Ex Parte Lehr et al

Board of Patent Appeals and Interferences

Feb 3, 2012

10045151 (B.P.A.I. Feb. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT C. LEHR, ARIF SARDAR, MATTHEW LANE,
WINTHROP REIS, CYNTHIA ALDERSON, PATRICK ALLAIRE,
RICHARD BIRRELL, CHRISTOPHER K. BUSS, PAULA ZIMON
CLAWSON, MICHAEL GRAF, ARTHUR F. GREEN, MONICA
LASGOITY, SUSAN C. NEIDHART, ANTHONY KEITH TOWLES, and
CAROL UNO
___________

Appeal 2011-000767
Application 10/045,151
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Robert C. Lehr, et al., (Appellants) seek our review under 35 U.S.C. §
134 of the final rejection of claims 1-16 and 18-61. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection. 1

THE INVENTION
This invention is a “system and method [that] incorporate flexible
pay-per-use pricing plans based on data gathered from hardware products by
a mechanism separate and distinct from the hardware products.” Spec. 1:23-
25.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A hardware pay-per-use system, comprising:
one or more hardware products;
a metering mechanism coupled to at least one of
the one or more hardware products, wherein the
metering mechanism includes a hardware device
separate from the one or more hardware products,
wherein the metering mechanism acquires metrics
data from the one or more hardware products, the
metrics data related to an operation at the one or
more hardware products, and wherein the metering
mechanism determines data to report on the

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 12, 2010) and Reply Brief (“Reply Br.,” filed Aug. 23,
2010), and the Examiner’s Answer (“Ans.,” mailed Jun. 24, 2010).

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operation of the one or more hardware products;
and
a usage repository coupled to the metering
mechanism, the usage repository receiving the
determined data and generating usage reports
related to the operation of the one or more
hardware products.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Carnegie US 5,745, 884 Apr. 28, 1998

The following rejections are before us for review:
1. Claims 1-4, 8-12, 16, 18-25, 27, 28, 32, 35, 37-41, 44, 45, 47,
48, and 50-54 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Carnegie.
2. Claims 5-7, 13-15, 26, 29-31, 33, 34, 36, 42, 43, 46, 49, and 55-
61 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Carnegie.

ISSUES
The first issue is whether claims 1-4, 8-10, 11, 16, 18-25, 27, 28, 32,
35, 37-40, 44, 45, 47, 48, and 50-54 are anticipated under 35 U.S.C. § 102(b)
by Carnegie. Specifically, the major issue is whether Carnegie anticipates
the metering mechanism that “acquires metrics data from the one or more
hardware products, the metrics data related to an operation at the one or
more hardware products” as recited in claim 1. The rejection of claims 5-7,
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13-15, 26, 29-31, 33, 34, 36, 42, 43, 46, 49, and 55-61 under 35 U.S.C. §
103(a) as being unpatentable over Carnegie also turns on this issue.
The second issue is whether claims 11 and 41 are anticipated under 35
U.S.C. § 102(b) by Carnegie. Specifically, the issue is whether the
Examiner erred by finding that Carnegie’s “means for sending periodic
invoices” (Carnegie claim 7) describes a hardware product that provides
metric data on a periodic basis, as required by claim 11, or transmitting the
metric to a remote site on a periodic basis, as required by claim 41.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification does not contain a lexicographic definition of
“metric data.”
2. The Specification states: “The metrics data may relate to, or
measure, some operational aspect of the hardware devices 12, such
as a period of time the hardware devices 12 are actually in use, for
example. Other metrics data, including configuration data, may be
used as a basis for billing in the pay-per-use scheme.” Spec. 3:13-
16.
3. The Specification describes “examples” of metric data, such as: the
number of I/O reads or writes; the number of connected users;
bandwidth-related metrics, memory usage, central processing unit
utilization or execution time, number of trade transactions
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processed through the brokerage company’s Web server. Spec.
8:12-32.
4. Carnegie describes a system which bills a user on a per connection
basis. Abstr. 1-2.
5. Carnegie describes a system where a billable event is the
establishment of a tunneled IP through an access point (AP 110)
between a portable device (101) and a destination server (130).
Col. 11, l. 64 – col. 12, ll. 3. See also col. 5, ll. 43-48.
6. Carnegie describes that software on the portable device is used to
establish the tunneled IP once the portable device is connected to
the access point. Col. 8, ll. 6-11. See also Col. 8, ll. 50-52.
7. Carnegie describes that for each billable event the AP 110 records
“information regarding the connection”; such as the remote user’s
identity, passwords, keys, the destination server 130, date, and
time. Col. 12, ll. 14-23. Also see, col. 12, ll. 57-65 and Fig. 3, step
306.
8. Carnegie describes that the remote user’s identity is obtained from
the signal from the signaling resource 105 on the portable device
101 and is then used to determine the user’s account and is
recorded to the user’s account for billing for the connection. See
col. 12, ll. 16-18 and 26-32. Also see, Fig. 3, step 308.

