Ex Parte Woundy et al

Patent Trial and Appeal Board

Sep 29, 2016

13170245 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/170,245 06/28/2011
71867 7590 10/03/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Richard Woundy
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.
007412.01557 3456
EXAMINER
DINH, KHANH Q
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD WOUNDY and CHRIS BASTIAN
Appeal2014-005198
Application 13/170,245
Technology Center 2400
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52 on
June 28, 2016 (hereinafter "Request"), requesting that we reconsider our
Decision on Appeal of April 28, 2016 (hereinafter "Decision"), in which we
affirmed the rejection of (1) claims 1, 5, 7, 8, 15, and 17 under 35 U.S.C.
§ 102(e) as being anticipated by Grayson et al. (US 2008/0046963 Al;
published Feb. 21, 2008), (hereinafter "Grayson"); (2) claims 2, 4, and 16
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Grayson and Dobes et al. (US 2002/0116638 Al; published Aug. 22, 2002),
(hereinafter "Dobes"); and claims 1, 5, and 8 under the doctrine of
Appeal2014-005198
Application 13/170,245
obviousness-type double patenting as being unpatentable over claim 1 of
Woundy et al. (US 7 ,996,526 B2; issued Aug. 9, 2011). 1 We reconsider our
Decision in light of Appellants' Request for Rehearing, but we decline to
change the Decision.
ISSUES AND ANALYSIS
Appellants argue our Decision overlooks Appellants' arguments that
(i) Grayson's priorities do not relate to the application programs executed by
Grayson's Online Charging System ("OCS") 26 and OCS 16 and
(ii) Grayson's priorities are related to assignment of wireless bearers to a
user's mobile device for different application functions. See Request 3--4
( citing Reply Br. 5). We are not persuaded by Appellants' arguments.
(1) Priorities relating to executed applications
Appellants argue Grayson's priorities do not relate to the applications
running on OCS 26 and OCS 16. See Request 3 (citing Reply Br. 4--5).
Specifically, Appellants contend Grayson instead discloses priorities that are
related to assignment of wireless bearers to a user's mobile device for
different application functions. Request 3--4 (citing Reply Br. 5 (citing
Grayson i-f 17)).
We are not persuaded by Appellants' arguments. OCS 26 (first
device) and OCS 16 (second device) execute, inter alia, charging related
1 Appellants contend they did not appeal the obviousness-type double
patenting rejection of claims 1, 5, and 8. But see 37 C.F .R. § 41.31 ( c) ("An
appeal, when taken, is presumed to be taken from the rejection of all claims
under rejection unless cancelled by an amendment filed by the applicant and
entered by the Office.").
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Application 13/170,245
applications for subscribers. See Grayson Fig. 1, ifif18 ("FIG. 1 is a
simplified block diagram of an embodiment of a system 10 for policy and
charging control (PCC) for roaming users of services accessed via a visited
network gateway."), 35-36 (disclosing OCS 16 performs credit control
functions and can "grant or deny a request for credit," where credit "can be
an abstract measure of resources available to the user"), 49 (disclosing OCS
26 proxying credit control requests and responses), 56. Grayson discloses
prioritization information related to these applications. See, e.g., Grayson
iii! 1 7 (disclosing defining priorities for specific application identifiers for
each subscriber for application interaction, which priorities can include
establishment and retention priorities), 95 (disclosing a simplified block
diagram illustrating "policy and charging rule prioritization"); see also
Grayson if 3 ("3rd Generation Partnership Project (3GPP) Policy Charging
Convergence defines the support of application identifiers in a service
request between an application function and a policy, and, further, the
charging rules function.") (emphases added). In further support of this
finding, Grayson also discloses that "[u]nauthorized applications may ...
have an establishment priority ofO." Id. if 23; see also id. f 36 (disclosing
denying a credit request).
(2) Priorities allegedly are related to bearer assignment
Appellants re-argue Grayson's priorities are related to assignment of
wireless bearers to a user's mobile device for different application functions.
See Request 3--4 (citing Reply Br. 5). Specifically, Appellants contend
paragraph 17's:
[C]onditional language is directed to how priorities for
establishment and retention of bearer characteristics for a
particular application may be tailored based on bearer specific
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Application 13/170,245
attributes, such as adjusting a particular establishment priority
value depending on the particular provider of the bearer (e.g.,
"UMA based WiFi") or adjusting a particular retention priority
value depending on the location of the bearer (e.g., "cell
identity #A").
Request 4 (citing Grayson i-f 17). Appellants also argue "[t]he Board's
conclusion that the establishment and retention priorities are unrelated
to bearers does not logically follow from the priorities possibly further
being "qualified with bearer specific attributes." Request 4.
We are not persuaded by Appellants' arguments. Appellants
mischaracterize our Decision. We did not find that "establishment and
retention priorities are unrelated to bearers," as Appellants now argue. See
Request 4--5; Decision 6. Rather, we find Grayson's disclosure is not
limited to assignments of wireless bearers to a user's mobile device for
different application functions. See, e.g., Grayson i-f 1 7 (disclosing in
addition to defining priorities associated with specific application identifiers,
which can include establishment and retention priority for an application,
priorities "may be further qualified with bearer specific attributes"); see also
id. i-f 3 ("Such a scheme can be used to manage the interactions between a
plethora of applications, and the resources needed to support such
applications."). Grayson's disclosure is broader than Appellants assert and
includes merely using a subscriber policy to set priorities for application
interaction, including by defining priorities associated with specific
application identifiers. See Grayson i-f 17; see also id. Title ("System and
Method for Implementing Policy Server Based Application Interaction
Manager").
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Appeal2014-005198
Application 13/170,245
(3) Additional arguments
Appellants repeat arguments from their Reply Brief, again, without
sufficient explanation. Request 5 (quoting Reply Br. 5). For example,
Appellants again argue "Grayson does not disclose, for example, data
communications for a first application executed by OCS 26 should have a
higher priority than data communications for a second application executed
by OCS 16." See 37 C.F.R. § 41.37(c)(l)(iv) (2012) ("A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim."); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (holding that "the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art").
Furthermore, Appellants now raise new arguments and provide new
discussion regarding the Examiner's findings and portions of Grayson that
they did not articulate before. See Request 6-10. Arguments not raised in
the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing. 37 C.F.R. § 41.52(a)(l).
Appellants have not shown good cause as to why any new arguments are
entitled to consideration under 37 C.F.R. § 41.52(a)(2), and 37 C.F.R.
§ 41.52(a)(3), directed to new grounds of rejection, does not apply.
Accordingly, we will not consider the new arguments, analysis, and cited
evidence at this time.
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Application 13/170,245
CONCLUSION
For the above reasons, Appellants' contentions have not persuaded us
of error in our Decision.
Accordingly, while we have granted Appellants' Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
DENIED
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