriber service doesn’t have prepaid functionality,” as recited in
independent claim 1, is indefinite (App. Br. 12-13; Exam’r’s Ans. 37). The
express terms of the claim clearly recite that the “first subscriber service
doesn’t have prepaid functionality.” We do not see how this is indefinite.
Furthermore, when read in light of the Specification, we see that client 1
corresponds to the recited first subscriber service, and that all prepaid
functionality is contained within charging server 2 (Fig. 1; Spec. 6:24-29;
17:31-33). Accordingly, because charging server 2, with its prepaid
functionality, is separate from client 1, we agree with Appellants that
“wherein such first subscriber service doesn’t have prepaid functionality” is
definite.

Obviousness
We are persuaded the Examiner failed to establish a prima facie case
of obviousness in combining Smith, Wallenius, and Johnson to render
obvious “said first service client adapted to send a first-charging request
message to the charging server before the first subscriber service is provided
using an on-line charging protocol … said amount depending on a requested
amount included in said first charge request message,” as recited in
independent claim 1 (App. Br. 13-16; Exam’r’s Ans. 37-38). See In re
Appeal 2010-010631
Application 10/492,045

7
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (during examination, the
examiner bears the initial burden of establishing a prima facie case of
obviousness). The Examiner admits that Smith does not disclose the
aforementioned aspect, but then asserts that the combination of Smith and
Wallenius does. In order to establish a prima facie case of obviousness,
however, the Examiner is required to set forth an adequate rationale with a
convincing line of reasoning for combining references. See Oetiker, 977
F.2d at 1447. We agree with Appellants that the Examiner has failed to
meet this burden.
The Examiner first asserts that “[i]t would have been obvious to one
skilled in the art at the time of the invention to combine the prepaid service
of Smith '822 with the multiple IN service collaboration of Wallenius
because [the combination] allows for the producing of several simultaneous
services (Wallenius column 2[,] line 60)” (Exam’r’s Ans. 6). However, we
do not understand how producing several simultaneous services is an
adequate rationale for combining two IN services with pre-paid services.
The two IN services of Wallenius could produce simultaneous services
regardless of whether or not either is prepaid.
The Examiner also asserts that
Wallenius does not specifically state that the second intelligent
network service is a prepaid service, however, Smith '822 does
indeed disclose using a prepaid service to rate, reserve funds,
and eventually pay for a phone call. The original phone could
indeed be a non-prepaid service and after the call has begun the
second service could indeed be a prepaid service as in Smith
'822.
(Exam’r’s Ans. 38). However, just because one of the services of Wallenius
could be prepaid, as set forth in Smith, is not an adequate rationale for
Appeal 2010-010631
Application 10/492,045

8
actually making one of the services of Wallenius prepaid. In other words,
the Examiner is required to show, either through evidence or a convincing
line of reasoning, as to why one of ordinary skill would, as opposed to
could, modify one of the services of Wallenius such that it is prepaid. No
such evidence or reasoning has been provided in the aforementioned
rationale.
For the same reasons as set forth above, we also do not sustain the
rejections of independent claims 15, 16, 23, 28, and 39, or dependent claims
2-12, 14, 17-22, 24, 25, 27, 29-38, and 41.

DECISION
The decision of the Examiner to reject claims 1-12, 14-25, 27-39, and
41 is REVERSED.

REVERSED

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