Ex Parte Piponius et al

Board of Patent Appeals and Interferences

Apr 28, 2011

09956989 (B.P.A.I. Apr. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TONI MARKUS PIPONIUS, LAURI TAPIO AARNIO, TIMO
PETTERI KIRAVUO, EIJA RIITTA HELENA LEHTOVAARA, TERO
ILARI SILVENNOINEN, and HANNU H. KARI
____________________

Appeal 2009-006258
Application 09/956,989
Technology Center 2400
____________________

Before: JOSEPH L. DIXON, ST. JOHN COURTENAY, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006258
Application 09/956,989
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
11, 13-22, 24, 25, and 27-31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to proxy for content service. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for providing a piece of content to a subscriber
terminal from a content server, wherein the provision of the
content from the content server to the subscriber terminal is
controlled by a proxy, and said control of the content provision
comprises the following steps:
- receiving, from the subscriber terminal, in the proxy a
content request for providing the content,
- determining, by the proxy, whether or not the content is
chargeable content, wherein the determining step includes
accessing a database that includes information that is indicative
of which content is chargeable and which content is free to end
users connected to a network,
- determining by means of the proxy a billing address for
the chargeable content,
- providing the content corresponding to the content
request under the control of the proxy from the content server to
the subscriber terminal, and
- generating billing information related to the chargeable
content, wherein generating billing information includes
accessing a subscriber terminal profile, and wherein the
subscriber terminal profile includes a prepaid amount provided
by an end user of the subscriber terminal.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schutte
Kimura
Reeder
Ronen
Melen
Roden
Ginzboorg
Davis
US 5,319,454
US 5,778,189
US 5,852,812
US 5,905,736
US 5,956,391
US 5,970,477
US 6,047,051
US 6,389,537 B1
Jun. 7, 1994
Jul. 7, 1998
Dec. 22, 1998
May 18, 1999
Sep. 21, 1999
Oct. 19, 1999
Apr. 4, 2000
May 14, 2002
Cockrill US 2002/0059114 A1 May 16, 2002

REJECTIONS
Claims 1, 6-8, 11, 13, 16, 19-22, 27, and 28 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ginzboorg and Davis. Ans. 4.
Claims 2-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginzboorg, Davis, and Ronen. Ans. 8.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginzboorg, Davis, and Melen. Ans. 10.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginzboorg, Davis, and Roden. Ans. 11.
Claims 10, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ginzboorg, Davis, and Cockrill. Ans. 12.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginzboorg, Davis, and Reeder. Ans. 14.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginzboorg, Davis, and Kimura. Ans. 15.
Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginzboorg, Davis, and Schutte. Ans. 16.
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Claims 29-31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginzboorg and Ronen. Ans. 17.

ISSUES
Has the Examiner set forth a sufficient showing of obviousness of
independent claim 1? Specifically, do the teachings of Ginzboorg teach the
claimed:
receiving, from the subscriber terminal, in the proxy a
content request for providing the content, - determining, by the
proxy, whether or not the content is chargeable content,
wherein the determining step includes accessing a database that
includes information that is indicative of which content is
chargeable and which content is free to end users connected to a
network, - determining by means of the proxy a billing address
for the chargeable content, - providing the content
corresponding to the content request under the control of the
proxy from the content server to the subscriber terminal?

