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Full text of "USPTO Patents Application 09750903"

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JAN. 23. 2006 12:46PM BARNES & THORNBURG 


NO. 777 P. 14/1 


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Remarks 

1. Applicant is grateful to the Examiner for indicating that Applicants previous 
arguments were persuasive. 

2. Applicant has taken the opportunity to review the specification to correct 
typographical errors and correct inconsistencies etc. as suggested by the Examiner 
in sections 4 and 5 of the Office Action. 

3. Applicant notes that the Examiner now rejects claims 21 to 35 under U.S.C. 
§1 03(a) as being unpatentable over Grover et al (US6819662) "Graver 612" in view 
of Grover (US5848139) "Grover 139°. The Examiner will be aware that in ex parte 
examination of patent applications, the Patent and Trademark Office bears the 
burden of establishing a prima facie case of obviousness. MPEP § 2142; In re 
Fritch, 972 F.2d 1260, 1262, 23 U.S.P.Q.2d 1780, 1783 (Fed. Cir. 1992). The initial 
burden of establishing a prima facie basis to deny patentability to a claimed invention 
is always upon the Patent and Trademark Office. MPEP § 2142; in re Oetiker, 977 
F.2d 1443, 1445, 24 U.S.P.Q.2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 
F.2d 1468, 1472, 223 U.S.P.Q. 785, 788 (Fed, Cir. 1984). Only when a prima facie 
case of obviousness is established does the burden shift to the applicant to produce 
evidence of nonobviousness. MPEP § 2142; In re Oetiker, 977 F.2d 1443, 1445, 24 
U.S.P.Q.2d 1443, 1444 (Fed. Cir. 1992); In re Rijckaert, 9 F.3d 1531, 1532, 28 
U.S.P.Q.2d 1955, 1956 (Fed. Cir. 1993). If the Patent and Trademark Office does 
not produce a prima facie case of unpatentability, then without more the applicant is 
entitled to grant of a patent. In re Oetiker, 977 F.2d 1443, 1445, 24 U.S.P.Q.2d 
1443, 1444 (Fed. Cir. 1992); In re Grabiak, 769 F.2d 729, 733, 226 U.S.P.Q. 870, 
873 (Fed. Cir. 1985). A prima facie case of obviousness is established when the 
teachings of the prior art itself suggest the claimed subject matter to a person of 
ordinary skill in the art. In re Bell, 991 F.2d 781, 783, 26 U.S.P.Q.2d 1529, 1531 


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(Fed. Cir, 1993). To establish a prima facie case of obviousness, three basic criteria 
must be met. First, there must be some suggestion or motivation, either in the 
re f erences themselves or in the knowledge generally available to one of ordinary skill 
in the art, to modify the reference or to combine reference teachings. Second, there 
must be a reasonable expectation of success. Finally, the prior art reference (or 
references when combined) must teach or suggest all the claim limitations. The 
teaching or suggestion to make the claimed invention and the reasonable 
expectation of success must both be found in the prior art, and not based on 
applicant's disclosure. MPEP § 2142. 

4. Claim 21 as currently pending comprises the steps in a method of controlling 
the admission of a traffic flow to a communications network of: 

A sampling an aggregated traffic flow on a network resource to which the traffic 
flow is to be admitted to obtain a mean bandwidth measurement and a bandwidth 
variance measurement of said aggregated traffic flow; 

B determining from said mean bandwidth and variance measurements a price 
for bandwidth and a separate price for variance; 

C sampling the traffic flow to be admitted to the network resource to measure its 
mean bandwidth and variance; and 

D applying to said traffic flow the separate prices for bandwidth and variance as 
a means of controlling admission of the traffic flow to the network resource. 

5. Applicant has carefully considered the disclosure of Grover 612 and, in 
particular, the numerous sections thereof as recited by the Examiner in part 1 of 
section 7 of the Office Action and cannot derive from Grover 612 the feature 
identified as step A in paragraph 4 of this paper. In this regard, it should be noted 
that the term "variance" is used only once (column 16, line 33) in the whole of this 
reference but this single usage does not relate to "sampling" an aggregated traffic 
flow nor to obtaining a "bandwidth variance measurement". Further, the term 
"sample" on its very few occurrences in the text of Grover 612 is never used in 


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conjunction with obtaining measurements of any sort from an aggregated traffic flow. 
The term "sampling" indicative of a method step is not employed at all in Grover 612. 
Therefore, if the Examiner remains of the view that Grover 612 does disclose the 
contested method step then the Applicant is entitled to request the Examiner to more 
clearly and distinctly identify the specific section or sections of Grover 612 that are 
purported to disclose this step. It is also reasonable for the Applicant to ask that 
each such section of Grover 612 is accompanied with a reasoned statement 
explaining how each such section purports to disclose the respective method step. It 
is incumbent in law on the Patent and Trademark Office to establish a prima facie 
case of obviousness. This is not achieved through a selection of relatively large 
sections of a prior art reference with the only "reasoning" offered as to what such 
sections are purported to disclose being a broad statement that such sections 
disclose one of the steps of the invention. It is not reasonable to expect the 
Applicant to second guess the Examiner's reasons for selecting certain parts of the 
teaching of a prior art reference by way of understanding and determining the validity 
of a 35 U.S.C. §103 (a) rejection. The rejection should be such that it can be readily 
followed and understood. This is not possible in the present instance. 

6. Similar observations to those of paragraph 5 of this paper ban be made with 
respect to Grover 139 and steps B, C, D of claim 21 as currently pending. Where, 
for example, does it disclose in Grover 139 separate prices for variance and 
bandwidth? Grover 139 discloses a price derived from a slack capacity signal. 
There is no suggestion that this price comprises separately determined price 
components for bandwidth and variance respectively. If the Examiner remains of the 
view that Grover 139 does disclose the contested method steps then the Applicant is 
entitled to request the Examiner to more clearly and distinctly identity the specific 
sections of Grover 139 that are purported to disclose these steps. It is also 
reasonable for the Applicant to ask that each such section of Grover 139 is 
accompanied with a reasoned statement explaining how each such section purports 
to disclose the respective method steps. 


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7. The present invention makes a useful contribution to the art in that it provides 
a means of managing the admissions of traffic flows to a network resource in 
accordance with two price determinations relating to the resource, wherein the price 
determinations can be separately applied to respective corresponding characteristics 
(measurements) of a traffic flow to be admitted to the resource. This is not disclosed 
not suggested by the combination of Grover 612 and Graver 139, 

8. The Applicant has used his best efforts to understand and respond to the 
rejections set forth in the current Office Action. Consequently, it would bring the 
process into disrepute if the nature of this response was used as an excuse to make 
a next Office Action, if not an allowance, final. 

9. In view of the foregoing, it is submitted that the claims presented herewith are 
in condition for allowance. 

January 23, 2006 ; Respectfully submitted^^^ 



William M. Lee, Jr. \ 
Registration No. 26,935 ] 
Barnes & Thornburg LLP 
P.O. Box 2786 
Chicago, Illinois 60690-2786 
(312) 214-4800 
(312) 759-6646 (fax) 


CHDS01 WLEE3M5S6vl 


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