Ex Parte Bakker et alDownload PDFPatent Trial and Appeal BoardMay 27, 201613529088 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/529,088 06/21/2012 82313 7590 06/01/2016 Conley Rose - BlackBerry Files Attn: J. Robert Brown 5601 Granite Parkway, Suite 500 Plano, TX 75024 FIRST NAMED INVENTOR John-Luc Bakker 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. 32769-US-CNT (4214-03503) CONFIRMATION NO. 1861 EXAMINER AFSHAR, KAMRAN ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): ConleyRoseReporting@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN-LUC BAKKER, ANDREW ALLEN, and ADRIAN BUCKLEY Appeal2014-001964 Application 13/529,088 Technology Center 2600 Before JEAN R. HOMERE, BETH Z. SHAW, and SHARON PENICK, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1-34, which are the only claims currently pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. INVENTION The invention is directed to using Session Initiation Protocol for setting up and managing Internet Protocol Multimedia Subsystem (IMS) calls. Spec. i-f 2. Claim 1, which is illustrative, reads as follows: Appeal2014-001964 Application 13/529,088 1. A method for providing service identification data, compnsmg: receiving Session Initiation Protocol (SIP) data from a first user agent (UA); adding an identifier of an application server (AS) and a service identifier for at least one service supported by the AS to the SIP data; and transmitting the SIP data to a second UA, the at least one service invoked during communication between the U A and a second U A, wherein the second U A is not the AS. REJECTIONS AT ISSUE The Examiner rejected claims 1, 11, 12, 22, 23, 33, and 34 under 35 U.S.C. § 102(a) as anticipated by Lee (US 2002/0172338 Al; Nov. 21, 2002). Final Act. 9-13. The Examiner rejected claims 2--4, 8-10, 13-15, 19-21, 24--26, and 30-32 under 35 U.S.C. § 103(a) as being unpatentable over Lee and Johnston, Session Initial Protocol Service Examples (July 16, 2007). Final Act. 14--19. The Examiner rejected claims 5-7, 16-18 and 27-29 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Johnston, and Astrom (US 2008/0189414 Al; Aug. 7, 2008). Final Act. 19-22. ISSUE Appellants argue that the Examiner's rejections are in error. App. Br. 9-13; Reply Br. 2-8. The dispositive issue presented by these arguments are: Did the Examiner err in finding Lee discloses the disputed limitation of "adding an identifier of an application server (AS) and a service identifier for at least one service supported by the AS to the SIP data," as recited in claim 1? 2 Appeal2014-001964 Application 13/529,088 ANALYSIS We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, and the Examiner's response to Appellants' arguments. We adopt as our own the findings and reasons set forth in the rejection from which appeal is taken and in the Examiner's Answer in response to Appellants' Appeal Brief. See Ans. 2-7, Final Act. 2-22. We highlight and address specific arguments and findings for emphasis as follows. The Examiner finds that Lee discloses the disputed limitation recited in claim 1. Ans. 4--5 (citing Lee i-fi-f 18-19). In particular, the Examiner finds that Lee's disclosure of an "SIP INVITE" as "defined by IETF-RFC- 2543" discloses adding a server application identifier to SIP data. Id. (citing IETF-RFC-2543). The Examiner finds that Lee also discloses adding a "service identifier for at least one service supported by the AS to the SIP data," as recited in claim 1, because Lee describes appending a caller identification payload to the SIP INVITE. Id. at 4. The Examiner concludes that if a network element does not support a caller ID feature, devices will not be able to identify the incoming calls, and therefore, appending a caller identification payload by a server appends a service identifier for at least one service of the server. Id. at 5. Thus, the service of caller identification is the service. See id. We agree with the Examiner's findings. Appellants argue that the "CSCF does not add an address of the application server to the SIP INVITE." App. Br. 10. We find this argument is not commensurate in scope with claim 1, which does not recite "an address of the application server" but merely recites an "identifier." 3 Appeal2014-001964 Application 13/529,088 Appellants also argue that Lee's INVITE message is not an "INVITE 2xx" response as defined in IETF-RTC-2543. App. Br. 12. However, we agree with the Examiner's finding that the claims "only claim a method or network element of receiving SIP data transmission. The term SIP data (as claimed) is a broader term, which encompasses both INVITE and INVITE 2xx messages in SIP data transmission." Ans. 6. For the first time in the Reply Brief, Appellants argue that IETF-RTC- 2543 is not incorporated by reference in Lee, is not merely used to provide a definition for Lee's "SIP INVITE message," and is improperly used to teach elements of claims 1, 12, and 23. Reply Br. 5. "Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief ... is waived.") (citations and quotation marks omitted). Here, the Examiner cited both (1) paragraph 18 of Lee, which states that IETF-RTC-2543 defines a SIP INVITE message, and (2) the IETF- RTC-2543 reference, in both the Final Office Action and in the Advisory Action. See Final Act. 2-3, 9-10; Advisory Act. 2. The Appellants could have made the argument about IETF-RTC-2543 in the Appeal Brief. The Appellants may not present arguments in a piecemeal fashion, holding back arguments until an examiner answers the original brief. This basis for asserting error is waived. See 37 C.F.R. § 41.41(b)(2). Because Appellants have not presented separate patentability arguments or have reiterated substantially the same arguments as those 4 Appeal2014-001964 Application 13/529,088 previously discussed for patentability above (see Ans. 9-11 ), the remaining pending claims fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION The decision of the Examiner to reject claims 1-34 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)(l). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation