Ex Parte Roberts

Patent Trials and Appeals Board

May 29, 2013

10720856 - (D) (P.T.A.B. May. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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Ex parte TIMOTHY ROBERTS 7
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Appeal 2011-004424 10
Application 10/720,856 11
Technology Center 3600 12
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
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FETTING, Administrative Patent Judge. 19
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DECISION ON APPEAL 22
Appeal 2011-004424
Application 10/720,856

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 16, 2010) and Reply Brief (“Reply Br.,” filed December
27, 2010), and the Examiner’s Answer (“Ans.,” mailed October 27, 2010).
Timothy Roberts (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 1-20, the only claims pending in the application on 3
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 4
The Appellant invented a way for billing or tariffing users of a 5
communications network for the use of network resources and services, and 6
for the purchase of goods and services via the network. (Specification 1:12-7
14). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method of 12
billing a communications network user 13
for the purchase of goods or services 14
associated with the transport of packet traffic 15
from that communications network into a packet 16
communications network, 17
each packet having an address 18
which identifies a provider of goods or services, 19
wherein the method is executed by a server and comprises: 20
[1] accessing, 21
by the server, 22
a set of rules, 23
[2] determining, 24
Appeal 2011-004424
Application 10/720,856

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by the server, 1
from said rules and each packet address, 2
a respective billing tariff 3
and 4
a network user account 5
to be debited for the transport of that packet, 6
[3] obtaining, 7
by the server, 8
a coupon from an account database, 9
representing an amount of credit, 10
and 11
[4] debiting, 12
by the server, 13
a network user account 14
by the amount of that credit, 15
before allowing the transport of packet traffic for that 16
network user. 17
The Examiner relies upon the following prior art: 18
Ferguson US 5,819,092 Oct. 6, 1998
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Ferguson.2 20

2 The statutory basis of the rejection only recites claims 1-9, 11-13 and 17-
20, but the analysis includes all claims 1-20. Accordingly we treat the
rejection as covering all claims 1-20.
Appeal 2011-004424
Application 10/720,856

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ISSUES 1
The issues as to claims 1-7 and 11-20 turn primarily on whether 2
Ferguson uses each packet header for determining fees and accounts. The 3
issues as to claims 8-10 turn primarily on whether Ferguson describes 4
applying a coupon amount separate from the goods or services amount. 5
FACTS PERTINENT TO THE ISSUES 6
The following enumerated Findings of Fact (FF) are believed to be 7
supported by a preponderance of the evidence. 8
Facts Related to the Prior Art 9
Ferguson 10
01. Ferguson is directed to a software tool for setting fees in an 11
online service, as part of a visually oriented tool for creating 12
online services. Ferguson 1:12-15. 13
02. Ferguson provides a sophisticated fee setting tool that allows a 14
developer to assign a system of fees for access to an online 15
service. The fee setting tool allows complex fee arrangements to 16
be created using a well defined scripting language. Ferguson 17
4:28-32. 18
03. Ferguson provides services by the Online Designer visual editor 19
that allows a developer to create an online service that consists of 20
a set of standardized subservices. The subservices include a 21
Hyperdocument/Commerce subservice for displaying 22
hyperdocuments and performing electronic transactions, a 23
Classified Advertisement subservice for implementing electronic 24
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classified advertisements, a Reference subservice for 1
implementing online reference works, a Directory Lookup 2
subservice for implementing online searchable directories of 3
information, a Bulletin Board subservice for providing a means 4
for allowing users to post and view messages, a Document 5
Retrieval subservice to provides a means for retrieving documents, 6
an Electronic Publishing subservice that provides electronic 7
editions of newspapers or magazines that may be downloaded, and 8
a Meta-Service subservice that provides access to other external 9
online services Ferguson 4:33-50. 10
04. Ferguson describes a unique fee setting tool that allows a 11
developer of an online service to develop a fee structure for the 12
online service. The fee structure for the online service can handle 13
fees levied against both users and third party content providers. 14
For example, a user can be levied fees for logging onto an online 15
service, performing searches, or downloading information. Third 16
party content providers can be levied fees for submitting 17
advertisements or for executing a transaction with a user. 18
Similarly, the fee setting tool also allows the online service 19
developer to assign a payment system whereby users or content 20
providers can be paid for certain actions. For example, a user may 21
be paid when that user fills out a marketing questionnaire or wins 22
a contest. A third party content providers may be paid when that 23
content provider supplies valuable information desired by users of 24
the online service. Ferguson 4:51-67. 25
Appeal 2011-004424
Application 10/720,856

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ANALYSIS 1
Claims 1-7 and 11-20 all recite determining from rules and each packet 2
address, a respective billing tariff and a network user account to be debited 3
for the transport of that packet and debiting the account so identified before 4
transmitting the packets. So the packets must be formed and ready prior to 5
the determination, and the determination must occur prior to transmission. 6
The Examiner has not shown how Ferguson does so, but instead relies on 7
Ferguson’s URL, which would happen to share the same textual data 8
contents as the data in the packets, for the determination, and so fail to 9
satisfy the claimed timing requirements. Thus, we are persuaded by the 10
Appellant’s argument that Ferguson fails to describe this limitation of these 11
claims. 12
Claims 8-10 do not have the determining from packet address limitation. 13
These claims recite debiting and crediting a payment, as is conventional, and 14
accessing coupons for crediting prior to transmitting packets. This differs 15
from the single debit and credit posted in claims 1-7 and 11-20. The 16
Examiner relies on the findings as to that single debit and credit for claims 17
8-10 without any finding as to the additional coupon credit. Thus the 18
Examiner failed to present a prima facie case as to that coupon credit in 19
claims 8-10. 20
CONCLUSIONS OF LAW 21
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable 22
over Ferguson is improper. 23
Appeal 2011-004424
Application 10/720,856

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DECISION 1
The rejection of claims 1-20 is reversed. 2
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REVERSED 4
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Klh 7