Ex Parte Rojas

Board of Patent Appeals and Interferences

Sep 12, 2008

09808436 (B.P.A.I. Sep. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MICHAEL J. ROJAS 8
___________ 9
Appeal 2008-1566 10
Application 09/808,436 11
Technology Center 3600 12
___________ 13
14
Decided: September 12, 2008 15
___________ 16
17
Before HUBERT C. LORIN, ANTON W. FETTING, 18
and DAVID B. WALKER, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge.20
DECISION ON APPEAL 21
STATEMENT OF CASE22
Michael J. Rojas (Appellant) seeks review under 35 U.S.C. § 134 of a 23
final rejection of claims 1-7, the only claims pending in the application on 24
appeal. 25
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 26
(2002). 27
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We AFFIRM and DENOMINATE AS A NEW GROUND OF 1
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b). 2
3
The Appellant invented a way of cost accounting for data usage over a 4
network and for web hosting applications for managing telecommunications 5
devices. (Specification 1:17-19). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 1, which is reproduced below. 8
1. A method for cost accounting of data usage over a 9
network by network users, the network having a plurality of 10
internal IP addresses and access to a plurality of external IP 11
addresses over the Internet, the method comprising the steps of: 12
(a) detecting data packets having a source and destination IP 13
address moving over the network; 14
(b) classifying the detected data packets based on the source 15
and destination address; 16
(c) assigning the classified data packets to a network user; 17
(d) costing the classified data packets based on a predetermined 18
costing scheme; and 19
(e) accumulating and storing the costed data packets based on 20
the assigned user. 21
This appeal arises from the Examiner’s final Rejection, mailed April 19, 22
2006. The Appellant filed an Appeal Brief in support of the appeal on 23
December 28, 2006. An Examiner’s Answer to the Appeal Brief was mailed 24
on May 3, 2007. A Reply Brief was filed on July 2, 2007. 25
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PRIOR ART 1
The Examiner relies upon the following prior art: 2
Saari US 6,338,046 B1 Jan. 8, 2002
Schweitzer US 6,418,467 B1 Jul. 9, 2002
REJECTIONS 3
Claims 1-4 and 6 stand rejected under 35 U.S.C. § 102(e) as anticipated 4
by Saari. 5
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Saari and Schweitzer. 7
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 8
Saari. 9
ISSUES 10
The issues pertinent to this appeal are 11
• Whether the Appellant has sustained its burden of showing that the 12
Examiner erred in rejecting claims 1-4 and 6 under 35 U.S.C. § 102(e) 13
as anticipated by Saari. 14
• Whether the Appellant has sustained its burden of showing that the 15
Examiner erred in rejecting claim 5 under 35 U.S.C. § 103(a) as 16
unpatentable over Saari and Schweitzer. 17
• Whether the Appellant has sustained its burden of showing that the 18
Examiner erred in rejecting claim 7 under 35 U.S.C. § 103(a) as 19
unpatentable over Saari. 20
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The pertinent issue turns on whether the packets in Saari are classified 1
based on the source and destination address. 2
FACTS PERTINENT TO THE ISSUES 3
The following enumerated Findings of Fact (FF) are believed to be 4
supported by a preponderance of the evidence. 5
Facts Related to Claim Construction 6
01. The disclosure contains no lexicographic definition of 7
“classify.” 8
02. The ordinary and customary meaning of “classify” is to arrange 9
or organize according to class or category.1 10
Facts Related to Appellant’s Disclosure 11
03. The Specification describes classifying user pairs (Specification 12
4:28 – 5:8). 13
04. The Specification describes Data Accounting classification as 14
determining which of four equivalent source-to-destination 15
conditions exist for the point-to-point data packet transfers 16
(Specification 7:13-15 and 9:4-13). 17
05. The Specification describes filtering as being used for 18
disregarding unwanted information (Specification 7:5-6). 19