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416.
Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
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combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 416). The Federal Circuit relied in part on the fact
that Leapfrog had presented no evidence that the proposed modification was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Id. at 1162.
The question of obviousness is “based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . .” In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted). Thus, “[t]he inherent teaching of a prior art reference, a
question of fact, arises both in the context of anticipation and obviousness.”
In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103
rejection based in part on inherent disclosure in one of the references).
In this decision, we have considered only those arguments actually
made by Appellants. Arguments which Appellants could have made but did
not make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
At the outset, we note that Appellants have not set forth separate
arguments for patentability of independent claim 29 and the dependent
claims. (App. Br. 12). Therefore, we will group independent claim 29 and
the dependent claims as standing or falling with independent claim 1.
Appellants argue that claim 1 recites an architecture in which the
provision for the content from the content server to the subscriber terminal is
"controlled by a proxy. The proxy controls the information flow from the
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Content Server to the subscriber terminal. Nothing in Ginzboorg accounts
for this control… Ginzboorg , instead, offers a billing server that
authenticates or authorizes content: not control its delivery." (App. Br. 10).
We find Appellants' argument to be unpersuasive of error in the Examiner’s
showing of obviousness wherein authorizing content is deemed to be a form
of control of the delivery since unauthorized content would not be delivered.
Appellants set forth three arguments concerning the timing of the
billing at page 11 of the Appeal Brief, but we find no express support in the
language of independent claim 1 for these arguments. Therefore,
Appellants' arguments do not show error in the Examiner’s showing of
obviousness of independent claim 1.
Appellants argue that "[u]sing the architecture outlined by the pending
claims, the content server would not have to be modified to provide this
extra communication because the proxy is configured to make content
routing decisions." (App. Br. 11). Appellants' argument is again not
commensurate in scope with the broader language of independent claim 1
and therefore does not show error in the Examiner's showing of obviousness
thereof.
Appellants further contend that Ginzboorg fails to discern between
chargeable and free content and that the proxy is tasked with the
determination not some other random element in the system. (App. Br. 11).
The Examiner has identified, at page 23 of the Answer, "the proxy" as the
billing server. The Examiner further maintains that columns 10 and 13 of
Ginzboorg clearly establish that there at least some services that are free and
some that are chargeable and that "one of ordinary skill in the art would
understand that there is some form of inherent mechanism for discerning
between the two types." (Ans. 23). The Examiner further proffers the
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teachings of column 6 of Ginzboorg which describes the billing server
running a process to determine how to charge the customer based on the
requested content. We agree with the Examiner that there would be some
inherent determination to charge. Alternatively, we conclude that it would
have been obvious to one of ordinary skill in the art to have the billing server
determine whether or not content was chargeable or free based upon the
teachings of Ginzboorg. While Appellants identify that column 13 of
Ginzboorg does not require free services to be stored in the billing server
database (Reply Br. 3), Ginzboorg clearly suggests that one alternative
would be to require free services to be stored in the billing server database
and the alternative would be to not store free services in the billing server
database. Therefore, we do not find Appellants' argument to be persuasive
of error in the Examiner's showing of obviousness of independent claim 1.
Furthermore, we find that column 13, line 30─column 14, line 8, of
Ginzboorg discusses billing servers in geographically limited areas and how
they may operate locally and also interact. We find this teaching to further
suggest that the billing server can do all functions locally and further can
interact with other billing servers to provide additional content.
Appellants next set forth the significance of the ability of the proxy to
make the determination between chargeable and free content, but
Appellants’ contentions are not supported by the express language of
independent claim 1. (App. Br. 11-12). Therefore, these arguments are not
persuasive of error in the Examiner’ showing of obviousness.
Appellants further contend that a "fundamental difference" between
Ginzboorg and the claims is that Ginzboorg pertains to "a service and not to
content delivery." (App. Br. 12). Appellants further argue that Ginzboorg
deals with the type of service (for example video-on-demand) and not
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specific content. Again, we find Appellants' argument is not commensurate
in scope of the express language of independent claim 1 where "specific"
content is not recited in the language of the claim. Furthermore, we find the
distinction between chargeable content and free content meets the broad
language of independent claim 1. Additionally, we find that the teachings of
Davis reinforce the video-on-demand and pay-per-view uses which would
charge for the specific/actual content viewed. Therefore, we find
Appellants' argument unpersuasive of error in the Examiner’s showing of
obviousness of independent claim 1.
Appellants set forth a discussion of case law concerning the
motivation to combine and the need for an articulated reason why the
claimed invention is obvious (App. Br. 13-14), but Appellants do not
address the Examiner's articulated reasons for the combination as set forth at
page 5 of the Answer. Therefore, Appellants' argument does not show error
in the Examiner's showing of obviousness of independent claim 1.
Since Appellants have not shown error in the in the Examiner's
showing of obviousness, we will sustain the rejection of independent claim 1
and independent claims 29 and dependent claims 2 -11, 13-22, 24, 25, 27,
28, 30, and 31 which Appellants have not set forth separate arguments for
patentability thereto.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-11, 13-22, 24, 25, and
27-31 as obvious.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1-11, 13-22,
24, 25, and 27-31is sustained.

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) (2010).

AFFIRMED

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