Ex Parte Forsberg et al

Patent Trial and Appeal Board

Jun 20, 2016

12738019 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121738,019 04/14/2010
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
06/22/2016
FIRST NAMED INVENTOR
Mikael Forsberg
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.
P24744-US1 8491
EXAMINER
MERCADO, ARIEL
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKAEL FORSBERG, DOMINIQUE HERVE, and HANS-ERIK
VANELBURG
Appeal2014-007936
Application 12/738,019
Technology Center 2100
Before JAMES R. HUGHES, CATHERINE SHIANG, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-007936
Application 12/738,019
INVENTION
Appellants' invention is directed to configuration of IP Multimedia
Subsystem services. Spec. 1:5---6. Claim 1 is exemplary of the subject
matter on appeal:
1. A method of controlling a presentation of subscriber
changeable IP Multimedia Subsystem service conditions at a
subscriber terminal, where service conditions are defined within
an Extensible Markup Language (XML) document maintained
within the Internet Protocol (IP) Multimedia Subsystem network,
the method comprising:
including within the XML document one or more
informational elements identifying only service conditions that
the subscriber can change, the service conditions including one
or more conditions used for identifying an action; and
upon receipt of the XML document or a fragment thereof
at the subscriber terminal, interpreting said one or more
informational elements and displaying to the subscriber only the
service conditions that can be changed.
REJECTIONS ON APPEAL
Claims 1, 3, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Applicant Admitted Prior Art ("AAP A")
and Kelley (US 2007/0280453 Al; Dec. 6, 2007). Final Act. 3-7.
Claims 2, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of AAPA, Kelley, and Hewlett-Packard Dev.
Co., HP OpenCall XML Document Management Server Software (July 1,
2006) ("HP OpenCall"). Final Act. 7-14.
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Appeal2014-007936
Application 12/738,019
ANALYSIS
Appellants contend the rejection of claim 1 is improper because the
combination of AAP A and Kelley does not teach or suggest displaying to
the subscriber only the service conditions that can be changed ("displaying"
limitation) and including within the XML document one or more
informational elements identifYing only service conditions that the
subscriber can change ("including" limitation), as recited in independent
claim 1. App. Br. 6-7; Reply Br. 2-3. In particular, Appellants argue
Kelley's filtering of service conditions in an IMS network is not the same as
limiting the service offerings. App. Br. 6. Appellants further argue HP
OpenCall is the only reference that is asserted as teaching the claimed
information elements. Reply Br. 3. We are not persuaded by these
arguments.
The Examiner finds, and we agree, AAP A teaches an interface that
displays to a user all service conditions associated with his/her services and
allows the user to edit the associated XivIL data (informational elements) to
change service conditions, which may be then accepted or rejected by the
eXtensible Document Management Server (XDMS). Ans. 16-17 (citing
AAP A 2:26-3, 3 :26-2; 4: 11-25; see also Spec 4: 17-25 (describing prior art
problem as XML document and GUI including all service settings,
regardless of whether XDMS will accept a request to change those settings).
The Examiner relies on Kelley to teach filtering (suppressing or removing
information that is unnecessary redundant or not requested) to present to the
user and allow the user to interact only with service offerings allowed in a
profile. Ans. 17-19. Appellants do not dispute the Examiner's findings
regarding Kelley, but argue the filtering described in Kelley addresses a
different problem than that in AAP A. Reply Br. 1-2. However, "[i]n
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Appeal2014-007936
Application 12/738,019
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). Appellants' arguments do not persuade us
the Examiner errs in finding the combination of AAP A and Kelley teaches
or suggests the "displaying" and "including" limitations. 1
Nor are we persuaded by Appellants' arguments that the Examiner
does not clearly articulate a reason for the combination. App. Br. 7. The
Examiner finds the motivation to combine Kelley with AAP A is to provide
only the necessary information to the subscriber, which reduces network and
resource utilization. Ans. 22 (citing Kelley i-f 43). Contrary to Appellants'
argument that the filtering concept taught by Kelley would require
substantial construction of AAP A to incorporate the costing and filtering
model described in Kelley (Reply Br. 2), all of the features of Kelley need
not be bodily incorporated into AAPA. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). In the absence of persuasive argument or evidence, we find
the Examiner's articulate reason, supported by evidence of record, to be
sufficient to support the conclusion of obviousness.
For the reasons stated above, Appellants fail to persuade us of error in
the rejection of claim 1. Accordingly, we sustain the 35 U.S.C. § 103(a)
rejection of: (1) claim 1; and (2) claims 3, 4, and 6, not argued separately.2
1 Moreover, we observe that the broadest reasonable interpretation of claim
1 does not preclude allowing a user to make changes and then later rejecting
the change as described in AAPA. Thus, claim 1 encompasses AAPA's
description of displaying and allowing a user to edit (change) all service
conditions.
2 We note that claim 6 depends on claim 5, which stands rejected over the
combination of AAP A, Kelley, and HP OpenCall. App. Br. 11. In addition
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Appeal2014-007936
Application 12/738,019
With respect to claims 2, 5, 7, and 8, Appellants merely contend the
additional references used in the rejection of these claims (HP Open Call) do
not make up for the purported deficiencies present in the combined teachings
of AAPA and Kelley. As Appellants do not otherwise separately argue these
claims with particularity, we sustain the 35 U.S.C. § 103(a) rejection of
claims 2, 5, 7, and 8, for the reasons discussed supra.
DECISION
We affirm the Examiner's decision to reject claims 1-8.
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.
§ 41.50(±).
AFFIRMED
to not citing the HP Open Call reference, the rejection of claim 6 does not
address the limitations currently recited in claim 6. See Ans. 6 ("claim
merely recites an 'apparatus' to perform the method of claim 3). However,
Appellants do not present separate arguments for claim 6 and thus any
argument with respect to this claim is deemed waived. See Hyatt v. Dudas,
551F.3d1307, 1314 (Fed. Cir. 2008). In the event of further prosecution,
we leave it to the Examiner to make appropriate correction.
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