1 American Heritage Dictionary of the English Language (4th ed. 2000).
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Saari 1
06. Saari is directed to determining charges for usage of network 2
resources. At the time a connection is established with a network 3
node, a billing message or cell is transmitted to the node over the 4
connection. The billing cell contains billing and connection 5
information which is copied by the node and used to produce 6
billing information. Information cells are transmitted over the 7
same connection subsequent to the transmission of the billing cell 8
(Saari 2:1-12). 9
07. Saari’s nodes also transmit their respective charging 10
information to a common network billing system which generates-11
the total charge in a final bill that is forwarded to the user (Saari 12
2:27-30). 13
08. Saari describes a list of factors that might be used in charging 14
formulae as including, but not limited to, service class type, 15
quality of service, any individual or combination of ATM traffic 16
parameters, connection time, and other traffic flow parameters 17
(Saari 4:31-33). 18
09. Saari describes how information identifying each node that 19
processes the information carried by a billing cell may be encoded 20
in the billing cell as the billing cell travels through the various 21
connections between the source and destination. As such, the 22
billing cell may be used as a means of tracking the actual route of 23
the data as it passes through the network from one location to 24
another (Saari 6:40-47). 25
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Schweitzer 1
10. Schweitzer is directed to a network accounting and billing 2
system (Schweitzer 2:19-20). 3
11. Schweitzer describes filtering as meaning discarding any record 4
that belongs to a group of unneeded data records (Schweitzer 5
7:13-14). 6
12. Schweitzer describes how real-time, policy-based filtering and 7
aggregation can be done. The process then performs data merges 8
to remove redundant data. The billing record information can be 9
accessed from external applications. Filtering and/aggregation 10
and/or data enhancements can be done at any stage in the system 11
(Schweitzer 10:26-39). 12
Facts Related To The Level Of Skill In The Art 13
13. Neither the Examiner nor the Appellant has addressed the level 14
of ordinary skill in the pertinent arts of systems analysis and 15
programming, cost accounting, accounting for network usage, 16
network analysis and programming, and network communications. 17
We will therefore consider the cited prior art as representative of 18
the level of ordinary skill in the art. See Okajima v. Bourdeau, 19
261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific 20
findings on the level of skill in the art does not give rise to 21
reversible error ‘where the prior art itself reflects an appropriate 22
level and a need for testimony is not shown’”) (quoting Litton 23
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Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 1
(Fed. Cir. 1985). 2
14. One of ordinary skill knew that all packets transmitted using the 3
internet protocol (IP) had the source and destination embedded in 4
packet header data for the purpose of aggregating the packets back 5
into the original message the packets were derived from. 6
Facts Related To Secondary Considerations 7
15. There is no evidence on record of secondary considerations of 8
non-obviousness for our consideration. 9
PRINCIPLES OF LAW 10
Claim Construction 11
During examination of a patent application, pending claims are 12
given their broadest reasonable construction consistent with the 13
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 14
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 15
Limitations appearing in the specification but not recited in the claim are 16
not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 17
1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 18
specification” without importing limitations from the specification into the 19
claims unnecessarily). 20
Although a patent applicant is entitled to be his or her own lexicographer 21
of patent claim terms, in ex parte prosecution it must be within limits. In re 22
Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing 23
such definitions in the Specification with sufficient clarity to provide a 24
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person of ordinary skill in the art with clear and precise notice of the 1
meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480 2
(Fed. Cir. 1994) (although an inventor is free to define the specific terms 3
used to describe the invention, this must be done with reasonable clarity, 4
deliberateness, and precision; where an inventor chooses to give terms 5
uncommon meanings, the inventor must set out any uncommon definition in 6
some manner within the patent disclosure so as to give one of ordinary skill 7
in the art notice of the change). 8
Anticipation 9
"A claim is anticipated only if each and every element as set forth in the 10
claim is found, either expressly or inherently described, in a single prior art 11
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 12
631 (Fed. Cir. 1987). "When a claim covers several structures or 13
compositions, either generically or as alternatives, the claim is deemed 14
anticipated if any of the structures or compositions within the scope of the 15
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 16
Cir. 2001). "The identical invention must be shown in as complete detail as 17
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 18
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 19
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 20
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 21
Obviousness 22
23
A claimed invention is unpatentable if the differences between it and 24
the prior art are “such that the subject matter as a whole would have been 25
obvious at the time the invention was made to a person having ordinary skill 26
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in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1
1727 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 2
In Graham, the Court held that that the obviousness analysis is 3
