Ex Parte I

Board of Patent Appeals and Interferences

Mar 24, 2009

09770074 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte COLIN I’ANSON
____________

Appeal 2008-4966
Application 09/770,074
Technology Center 2600
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Decided:1 March 24, 2009
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Before MAHSHID D. SAADAT, MARC S. HOFF, and KARL D.
EASTHOM, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-15 and 17-24. Claim 16 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellant’s invention relates to data transfer over a cellular
infrastructure and a method for determining how and when data transfer can
take place within the cost criteria specified for the transfer (Spec. 1:5-7, 4:2-
24). Claim 1, which is representative of the claims on appeal, reads as
follows:
1. A method of cost-sensitive control of data transfer
between a mobile entity and a data network through a cellular radio
infrastructure, the method comprising carrying out the following steps
at a service system

(a) receiving a transfer descriptor indicative of, at least
generally, the end points of a required data transfer, and of transfer
criteria to be met by this transfer, these criteria comprising at least a
cost criterion, and a delay criterion being indicative of an acceptably
delay before transfer initiation;

(b) determining by reference to both current and future data-
transfer tariffs whether and, if so, how, the data transfer can be
effected within the transfer criteria;

(c) where step (b) produces a positive determination, instructing
initiation of the data transfer in accordance therewith.

The Examiner relies on the following prior art references:
Zonoun US 6,487,172 B1 Nov. 26, 2002
Stinson US 6,493,556 B1 Dec. 10, 2002

Shaffer EP 0 848 560 A2 Jun. 17, 1998
Hilsenrath GB 2 328 117 A Feb. 10, 1999

Claims 1, 2, 4, 8, 10, 13-15, 18, 19, and 22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Stinson, Zonoun, and
Hilsenrath.
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Claims 3, 5-7, 9, 11, 12, 20, 21, 23, and 24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Stinson, Zonoun, and
Hilsenrath in view of Shaffer.
We make reference to the Briefs (Appeal Brief filed Mar. 30, 2006
and Reply Brief filed Jan. 7, 2008) and the Answer (mailed Dec. 13, 2007)
for Appellant’s and the Examiner’s arguments. Only those arguments
actually made by Appellant have been considered in this decision.
Arguments which Appellant did not make in the Briefs have not been
considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).
ISSUE
The issue on appeal is whether under 35 U.S.C. § 103, the
combination of Stinson, Zonoun, and Hilsenrath, as proposed by the
Examiner, teaches or suggests the limitation of receiving a transfer
descriptor “indicative of an acceptable delay before transfer initiation” and
determining the effect on data transfer “by reference to both current and
future data-transfer tariffs,” as recited in claim 1.
FINDINGS OF FACT
Stinson
1. Stinson relates to a master routing hub (50, FIG. 1) which
selects an appropriate communications path in accordance with the quality
of service indicator in order to provide the best available quality of service at
the lowest cost to the subscribers. (Abstract).
2. The quality of service indicator can specify a maximum latency
in data transmitted to and received from subscriber unit 10 in Figure 1, or
can specify a minimum limit of channel bandwidth in the communications
path, or a maximum number of errors (such as a bit error rate) in a data
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packet transmitted to or received from subscriber unit 10. (Col. 2, l. 66 –
col. 3, l. 6).
3. The cost information is expressed in terms of a cost for a
particular level of quality of service with the expectation that a lower quality
of service communications path will be more economical, while a higher
quality of service communication path, such as a path having properties of
lower latency and/or higher bandwidth, will be offered at a premium price.
(Col. 3, ll. 7-18).
4. Stinson also defines the quality of service versus cost schedule
as a function of time of day. (Col. 3, ll. 19-21).
5. Thus, master routing hub 50 in Stinson can select the most
economical and highest quality communications path between subscriber
units available at any given time and optimize the communications path
between the subscriber units, reducing the associated cost to the lowest
possible level. (Col. 3, ll. 37-42).
Zonoun
6. Zonoun relates to a method and apparatus for selecting a route
to a destination for a data packet based on routing metrics received in
response to a bid broadcast on a network. (Abstract).
7. As depicted in Figure 2, Zonoun describes the information
about the data packet(s) being sent and criteria for the type of routing metric
values being sought. For example, the actual cost of sending the packet(s)
and the amount of delay in transporting the packet(s) to the destination are
two types of metric values being typically sought. (Col. 3, ll. 13-29).
8. The requester can select the least expensive route for sending
text data packets, but where real time conversation is more critical, the path
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with the least delay may be more attractive. Likewise, a compromise
equation can be set for obtaining the most optimum cost/delay factors. (Col.
5, ll. 11-23).
Hilsenrath
9. The least cost routing device of Hilsenrath determines the
current rates charged by the network service provider by collecting their
costing information related to different rates charged for different times of
the day or peak/off-peak times for each day of the week. (P. 10, ll. 5-14).
10. Hilsenrath further describes transmitting the least cost routing
information at a time when the cost of transmitting is cheap. (P. 24, ll. 14-
17).
PRINCIPLES OF LAW
1. Scope of claims
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Philips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996)). Furthermore, the specification is the single
best guide to the meaning of a claim term. Phillips v. AWH Corp., 415 F.3d
at 1315 (Fed. Cir. 2005).
2. Obviousness
To reach a conclusion of obviousness under § 103, the Examiner bears
the burden of producing a factual basis supported by a teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed.
Cir. 1984).
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Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA
1981).
“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., 127 S. Ct. 1727, 1734 (2007).

ANALYSIS
Rejection of claims over Stinson, Zonoun, and Hilsenrath
With respect to claims 1 and 22, Appellant disagrees with the
Examiner’s findings with respect to the delay criterion being indicative of an
“acceptable delay before transfer initiation” (App. Br. 14-16) and argues that
the delay discussed in Stinson is not a delay before transfer initiation (App.
Br. 15). Appellant also contends that Stinson’s quality of service indicator
as discussed in column 2, lines 67 through column 3, line 6 is “a maximum
latency in data already transmitted to and received from the subscriber unit”
(id.). Appellant further asserts that Stinson’s quality of service indicator
relates to a maximum latency in data transmitted to and received from the
subscriber unit and therefore, implies that the data has already been
transferred (id.).
The Examiner argues (Ans. 15) that based on the relied on portions of
Stinson; the quality of service considers maximum latency as well as error
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rate, or the transmission bandwidth as factors in selecting an acceptable
delay. The Examiner further argues that Stinson calculates the delay for the
intended quality of service based on the associated cost, which provides an
approximate time delay before commencing communication (id.).
Initially, we observe that Appellant has merely identified cost as a
primary transfer criterion that is determined by different tariff services at
different times (Spec. 6:16-26) wherein the cost criterion as “a function of
delay before transfer is started” (Spec. 7:15-27) is used to determine if
delayed transmission is acceptable as a solution. Appellant’s argument that
Stinson does not disclose any acceptable delay before transfer initiation
ignores the fact that Stinson considers acceptable quality related factors for a
lower cost transmission (FF 1 and 2). As pointed out by the Examiner (Ans.
15), Stinson also describes cost in terms of service quality related to
transmission factors (FF 3) and time of day (FF 4).
As such, Stinson provides cost information to the subscriber in terms
of the factors related to the quality of transmission, which further varies for
different times. We, therefore, disagree with Appellant that Stinson only
considers latency in data already transmitted. As discussed above, the cost
information provided by Stinson is based on many factors related to quality
of transmission, as well as time of day, which implies a delay before transfer
initiation.
We also remain unconvinced by Appellant’s argument (App. Br. 16;
Reply Br. 3) that Hilsenrath does not reference future and current tariffs in
determining the least cost route. Hilsenrath provides for cost information
related to different rates applied to different times of day and different days
of week (FF 9). Additionally, Hilsenrath determines the least cost routing
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information based on those different rates (FF 10) which determine how data
transfer may be affected by comparing the cost at the current time with the
cost of transferring at a later time. In that regard, the cost determination
based on the acceptable delay if the data is transmitted now versus, for
example, at night/weekend for a lower cost, meets the claim limitation of
determining “by reference to both current and future data-transfer tariffs.”
Thus, we find that one of ordinary skill in the art would have
combined the teachings of Stinson with those of Zonoun and Hilsenrath to
benefit from the routing metrics of Zonoun (FF 6-8) and the cost routing
information of Hilsenrath. The information related to different factors for
lowering the cost of transmission and the factors involved, as disclosed in
Stinson and Hilsenrath, provide an acceptable delay in exchange for lower
cost to be considered in selecting the transmission route. While the cost
information may be available during data transmission, based on our
findings above, we agree with the Examiner that such delay is also available
for consideration before transfer initiation and applies to both current and
future data-transfer costs.

CONCLUSION
Because Appellant has failed to point to any error in the Examiner’s
position and in view of our analysis above, we find that the teachings of
Stinson in combination with Zonoun and Hilsenrath, when considered as a
whole, support the Examiner’s obviousness rejection of claims 1 and 22.
Thus, we sustain the 35 U.S.C. § 103(a) rejection of claims 1, 2, 4, 8, 10, 13-
15, 18, 19, and 22 over Stinson, Zonoun, and Hilsenrath.
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Regarding the rejection of the remaining claims, Appellant merely
present arguments related to the same features discussed above with respect
to claims 1 and 22 (App. Br. 17-18), which we found to be unpersuasive.
Therefore, for the same reasons discussed above, we remain unpersuaded of
any error in the Examiner’s obviousness rejection of claims 3, 5-7, 9, 11, 12,
20, 21, 23, and 24 over Stinson, Zonoun, and Hilsenrath, and Shaffer.
ORDER
The decision of the Examiner rejecting claims 1-15 and 17-24 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 1.136(a)(1)(iv).

AFFIRMED

ELD

PAUL D. GREELEY
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