Andrew Allen et al.

Patent Trials and Appeals Board

Aug 20, 2019

14704241 - (D) (P.T.A.B. Aug. 20, 2019)

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.
14/704,241 05/05/2015 Andrew Allen 35261-2-US-
CNT(RIM0125C1)
2245
11710 7590 08/20/2019
Trop, Pruner & Hu, P.C.
PO Box 41790
Houston, TX 77241
EXAMINER
MCADAMS, BRAD
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
tphpto@tphm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ANDREW ALLEN, JAN HENDRIK,
ADRIAN BUCKLEY, JEAN-PHILIPPE CORMIER,
and YOUNG AE KIM1
________________

Appeal 2018-008493
Application 14/704,241
Technology Center 2400
________________

Before BARBARA A. BENOIT, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3–6, 8, 10, 11, and 15–24.2 Appeal Br. 5.3 We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants list BlackBerry Limited as the real party in interest. Appeal
Brief filed May 16, 2018 (“Appeal Br.”) 1.
2 Claims 2, 7, 9, and 12–14 have been cancelled. Appeal Br. i (Claims
Appendix).
3 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Office Action
mailed October 30, 2017 (“Final Act.”); the Examiner’s Answer mailed June
28, 2018 (“Ans.”); and the Reply Brief filed August 28, 2018 (“Reply Br.”).
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THE PRESENT INVENTION
The present invention is directed to a method for transferring media
and/or control functions from one device (referred to as “user equipment” or
“UE”) to another in a mobile communication system. Spec. ¶ 2. As
Appellants’ Specification explains, Internet-based communication
technologies such as Session Initiation Protocol (SIP) have been developed
that allow a user to register with the network multiple devices, each sharing
the same user identity. Id. ¶ 6. The Specification further explains that it
would be advantageous if a session using video that started on a device with
a small screen could have its video component moved to a device with a
larger screen (such as a high definition television (HDTV)) when the user
was near it. Id.
The present invention seeks to address this stated need by providing a
system for transferring media and/or control functions between devices
associated with a communications network. Id. ¶ 44. Using this system, a
network serving a user with multiple UEs, each sharing a common
identification, may receive an invitation to participate in a session that
includes various media types. Id. ¶ 46. After receiving the invitation, the
network transfers, forwards, or sends the invitation (e.g., an SIP INVITE) to
the UE of the user, in accordance with the media types described in the
invitation. Id. When the UE receives an invite request, it establishes a
session. Id. ¶ 47. Once the session is established, a controller UE may
transfer media flows to another UE. Id. ¶ 48.
In order to route SIP methods over a particular access leg, the system
identifies the particular registration flow that corresponds to that access leg.
Id. ¶ 52. When registering, the UE uses a SIP REGISTER request as
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described in 3GPP TS 24.229 with a header that includes an access type
indicating the access network technology used by the network over which
the registration request is routed. Id. ¶¶ 53–54. According to the
Specification, a media feature tag is added to the header that indicates the
particular registration flow that the device used to register. Id. ¶¶ 54–55;
Table 2. When a network node determines that a request containing certain
media types is to be routed over a certain access leg, it obtains the access
leg/flow identifier from the media feature tag, and includes in the request a
header containing the media feature tag. Id. ¶ 61. The network node then
routes the request to the UE using the desired access leg and, if the request is
accepted, the media is established using that access leg. Id.
Claim 1 is illustrative of the claims at issue:
1. A method of transfer control, comprising:
obtaining a media feature tag sent to a network by a terminal in
a Session Initiation Protocol (SIP) REGISTER request, the
media feature tag containing information indicating an access
network technology that the terminal used to register; and
sending, over an access network selected according to the
indicated access network technology, a SIP request for a
transfer of control of a session between terminals, the SIP
request including an Accept-Contact header field containing a
media feature tag set to the information of the media feature tag
that the terminal included in the SIP REGISTER request.
Appeal Br. i (Claims Appendix).

THE EXAMINER’S REJECTION AND APPELLANTS’ CONTENTIONS
In the Final Office Action, the Examiner rejected claims 1, 3–6, 8, 10,
11, and 15–24 as being unpatentable over Albertsson (US 2009/0017856 A1;
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published Jan. 15, 2009) in view of Pattan (US 2007/0043872 A1; published
Feb. 22, 2007). The Examiner finds that Albertsson discloses a method of
transferring control from one device to another by sending a SIP request for
transfer of control of a session between terminals. Final Act. 3 (citing
Albertsson ¶ 60; Figure 1). The Examiner finds that Albertsson “does not
expressly disclose obtaining a media feature tag and sending over an access
network selected according to the indicated access network technology a SIP
request including an Accept-Contact header field.” Id. at 3.
The Examiner finds that “Pattan, in the same field of endeavor,
teaches obtaining a media feature tag sent to a network by a terminal in a
Session Initiation Protocol (SIP) REGISTER request, the media feature tag
containing information indicating an access network technology that the
terminal used to register.” Id. at 4 (citing Pattan ¶¶ 40–41). The Examiner
further finds that Pattan teaches “sending over an access network selected
according to the indicated access network technology, as indicated by the
information contained in the media feature tag, a SIP request including an
Accept-Contact header field containing a media feature tag set to the
information of the media feature tag that the terminal included in the SIP
REGISTER request.” Id. (citing Pattan ¶¶ 40–41). The Examiner
determines that it would have been obvious “to have combined the method
of transfer control as taught by Albertsson with [] a media feature tag as
taught [by] Pattan” because “Media Feature tags are standard features in SIP
networks” and one of ordinary skill would have been motivated “to register
to a network using specific network access technology requested by the
UE.” Id.
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In response, Appellants argue that Pattan fails to teach or suggest
“obtaining a media feature tag . . . containing information indicating an
access network technology that the terminal used to register.” Appeal
Br. 6. Appellants argue that paragraphs 40 and 41 of Pattan, relied on by the
Examiner, teach a different feature tag, one that indicates that a client
supports System Messages (a special type of message transmitting by the
system for different purposes). Id. Appellants further argue that Pattan does
not teach or suggest
sending any SIP request containing an Accept-Contact header
field containing a media feature tag set to the information of the
media feature tag that the terminal included in the SIP
REGISTER request, where the SIP request is sent over an
access network selected according to the indicated access
network technology as indicated by the information
contained in the media feature tag included in the SIP
REGISTER request.
Id. at 10. Appellants argue that “Pattan provides no indication of any
selection of a specific access network that is according to an indicated access
network technology as indicated by a media feature tag in an SIP
REGISTER request.” Id.
ANALYSIS
We agree with Appellants that the Examiner has failed to sufficiently
establish that claim 1 is obvious over Albertsson and Pattan. Specifically,
we agree that Pattan does not teach or suggest obtaining a media feature tag
containing information “indicating an access network technology that the
terminal used to register.” See Appeal Br. 6. The feature tag relied on by
the Examiner in Pattan is used to identify System Messages, not to indicate
an access network technology that the terminal used to register. As Pattan
explains:
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Therefore, according to the present invention, introducing a
new feature tag into a message header of the SIP message can
help the Server determine whether a Client supports System
Messages, and also for both the transmitting and receiving
systems to uniquely identify a System Message.
Pattan ¶ 40.
Pattan explains that a “System Message” is “a special type of message
transmitted by the system for different purposes” such as “advice of charge,
service notifications, warnings, instructions, etc.” Id. ¶ 38. Pattan further
explains that its “feature tag” is needed because “the Client and Server have
to specifically identify the System Messages, distinguishing System
Messages from the other normal messages.” Id. ¶ 40. Because a tag used to
identify System Messages is different from a tag used to “indicat[e] an
access network technology that [a] . . . terminal used to register,” as recited
in claim 1, this limitation of claim 1 is not taught or suggested by paragraph
40 of Pattan.
The Examiner points to two statements in paragraphs 40 and 41 of
Pattan, but we find that neither teaches the claimed “media feature tag”
containing information “indicating an access network technology that the
terminal used to register.” First, the Examiner relies on Pattan’s statement in
paragraph 40 that “[t]he feature tag is intended primarily for use in the
following applications, protocols, services, or negotiation mechanisms and is
also most useful in a communications application, for describing the
capabilities of a device, such as a phone or PDA.” Final Act. 2–3; Pattan
¶ 40. Based on this statement, the Examiner determines that “when a media
feature tag includes protocols, services, capabilities and other negotiation
mechanisms indicated by the client device, said protocols, services,
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capabilities and other negotiation mechanisms indicated in the feature tag,
will be used to connect to a network.” Final Act.2–3. The Examiner,
however, does not explain how this statement in Pattan discloses or suggests
using a tag “indicating an access network technology that the terminal
used to register” (emphasis added), as claim 1 requires. Indeed, the
statement from paragraph 40 of Pattan relied on by the Examiner does not
refer to registration, much less to the network access technology used for
registration.
Second, the Examiner relies on the statement in paragraph 41 that
[the] SIP header field is used to indicate the support of System
Messages, so that, for example, Accept-Contact header can be
used to carry the new feature tag along with ‘require’ and
‘explicit’ parameters according to rules and procedures of RFC
3841 “Caller Preferences for the Session Initiation Protocol”.
Pattan ¶ 41. The Examiner finds that this statement teaches that “during SIP
Registration a media feature tag indicates the client[’]s capabilities and
service it wants to use to register, registration is performed, and the SIP
session is established using the requested service/capabilities from the media
tag.” Ans. 7 (citing Pattan ¶ 41). The cited statement from paragraph 41,
however, does not support the Examiner’s determination because it makes
no mention of the use of a feature tag that indicates the service the client
wants to use to register, or that the SIP session is established using the
requested service or capabilities from the media tag. And, the Examiner
fails to sufficiently explain how or establish that the “require” and “explicit”
parameters or the “rules and procedures of RFC 3841” teach or suggest such
a tag.
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Because the Examiner has not sufficiently established that Pattan
teaches the claimed “media feature tag . . . indicating an access network
technology that the terminal used to register,” we also find that the Examiner
has not sufficiently established that Pattan teaches “sending, over an access
network selected according to the indicated access network technology,
a SIP request for a transfer of control of a session between terminals”
(emphasis added), as claim 1 also requires. As discussed above, paragraphs
40 and 41 of Pattan, relied on by the Examiner, teach a feature tag used to
identify System Messages, and do not teach the claimed media feature tag
that indicates an access network technology that the terminal used to
register, as required by claim 1. Therefore, it also does not teach sending an
SIP request for transfer of control over such an indicated access network
technology.
Accordingly, Appellants have demonstrated error in the Examiner’s
determination that claim 1 is unpatentable over Albertsson and Pattan. We,
therefore, reverse the Examiner’s rejection of claim 1, and of independent
claims 6 and 24, which contain similar limitations. We also reverse the
rejection of claims 3–5, 8, 10, 11, and 15–23, which are dependent upon one
of the independent claims.

DECISION
The Examiner’s decision rejecting claims 1, 3–6, 8, 10, 11, and 15–24
is reversed.

REVERSED