bottomed on several basic factual inquiries: “[(1)] the scope and content of 4
the prior art are to be determined; [(2)] differences between the prior art and 5
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 6
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 7
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to 8
known methods is likely to be obvious when it does no more than yield 9
predictable results.” KSR, at 1739. 10
“When a work is available in one field of endeavor, design incentives 11
and other market forces can prompt variations of it, either in the same field 12
or a different one. If a person of ordinary skill can implement a predictable 13
variation, § 103 likely bars its patentability.” Id. at 1740. 14
“For the same reason, if a technique has been used to improve one 15
device, and a person of ordinary skill in the art would recognize that it would 16
improve similar devices in the same way, using the technique is obvious 17
unless its actual application is beyond his or her skill.” Id. 18
“Under the correct analysis, any need or problem known in the field 19
of endeavor at the time of invention and addressed by the patent can provide 20
a reason for combining the elements in the manner claimed.” Id. at 1742. 21
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ANALYSIS 1
Claims 1-4 and 6 rejected under 35 U.S.C. § 102(e) as anticipated by Saari. 2
The Appellant argues that the dependent claims are patentable for the 3
same reasons as independent claim 1 (Appeal Br. 8) and accordingly we 4
treat these claims as a group. 5
Accordingly, we select claim 1 as representative of the group. 6
37 C.F.R. § 41.37(c)(1)(vii) (2007). 7
The Examiner found that Saari anticipated claim 1 (Answer 3-4). The 8
Appellant contends that Saari fails to describe elements (b) classifying the 9
detected data packets based on the source and destination address (Appeal 10
Br. 4-7); and (c) assigning the classified data packets to a network user 11
(Appeal Br. 7-8). 12
In particular, regarding limitation (b), the Appellant contends that Saari 13
does not teach charging strategies, does not enable one of ordinary skill to 14
manipulate billing cell information, classifying source and destination IP 15
addresses and that the Appellant’s invention charges a user based solely on 16
the source and destination IP address (Appeal Br. 5). 17
We disagree with the Appellant. As to whether Saari describes charging 18
strategies, we find that the argument is not commensurate with the scope of 19
the claim. Claim 1 only requires a predetermined costing scheme (Claim 20
1(d)). Saari’s billing cell contains billing and connection information which 21
is copied by a node and used to produce billing information (FF 06). Such a 22
scheme, by virtue of being so laid out, is predetermined and meets limitation 23
(d) of claim 1. 24
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As to enablement of billing cell manipulation, Saari itself is indicative of 1
the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 2
1350, 1355 (Fed. Cir. 2001) (FF 13). Thus, we find that the implementation 3
details, such as data packet parsing, not explicitly described by Saari were 4
within the knowledge of one of ordinary skill, and Saari was accordingly 5
enabled as to such implementation detail knowledge. 6
As to classifying source and destinations, we first must construe the term 7
“classify” which is not lexicographically defined in the Specification (FF 8
01). The Specification describes two species of the genus classify, viz. user 9
classification and data accounting classification, but does not define the 10
genus (FF 03 & 04). Claim 1 does not recite either of these species, but 11
claim 1instead broadly claims the genus which contains these two species. 12
The usual and customary meaning of classify is to arrange or organize 13
according to class or category (FF 02). 14
Saari explicitly describes how information identifying each node that 15
processes the information carried by a billing cell may be encoded in the 16
billing cell as the billing cell travels through the various connections 17
between the source and destination (FF 09). This is an extension of what 18
one of ordinary skill knew occurred in every packet, i.e. that all packets 19
transmitted using the internet protocol (IP) had the source and destination 20
embedded in packet header data for the purpose of aggregating the packets 21
back into the original message the packets were derived from (FF 14). 22
Thus, the destination necessarily arranges or organizes packets according 23
to class or category defined by the combination of source and destination to 24
reconstruct the original message. Thus, element (b) simply recites what 25
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every destination machine must do to reconstruct a message passed over the 1
Internet. 2
The final contention is that the Appellant’s invention charges a user 3
based solely on the source and destination IP address. We find this 4
argument is not commensurate with the scope of the claim. Claim 1 requires 5
nothing more of the costing scheme than that it be predetermined. There is 6
no linkage in claim 1 between the classification based on source and 7
destination and the costing performed. 8
As to the Appellant’s contention regarding element (c), we find that 9
Saari explicitly transmits charging information to a common network billing 10
system which generates-the total charge in a final bill that is forwarded to 11
the user (FF 07). Since the charges for the transmission are assigned to the 12
user, it necessarily follows that the traffic billed to that user, including the 13
classified data packets within that traffic, are assigned to the same user to 14
achieve that billing. As with costing, claim 1 does not require that the 15
classification be the basis for the assignment. Claim 1 requires only that, 16
having been classified, packets are assigned to a user. 17
The Appellant has not sustained its burden of showing that the Examiner 18
erred in rejecting claims 1-4 and 6 under 35 U.S.C. § 102(e) as anticipated 19
by Saari. Our reasoning differs from that of the Examiner in having relied 20
