Ex Parte Haruna et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612865937 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 12/865,937 03/14/2011 Adamu Haruna 089229.00384 7578 32294 7590 12/22/2016 Squire PB (NVA/DC Office) 8000 TOWERS CRESCENT DRIVE 14TH FLOOR VIENNA, VA 22182-6212 EXAMINER BELANI, KISHIN G ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): IPGENER ALTY C @ SQUIREpb.COM SONIA. WHITNEY @ SQUIREpb.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AD AMU HARUNA, HANS ROHNERT, IVO SEDLACEK, and BRIGITTE VAN GERVEN Appeal 2015-008113 Application 12/865,937 Technology Center 2400 Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-008113 Application 12/865,937 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The invention relates to “interworking between different messaging service domains” (Spec. 1:3—4). Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A messaging method for a user device, comprising: receiving, from an interworking function, a message containing at least one of an original sender address and identity, which is valid for sending messages in a messaging service of a non-converged technology, but is not valid for sending messages in a messaging service of a converged messaging technology, the message further containing at least one of a new sender address and identity which is valid in the messaging service of the converged messaging technology, the message addressed to a recipient operating in the messaging service of the converged messaging technology; and replying via a route other than the interworking function using the at least one of the original sender address and identity, after a selection of an option to send the reply via the non- converged messaging technology rather than via the converged messaging technology. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Bajko Knotts US 2005/0068935 A1 Mar. 31,2005 US 2006/0148453 A1 July 6, 2006 2 Appeal 2015-008113 Application 12/865,937 Sung US 2008/0113679 A1 May 15, 2008 REJECTIONS The Examiner made the following rejections: Claims 11, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Knotts and Sung. Claims 1—10, 12—19, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Knotts, Bajko, and Sung. ANALYSIS The Examiner finds the combination of Knotts and Sung discloses all the limitations of independent claim 11, including that Knotts teaches receiving, from an interworking function, a message containing at least one of an original sender address and identity, which is valid for sending messages in a messaging service of a [first] technology, but is not valid for sending messages in a messaging service of a [second] technology, the message further containing at least one of a new sender address and identity which is valid in the messaging service of the [second] technology (Final Act. 3—5; Ans. 30—31). Appellants contend Knotts does not disclose receiving a message with both “at least one of an original sender address and identity” and “at least one of a new sender address and identity,” as recited in claim 11 (see App. Br. 10-11). We agree with Appellants. Knotts discloses a system for communicating messages between subscribers of two different service carriers (Knotts, Abstract). In operation, a subscriber of the service providing an Inter- Carrier messaging module may send a mobile originated (MO) short message, addressed only with a phone number, to a subscriber in another carrier’s network. . . . The Inter-Carrier 3 Appeal 2015-008113 Application 12/865,937 messaging module of the Inter-Carrier service provider (ICSP) determines the appropriate carrier for the recipient, appends the appropriate syntax to the short message to allow internet protocol (IP) or other standardized communication techniques between SMSCs of the two carriers, and routes the short message to the destination carrier. Once received, the destination carrier’s network delivers the message to the final destination. (Knotts, 143). For example, a subscriber 210 can send a short message to the phone number of subscriber 500, and the Inter-Carrier messaging module can determine the carrier providing service to subscriber 500 and append the appropriate syntax to the phone number (Knotts, 1 87; Fig. 6). The subscriber 500 receives the message “preferably sent with the sender’s address in phone number only form” (Knotts, 188). More specifically, Inclusion of the source address (i.e., phone number) provides the recipient with the ability to reply to the received short message. The source address could include the full address of the source, including both the phone number and the appropriate syntax, but this would result in a possible reply short message which would violate the desired phone number only experience for subscribers of certain carriers. (Knotts, 197). Accordingly, we find Knotts teaches receiving a message including the source address, preferably in the form of a phone number, but alternatively, in the form of a phone number with appended syntax. The Examiner argues that subscriber 500 receives a message indicated as being received from “4439949854@mdc.carrier-l.net,” and that this represents both an “original sender address” and a “new sender address” because it includes both the sender’s phone number and appended SMTP address syntax (see Ans. 30-31). We disagree, because despite the fact that the address “4439949854@mdc.carrier-l.net” includes the phone number 4 Appeal 2015-008113 Application 12/865,937 “4439949854” as part of the address, it is only a single address. As discussed above, Knotts teaches receiving a message with the included source address in either a phone number only format or phone number with added syntax format (see Knotts, 197). Claim 11 requires the received message to actually have two sender addresses or identities included. Thus, even if it would have been obvious to derive the sender’s phone number from the address format that includes added syntax in Knotts’ received message, Knotts’ received message would still not meet the claim 11 limitation of a message containing two separate addresses or identities. We are, therefore, constrained by the record to find the Examiner erred in rejecting independent claim 11, independent claims 1,18, and 20 which recite commensurate limitations, and dependent claims 2—10, 12—17, 19, and 21—23 for similar reasons. CONCLUSION The Examiner erred in rejecting claims 1—23 under 35 U.S.C. § 103(a). DECISION For the above reasons, the Examiner’s rejections of claims 1—23 are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation