Ex Parte Ooki et al

Board of Patent Appeals and Interferences

Apr 17, 2012

10668260 (B.P.A.I. Apr. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/668,260 09/24/2003 Yasuomi Ooki 02530029AA 7772
30743 7590 04/18/2012
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
04/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YASUOMI OOKI and YOSHIKAZU KOBAYASHI
____________________

Appeal 2010-002858
Application 10/668,260
Technology Center 2400
____________________

Before BRADLEY W. BAUMEISTER, BRUCE R. WINSOR, and
JENNIFER S. BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002858
Application 10/668,260

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SUMMARY
This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1, 7, 9, 11, and 13-17. Claims 2-6, 8, 10, and 12 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 9, 13-15, and 17 stand rejected under 35 U.S.C §103(a) as
unpatentable over Moskowitz (US 2003/0200439 A1; Oct. 23, 2003), Van
Horne (US 5,987,430; Nov. 16, 1999), and Official Notice of facts well
known in the art (“Official Notice”).
Claims 7, 11, and 16 stand rejected under 35 U.S.C §103(a) as
unpatentable over Moskowitz, Van Horne, Short (US 2006/0239254 A1;
Oct. 26, 2006), and Official Notice.
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to a system consisting of multiple
computers that access the Internet through a common access point, the
access point being capable of billing users based on the bandwidth used. See
Spec. 1-2. Representative claim 1, which is reproduced below with key
disputed language emphasized, is illustrative of the claimed subject matter:
1. An internet connection system, comprising:
a plurality of terminals, each terminal located in a
predetermined location, each terminal arranged to generate
communications having a location identifier unique to the
terminal; and
a gateway arranged to receive the communications from
the terminals and to selectively connect the terminals to the
internet, arranged to record a communication band usage for
each of the terminals indicating a quantity of communications
through the gateway having the unique location identifier of the
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Application 10/668,260

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terminal, and arranged to generate a communication fee data
unique to each terminal, the communication fee data based on a
ratio of the recorded communication band usage for the
terminal to a total of the recorded communication band usage
of all of the plurality of terminals.

CLAIMS 1, 9, 14, 15, AND 17
Appellants contend that the portions of Moskowitz and Van Horne
identified by the Examiner do not disclose the limitations of claim 1,
including “a gateway . . . arranged to record a communication band usage
for each of the terminals” and “a gateway . . . arranged to generate a
communication fee data unique to each terminal, the communication fee
data based on a ratio of the recorded communication band usage for the
terminal to a total of the recorded communication band usage of all of the
plurality of terminals.” Br. 30-36. Appellants also contend the Examiner
does not properly articulate a rationale for combining the two references.
The Examiner’s Answer presents how each of the references teaches
the limitations of Appellants’ claims. See Ans. 16-18. Appellants have not
addressed the Examiner’s finding by providing substantive arguments as to
how they are incorrect.
For example, the Examiner points to an embodiment in Moskowitz
wherein a user is charged based on bandwidth usage. Ans. 16 (citing
Moskowitz ¶ 106 (“The PDA . . . may charge for the amount of data which
is uploaded, downloaded or exchanged. This may be measured in bandwidth
terms.”)). The Examiner also points to Van Horne’s disclosure of a server
acting as a gateway for monitoring access ports, maintaining client usage
databases, and billing clients. Ans. 17 (citing Van Horne col. 7, ll. 10-25,
col. 15, ll. 30-45). However, other than making the conclusory assertion that
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the cited art does not disclose the limitation at issue, Appellants do not
address the Examiner’s findings. Br. 31.
In addition, Appellants do not dispute the Examiner’s finding that at
the time of the inventions “it was well-known in the art that the bandwidth
usage is often a component in the price charged to the customer by the
operator/service provider.” Ans. 18. Appellants instead argue that
Markowitz’s disclosure of a “convenience premium” would not be
understood by a person of ordinary skill as being within the claimed
limitation. Br. 32-33 . However, the Examiner’s position is not that
Markowitz’s disclosure of a convenience program corresponds to the
disputed claim language. Rather, the Examiner’s position is that
Markowitz’s disclosure renders the disputed claim language obvious in light
of facts that were well known in the art.
Furthermore, the Examiner finds that Moskowitz and Van Horne are
analogous art and points to specific language in Van Horne providing the
motivation to combine the teachings of the two references in order to
“provide a less complicated system for access and billing.” Ans. 20 (citing
Van Horne col. 3, ll.60-65). Appellants do not address this finding.
Because the Examiner has shown that claim 1 is obvious over the
teachings of Moskowitz and Van Horne, we sustain the Examiner’s rejection
of representative claim 1.
Appellants make substantially the same arguments with respect to
claim 9. Appellants do not separately argue claims 14, 15, and 17, which
depend from claim 1. Thus, we also sustain the Examiner’s rejection of
claims 9, 14, 15, and 17.

Appeal 2010-002858
Application 10/668,260

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CLAIM 13
In addition to repeating the arguments made regarding representative
claim 1, Appellants assert that the Examiner failed to consider independent
claim 13’s limitation “arranged to selectively connectively connect the
wireless terminals to the internet through the gateway and through the
wireless LAN base station of the sub-plurality of wireless LAN base stations
having the highest measured communication speed.” Br. 37. We agree. In
the final rejection, the Examiner did not address this limitation when
addressing claim 13. Final Rejection p. 9. And the Examiner did not
respond to this argument in the Answer. We note that the Examiner did
address this limitation in the context of rejecting claim 10, finding that this
limitation was “well-known in the networking art.” Final Rejection p.8.
However, there is no indication in the Final Rejection (or anywhere else in
prosecution) that this finding applied to claim 13. Based on this record, we
determine that the Examiner has not established a prima facie case of
obviousness and we reverse the Examiner’s rejection of claim 13.

CLAIMS 7, 11, AND 16
Appellants contend that the features of claims 7, 11, and 16 are not
taught by Moskowitz, Van Horne, or Short. Appellants provide substantially
the same arguments as those asserted with respect to claim 1, adding only
that “Short adds nothing to Moskowitz and Van Horne relating to these
limitations.” Br. 37-39. For the reasons set forth above, we sustain the
Examiner’s rejection of claims 7, 11, and 16.

Appeal 2010-002858
Application 10/668,260

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DECISION
The Examiner’s decision rejecting claims 1, 7, 9, 11, and 14-17 is
affirmed.
The Examiner’s decision rejecting claim 13 is reversed.
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-IN-PART

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