Ex Parte Reith et al

Board of Patent Appeals and Interferences

Dec 13, 2011

10472326 (B.P.A.I. Dec. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/472,326 09/22/2003 Lothar Reith 1479-62 PCT/US 3389
23869 7590 12/13/2011
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
EXAMINER
REZA, MOHAMMAD W
ART UNIT PAPER NUMBER
2436
MAIL DATE DELIVERY MODE
12/13/2011 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 LOTHAR REITH and MARIAN PUTALA
____________

Appeal 2009-012165
Application 10/472,326
Technology Center 2400
____________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE and
BRUCE R. WINSOR, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-012165
Application 10/472,326

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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-7, 18, 21 and 221. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
The invention relates to telecommunications services where users are
authenticated and authorized to a first service profile before a user session
starts and where the service profile is dynamically varied in the course of the
session. Spec. 1, ll. 5-7; Abs.
Claim 1 is illustrative and is reproduced below:
1. A method of providing telecommunications services,
comprising:
authenticating a user and authorizing the user to a first
service profile including an indication of a quality of service
before a user session starts; and
dynamically varying the service profile including the
indication of quality of service during the user session.

The Examiner rejected claims 1-7, 18, 21 and 22 under
35 U.S.C. § 103(a) as unpatentable over Torabi (U.S. 6,754,482 B1) and
Yamamura (U.S. 6,028,838).
ISSUE
Did the Examiner err in determining that the combination of Torabi
and Yamamura render obvious the claimed invention?

1 Claims 8-17, 19, 20 and 23-48 have been withdrawn as directed to a non-
elected invention.
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and Appellants’ arguments in the Reply Brief presented in response
to the Examiner’s Answer.
Claims 1-5, 18, 21 and 22
After fully considering Appellants’ arguments addressing claims 1-5,
18, 21 and 22 (App. Br. 3-6, 9; Reply Br. 1-3), we find the Examiner’s
findings and explanations (Ans. 3-9) to be reasonable and adopt them as our
own. We provide the following additional analysis.
Appellants argue that “Yamamura does not provide any hint of
authenticating a user and authorizing the user to a first service profile
including an indication of a quality of service before a user session starts,
and dynamically varying the service profile including the indication of
quality of service during the user session.” App. Br. 5. Appellants’
argument is unpersuasive because it attacks the teachings of Yamamura
separately rather than addressing the combined teachings of the references.
One cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Circ. 1986); In re Keller, 642 F.2d 413,
426 (CCPA 1981). The Examiner relies on the combined teachings of Torabi
and Yamamura for describing all of the disputed claim limitations; not
Yamamura alone. Ans. 3.