on the knowledge of one of ordinary skill regarding how IP packets are 21
classified. Therefore we treat this rejection as a new ground pursuant to 22
37 C.F.R. § 41.50(b). 23
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Claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over Saari and 1
Schweitzer. 2
The Appellant argues claim 5, requiring a filtering process to exclude 3
certain predetermined data packets from the costing step. The Examiner 4
found that this was described by Schweitzer (Answer 5-6). The Appellant 5
argues that merging is not filtration because all of the records of the larger 6
file remain after merging (Appeal Br. 9). We disagree. Schweitzer 7
describes both merging and filtering as being used to discard unwanted data 8
(FF 11 & 12). The Appellant’s disclosure describes filtering as being used 9
for disregarding unwanted information (FF 05). Thus, Saari’s description of 10
merging and filtration are each consistent with the meaning of filtering 11
disclosed by the Appellant. 12
The Appellant has not sustained its burden of showing that the Examiner 13
erred in rejecting claim 5 under 35 U.S.C. § 103(a) as unpatentable over 14
Saari and Schweitzer. This claim depends from claim 1, in which our 15
reasoning differs from that of the Examiner in having relied on the 16
knowledge of one of ordinary skill regarding how IP packets are classified. 17
Therefore we treat this rejection as a new ground pursuant to 37 C.F.R. 18
§ 41.50(b). 19
Claim 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Saari. 20
The Appellant argues independent claim 7, requiring a programmable 21
device that contains both a network controller and a processor that classifies 22
and costs data packets. The Examiner found that this was known to one of 23
ordinary skill as the mechanism encapsulating Saari’s system (Answer 6). 24
The Appellant argues that the Examiner has shown no reason to modify 25
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Saari for this because there is no reason to include a network controller and 1
cost processor in a single device (Appeal Br. 12). The Appellant also argues 2
claim 7 is patentable for the same reasons as claim 1. 3
We disagree with the Appellant. Any computer is a programmable 4
device. The Appellant is arguing no more than that it would not be obvious 5
to provide two functions that produce predictable results in a common 6
computer. “The combination of familiar elements according to known 7
methods is likely to be obvious when it does no more than yield predictable 8
results.” KSR, 127 S. Ct. at 1739. A combination of a network controller 9
and a cost processor produces the expected results of each of the 10
components in a single device. We find the arguments applied in support of 11
claim 1 to be equally unpersuasive toward claim 7 for the same reasons we 12
found supra. 13
The Appellant has not sustained its burden of showing that the Examiner 14
erred in rejecting claim 7 under 35 U.S.C. § 103(a) as unpatentable over 15
Saari. The Appellant’s arguments for this claim include arguments made for 16
claim 1. To that extent, our reasoning differs from that of the Examiner in 17
having relied on the knowledge of one of ordinary skill regarding how IP 18
packets are classified. Therefore we treat this rejection as a new ground 19
pursuant to 37 C.F.R. § 41.50(b). 20
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CONCLUSIONS OF LAW 1
The Appellant has not sustained its burden of showing that the Examiner 2
erred in rejecting claims 1-4 and 6 under 35 U.S.C. § 102 as anticipated by 3
Saari, and claims 5 and 7 under 35 U.S.C. § 103(a) as unpatentable over the 4
prior art. 5
The rejections of claims 1-7 are denominated as new grounds of 6
rejection pursuant to 37 C.F.R. § 41.50(b). 7
DECISION 8
To summarize, our decision is as follows: 9
• The rejection of claims 1-4 and 6 under 35 U.S.C. § 102(e) as 10
anticipated by Saari is sustained. 11
• The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable 12
over Saari and Schweitzer is sustained. 13
• The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable 14
over Saari is sustained. 15
• The rejections of claims 1-7 are denominated as new grounds of 16
rejection pursuant to 37 C.F.R. § 41.50(b). 17
Our decision is not a final agency action. 18
In addition to affirming the examiner's rejection(s) of one or more 19
claims, this decision contains new grounds of rejection pursuant to 37 CFR 20
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§ 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection 1
pursuant to this paragraph shall not be considered final for judicial review.” 2
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 3
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 4
the following two options with respect to the new rejection: 5
(1) Reopen prosecution. Submit an appropriate amendment of 6
the claims so rejected or new evidence relating to the claims 7
so rejected, or both, and have the matter reconsidered by the 8
Examiner, in which event the proceeding will be remanded 9
to the Examiner. . . . 10
(2) Request rehearing. Request that the proceeding be reheard 11
under § 41.52 by the Board upon the same record. . . . 12
Should the Appellants elect to prosecute further before the examiner 13
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek 14
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 15
the effective date of the affirmance is deferred until conclusion of the 16
prosecution before the examiner unless, as a mere incident to the limited 17
prosecution, the affirmed rejection is overcome. 18
If the appellant elects prosecution before the examiner and this does 19
not result in allowance of the application, abandonment or a second appeal, 20
this case should be returned to the Board of Patent Appeals and Interferences 21
for final action on the affirmed rejection, including any timely request for 22
rehearing thereof. 23
24
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 2
3
AFFIRMED 4
41.50(b) 5
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7
vsh 8
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SCULLY SCOTT MURPHY & PRESSER, PC 11
400 GARDEN CITY PLAZA 12
SUITE 300 13
GARDEN CITY NY 11530 14