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ANALYSIS
The rejection of claims 1-4, 8-12, 16, 18-25, 27, 28, 32, 35, 37-41, 44, 45,
47, 48, and 50-54 under 35 U.S.C. § 102(b) as being anticipated by
Carnegie

Claim 1
The Appellants argue that the Examiner erred in rejecting claim 1 as
being anticipated by Carnegie because, when claim 1 is given the broadest
reasonable interpretation in light of the Specification, claim 1’s metering
mechanism that “acquires metric data from the one or more hardware
products, the metrics data related to an operation at the one or more
hardware products” does not read on Carnegie’s system which bills on a per
connection basis. See App. Br. 11-14 and Reply Br. 2-5. We are not
persuaded by the Appellants’ argument.
We see nothing in the limitation at issue which precludes Carnegie’s
system from anticipating claim 1. The limitation at issue is:
a metering mechanism . . . wherein the metering
mechanism acquires metrics data from the one or
more hardware products, the metrics data related to
an operation at the one or more hardware products.

While the Appellants are correct that Carnegie does teach a system
which bills based on a per-connection to a network basis (App. Br. 11 and
FF 4), we see nothing in this fact that precludes the claimed metering
mechanism from reading on Carnegie’s access point. Carnegie describes
that upon a billable event, which is the establishment of a tunneled IP (FF 5),
the access point records “information regarding the connection” to a user’s
account. FF 7. For example, this information includes the remote user’s
identity, passwords, keys, the destination server 130, which are sent from the
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user’s portable device (i.e., the claimed hardware product) to the access
point. Id. This information is then used to create a bill for the user based on
the number of connections. FF 8.
The Examiner found that the establishment of the tunneled IP is “an
operation at the one or more hardware products.” Ans. 8. We agree.
Carnegie describes that once a connection to an access point has been made,
software in the portable device is used to setup the tunneled IP. FF 6. Use
of this software is an operation of the portable device. We note that this
limitation does not require that the data be related to all operations at the
hardware product, but only recites an operation at the hardware product. We
find this construction to be not unreasonable in light of the Specification,
which provides a variety of operations that are related to a metric. See FF 3.
The Examiner also found that the claimed metric data read on
Carnegie’s information regarding the connection (see Ans. 3-4 and 8-9). We
agree. This data is used to create a metric (i.e., the number of connections)
for billing purposes. See FF 4 and 8. We note that in the Reply Brief, the
Appellants provided a construction of a “‘metric related to an operation of a
hardware product’” as a “measurable parameter that relates to the product’s
operation.” Reply Br. 4-5. However, this limitation is not recited in claim 1.
Claim 1 more broadly recites that metric data is related to an operation of a
hardware product. We note that the Specification does not contain a
lexicographic definition of “metric data” (FF 1) and our finding is not
inconsistent with the Specification (see FF 2-3).
Finally, we turn to the Appellants’ brief assertion that the Examiner
erred because the rejection did not address all of the limitations of claim 1
(App. Br. 11 and Reply Br. 5). We are not persuaded. While the Examiner
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does not explicitly word-for-word copy claim 1, the Examiner does provide
citations to the reference for both the metering mechanism and the usage
repository, which implicitly address the limitations at issue. See Ans. 3-4.
We are not persuaded by the Appellants’ arguments that the Examiner
erred in rejecting claim 1 as being anticipated by Carnegie. Accordingly, the
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Carnegie is affirmed.

Claims 11 and 41
As to claim 11, we are persuaded by the Appellants that the Examiner
erred in their rejection. In the rejection, the Examiner points to Carnegie’s
claim 7 as describing that the data is provided on a periodic basis. Ans. 4.
We agree with the Appellants (see App. Br. 14-15) that “[a] means for
sending periodic invoices” (Carnegie, claim 7) does not describe a hardware
product that provides metric data on a periodic basis, as required by claim
11.
As to claim 41, as discussed below, we find claim 41 is indefinite, and
we reverse this rejection on that basis. See In re Steele, 305 F.2d 859, 862
(CCPA 1962).
Accordingly, the rejection of claims 11 and 41 under 35 U.S.C. §
102(b) as being anticipated by Carnegie is reversed.

Claims 18-20, 27, 37, 45, and 53
The Appellants argue against the rejection of claims 18-20, 27, 37, 45,
and 53 for the same reasons used to argue against the rejection of claim 1.
App. Br. 11. Accordingly, because we found them unpersuasive as to that
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rejection, we find them equally unpersuasive as to error in the rejection of
claims 18-20, 27, 37, 45, and 53.

Claims 2-4, 8-10, 12, 16, 21-25, 28, 32, 35, 38-40, 44, 47, 48, and 50-
54
We also shall sustain the standing 35 U.S.C. § 102(b) rejection of
dependent claims 2-4, 8-10, 12, 16, 21-25, 28, 32, 35, 38-40, 44, 47, 48, and
50-54 as being anticipated by Carnegie since the Appellants have not
challenged such with any reasonable specificity (see App. Br. 15), thereby
allowing claims to stand or fall with their parent claims.

The rejection of claims 5-7, 13-15, 26, 29-31, 33, 34, 36, 42, 43, 46, 49, and
55-61 under 35 U.S.C. § 103(a) as being unpatentable over Carnegie

We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 5-7, 13-15, 26, 29-31, 33, 34, 36, 42, 43, 46, 49, and 55-61
as being unpatentable over Carnegie since the Appellants have not
challenged such with any reasonable specificity (see App. Br. 15), thereby
allowing claims 5-7, 13-15, 26, 29-31, 33, 34, 36, 42, 43, 46, 49, and 55-61
to stand or fall with their parent claim (see In re Nielson, 816 F.2d 1567,
1572 (Fed. Cir. 1987)).

NEW GROUND OF REJECTION
Claims 41-43 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out or distinctly claim the
subject matter which Appellants regard as the invention.
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Dependent claims 41-43 further limit a “pay-per-use hardware
financing plan” recited in claim 27 or 32. However, neither claim 27 nor
claim 32 recite a pay-per-use financing plan, but are instead directed to a
“method for pricing a hardware product based on operating data collected
from the hardware product.” Additionally, dependent claim 41, which
depends upon claim 27, lack proper antecedent basis for the recitation of
“the remote site.”
Therefore, we find that claims 41-43 fail to set out and circumscribe a
particular area with a reasonable degree of precision and particularity when
read in light of the application disclosure as they would be interpreted by
one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).

DECISION
The decision of the Examiner to reject claims 1-10, 12-16, 18-40, and
42-61 is affirmed and to reject claims 11 and 41 is reversed. We enter a new
ground of rejection on claims 41-43.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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• (1) Reopen prosecution. Submit an
appropriate amendment of the claims so
rejected or new evidence relating to the claims
so rejected, or both, and have the matter
reconsidered by the examiner, in which event
the proceeding will be remanded to the
examiner . . . .
• (2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by
the Board upon the same record . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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