Ex Parte Ali et al

Patent Trial and Appeal Board

Jan 15, 2016

13352985 (P.T.A.B. Jan. 15, 2016)

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.
13/352,985 01/18/2012 Syed Hussain Ali 38354-US-CNT 3379
94149 7590 01/19/2016
Fish & Richardson P.C. (Blackberry)
P.O.Box 1022
Minneapolis, MN 55440
EXAMINER
WILLIAMS, JENEE LAUREN
ART UNIT PAPER NUMBER
2469
MAIL DATE DELIVERY MODE
01/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte Syed Hussain Ali and Jean-Philippe Cormier
____________________

Appeal 2014-001997
Application 13/352,985
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH, and
JOHN F. HORVATH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-001997
Application 13/352,985

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claim 13–21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Exemplary Claims
Exemplary claim 13 under appeal reads as follows (emphasis added):
13. A method, on a Mobile Equipment (ME), comprising:
transmitting, using Session Initiation Protocol (SIP), a SIP
REGISTER message to an Internet Protocol (IP) Multimedia Subsystem
(IMS) network to register an IMS application running on a Universal
Integrated Circuit Card (UICC) with an IMS service; and
informing the IMS application running on the UICC of a failure to
register the IMS application with the IMS service.

Rejection
The Examiner rejected claims 13–21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Beyer et al. (US 2008/0301785
A1) and Ahluwalia (US 2010/0081434 Al).1

Appellants’ Admissions
1. Appellants state:
In known wireless telecommunications systems,
transmission equipment in a base station or access device
transmits signals throughout a geographical region known as a
cell.
Spec. ¶ 2.

1 Separate patentability is not argued for claims 14–21. Except for our
ultimate decision, these claims are not discussed further herein.
Appeal 2014-001997
Application 13/352,985

3
An access device is any component, such as a traditional base
station or an LTE eNB (Evolved Node B), that can provide a
user agent (UA), such as user equipment (UE) or mobile
equipment (ME), with access to other components in a
telecommunications system.
Spec. ¶ 2.
2. Appellants state:
The Open Channel request can present challenges where
the UICC is another IMS application on the UE. Because like
other applications this IMS application requires specific
registration with the IMS service. Figure 4, labeled Prior Art,
shows an example of how the UICC does not have knowledge
of what is occurring at the IMS layers. Figure 5, labeled Prior
Art, shows a flow diagram representing how IMS deregistration
indication does not contain clear cause/reject indications of why
this deregistration occurred in the first place.
Spec. ¶ 7, emphasis added.
3. Further, Appellants show in Figure 4 (labeled Prior Art) that an
SIP:REGISTER message is sent from the ME (mobile equipment) to the
IMS (Internet Protocol (IP) multimedia subsystem).

Appellants’ Contention
Appellants contend that the Examiner erred in rejecting claim 13
under 35 U.S.C. § 103(a) because:
[T]he Office Action fails to consider at least the phrase “an IMS
application running on a Universal Integrated Circuit Card
(UICC).”
App. Br. 2. Further,
Appeal 2014-001997
Application 13/352,985

4
Appellant was unable to locate any passages in the cited
combination that teach or suggest registering an IMS
application running on a UICC with an IMS service.
App. Br. 3.

Issue on Appeal
Did the Examiner err in rejecting claim 13 as being obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusions.
As to Appellants’ above contention, we disagree that the Examiner
has erred. Appellants have admitted (Appellants’ Admissions 1–3) the
argued limitations are known in the prior art. Given that Appellants’
argument contradicts Appellants’ admissions and the argument makes no
attempt to explain this contradiction, we see no reason to reverse the
Examiner’s rejection based on this argument.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 13–21 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 13–21 are not patentable.
Appeal 2014-001997
Application 13/352,985

5

DECISION
The Examiner’s rejection of claims 13–21 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

gvw