Ex Parte Rehman et al

Patent Trial and Appeal Board

Mar 29, 2016

11771618 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111771,618 0612912007 Muhammad Faisal Rehman
49845 7590 04/19/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.446US1 8253
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUHAMMAD FAISAL REHMAN and DEMIKA MONTJOY
Appeal2013-005213
Application 11/771,618
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BRADLEY B. BAY AT, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 1-3, 6-12, 15-20, and 23 under
35 U.S.C. § 103. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
BACKGROUND
The Appellants' invention is related to a billing data report system
(Spec. 1).
Appeal2013-005213
Application 11/771,618
Claim 1 is illustrative:
1. A system comprising:
a data source accessible via a network; and
a server communicatively coupled to the data source via
the network, the server implemented in a machine and
including:
a server network interface communicatively coupled to
the network, the server network interface configured to receive
billing data from the data source and to transmit a calculated
result, the billing data including a first number that indicates a
quantity of messages including communications related to
commerce; and
a result generator communicatively coupled to the server
network interface, the result generator implemented using a
processor of the machine and configured to generate the
calculated result using the first number and using a second
number included in a term from a service level agreement that
indicates a further quantity of messages including
communications related to commerce, the calculated result
including a percentage of the term from the service level
agreement based on the first number.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Pruthi
Wiley
US 2004/0015582 Al
US 2008/0052784 Al
Jan. 22, 2004
Feb.28,2008
European Information Technology eXchange, http://www.euroitx.com/
content/sla2004_0 l .php (2004) (hereinafter "ITX").
The Appellants appeal the following rejection:
Claims 1-3, 6-12, 15-20, and 23 under 35 U.S.C. § 103(a) as unpatentable
over Wiley in view of Pruthi in further view of ITX.
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Appeal2013-005213
Application 11/771,618
ISSUE
Did the Examiner err in rejecting the claim 1under35 U.S.C. § 103(a)
because the prior art does not disclose a processor configured to generate a
calculated result using a first number and a second number including a
percentage of the term from the service level agreement based on the first
number as required by claim 1?
Did the Examiner err in rejecting claim 9 under 35 U.S.C. § 103(a)
because the prior art does not disclose generating a calculated result using a
first number that indicates a quantity of messages and using a second
number included in a term from a service level as required by claim 9?
ANALYSIS
Rejection of claims 1-3, 6--8, 19, 20 and 23
We are not persuaded of error on the part of the Examiner by
Appellants' argument that Wiley does not disclose a first number that
indicates a quantity of messages and that Pruthi does not disclose a second
number that indicates a further quantity of messages included in a service
level agreement (App. Br. 11-12).
A ..s clairn l is directed to a svstem, limitations directed to what the first .,, -
and second nurnber represent or are related to do not distinguish the claimed
invention from the prior art. See In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997) (functional language does not confer patentability if prior
art stnwture has capability of functioning in the same manner). All that is
necessary to establish a prima facie case of obviousness of claim 1 is that the
combined teachings of \Viiey, Pn1thi and ITX render obvious a server that is
capable of receiving and transmitting billing data including a first number
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Appeal2013-005213
Application 11/771,618
and a result generator that is capable of generating a result using a first
number and a second number. In essence, as long as the prior art discloses a
processor that can calculate percentages from two numbers, such prior art is
sufficient to establish a case of obviousness. In the instant case, Wiley
discloses a processor that is capable of calculating percentages (paras. 116,
295, 338, 374--385, 419, 420) and Pruthi discloses a processor that is capable
of computing percentages (paras. 36 and 129). As Appellants have not
shown that the processors described in Wiley and Pn1thi would not be
capable of calculating a percentage using a first nmnber that indicates a
quantity of messages and a second number which is included in a term from
a service level agreement, we will sustain the Examiner's rejection of claim
1 and claims 2, 3 and 6----8 dependent therefrom. \Ve affirm the rejection as
it is directed to claims 19 ~ 20 and 23 for essentially the same reason.
Rejection of claims 9-12 and 15-17
Claim 9 includes the step of generating a calculated result using a first
number that indicates a quantity of messages and a second number included
in a service level agreement. We agree with Appellants that Pruthi and ITX
do not disclose calculating a percentage using a second number in relation to
a service agreement. The Examiner relies on paragraphs 41, 42, 44, 49, 50,
56, 57 and 59 of Pruthi for teaching the second number included in a term
for a service level agreement. Paragraphs 41, 42, 44, 49, 50, 56, and 57
relate to measuring transmission of IP data packets and generating statistics
from these measurements but do not relate to a number included in a term of
service level agreements. Paragraph 59 relates to billing clients based on
statistics rather than on a flat rate but does not discuss a number included in
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Appeal2013-005213
Application 11/771,618
a term related to a service level agreement. ITX discloses that service levels
are commonly measured in percentage terms but is silent on what exactly
this refers to. However, it is not clear what percentages are measured. In
addition, ITX does not disclose a calculated result using a first number that
indicates a quantity of messages and a second number that indicates a
quantity of messages which includes a percentage of the term based on the
first number.
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 9 and claims 10-12 and 15-1 7 dependent therefrom.
Rejection of claim 18
We will also not sustain this rejection as it is directed to claim 18
because claim 18 also requires the step of generating a calculated result
using a first number which indicates a quantity of messages and a second
number that indicates a quantity of messages including a percentage of the
term from a service level agreement.
DECISION
We affirm the Examiner's 103 rejection of claims 1-3, 19, 20, and 23
We do not affirm the Examiner's 103 rejection of claims 9-12 and
15-18.
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)(l )(iv).
AFFIRMED-IN-PART
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