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Appellants further argue that Yamamura teaches “providing the ability
to allow a user to select a service provider and a quality level using a
navigation apparatus, which has little to do with the claimed subject matter.”
App. Br. 5. Appellants also argue that Torabi teaches the “ability to
temporarily provide a service that the subscriber has not subscribed to or
which is not supported by the subscriber's home network is completely
different from the subject matter of the claim.” Reply Br. 2. To the extent
that Appellants argue that Yamamura and Torabi are non-analogous art we
are unpersuaded. Appellants do not sufficiently explain why Yamamura or
Torabi are not within the same field as the inventor’s endeavor or why
Yamamura would not still be reasonably pertinent to the inventor’s
particular problem. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Next, Appellants argue that “no reason existed that would have
prompted a person of ordinary skill in the art to combine the teachings of
Torabi and Yamamura to achieve the claimed invention.” App. Br. 5; Reply
Br. 2-3. Appellants argue that: (1) Torabi contemplates the ability to grant
access to a particular service on a temporary basis even though a subscriber
has not subscribed to a service (App. Br. 5-6; Reply Br. 2-3); and (2)
Yamamura’s teachings are completely unrelated to Torabi’s teachings since
Yamamura refers to providing a navigation apparatus to allow a user to
select a service provider and a desired quality level, with the navigation
apparatus being able to determine whether the requested quality level can be
supported (App. Br. 6; Reply Br. 2-3).
Appellants’ arguments are unpersuasive because they narrowly focus
on the individual teachings of Torabi and Yamamura. In particular, the
teachings of Yamamura are not limited to providing a navigation apparatus
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to allow a user to select a service provider and a desired quality level and
which can determine whether the requested quality level can be supported.
The use of patents as references is not limited to what the patentees describe
as their own inventions or to the problems with which they are concerned, as
they are a part of the literature and are relevant for all they contain. In re
Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Lemelson, 397 F.2d
1006, 1009 (CCPA 1968)). The Examiner relies on Yamamura for the
general teaching of providing of an indication of quality of service. App. Br
3 (citing col. 5, ll. 18-30, col. 11, ll. 1-20, col. 12, ll. 35-54). The Examiner’s
determination that it would have been obvious to one with ordinary skill in
the art at the time the invention was made to incorporate Yamamura’s
teachings of providing an indication of quality of service with Torabi’s
method (Ans. 3) is reasonable and is no more than the combination of
familiar elements according to known methods. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). Appellants do not direct us to
objective evidence to demonstrate that the combination of providing an
indication of quality of service with Torabi’s method would have yielded an
unpredictable result.
Last, we are unpersuaded by Appellants’ conclusory arguments that:
(a) “even if Torabi and Yamamura could be hypothetically combined, the
hypothetical combination would not have led to the claimed subject matter”
(App. Br. 5); and (b) “[a] person or ordinary skill in the art would have
found absolutely no reason to incorporate the concept of quality of service
into the service profile of Torabi for the purpose of temporarily providing a
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service that the subscriber has not subscribed to or that is not available in the
subscriber's home network” (Reply Br. 2). Appellants do not sufficiently
explain why Torabi and Yamamura, as combined by the Examiner, would
not have led to the claimed subject matter. Appellants further do not direct
us to objective evidence (e.g., testimony by one with ordinary skill in the art)
to support their argument that a person of ordinary skill in the art would
have found absolutely no reason to combine the teachings of Torabi and
Yamamura.
For all these reasons, we sustain the rejection of claims 1-5 as obvious
over Torabi and Yamamura.
Appellants separately address claims 18, 21 and 22 by copying the
language of claim 18 and arguing that claims 18, 21 and 22 are allowable for
the same reasons as claim 1. App. Br. 9. A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability. 37 C.F.R. § 41.37 (c)(1)(vii). For the same reasons as those
addressing claims 1-5, we sustain the rejection of claims 18, 21 and 22 as
obvious over Torabi and Yamamura.
Claim 6
Claim 6 further recites: “wherein the predetermined event causing an
automatic change of the service profile is a depletion of an account in a
personal record of the user.” After fully considering Appellants’ arguments
addressing claim 6 (App. Br. 7-8; Reply Br. 3-4), we find the Examiner’s
findings and explanations (Ans. 4, 8) to be reasonable and adopt them as our
own. We provide the following additional analysis.
The Examiner directs attention to Torabi’s description at column 4,
lines 40-55 and column 5, lines 34-50 and finds that Torabi meets the
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limitations of claim 6. Ans. 4. The Examiner explains that the claim can be
broadly interpreted as “the reduction of an account in a personal record of
the user will cause the automatic change of the service profile.” Ans. 8. The
Examiner further finds that Torabi meets the disputed claim limitations
because Torabi describes dynamically changing the service profile for a user
and describes that account billing will authorize a user for flexible access to
a wide range of services. Ans. 8 (citing Torabi col. 2, ll. 39-43, col. 4, ll. 38-
43); see also Torabi Abs. ll. 17-23.
Appellants focus on the “depletion of an account” claim limitation and
argue that Torabi’s description of a credit card number in column 4 is not the
same as the depletion of an account in a personal record of the user. App. Br.
7 (citing Torabi col. 4, ll. 50-55). Appellants further argue that the Examiner
reads out the “depletion of an account” limitation in finding that claim 6 can
be broadly interpreted to mean that a reduction of an account in a personal
record of the user will cause the automatic change of the service profile.
Reply Br. 4.
Appellants do not contest the Examiner’s findings that Torabi
describes that account billing will authorize a user for flexible access to a
wide range of services. One with ordinary skill in the art would have
recognized that Torabi also suggests the corollary -- that the absence of
account billing (i.e., a depletion of a user account) would cause the system to
not authorize a user for access to services. In other words, one with ordinary
skill in the art would have recognized that Torabi suggests that the absence
of account billing (i.e., a depletion of a user account) would be a
predetermined condition that would cause the system to not authorize a user
for access.
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For these reasons, we sustain the rejection of claim 6 as obvious over
Torabi and Yamamura.
Claim 7
Claim 7 further recites: “restricting access of the user to advertising
information according to the service profile.” After fully considering
Appellants’ arguments addressing claim 7 (App. Br. 8-9; Reply Br. 4), we
find the Examiner’s findings and explanations (Ans. 4, 9) to be reasonable
and adopt them as our own. We provide the following additional analysis.
Appellants place emphasis on the limitation “advertising
information”. App. Br. 8-9, Reply Br. 4. The Examiner relies on Yamamura
for describing that a user accessing any particular database or information of
a service provider could be restricted based on a user service profile. Ans. 9.
We are unpersuaded by Appellants’ arguments because “advertising
information” is directed to non-functional descriptive material which merely
describes the class of information from/to which a user is restricted.
Accordingly, the term “advertising” in the context of “advertising
information” is not entitled to patentable weight. Appellants do not contest
the Examiner’s finding that Yamamura describes that a user could be
restricted from accessing information (i.e., a database or a service provider’s
information) based on a user service profile.
For these reasons, we sustain the rejection of claim 7 as obvious over
Torabi and Yamamura.

DECISION
We AFFIRM the rejection of claims 1-7, 18, 21 and 22 under
35 U.S.C. § 103(a) as unpatentable over Torabi and Yamamura.
Appeal 2009-012165
Application 10/472,326

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

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