APPLE INC.

Patent Trials and Appeals Board

Dec 31, 2020

2019005355 (P.T.A.B. Dec. 31, 2020)

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.
14/500,526 09/29/2014 Teck Yang LEE 30134/18102 (P22974US1) 1008
114746 7590 12/31/2020
Apple Inc. -- FKM
150 Broadway
Suite 702
New York, NY 10038
EXAMINER
WON, MICHAEL YOUNG
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
fhall@fkmiplaw.com
mmarcin@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TECK YANG LEE, NAJEEB M. ABDULRAHIMAN,
VIKRAM B. YERRABOMMANAHALLI, and
ARUN G. MATHIAS
Appeal 2019-005355
Application 14/500,526
Technology Center 2400
Before MICHAEL J. STRAUSS, JAMES B. ARPIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 8–27, all of the pending claims. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed September 29, 2014 (“Spec.”); Final
Office Action, mailed October 17, 2018 (“Final Act.”); Appeal Brief, filed
April 5, 2019 (“Appeal Br.”); Examiner’s Answer, mailed May 3, 2019
(“Ans.”); and Reply Brief, filed July 2, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Apple Inc. Appeal Br. 2.
Appeal 2019-005355
Application 14/500,526
2
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to transferring a call. Spec., Title. Claim 8,
reproduced below with a disputed limitation emphasized in italics, is
illustrative of the claimed subject matter:
8. A method comprising: at a first station:
receiving a first call identification of a first
communication session between a second station and a third
station, wherein the first call identification is received from a
network device based on information stored at the network
device indicating that the first station is associated with a first
user account and that the second station is associated with the
first user account;
receiving an input indicating the first communication
session is to be transferred from the second station to the first
station;
transmitting an invite to the third station during the first
communication session between the second station and the third
station, wherein the invite indicates to the third station that the
first communication session with the second station is to be
terminated and a second communication session with the first
station is to be established, wherein the second communication
session is identified by a second call identification; and
establishing the second communication session with the
third station.
REFERENCES AND REJECTION
The Examiner relies on the following references:
Name Reference Date
Oberle US 2007/0189220 A1 Aug. 16, 2007
Allen US 2009/0210536 A1 Aug. 20, 2009

The Examiner rejects claims 8–27 under 35 U.S.C. § 103 as obvious
over the combined teachings of Allen and Oberle. Final Act. 3–11.
Appeal 2019-005355
Application 14/500,526
3
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). The Examiner and Appellant focus their findings and
contentions on claim 8; so do we. See Appeal Br. 4–7; Ans. 3–6; Reply Br.
2–6. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Unless otherwise indicated, we adopt the Examiner’s findings in the Final
Office Action and the Answer as our own and add any additional findings of
fact for emphasis. We address the rejection below.
ANALYSIS
As noted above, the Examiner rejects claims 8–27 as obvious over the
combined teachings of Allen and Oberle. Final Act. 3–11. Appellant
collectively contests the rejection of claims 8, 12, and 21. Appeal Br. 4–7.
For the reasons given below, we are not persuaded the Examiner errs, and
we sustain this rejection.
The Examiner finds that Allen’s system that facilitates transfer of an
active session from a user’s first device to the user’s second device teaches
all limitations of claim 8 except “Allen does not explicitly teach that the
invite is sent to the third station during the first communication session
between the second station and the third station.” Final Act. 4. The
Examiner finds Oberle’s description of a session re-invite message sent to a
remote party in response to a mobile node changing a point of attachment
teaches the requirement of an invite sent to the third station during the first
communication session between the second station and the third station. Id.
at 4–5 (citing Oberle ¶ 7). The Examiner’s reasoning for modifying Allen to
include Oberle’s re-invite message is to provide some control to the third or
Appeal 2019-005355
Application 14/500,526
4
remote station and to “inform[] the third station of the intentions of the user
associated with the second and first station.” Id. at 5.
Appellant contends the combination of Oberle and Allen (i) fails to
teach the disputed limitation (Appeal Br. 4–6) and (ii) is improper, alleging
Oberle teaches away from sending an invite to a third station (id. at 6–7). In
connection with the first contention of error, Appellant argues Oberle
describes only two terminals, a requesting party and a remote or “other
party” participating in a session with the requesting party. Id. at 5–6. Thus,
Appellant argues the rejection is deficient because:
There is no disclosure, whatsoever, in Oberle ¶[0007] of the
existence of a third terminal, much less one that is not involved
in the existing session. The scenario described in Oberle ¶ [0007]
only includes two terminals and thus, cannot possibly be
characterized as a configuration of devices that includes a first
station, a second station and a third station as recited in claim 8.
Id. at 6 (emphasis omitted).
The Examiner responds, explaining Allen, not Oberle, is relied upon
for teaching three separate stations. Ans. 4. According to the Examiner,
Allen’s disclosure of a second user device sending a session invitation to and
causing a server to switch a leg of the existing session from the first device
to the second device during a first user device session with a remote party
teaches, at a first station (Allen’s second user device), transmitting an invite
(to Allen’s server) during a first communication session between a second
station (Allen’s first user device) and a third station (Allen’s remote party).
Id. (citing Allen ¶¶ 17, 18). The Examiner explains Oberle’s disclosure of
either a first or a new terminal sending a re-invite SIP signaling message to
Oberle’s “other device” teaches sending an invite to a remote device to
effect a session switch function, i.e., instead of only transmitting the
Appeal 2019-005355
Application 14/500,526
5
message to a server as per Allen to effect a handover. Id. at 5. According to
the Examiner, modifying Allen to include transmitting a re-invite signal to
the third station, as taught by Oberle, would have allowed any new IP
address information to be supplied to the third (remote) device and, thereby,
would have provided for the establishment of a new separate call as may be
required. Id. at 5–6 (citing Oberle ¶¶ 7, 63). Thus, the Examiner takes the
position that the disputed limitation is taught or suggested by the
combination of Allen and Oberle. Id. at 4–5.
Appellant replies, contending the combination of Allen and Oberle is
nonetheless deficient
because Oberle ¶ [0007] fails to mention, expressly or inherently,
the existence of a terminal that is not participating in the existing
session, let alone such a non-participating terminal (e.g., the
recited “first station”) “ . . . transmitting an invite to the third
station during the first communication session between the
second station and the third station,” as recited in claim 8.
Reply Br. 4 (emphasis omitted).
Appellant’s first contention that the combination of Allen and Oberle
is deficient in teaching or suggesting the disputed limitation is not persuasive
of reversible Examiner error. As depicted in Figure 2B of Allen (reproduced
below), during a first session between User device A (the second station of
claim 8) and a Remote Party, in response to User device A sending a switch
message to User device B (corresponding to the first station of claim 8),
User device B transmits a session invitation to Server 30. As a result, a new
session is established between User device B and Server 30.
Allen’s Figure 2B is reproduced below.

