Ex Parte Agulnik et al

Patent Trial and Appeal Board

Aug 18, 2016

12544508 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/544,508 08/20/2009 ANATOL Y AGULNIK
22917 7590 08/22/2016
MOTOROLA SOLUTIONS, INC
IP Law Docketing
500 W. Monroe
43rd Floor
Chicago, IL 60661
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.
CM12346 9471
EXAMINER
YUN, CARINA
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
USAdocketing@motorolasolutions.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANATOL Y AGULNIK,
TYRONE D. BEKIARES, and PETER M. DROZT 1
Appeal2015-002338
Application 12/544,508
Technology Center 2100
Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
SCOTT B. HOWARD, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, and 5-22, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants indicate the real party-in-interest is Motorola, Solutions Inc.
Br. 3.
Appeal2015-002338
Application 12/544,508
RACKGROUNn
The disclosed invention relates to presence information subscriptions in a
group communications system. Spec. i-f 1, Abstract. Representative claims 1
and 12, reproduced from the Claims Appendix of the Appeal Brief, read as
follows (disputed limitations in italics):
1. A method for providing presence information to a group
comprising a plurality of members, the method comprising:
at a group watcher module:
communicating, to at least one presence server module, a
set of subscriptions to a plurality of presentities, wherein the
group watcher module is subscribed to the plurality of
presentities by the set of subscriptions and wherein each
subscription contains a set of event notification criteria for a
presentity;
detecting a change in presence information for the set of
subscriptions;
in response to detecting the change in presence
information, retrieving, from a group server, group membership
information;
determining current members of the group based on the
group membership information; and
distributing the change in presence information to each
of the current members based on the determination of the
current members of the group and without receiving, from any
of the determined current members, a subscription that
identifies one or more of the plurality of presentities or a
subscription that identifies an event notification criteria for the
one or more of the plurality of presentities.
12. A method for receiving presence information, the method
compnsmg:
at a client entity:
becoming a member of a Push-to-Talk (PTT) group,
wherein the group is subscribed, on a group basis, to a plurality
of presentities by a set of subscriptions, wherein each
subscription contains a set of event notification criteria for a
presentity;
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and
as a result of becoming a member of the PTT group and
without explicitly subscribing to receive presence information
related to the plurality of pres entities, receiving presence
information for the set of subscriptions as long as membership
in the group is maintained.
REJECTIONS
Claims 12-16 and 22 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Zhang (US 2008/0125157 Al; published May 29, 2008).
Claims 1, 2, 5, 7, 9-11, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wu et al. (US 2006/0248184 Al; published
Nov. 2, 2006 ("Wu") and Zhang.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Wu, Zhang, and Ozugur et al. (US 2007/0121867 Al; published May 31,
2007).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Wu, Zhang, and Ren Ezra et al. (US 2009/0177729 Al; published July 9,
2009).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zhang and Jerome et al. (US 2009/0150403 Al; published June 11,
2009).
Claims 19 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wu, Zhang, and Niekerk et al. (US 2006/0211450 Al;
published Sept. 21, 2006).
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Appeal Brief, and the Examiner's Answer. We agree with
Appellants' conclusions regarding the rejections of claims 12-17 and 22.
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We disagree \vith Appellants' conclusions regarding claims 1, 2, 5-11, and
18-21, and agree with, and adopt as our own, the Examiner's findings and
conclusions of law as to claims 1, 2, 5-11, and 18-21. Specific findings and
arguments are highlighted and addressed below for emphasis.
Anticipation
The Examiner finds that Zhang teaches "as a result of becoming a
member of the PTT group and without explicitly subscribing to receive
presence information related to the plurality of presentities, receiving
presence information for the set of subscriptions as long as membership in
the group is maintained," as recited in independent claim 12, and recited
similarly in independent claim 22. The Examiner interprets "without
explicitly subscribing to receive presence information related to the plurality
of presentities, receiving presence information for the set of subscriptions"
in accordance with Appellants' disclosure that users or group members need
not individually subscribe to receive presence information, but have an
implicit subscription to receive presence information. Ans. 13 (citing Spec.
i-f 30). The Examiner's findings are based on Zhang's teaching of user B
joining Group A (see Zhang i-f 125), and a group server notifying user B of a
change in the presence information of group A (see Zhang i-f 130; Fig. 8, step
805). See Final Act. 3-5 (citing Zhang Fig. 8, i-fi-119, 54, 124--135); Ans. 13.
The Examiner also points out that paragraph 119 describes that user B can
subscribe to the presence information of group A. See Ans. 13 (citing Zhang
i-f 119); Zhang Fig. 7. The Examiner explains that by virtue of user B joining
group A, and without explicitly subscribing to receive presence information
related to the plurality of presentities, user B receives presence information
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for the set of subscriptions as long as membership in the group is
maintained. See id. (citing Zhang Fig. 8, i-fi-f 124--135).
Appellants argue that Zhang does not describe "as a result of
becoming a member of the PTT group and without explicitly subscribing to
receive presence information related to the plurality of presentities, receiving
presence information for the set of subscriptions as long as membership in
the group is maintained," as recited in independent claim 12, and recited
similarly in independent claim 22. See Br. 6. Appellants argue that Zhang
expressly teaches that a new user sends a subscription request to the group
server to subscribe to the presence information of the group, in response to
which the group server sends a subscription success response indicating that
the new user has successfully subscribed to the presence information of the
group members. See id. (citing Zhang i-fi-f 119--120); Zhang Fig. 7:709, 710.
Appellants contend that group members still are required to subscribe to
receive presence information of other group members. See id.
At the outset, we disagree with the Examiner's claim interpretation
that reads limitations into the claims from the Specification. See Ans. 13.
Instead, we broadly yet reasonably construe "without explicitly subscribing
to receive presence information related to the plurality of presentities" to
include without explicitly subscribing to receive presence information from
a group of a plurality of presentities because "presence information related
to the plurality of presentities" includes presence information of a group of
the plurality of presentities. We agree with Appellants' arguments that
Zhang teaches that when a user (i.e., user B) joins or becomes a member of a
group (i.e., Group A) (see Zhang i-fi-f 111, 112, Fig. 7:703, 704), the user must
subscribe to the presence information of the group (i.e., Group A) to receive
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presence information related to the presentities (i.e., receive presence
information of the members in Group A) (see Zhang i-fi-f 119, 120, Fig. 7:709,
710). See also Zhang i-f 138 (describing that ifthe basic group information
or the presence information of the group members changes, the group server
notifies the subscribers). For these reasons, we are constrained to reverse
the rejection of independent claim 12, dependent claims 13-17, and
independent claim 22 as anticipated by Zhang.
Obviousness
Appellants assert that their arguments addressing Zhang with respect
to independent claims 12 and 22 are applicable equally to independent
claims 1 and 20. See Br. 9. Appellants contend that Zhang's group server
(corresponding to the claimed group watcher module) notifies the new user
of the group presence information or the change in the group presence
information only if it is determined that the new user has individually
subscribed to the group presence information in the group server. See id.;
see also id. at 7 (citing Zhang i-fi-f 124--135). On this basis, Appellants
conclude that neither Wu nor Zhang individually or in combination teach
at a group watcher module . . . distributing the change in
presence information to each of the current members based on
the determination of the current members of the group and
without receiving, from any of the determined current members,
a subscription that identifies one or more of the plurality of
presentities or a subscription that identifies an even notification
criteria for the one or more ofthe plurality ofpresentities.
Id. at 8-9.
Appellants' arguments are not persuasive of error because they do not
address specifically the limitations of claims 1 and 20. In contrast to claims
12 and 22, claims 1 and 20 do not recite "without explicitly subscribing to
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receive presence information related to the plurality of presentities."
Instead, claims 1 and 20 recite "without receiving, from any of the
determined current members, a subscription that identifies one or more of
the plurality of presentities or a subscription that identifies an event
notification criteria for the one or more of the plurality of presentities."
Claims 1 and 20 include two alternative limitations in view of the use of the
disjunctive "or" in the aforementioned limitation. When the claim covers
alternatives, the claim may be unpatentable if any of the alternatives within
the scope of the claim are taught by the prior art. See Brown v. 3M, 265 F.3d
1349, 1351 (Fed. Cir. 2001). Accordingly, claims 1 and 20 may be
unpatentable if Wu as combined with Zhang teach (a) distributing the
change in presence information to each of the current members based on the
determination of the current members of the group and without receiving,
from any of the determined current members a subscription that identifies
one or more of the plurality of the presentities; or (b) distributing the change
in presence information to each of the current members based on the
determination of the current members of the group and without receiving,
from any of the determined current members a subscription that identifies an
even notification criteria for the one or more of the plurality of presentities.
At minimum, Appellants do not address why Zhang fails to teach or suggest
the claimed alternative of distributing the change in presence information
without receiving, from any of the determined current members a
subscription that identifies an event notification criteria for the one or more
of the plurality of presentities. See Br. 8-11.
We also are not persuaded by Appellants' argument that Zhang does
not teach the limitations of claim 20 that require the presence server, in
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response to detecting a change in the presence information, retrieve, from
the group server, group membership information, determine current
members of the group based on the retrieved group membership information,
and distribute the change in presence information to each of the current
members based on the determination of the current members of the group.
See Br. 10. Appellants' arguments address the teachings of Zhang alone,
rather than addressing the combined teachings of Wu and Zhang. The
Examiner relies on Wu for teaching a presence server that in response to
detecting a change in the presence information, retrieves group membership
information from the group server, and determines current members of the
group based on the group membership information (see Final Act. 10 (citing
Wu i-fi-129, 30, 40, 42, 45)) combined with Zhang's teachings of distributing
the change in presence information to each of the current members based on
the determination of the current members (see Final Act. 11 (citing Zhang
i-fi-f 19, 124--135, Fig. 8)). One cannot show non-obviousness by analyzing a
reference individually, as Appellants have done here, where the rejection is
based on a combination of references. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
For all these reasons, we are not persuaded of error in the rejection of
independent claims 1, and 20, and dependent claims 2, 5, 7, 9-11, and 18,
not separately argued (see Br. 11 ), as unpatentable over Wu and Zhang.
Appellants do not substantively argue the rejections of dependent claims 6,
8, 19, and 21. See Br. 11-12. Therefore, for the same reasons as claims 1,
2, 5, 7, 9-11, and 18, we are not persuaded of error in the rejections of
claims 6, 8, 19, and 21 as unpatentable over Wu, Zhang, and additional prior
art.
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nECISION
We AFFIRM the rejections of claims 1, 2, 5-11, and 18-21.
We REVERSE the rejections of claims 12-17 and 22.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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