Appeal 2019-005355
Application 14/500,526
6

Figure 2B of Allen depicting an example flow diagram for executing a
device switch during an active session.
Thus, Allen discloses the disputed limitation except that, rather than the
Session Invitation being transmitted to a remote party (i.e., the third station
of claim 8), the invitation is sent to an intermediate Server 30. However, as
explained by the Examiner (Final Act. 4–5), during a communication session
established between a mobile node and another party, Oberle discloses
sending a re-invite message to a remote node. Oberle ¶¶ 7, 16, 54.
Accordingly, Appellant’s first contention is unpersuasive, and we find that
the combination of Allen and Oberle teaches or suggests the disputed
limitation.
In support of the second contention of error, Appellant argues Oberle
teaches away from transmitting an invite to a remote station such that it is
improper to modify Allen as proposed by the Examiner. According to
Appeal 2019-005355
Application 14/500,526
7
Appellant, “in Oberle when the configuration of three terminals is discussed,
the message flow intentionally prevents any signaling related to the transfer
of the communication session from being transmitted to the terminal of the
remote party participating in the communication session.” Appeal Br. 6
(emphasis omitted). Directing attention to paragraphs 24 and 66–68,
Appellant argues,
Oberle ¶[0066] . . . states the terminal of the remote party “is
explicitly not involved in the message flow” related to the
handover. . . . Instead, in Oberle, a network entity (e.g., SBC) is
configured to handle the message flow related to the handover
and prevent any information related to the handover from
reaching the terminal of the remote party.
Id. at 7 (emphasis omitted).
The Examiner responds, explaining Oberle’s disclosure of preventing
the transmission of signaling to a remote party is in connection with “an
alternate embodiment that was not relied upon by the [E]xaminer.” Ans. 6.
Appellant’s second contention also is unpersuasive of reversible
Examiner error. Although Oberle discloses an embodiment that prevents
signaling with a remote party so as to “keep[] the privacy of the moving
subscriber” (Oberle ¶ 24) by, instead, performing switching in coordination
with and at an intermediate node (i.e., Oberle’s SBE), Oberle also discloses
sending a re-invite message to a remote “other” party (Oberle ¶ 7). Thus, in
a particular situation where privacy is desired, Oberle provides an alternative
configuration that avoids sending an invite message to the remote party.
However, merely “express[ing] a preference” falls short of discouraging one
of ordinary skill in the art from following a particular path. In re Geisler,
116 F.3d 1465, 1471 (Fed. Cir. 1997). To teach away, the prior art must
“criticize, discredit, or otherwise discourage the solution claimed.” In re
Appeal 2019-005355
Application 14/500,526
8
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Teaching an alternative
method does not teach away from the use of a claimed method. See In re
Dunn, 349 F.2d 433, 438 (CCPA 1965); see also Ex parte Shuping, No.
2008-0394, 2008 WL 336222, at *2 (BPAI 2008) (unpublished)
(“[T]eaching a way is not teaching away.”) (citation omitted). Instead, we
find the Examiner has articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness. Final Act. 5. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds . . . must [include] . . . some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”), cited
with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Thus, we conclude that Oberle does not teach away from the claimed
invention by preventing the transmission of signaling to a remote party as
argued by Appellant.
For the reasons discussed above, Appellant’s contentions are
unpersuasive of reversible Examiner error. Accordingly, we sustain the
rejection of independent claim 8 together with the rejection of independent
claims 12 and 21, which are argued on the same basis, and further sustain
the rejection of dependent claims 9–11, 13–20, and 22–27, which are not
argued separately.
CONCLUSION
We affirm the Examiner’s decision to reject claims 8–27 under 35
U.S.C. § 103 as obvious over the combined teachings of Allen and Oberle.
Appeal 2019-005355
Application 14/500,526
9
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–27 103 Allen, Oberle 8–27
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED